10941065 (B.P.A.I. Jan. 23, 2012)

Ex Parte Schmidt et al

Board of Patent Appeals and InterferencesJan 23, 2012

10941065 (B.P.A.I. Jan. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/941,065 09/13/2004 Ross A. Schmidt 10731.0074USC1 6515 23552 7590 01/24/2012 MERCHANT & GOULD PC P.O. BOX 2903 MINNEAPOLIS, MN 55402-0903 EXAMINER MOBIN, HASANUL ART UNIT PAPER NUMBER 2168 MAIL DATE DELIVERY MODE 01/24/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ROSS A. SCHMIDT, ROBERT M. CRAIG, CAMERON BLACK, SEAN M. BROCKWAY, and TODD PARTINGTON ____________ Appeal 2009-010938 Application 10/941,065 Technology Center 2100 ____________ Before LANCE LEONARD BARRY, DEBRA K. STEPHENS, and JAMES R. HUGHES, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Patent Examiner rejected claims 1-18. The Appellants appeal therefrom under 35 U.S.C. Â§ 134(a). We have jurisdiction under 35 U.S.C. Â§ 6(b). Appeal 2009-010938 Application 10/941,065 2 INVENTION The Appellants describe the invention at issue on appeal as "an efficient, automated data management system for logging, processing, and reporting a large volume of data capable of being in different types, using different versions, stored on different media, and/or run by different operating systems." (Spec. 10.) ILLUSTRATIVE CLAIM 1. A data management system, comprising: a first processor for restoring a plurality of received data files, the data files being capable of being different file types; a file organizing/categorizing processor, coupled to a first processor, for organizing the received data files into data slices, each data slice including an identification number and a descriptor selected from the group consisting of owner, creator, user, position, company, location, date, backup date, and data type; a file logging processor, coupled to the file organizing/categorizing processor, for logging the received data files into a first database based on the data slices; a data uploading processor, coupled to the file logging processor, for uploading the first database to a second database; a de-duplicate processor, coupled to the data uploading processor, for calculating a SHA value of the received data files to determine whether the received data files have duplicates and flagging duplicated data files in the second database; an image conversion processor, coupled to the de- duplicate processor, for converting at least a portion of the received data files into image files; and a second processor, coupled to the image conversion processor, for exporting the image files. Appeal 2009-010938 Application 10/941,065 3 REJECTIONS Claims 1-18 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over U.S. Patent No. 5,974,412 ("Hazelwood") and U.S. Patent No. 5,778,395 ("Whiting"). DISCUSSION The Appellants assert that "[t]he claim being appealed is: claim 1." (Appeal Br. 5.) However, they chose neither to cancel nor withdraw claims 2-18. Consequently, we will decide the appeal of claims 1-18 on the basis of claim 1. See 37 C.F.R. Â§ 41.37(c)(1)(vii). Therefore, the issue before us follows. ISSUE Did the Examiner err in finding that Hazelwood would have suggested a processor for organizing data, as required by representative claim 1? The question of obviousness is "based on underlying factual determinations including . . . what th[e] prior art teaches explicitly and inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citations omitted). "The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art." In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Here, the Examiner's finding that Hazelhurst discloses "a file organizing/categorizing processor [grinder 100, Fig 5], coupled to a first processor [See Figs. 4-5]," (Ans. 4), is uncontested. The Appellants instead Appeal 2009-010938 Application 10/941,065 4 argue that "Hazelhurst fails to suggest that the text descriptions disclosed by Hazelhurst include a descriptor selected from the group consisting of owner, creator, user, position, company, location, date, backup date, and data type, as recited by claim 1." (App. Br. 10.) "Nonfunctional descriptive material cannot render nonobvious an invention that would have otherwise been obvious." Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)), affâ€™d, Appeal No. 2006-1003 (Fed. Cir. 2006). "[W]hen descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability[.]" Curry, 84 USPQ2d at 1274 (citing In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)). Here, claim 1 recites in pertinent part the following non-functional language: "a descriptor selected from the group consisting of owner, creator, user, position, company, location, date, backup date, and data type." The descriptor, which is merely data, does not perform any function, nor is any function performed on the descriptor â€“ the claim does not recite doing anything to or with the descriptors. The Appellants admit that "[a]s defined at page 10, lines 11-17 of the application, the descriptor is used to label the data . . . ." (App. Br 10.) We agree with the Examiner's finding that because "[a]dding or deleting items [i.e., adding or deleting the names of labels from the list of labels constituting the descriptor] would not change the invention" (Ans. 12), "this list is not [the] novelty of the invention." (Id.) In other words, the descriptor is nonfunctional descriptive material that cannot render nonobvious a claim that would have otherwise been obvious. Appeal 2009-010938 Application 10/941,065 5 Therefore, we conclude that the Examiner did not err in finding Hazelwood would have suggested a data slice including a descriptor, as required by representative claim 1. DECISION We affirm the rejection of claim 1 and of claims 2-18, which fall therewith. No time for taking any action connected with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(1). See 37 C.F.R. Â§ 1.136(a)(1)(iv). AFFIRMED tkl