Ex Parte Nitin et al

Patent Trial and Appeal Board

Sep 20, 2016

13460167 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/460, 167 04/30/2012 JainNitin
56436 7590 09/22/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
82850134 5362
EXAMINER
TRUONG, DENNIS
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
09/22/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAIN NITIN, ERIC A. ANDERSON, and JOSEPH A. TUCEK
Appeal2015-006418
Application 13/460, 167
Technology Center 2100
Before ALLEN R. MacDONALD, AARON W. MOORE, and
MICHAEL J. ENGLE, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-006418
Application 13/460,167
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1--4, 6-8, 21, and 22. App. Br. 2. Claims 10-20 are withdrawn from
consideration. App. Br. 10-11. Claims 5 and 9 are cancelled. App. Br. 10.
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part, and we newly reject all claims on appeal. 1
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A method of mapping long names in a filesystem,
compnsmg:
hashing a long file name; and
storing file content with the hashed file name, the file content
stored in a first file, and the long file name stored in at least one
empty file.
Rejections on Appeal
The Examiner rejected claim 1 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
The Examiner rejected claims 1--4, 6-8, 21, and 22 under 35 U.S.C.
§ 102(b) as being anticipated by Doutre et al. (US 6,470,345 Bl; issued Oct.
22, 2002). 2
1 Herein, we recommend a particular amendment to overcome the rejections
under§ 112, including our new rejections.
2 As to this rejection, Appellants' contention as to claim 1 is determinative.
Therefore, Appellants' other contentions, directed to claims 2--4, 6-8, 21,
and 22, are not discussed herein.
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Application 13/460,167
Appellants ' Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 112, first paragraph, because:
The Examiner alleges that the specification describes "remaining
files" being stored in the "empty files" not "the long file name"
as recited in the claim.
Applicant kindly notes that para. [0043] of the
specification as originally filed states "For example, the file
content 314 can be stored in the first file 340, and the remaining
file names can be stored in any number of empty files 350-351."
The specification at para. [007] also states "Operations may also
include storing the file content in a first file and creating empty
files for remaining file names." In addition, original claim 5
(which was canceled for the amendment to claim 1) recited
"storing the file content in a first file and creating empty files for
remaining file names."
Clearly, support for the claim can be found in the
specification as originally filed, and therefore the Section 112
rejection is in error.
App. Br. 4.
2. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(b) because, as to the Examiner's clarification of the
rejection at pages 2--4 of the Answer:
Appellant[ s] respectfully submits that Doutre does not
teach "storing file content with the hashed file name, the file
content stored in a first file, and the long file name stored in at
least one empty file," as recited by independent claim 1. That is,
tokens stored in a subdirectory, as described by Doutre, does not
teach, file content stored in a first file, and the long file name
stored in at least one empty file, at least because tokens and a
subdirectory is not file content in a first file and a long file name
in an empty file.
Page 3 of the Examiner's Answer states Appellant's
originally filed specification does not "specifically define what
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Appeal 2015-006418
Application 13/460,167
the empty file is." However, it is clear that the plain meaning of
the term "empty file" is a file without any data.
Reply Br. 4.
Issues on Appeal
Did the Examiner err in rejecting claim 1 as failing to comply with the
written description requirement?
Did the Examiner err in rejecting claim 1 as being anticipated under
35 U.S.C. § 102(b) because Doutre fails to describe the argued limitations?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred.
Written Description
As to Appellants' above contention 1, we disagree. From our review
of the record, we conclude that the Examiner is reading claim 1 as reciting
that the long file name, as it exists be/ ore it is hashed, is stored in at least
one empty file. 3 Further, we conclude the Examiner's construction is a
reasonable construction of claim 1, as the Examiner is simply reading the
3 On the other hand, we conclude that Appellants are construing claim 1 as
the embodiment of Figure 3 as described in the Specification, i.e., the long
