Ex Parte Serlet et al

Board of Patent Appeals and Interferences

Dec 16, 2009

10389743 (B.P.A.I. Dec. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SERLET BERTRAND and ALI OZER
____________

Appeal 2009-0049841
Application 10/389,743
Technology Center 2100
____________

Decided: December 17, 2009
____________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and JAMES R. HUGHES,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 2-62. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

1 Oral hearing was held on November 4, 2009.
We affirm-in-part and enter a new ground of rejection
A. INVENTION
The invention at issue on appeal is directed to operating systems for
computers, and more particularly to the localization of elements stored in a
computer file system to enable different users to view the elements in a
language of their choice. (Spec. 1.)

B. ILLUSTRATIVE CLAIM
Claim 56, which further illustrates the invention, follows.
56. A method for displaying localized names for
elements stored in a computer's file system, wherein some of
the elements have a plurality of attributes comprising the
following steps:
storing a plurality of attributes with at least one of the file
system elements, wherein a first attribute is associated with a
non-localized name and at least one other attribute is associated
with a localized name;
accessing each file system element when the file system
element is of a predetermined type;
upon access to each file system element, determining
whether the accessed element includes a second attribute of the
at least one other attribute that corresponds to a preferred
language;
retrieving and displaying the localized name for the
preferred language when the file system element includes the
second attribute; and
displaying the non-localized name of the first attribute
when the file system element does not include the second
attribute.

29. A computer file system storing elements wherein at least one of
the elements has a plurality of attributes, comprising:
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means for determining whether an element stored in the file
system includes a first attribute which indicates that the element is
localized;

means for retrieving and returning a localized name for a
preferred language as the name of said file system element if the file
system element includes the first attribute of the plurality of attributes,
which corresponds to the preferred language; and

means for returning a non-localized name, which corresponds
to a second attribute of the plurality of attributes, as the name of said
file system element if the file system element does not include the first
attribute.

37. A computer-readable medium containing a file system element
that includes a plurality of attributes which indicate that the name of
the element has a non-localized version and at least one localized
version associated with it.

C. REFERENCES
The Examiner relies on the following references as evidence:

Burnard US 5,613,122 Mar. 18, 1997
Orton US 5,717,877 Feb. 10, 1998
Vargas EP 1233600 A2 Feb. 15, 2002

D. REJECTIONS

Claims 2-62 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Burnard in view of Orton and in further view of Vargas.

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II. ISSUES
Have Appellants shown error in the Examiner's initial showing of
obviousness of each of the separately argued independent claims?

Have Appellants particularly pointed out and distinctly claimed their
invention with respect to independent claims 29-33 using "means plus
function" limitations?

III. PRINCIPLES OF LAW
35 U.S.C. § 103(a)
Section 103 forbids issuance of a patent when "the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains."

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art," id. at 415, and discussed circumstances in which a patent might be
determined to be obvious. Id. at 415-16 (citing Graham v. John Deere Co.,
383 U.S. 1, 13-14 (1966)) (citation omitted). The Court reaffirmed
principles based on its precedent that "[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." Id. at 416. The operative question
in this "functional approach" is thus "whether the improvement is more than
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the predictable use of prior art elements according to their established
functions." Id. at 415, 417.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 416).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was "uniquely
challenging or difficult for one of ordinary skill in the art" or "represented an
unobvious step over the prior art." Id. at 1162 (citing KSR, 550 U.S. at 417-
418).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
In KSR, the Supreme Court noted that "[c]ommon sense teaches . . .
that familiar items may have obvious uses beyond their primary purposes,
and in many cases a person of ordinary skill will be able to fit the teachings
of multiple patents together like pieces of a puzzle." KSR, 550 U.S. 398,
420. "A person of ordinary skill is also a person of ordinary creativity, not
an automaton." Id. at 421.
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
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1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)). Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).

