Ex Parte Stakutis et al

Patent Trial and Appeal Board

Sep 26, 2017

11461685 (P.T.A.B. Sep. 26, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/461,685 08/01/2006 Christopher J. Stakutis SJ0920050116US1 4029
77212 7590 09/28/2017
Cantor Cnlhnrn T T P - TRM FnHiontt
EXAMINER
20 Church Street ROSTAMI, MOHAMMAD S
22nd Floor
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2154
NOTIFICATION DATE DELIVERY MODE
09/28/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER J. STAKUTIS and
KEVIN M. STEARNS
Appeal 2015-004000
Application 11/461,685
Technology Center 2100
Before JOSEPH L. DIXON, MONICA S. ULLAGADDI, and
MATTHEW J. McNEILL, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-004000
Application 11/461,685
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
36-49. Claims 1—35 have been canceled. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.
The claims are directed to an efficient non-database file-expiration
management for document retention. Claim 36, reproduced below, is
illustrative of the claimed subject matter:
36. A file expiration management system, comprising:
at least one computer including a processor, operating
system, memory;
expiration management software stored in the memory and
running on the processor under the operating system; and
at least one mass storage device capable of storing data
files from the computer, the mass storage device further
comprising a data structure controlled by the running expiration
management software, said data structure comprising:
a file retention directory for storing one or more files to be
protected from erasure for a retention period, wherein a retention
directory path of the file retention directory comprises the
retention period for the one or more files stored within the
retention directory path and wherein each of the one or more files
is associated with a unique file identifier; and
a file expiration directory for storing one or more
expiration files, wherein each of the one or more expiration files
corresponds to an expiration date and consists of a list of the
unique file identifiers for each of the one or more files stored
within the retention directory that expire on the expiration date,
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Application 11/461,685
wherein an expiration directory path of the file expiration
directory comprises a year, a month, and a day sequentially
named that correspond to the expiration date,
wherein the one or more files to be protected from erasure
are stored separately from the one or more expiration files and
wherein the expiration date for each of the one or more files is
calculated by adding the retention period to a saving date of the
one or more files in the file retention directory at the time that
the one or more file is stored in the file retention directory.
REFERENCES1
The prior art relied upon by the Examiner in rejecting the claims on
appeal is2:
Cutler etal., US 5,129,083 July 7, 1992 (hereinafter
“Cutler”)
McBrearty et al., US 2003/0182332 A1 Sept. 25, 2003
(hereinafter “McBrearty”)
Stakutis et al., US 2005/0076042 Al Apr. 7, 2005
(hereinafter “Stakutis ‘042”)
McGovern et al., US 2005/0097260 Al May 5, 2005
(hereinafter “McGovern”)
REJECTIONS3
The Examiner made the following rejections:
1 The Examiner may desire to consider JP 301-9044 A, which was submitted
on August 1, 2006, which discloses registering a file deletion information
into a file directory.
2 We refer to the 2nd Non Final Action, mailed Mar. 12, 2014 (“Non-Final
Act.”); the Appeal Brief, filed Aug. 7, 2014 (“Appeal Br.”); the Examiner’s
Answer, mailed Dec. 15, 2014 (“Ans.”); and the Reply Brief, filed Feb. 13,
2015 (“Reply Br.”).
3 We note that the prior claims, prior to submission of independent claims 36
and 45, were considered under 35 U.S.C. § 101 under the transformation test
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Appeal 2015-004000
Application 11/461,685
Claims 36, 38, 39, 40, 41, 42, 43, 45 and 47-49 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over McGovern in view of Stakutis
‘042.* * 4 (Non-Final Act., 6).
Claim 37 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over McGovern in view of McBrearty further in view of
Stakutis ‘042 and further in view of Cutler. (Non-Final Act., 23).
Claims 44 and 46 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over McGovern in view of McBrearty further in view of
Stakutis ‘042. (Non-Final Act., 24).
ANALYSIS
At the outset, we note that the Stakutis ‘042 reference identifies a
need in regulated industries, such as securities, for retaining and archiving
certain documents for a period of time. (Stakutis ‘042 14, Spec. 12).
Appellants’ Reply Brief generally sets forth the same basic arguments
advanced in the Appeal Brief. Appellants contend:
and a data structure without a media, but the Examiner may want to consider
the claims under the present patent eligible subject matter guidelines.
4 We note that the rejections of independent claims 36 and 45 do not include
the McBrearty reference, but McBrearty is included in the dependent claims.
While the Examiner does not discuss the McBrearty reference, we note that
McBrearty was previously relied upon in the rejection of canceled
independent claim 1. We further note that the Examiner may want to
consider the McBrearty reference as it includes both a retention directory
and metadata associated with the expiration of the file. We note that
independent claim 36 merely recites "one or more" file and McBrearty may
be considered to have a second directory for a single file because the
metadata must be stored and associated with the retained file. We leave it to
the Examiner to further consider the breadth of independent claims 36 and
45 in this manner.
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Appeal 2015-004000
Application 11/461,685
In general the claimed system is directed towards a file retention
