Ex Parte Reynolds

Board of Patent Appeals and Interferences

Feb 1, 2011

09999774 (B.P.A.I. Feb. 1, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK L. REYNOLDS
____________________

Appeal 2009-007149
Application 09/999,7741
Technology Center 2100
____________________

Before JAY P. LUCAS, JOHN A. JEFFERY, and CAROLYN D.
THOMAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed October 24, 2001. Appellant claims the benefit under
35 U.S.C. § 120 of U.S. provisional patent application No. 60/243,617 filed
October 26, 2000. The real party in interest is the inventor, Mark L.
Reynolds.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-007149
Application 09/999,774

STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1 to 38 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

We reverse.

Appellant’s invention relates to document management in computer
systems, and more particularly to tools and techniques for distinguishing a
given computer file from any other file or any copy of the given file by
comparing actual and claimed physical file locations (Spec. 1, ll. 12 to 15).
In the words of Appellant:
[T]he originality status of [a] file may be
determined by reading data that recites the claimed
physical location that is associated with the file,
determining the actual physical location of the file,
and comparing the locations. If both locations are
identical, the file is the original file it claims to be.
If there is disparity between the claimed physical
location recited for or by the file and the actual
physical location of the file, then it cannot be the
original file. One implementation associates the
claimed location of the file with the file by writing
the claimed physical location inside the file as a
header or footer. Then verifying the originality
status of the file can be done by reading the
claimed location from the file, ascertaining its
physical location, and comparing the claimed
actual location identifiers, without the necessity of
referring to external sources to read the location
claim.
(Spec. 6, ll. 16 to 27).
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Application 09/999,774

The following claim illustrates the claims on appeal:
Claim 1:
1. A method for determining whether a given
file stored on a computer-readable storage medium
is an original or a copy, the method comprising the
computer implemented steps of:

reading a claimed physical location
identifier from a secured location claim that is
associated with the file;

ascertaining the actual physical location of
the file;

comparing the claimed physical location
identifier to the actual physical location; and

concluding that the file is original if the
claimed physical location identifier identifies the
actual physical location, and concluding that the
file is a copy if the claimed physical location
identifier does not identify the actual physical
location.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Saxton US 6,370,549 B1 Apr. 09, 2002
(filed Jan. 04, 1999)

Sergey Brin et al., “Copy Detection Mechanisms for Digital
Documents,” Proceedings of the 1995 ACM SIGMOD International
Conference on Management of Data (1995) (hereinafter “Brin”).

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Appeal 2009-007149
Application 09/999,774

REJECTION
The Examiner rejects the claims as follows:

Claims 1 to 38 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Brin in view of Saxton.

ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). The issue specifically turns
on whether Brin and Saxton render obvious Appellant’s claimed “comparing
the claimed physical location identifier to the actual physical location”
(claim 1).

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellant has invented a method, medium, system, and memory for
determining whether a given file stored on a computer-readable storage
medium is an original or a copy. (See independent claims 1, 14, 22, 23, 24,
30, and 36.) Appellant’s claimed method includes comparing a claimed
physical location identifier to an actual physical location (claim 1).
Brin
2. The Brin reference discloses detecting whether a given file stored on a
computer readable storage medium is an original or a copy (p. 398, col. 2, ll.
24 to 28). Brin further discloses registering a new work in a server that acts
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Application 09/999,774

as a repository for a copyright recordation and registration system (p. 399,
col. 1, ll. 38 to 45). Brin compares two documents for copyright violations
by evaluating the ASCII characters within the documents (p. 400, col. 1, ll.
27 to 31 and 39 to 42).
Saxton
3. The Saxton reference discloses identifying the physical location of a
file within a directory tree structure using a unique directory identification
number (col. 5, ll. 61 to 67; col. 6, l. 34).

PRINCIPLE OF LAW
Appellant has the burden on appeal to the Board to demonstrate
Examiner error. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).

ANALYSIS
Arguments with respect to the rejection
of claims 1 to 38
under 35 U.S.C. § 103(a)

The Examiner has rejected the noted claims for being obvious over
Brin and Saxton.
Representative claim 1 recites, in relevant part, “comparing the
claimed physical location identifier to the actual physical location.”
The Examiner points to Saxton’s “unique directory identification
number” (Saxton, col. 6, l. 34) as being similar to Appellant’s claimed
“physical location identifier” (claim 1) of the “comparing” step (Ans. 5,
bottom).
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Appellant argues that Brin fails to teach the present invention’s
comparison of the actual physical location and the claimed physical location
of the document (App. Br. 9, middle). “In terms of the present application’s
Figure 5, Brin compares file contents 518 or hashes of such contents 518,
instead of comparing an actual location 514 to a claimed physical location
516, as called for in the present invention.” (Id.). Further, Saxton fails to
detect copyright violations, either by using directory identification numbers
or otherwise (App. Br. 12, middle).
We find convincing Appellant’s argument and find this contention
dispositive of the issues on appeal. More particularly, we cannot agree with
the Examiner that Brin’s disclosure of comparing two documents for
copyright violations by evaluating the ASCII characters within the
documents (FF#2) is the same as Appellant’s claimed “comparing” step
since comparing document characters is not similar to Appellant’s step of
“comparing” a “location identifier” and a “physical location.”
Nor can we agree with the Examiner that the Saxton reference’s
“unique directory identification number” reads on Appellant’s “physical
location identifier” of claim 1. Saxton, at most, discloses identifying a
“physical location” of an electronic file. However, no comparison is made
of a “physical location identifier to the actual physical location,” as claim 1
requires.
For the reasons stated above, we find that the Brin and Saxton
references fail to disclose Appellant’s “physical location identifier.” It
follows logically that none of the cited references, either alone or in
combination, discloses Appellant’s method step “comparing the claimed
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physical location identifier to the actual physical location,” as required by
claim 1. Accordingly, we reverse.
Since independent claims 22 and 24 contain the same “comparing”
step, we reverse the rejection of these claims for the same reasons as stated
above for claim 1.
Regarding claims 23, 30, and 36, it is Appellant’s contention that the
references fail to disclose the claimed “physical location identifier.” (App.
Br. 8, top). As stated above, the Examiner maintains that the “physical
location identifier” is similar to Saxton’s “unique directory identification
number.” (Ans. 5, bottom). However, for the above-stated reasons, we find
that the rejection of independent claims 23, 30, and 36 is deficient since
neither of the cited references discloses Appellant’s “physical location
identifier,” as claimed. Accordingly, we reverse.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has shown that the Examiner erred in rejecting claims 1 to 38.

DECISION
We reverse the Examiner’s rejection of claims 1 to 38.

REVERSED

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