Non-functional descriptive material
When 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. In re Ngai, 367 F.3d 1336, 1338-39 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983).
Non functional descriptive material is treated as analogous to printed
matter cases where what is printed on a substrate bears no functional
relationship to the substrate and is given no patentable weight. See In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) ("Where the printed matter is
not functionally related to the substrate, printed matter will not distinguish
the invention from the prior art in terms of patentability. Although the
printed matter must be considered, in that situation it may not be entitled to
patentable weight."). See also Ex parte Curry, 84 USPQ2d 1272 (BPAI
2005) (nonprecedential) (Federal Circuit Appeal No. 2006-1003, aff'd Rule
36 June 12, 2006). The Examiner need not give patentable weight to
descriptive material absent a new and unobvious functional relationship
between the descriptive material and the substrate. See In re Lowry, 32 F.3d
1579, 1582-83 (Fed. Cir. 1994); Ngai, 367 F.3d at 1338. See also Ex parte
Nehls, 2008 WL 258370 (BPAI Jan. 28, 2008); Ex parte Mathias, 84
USPQ2d 1276 (BPAI 205) (nonprecedential)(191 Fed. Appx. 959 (Fed. Cir.
2006)).
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35 U.S.C. § 112, sixth paragraph
When a claim uses "means for" language, there is a presumption that
the claim invokes 35 U.S.C. § 112, sixth paragraph. See Biomedino L.L.C.
v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007). Such means-
plus-function limitations cover corresponding structure described in the
specification and its equivalents. In re Donaldson Co., 16 F.3d 1189, 1195
(Fed. Cir. 1994) (en banc).
The test for definiteness under 35 U.S.C. § 112, second paragraph is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). In
the context of a means-plus-function limitation, if one skilled in the art
would be able to identify the structure, material, or acts for performing the
claimed function, then the requirements of 35 U.S.C. § 112, second
paragraph are satisfied. See Atmel Corp. v. Info. Storage Devices, Inc., 198
F.3d 1374, 1381 (Fed. Cir. 1999); see also In re Dossel, 115 F.3d 942, 946-
47 (Fed. Cir. 1997). If there is insufficient disclosure of the structure,
material, or acts for performing the claimed function, however, a rejection
under 35 U.S.C. § 112, second paragraph is appropriate. See Donaldson, 16
F.3d at 1195; Biomedino, 490 F.3d at 952.
When the means-plus-function limitation in a claim is performed by a
processor, one must set forth in the specification sufficient description of an
algorithm associated with the function recited in the claim in order to
particularly point out and distinctly claim the invention as required by the
second paragraph of section 112.
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It is certainly true that the sufficiency of the disclosure of
algorithmic structure must be judged in light of what one of
ordinary skill in the art would understand the disclosure to
impart. See, e.g., Intel Corp. v. VIA Techs., 319 F.3d 1357,
1367 (Fed. Cir. 2003) (knowledge of a person of ordinary skill
in the art can be used to make clear how to implement a
disclosed algorithm); Atmel Corp., 198 F.3d at 1379 ("[T]he
'one skilled in the art' analysis should apply in determining
whether sufficient structure has been disclosed to support a
means-plus-function limitation."). That principle, however, has
no application here, because in this case there was no algorithm
at all disclosed in the specification. The question thus is not
whether the algorithm that was disclosed was described with
sufficient specificity, but whether an algorithm was disclosed at
all.

Aristocrat Techs. Australia Party. Ltd. vs. Int'l Game Tech., 521 F.3d 1328,
1337 (Fed. Cir. 2008).

When there is insufficient description of an algorithm in the
specification to support a computer enabled means-plus-function limitation
in a claim, the disclosure will be considered inadequate to explain to one of
ordinary skill in the art what is meant by the claim language.
For computer-implemented means-plus-function claims where
the disclosed structure is a computer programmed to implement
an algorithm, "the disclosed structure is not the general purpose
computer, but rather the special purpose computer programmed
to perform the disclosed algorithm." WMS Gaming, Inc. v. Int'l
Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). Thus the
patent must disclose, at least to the satisfaction of one of
ordinary skill in the art, enough of an algorithm to provide the
necessary structure under § 112, ¶ 6. This court permits a
patentee to express that algorithm in any understandable terms
including as a mathematical formula, in prose, see In re
Freeman, 573 F.2d 1237, 1245-46 (CCPA 1978), or as a flow
chart, or in any other manner that provides sufficient structure.

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The district court correctly determined that the structure recited
in the ′505 specification does not even meet the minimal
disclosure necessary to make the claims definite. Simply
reciting "software" without providing some detail about the
means to accomplish the function is not enough. See Aristocrat
Techs. Austl. Pty v. Int'l Game Tech., 521 F.3d 1328, ---- (Fed.
Cir. 2008) ("For a patentee to claim a means for performing a
particular function and then to disclose only a general purpose
computer as the structure designed to perform that function
amounts to pure functional claiming. Because general purpose
computers can be programmed to perform very different tasks
in very different ways, simply disclosing a computer as the
structure designated to perform a particular function does not
limit the scope of the claim to 'the corresponding structure,
material, or acts' that perform the function, as required by
section 112 paragraph 6."). This court does not impose a lofty
standard in its indefiniteness cases. See, e.g., Med.
Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d
1205, 1214 (Fed. Cir. 2003). But in this case, the claims are
already quite vague. Without any corresponding structure, one
of skill simply cannot perceive the bounds of the invention.

Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340-41 (Fed. Cir.
2008).

When a specification discloses no algorithm corresponding to a
computer enabled means-plus-function limitation in a claim, an applicant
has necessarily failed to particularly point out and distinctly claim the
invention as required by the second paragraph of Section 112. See
Aristocrat, 521 F.3d at 1333 ("[T]he corresponding structure for a § 112 ¶ 6
claim for a computer-implemented function is the algorithm disclosed in the
specification.") (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249
(Fed. Cir. 2005)); Net MoneyIN, Inc. v. Verisign, Inc. 545 F.3d 1359, 1367
(Fed. Cir. 2008) ("[A] means-plus-function claim element for which the only
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disclosed structure is a general purpose computer is invalid if the
specification fails to disclose an algorithm for performing the claimed
function.") (citation omitted).
That ordinarily skilled artisans could carry out the recited
function in a variety of ways is precisely why claims written in
"means-plus-function" form must disclose the particular
structure that is used to perform the recited function. By failing
to describe the means by which the access control manager will
create an access control list, Blackboard has attempted to
capture any possible means for achieving that end. Section
112, paragraph 6, is intended to prevent such pure functional
claiming. Aristocrat, 521 F.3d at 1333.
Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1385 (Fed. Cir.
2009).

IV. ANALYSIS
From our review of Appellants' arguments, we find Appellants'
arguments to broadly and generically address what Appellants believe is
their disclosed invention in what they would desire their claimed invention
to correspond to. For example, Appellants state:
[e]xemplary embodiments are directed to an ability to support
localization of file system elements, and more particularly, the
localization of names of files and folders in the computer's file
system that are presented to the user when these elements are
displayed, for instance, within a browser or as a search result.
This ability obviates the need to store a file system element for
each language to be supported.
(App. Br. 12).

Appellants later admit that "[t]he cited references are generally related
to the localization of an application program and are not particularly related
to the localization of the names of elements stored in a computer's file
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system . . . . However they do not localize the names of files and folders in
the file system layer of the computer's operating system." (Id.). We find
Appellants' proffered distinction does not support the express language of
the majority of separately argued independent claims.
Furthermore, we note a number of Appellants' independent claims
(claim 37, 48, and 50 (as correlated in the supplemental Appeal Brief, filed
March 18, 2008)) are directed to a "file system element" or nonfunctional
descriptive material recorded on a memory medium without any structure or
acts with which to use the nonfunctional descriptive material. We will pro
forma affirm the obviousness rejection of these claims.
We further find that independent claim 29 is drafted in "means plus
function" format and Appellants provide the same correspondence to the
disclosed structure, acts, or materials for each of the separate and distinct
means limitation in the Summary of the Claimed Invention section of the
Brief. We will address the indefiniteness of this claim and its dependent
claims in a rejection under 35 U.S.C. § 112, second paragraph rejection.
We will address Appellants' arguments in the order they are presented
in Appellants' Appeal Brief. At page 12 of the Appeal Brief, Appellants
introduce their generalized arguments. First, Appellants argue that in certain
exemplary embodiments of Appellants' invention is directed to an ability to
support localization of the file system elements and the localization of names
of files and folders in the computer's file system that are presented to the
user, when the elements are displayed within a browser or as a search result.
Appellants contend that this ability obviates the need to store a file system
element for each language that is supported by the system. Appellants
further contend that these features of the file system element include a first
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attribute associated with a non-localized name and a second attribute
associated with a localized name, thereby the claimed invention will have
both non-localized and localized names being stored.
Appellants' main contention against the three relied upon references
applied by the Examiner is that the references are directed to an application
program level and are not particularly related to the localization of names of
elements stored in a computer's file system and at a file system layer.
Appellants contend that these three references disclose techniques which
will localize features programmed within an application program i.e., user
interface objects, such as menus. However, they do not localize the names
of files and folders in a file system layer of a computer's operating system.
(App. Br. 12). We find Appellants' generalized arguments to be unsupported
and to lack persuasive distinction with respect to unclaimed subject matter.
Furthermore, at the time of the invention, we find the generalized statements
and usage of terms, such as, "file system," "file element," "attribute," and
"system" to be rather generic and nonspecific. Furthermore, Appellants
have not identified any specific definition of these terms as would be
understood by those skilled in the art or identified any specific definition in
their Specification, as originally filed, with which to properly interpret these
claim terms. Therefore, we give these claim terms their ordinary and
customary meaning to those skilled in the art.
In the oral hearing, Appellants' representative identified two separate
locations in the Specification where "file element" may be defined.
Appellants' representative identified page 2, lines 8 through 12 and page 5
lines 25 of the Specification. (Transcript of Oral Hearing at 5-6, Ex Parte
Bertrand Serlet & Ali Ozer, No. 2009-004984 (argued Nov. 4, 2009)). From
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our review of those two locations, we find no express definition of "file
element" or any express linkage to an operating system level file system
layer. Therefore, if the claim does not expressly recite sufficient detail with
which to place the claimed invention within the context of the operating
system file system, we find the Examiner's reliance upon a file system
application to be reasonable teachings to be applicable to the claimed
invention.
For example, at the oral hearing, Appellants' representative was
queried whether the claimed invention would read on two different MS
WORD document files with localized and non-localized names and if that
would be reasonable. (Transcript of Oral Hearing at 6-7, No. 2009-004984).
Furthermore, we noted the teachings of Burnard at column 9, lines 36
through 49:
There are many kinds of application frameworks available,
depending on the level of the system involved and the kind of
problem to be solved. The types of frameworks range from
high-level application frameworks that assist in developing a
user interface, to lower-level frameworks that provide basic
system software services such as communications, printing, file
systems support, graphics, etc. Commercial examples of
application frameworks include MacApp (Apple), Bedrock
(Symantec), OWL (Borland), NeXT Step App Kit (NeXT), and
Smalltalk-80 MVC (ParcPlace). These application frameworks
include a set of standard objects which create windows, scroll
bars, menus, etc., each with its own pre-defined behavior.