system that utilizes a file retention tree structure to store files that
are to be retained, which are referred to as retention files. In the
claimed system, a user stores files that are to be retained in a file
retention tree structure that includes a directory structured by the
desired retention period, i.e., 3 years, 5 years, etc. The system
also includes a separate file expiration tree structure that includes
a directory that is structured by the file expiration dates, i.e.,
day/month/year of expiration. Each directory of the file
expiration tree structure includes an expiration file that is a list
of the retention files that are to be deleted on the expiration date
that corresponds to the directory path of the expiration folder.
The retention files and the expiration files are stored in separate
file structures.
(Reply Br., 2). Appellants further argue:
More specifically, Applicants respectfully submit that none of
the references teach or disclose the use of separate file structures
for retention files and expiration files, wherein the retention files
are the actual files to be retained and the expiration files are lists
of the retention files to be deleted on a specific date reflected by
the directory path of the expiation file. None of the cited
references teach that the expiration files are stored in a directory
path comprising a year, a month, and a day sequentially named
that correspond to the expiration date of the expiration file.
(Reply Br., 2). Additionally, Appellants contend “On page 5 of the
Examiner’s Answer, the Examiner asserts that, ‘nowhere in the claims [sic,
do] Appellants] mention[s] ‘files to be deleted on a specific date.’” (Reply
Br. 3). As a result, Appellants contend that the Examiner has a
misunderstanding of the claimed invention.
For the reasons discussed below, we agree with Appellants that the
Examiner’s responses to Appellants’ arguments over generalize the claimed
invention.
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Application 11/461,685
Moreover, Appellants contend “The claimed system thus uses the
directory path of the expiation files to determine the specific date on which
files expire, or the date upon which they can be deleted.” (Reply Br. 3)
(Emphasis added). While we agree with Appellants’ general distinction
about the two directories, we find the language of independent claims 36 and
45 does not recite the “use” of the directory information, but merely sets
forth limitations to the data structure in the system which may, in the future,
be used to delete the files; however, the claims are not limited to “deleting”
the files. (See generally App. Br. 5; Reply Br. 2, 3) (see also Ans. 5).
The Examiner maintains:
the combination of McGovern and Stakutis ‘042 clearly teaches,
separate file structures for retention files and expiration files
(Stakutis ‘042: See Fig. 2 elements 32 and 32 [sic, 30], which
both indicate a certain retention period; this means that the files
would be expired upon reaching the end of the retention period,
therefore the retention directory period would expire [sic, d],
hence the directory would be considered [to be an] expiration
directory.
(Ans. 3). We find the Examiner’s reliance upon the same directory as two
separate directories to be an unreasonable interpretation of the prior art and
the claimed invention. The Examiner further maintains:
Examiner specifies that each folder has an indication of [or for a]
retention period for a specific amount of time. Once the retention
period is over, it turns into [an] expired folder or directory. Each
folder is a separate entity; one can be interpreted as [an]
expiration folder (element 30), and the other can interpreted as
[an] expiration folder (element 32). However for the sake of
argument, retention folder[s] and expiration folder[s] are exactly
the same but named differently. Just because the name is
different it does not imply they have different functionalities.
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Application 11/461,685
Both, retention folder and expiration folder, have similar if not
exact functionalities [sic)].
(Ans. 3—4). We disagree with the Examiner and find that the language
of independent claims 36 and 45 does not merely set forth names, but
includes corresponding limitations on the content within the directories
which the Examiner has not shown is taught or suggested by the
combination of the McGovern and Stakutis ‘042 references.
We agree with Appellants that the Examiner’s findings and
interpretations of the claim language are not commensurate in scope with the
two separate directories (one with retention files and one with a list of files
and corresponding expiration information). The Examiner generally cites to
the McGovern reference quoting various paragraphs and finding “all the
prior arts used to reject this claim include retention period/date; one may
iinterpret[.s /6‘,ed] that the end of the retention period can be interpreted [as
the] expiration date, hence[,] as disclosed above, all the retention dates can
be an indication of [an] expiration date[s7c)].” (Ans. 4—5).
We disagree with the Examiner’s finding. Therefore, we cannot
sustain the Examiner’s rejection of independent claims 36 and 45 based
upon the combination of the McGovern and Stakutis ‘042 references and the
rejection of dependent claims 38-43 and 47—49 which includes the same
deficiency.
The Examiner does not identify how the additional references remedy
the deficiency in the base combination. Therefore, we cannot sustain the
rejection of dependent claims 37, 44, and 46.
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Application 11/461,685
CONCLUSION
The Examiner erred in rejecting claims 36-49 under § 103(a) based
upon obviousness.
DECISION
For the above reasons, we cannot sustain the Examiner’s rejections of
claims 36-49.
REVERSED
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