file name after being hashed is stored in at least one empty file. We agree
with Appellants that this construction is described in the Specification in
such a way as to reasonably convey to one skilled in the relevant art that
Appellants, at the time the application was filed, had possession of that
invention. However, Appellants' alternative construction is not controlling
as to the result reached in our decision on this rejection.
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Appeal 2015-006418
Application 13/460,167
claim as written. That is, we conclude that the particular invention as
construed by the Examiner is within the scope of claim 1. We agree with the
Examiner that this invention is not described in the Specification in such a
way as to reasonably convey to one skilled in the relevant art that
Appellants, at the time the application was filed, had possession of the
claimed invention.
Anticipation
As to Appellants' above contention 2, we agree. Although we find
Doutre' s prior art and Appellants' claim 1 to be in the same genus, we agree
with Appellants that Doutre' s particular token based file/ directory pathname
parsing for supporting longer path lengths is not anticipatory of Appellants'
claimed file name hashing and storage to support longer file names.
NEW GROUNDS OF REJECTION
Written Description
Pursuant to our authority under 37 C.F.R. § 41.50(b ), we reject claims
2--4, 6-8, 21, and 22 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
Claims 2--4, 6-8, 21, and 22 incorporate the§ 112, first paragraph,
problems of claim 1 (as rejected by the Examiner) by their dependency
thereon.
Indefiniteness
Pursuant to our authority under 37 C.F.R. § 41.50(b ), we reject claims
1--4, 6-8, 21, and 22 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
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Appeal 2015-006418
Application 13/460,167
Claim 1 recites "hashing a long file name" and "the long file name
stored in at least one empty file." As previously discussed, from our review
of the record, we conclude that the Examiner is reading claim 1 as written,
i.e., the long file name, as it exists before it is hashed, is stored in at least
one empty file; and Appellants are reading claim 1 as the embodiment of
Figure 3 is described in the Specification, i.e., the long file name, as it exists
after it is hashed, is stored in at least one empty file. As both interpretations
are at least plausible claim constructions, "the USPTO is justified in
requiring the [Appellants] to more precisely define the metes and bounds of
the claimed invention by holding the claim ... indefinite." Ex parte
Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008) (precedential) ("[I]f a claim
is amenable to two or more plausible claim constructions, the USPTO is
justified in requiring [Appellants] to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable under
35 U.S.C. § 112, second paragraph, as indefinite."). Hence, we determine
that claim 1 is indefinite for failing to particularly point out and distinctly
claim the subject matter which Appellants regard as the invention.
Claims 2--4, 6-8, 21, and 22 incorporate the § 112, second paragraph,
problems of claim 1 by their dependency thereon.
Recommended Amendment
As we find it to be supported by Appellants' Specification, we
recommend that claim 1 be amended to recite: -the hashed file name stored
in at least one empty file-. We deem such an amendment to resolve all
current rejections under 35 U.S.C. § 112, first and second paragraphs.
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37 C.F.R. § 41.50(b)
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record ....
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1--4, 6-8, 21, and 22 as being anticipated by Doutre under 35 U.S.C.
§ 102(b).
(2) The Examiner did not err in rejecting claim 1 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
(3) We newly reject claims 2--4, 6-8, 21, and 22 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
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Appeal 2015-006418
Application 13/460,167
(4) We newly reject claims 1--4, 6-8, 21, and 22 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
(5) Claims 1--4, 6-8, 21, and 22 are not patentable.
DECISION
The Examiner's rejection of claims 1--4, 6-8, 21, and 22 as being
anticipated under 35 U.S.C. § 102(b) is reversed.
The Examiner's rejection of claim 1 as failing to comply with the
written description requirement under 35 U.S.C. § 112, first paragraph, is
affirmed.
Claims 1--4, 6-8, 21, and 22 are newly rejected.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
i\ .. FFIRl\1ED-TI'J-PART
37 C.F.R. § 41.50(b)
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