Here, Burnard discloses "file system support" and to application to "lower-
level frameworks" which we find suggestive of operating system level
systems/layers. We additionally note that it was well known in the art that
the MS Windows "operating system" may be deemed to be an application
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program running on a DOS based operating system which we find to further
complicate Appellants' mere reliance upon the terms "file system" and
"operating system" since the terms do not have same meaning across all
platforms.
Here, we find the express language of the claims to dictate our review
of the application of the prior art, and we limit our review solely to the
express language of the claims.
Next, Appellants argue generally that the feature of localizing the
names of files and folders in the file system layer is "inherent to the scope of
Applicants' claims through references to 'a computer's file system' and 'data
elements except accessible by application programs executing in a
computer's operating system' where applicable." (App. Br. 13). Again,
Appellants bootstrap their arguments attempting to rely upon language and
elements which are not expressly supported by the language of the
independent claims in dispute. For example, independent claim 57 does not
recite any "file system elements" and merely recites generic "data elements."
We now address Appellants specific arguments.
With respect to independent claim 15, Appellants argue that the claim
recites "a file system for a computer wherein at least one of the file system
elements has a non-localized name and at least one localized name." (App.
Br. 13). Appellants further contend that the teachings of Burnard, Orton,
and Vargas are directed to the localization of application programs, and that
one of ordinary skill would find no reason to combine these references to
achieve the claimed result. (App. Br. 13-14). Appellants' arguments are
based upon the premise that the applied references are not related to the
localization of names of "file system elements" and that the file system
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element is not taught or suggested to have the claimed first and second
attributes. We find that Appellants' arguments are mere re-statements of the
claimed limitations without providing any persuasive arguments or
distinctions with respect to the claim limitations.
At the oral hearing, a lengthy discussion of figure 3A of Burnard was
discussed. (Transcript of Oral Hearing at 12-22, No. 2009-004984). The
Examiner relied upon this statement of Burnard in the rejection. Burnard in
figure 3A contains a single tree disclosing specialized locales for language,
dialect, country, and region. Burnard discloses in column 12, lines 41-44,
that a locale hierarchy is arranged so that objects in each locale level down
the hierarchy from the root locale 300 which need to be changed for that
locale "override" the corresponding objects in the higher level. Therefore,
there are file elements (objects) in the tree which have both localized and
non-localized names associated with the object.
As discussed above, we find no language in independent claim 15 and
Appellants have identified no express definition of "file system element"
with which to distinguish the applied prior art at the application level/layer
from the claimed invention at the operating system file system level/layer as
Appellants contend. Therefore, we find that Appellants have not shown
error in the Examiner's combination of teachings or in the Examiner's initial
showing of obviousness of independent claim 15, and we will group
dependent claims 16-26, which have not been separately argued, with
independent claim 15.
With respect to independent claim 27, Appellants argue that the claim
recites "a computer system that comprises, in part, a storage device in which
file system elements having an associated element type are stored, wherein
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at least one of the file system elements has a non-localized name and at least
one localized name." (App. Br. 14). We agree with the Examiner that
Burnard teaches and fairly suggests the claimed "at having an associated
element type are stored, wherein least one of the file system elements has a
non-localized name and at least one localized name" as evidenced by
OBJECT 4 in figure 3A. (Ans. 17-18). Therefore, Appellants have not
shown error in the Examiner's initial showing of obviousness of independent
claim 27, and we will sustain the rejection of dependent claim 28 which has
not been separately argued.
With respect to independent claim 29 and dependent claims 30-33, we
pro forma reverse the Examiner's rejection due to a finding of indefiniteness
of the claims under 35 U.S.C. § 112, second paragraph, which we will
address infra.
With respect to independent claim 34, Appellants argue the claim
recites a computer readable medium containing a program which executes
said least the steps of "receiving requests for access to file system elements
wherein at least one of the elements has a plurality of attributes, and
determining whether a requested element includes a first attribute of the
plurality of attributes which indicates that the element is localized." (App.
Br. 15). Appellants argue that the three references applied disclose related
concepts in which multiple versions of the file elements are stored in
memory and either a localized or a non-localized name is stored but not
both. Id. The Examiner in the Answer at pages 18-19 identifies that the
claim is entitled to the broadest reasonable interpretation and that only one
name is returned. We agree with the Examiner that the claim is entitled to
the broadest reasonable interpretation and find that figure 3A of Burnard and
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the associated determination of whether to override or not to override in the
hierarchy teaches and fairly suggests the determining, retrieving, and
returning the appropriate localized or non-localized name for the "at least
one of the elements." Therefore, Appellants have not shown error in the
Examiner's initial showing of obviousness of independent claim 34.
With respect to independent claim 35, Appellant argues the claim sets
forth a computer readable medium containing a program that "is responsive
to a request for access to an element stored in a file system to determine
whether the requested element has a localized name associated with a
preferred language, where in the element has an associated non-localized
name and at least one localized name." (App. Br. 16). Appellants argue that
the applied references neither disclose nor does there appear to be a reason
to determine whether the requested element has a localized name associated
with a preferred language. As discussed above, we find Burnard’s figure 3A
discloses a hierarchy as well as overriding, which we find teaches and
suggests the claimed determination. Therefore, we find Appellants'
argument unpersuasive of error in the Examiner's initial showing of
obviousness, and we will sustain the rejection of independent claim 35 and
dependent claim 36 which has not been separately argued.
With respect to independent claim 37, Appellants argue that the claim
recites a computer readable medium containing a file system element that
includes a plurality of attributes which indicate that the name of the element
has a non-localized version and at least one localized version associated with
it. We find Appellants' claim to be directed to nonfunctional descriptive
material stored on a computer to be readable medium. We find the teachings
of Burnard in figure 3A, as discussed above, to teach and fairly suggest the
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argued limitation. Therefore, we find Appellants' argument unpersuasive of
error in the Examiner's initial showing of obviousness of independent claim
37 and dependent claims 38-47 which have not been argued separately.
With respect to independent claim 48, Appellants again reiterate the
language of the claim and argue that the combination does not teach or fairly
suggests the claimed invention of the "file system element whose contents
include a plurality of key-value pairs." (App. Br. 17). We find Appellants'
claim 48 to be directed to nonfunctional descriptive material stored on a
computer readable medium where there is no recited structure or acts to use
the recited stored information. The stored information has no recited
functional utility. The Examiner at page 14 of the Answer relies upon the
teachings of art to suggest and teach a plurality of key-value-pairs where
each key is a non-localized name for a file system element and its associated
value is a localized name for a particular language. Appellants do not
address the specific teaching of Orton. Therefore, Appellants have not
shown error in the Examiner's initial showing of obviousness, and we will
sustain the rejection of independent claim 48 and dependent claim 49 which
has not been separately argued.
With respect to independent claim 50, Appellants argue that the claim
recites a computer readable medium containing a file system element that
comprises, among other features, and indicated that identifies the file system
element as having a non-localized name and at least one other indicator that
identifies the file system element as having a localized name. (App. Br. 17-
18). We find Appellants' claim 50 to be directed to nonfunctional
descriptive material stored on a computer readable medium where there is no
recited structure or acts to use the recited stored information. The stored
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information has no recited functional utility. The Examiner identifies the
rejection as similar to the one applied to the independent claim 56, but
Appellant does not address the merits of the Examiner's stated grounds of
rejection. Therefore, Appellants have not shown error in the Examiner's
initial showing of obviousness of independent claim 50 and dependent
claims 51-55, which have not been separately argued.
With respect to independent claim 56, Appellants argue that claim 56
recites a method for displaying localized maintenance for elements stored in
the computer's file system, wherein some of the elements have a plurality of
attributes. The method comprises, among other features, storing a plurality
of attributes with at least one of the file elements, where in a first attribute is
associated with a non-localized name and at least one of the other attribute is
associated with a localized name. As discussed above, we find figure 3A of
Burnard to teach and fairly suggest both localized and non-localized names.
Therefore, we find Appellants' argument to be unpersuasive of error in the
Examiner's initial showing of obviousness of independent claims 56 and
dependent claims 2-14 which have not been separately argued.
With respect to independent claim 57, Appellants discussed applied
references that these references do not relate to the "localization of file
system elements" and then paraphrased the claim language which does not
expressly pertain to a "file system" wherein the claim merely recites "data
elements." (App. Br. 19). Appellants argue that claim 57 recites "a method
for localizing data elements that comprises, among other features,
associating a plurality of attributes with the at least one data element, where
in a first attribute is associated with a localized name and a second attribute
is associated with a non-localized name." As discussed above, we find
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Appellants' argument as to this more generic claim to be less persuasive of
error than with respect to the above discussed claims. Therefore, we will
sustain the rejection of independent claim 57 and dependent claims 58-62
which have not been separately argued.

New Ground of Rejection -- 35 U.S.C. § 112, Second Paragraph

We reject claims 29-33 under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Claim 29 is the sole independent claim. The claim recites three
elements, each set forth with the phrase "means for" linked with functional
language (determining, retrieving and returning, or return). Each of the
"means for" phrases is not modified by sufficient structure to perform the
recited function. The claim thus invokes 35 U.S.C. § 112, sixth paragraph.
For each of these claim elements, Appellants contend that the
corresponding structure resides in the Specification at pages 10, 12, and 13.
(See App. Br. 6-7). However, we do not find structure including algorithms
for any of the various "means."
The only apparent hardware devices mentioned are a CPU and APIs
in library 48 of the Specification. The Specification text at these locations
does not describe processors and algorithms for achieving results, and at best
describes mere aspirations or results that "might" or "can" occur. Even if
corresponding structure were not required, it would be difficult or
impossible to match each of the functions recited in the claims with
corresponding text in the Specification. In any event, Appellants have not
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done so. Certainly, Appellants have not pointed out corresponding structure
for each of or any of the "means" of claim 29.
The instant claim 29 appears to represent an attempt to capture any
possible means for achieving the ends recited. Section 112, sixth paragraph,
is intended to prevent such pure functional claiming. Because one skilled in
the art would be unable to identify the structure, material, or acts for
performing the claimed functions, the requirements of 35 U.S.C. § 112,
second paragraph are not satisfied.

V. CONCLUSION
For the aforementioned reasons, Appellants have not shown error in
the Examiner's initial showing of obviousness. Additionally, we have
entered a new ground of rejection of independent claim 29 and dependent
claims 30-33 under 35 U.S.C. § 112, second paragraph.

VI. ORDER
We affirm the obviousness rejections of claims 2-28 and 34-62.
We reverse, pro forma, the 35 U.S.C. § 103(a) rejection of claims 29-
33.
In a new ground of rejection, we reject claims 29-33 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2009). 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."
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37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground 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 proceeding 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. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED-IN-PART-- 37 C.F.R. § 41.50(b)

erc

BUCHANAN INGERSOLL & ROONEY, PC
P.O. BOX 1404
ALEXANDRIA, VA 22313-1404