Ex Parte Talanis et al

Board of Patent Appeals and Interferences

Jan 26, 2010

10524782 (B.P.A.I. Jan. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte THOMAS TALANIS and FRANK VOLKMANN
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Appeal 2009-003715
Application 10/524,782
Technology Center 2100
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Decided: January 26, 2010
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Before LEE E. BARRETT, JAY P. LUCAS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 19-37. Claims 1-18 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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STATEMENT OF THE CASE
THE INVENTION
Appellants’ invention relates generally to an apparatus. More
particularly, the invention on appeal is directed to an automation device
having a file directory structure which is stored in a file. (Spec. 1, para.
[0002]).

Claim 19 is illustrative:

19. An apparatus configured to receive files and updates thereto
through a communication network, with the files assembled in a file
directory structure, the apparatus being responsive to control
operation of a device according to one or more of the files, the
apparatus including storage for storing the file directory structure, the
file directory structure including:
a first hierarchy level and a second hierarchy level designed as
a subordinate level of the first hierarchy level;
a first file directory situated on the first hierarchy level;
a second file directory situated on the second hierarchy level;
and
a first file situated on the first or the second hierarchy level or
on a subordinate hierarchy level, wherein
the file directory structure is held in a second file, wherein
each file directory and each file of the file directory structure is
listed consecutively in the second file, wherein each file directory and
each file of the file directory structure is identified by at least one
characteristic start symbol and/or at least one characteristic end

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symbol, and wherein the contents of each file directory and each file
in the file directory structure are stored in each case between the
respective characteristic symbols,

said file directory structure enabling the apparatus to operate as
a web server, thereby enabling remote access to control or change
operation of the device.

PRIOR ART
The Examiner relies upon the following references as evidence:
Lenz US 6,029,196 Feb. 22, 2000

Carpentier WO 01/18633 A1 Mar. 15, 2001

THE REJECTION
The Examiner rejected claims 19-37 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Carpentier and Lenz.

APPELLANTS’ CONTENTIONS
1. Appellants contend that the cited references fail to disclose a
“device’ as claimed. (App. Br. 6-7).
2. Appellants assert that Carpentier fails to disclose any specific
hierarchical relationships. (App. Br. 9, para. 1).
3. Appellants assert that Carpentier fails to teach or suggest
different hierarchical levels. (Id. at para. 2)
4. Appellants assert that the cited references fail to teach or
suggest the limitation of “each file directory and each file of the file
directory structure is identified by at least one characteristic start symbol
and/or at least one characteristic end symbol.” (Id. at para. 5).
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5. Appellants contend that the combination of Lenz and Carpentier
is improper because it would require a reconstruction of Carpentier and the
combination is a result of hindsight. (App. Br. 10-11).

ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:
1. Have Appellants shown the Examiner erred in determining that
the cited references teach or would have suggested an “apparatus being
responsive to control operation of a device,” as claimed?
2. Have Appellants shown the Examiner erred in determining that
the cited references teach or would have suggested the claimed specific
hierarchical relationships? (App. Br. 9, para. 1).
3. Have Appellants shown the Examiner erred in determining that
the cited references teach or would have suggested the limitation of “each
file directory and each file of the file directory structure is identified by at
least one characteristic start symbol and/or at least one characteristic end
symbol?”
4. Have Appellants shown the Examiner erred by improperly
combining the Lenz and Carpentier references under § 103?

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PRINCIPLES OF LAW
OBVIOUSNESS
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1,
17-18 (1966).
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
Invention or discovery is the requirement which constitutes the
foundation of the right to obtain a patent . . . unless more ingenuity
and skill were required in making or applying the said improvement
than are possessed by an ordinary mechanic acquainted with the
business, there is an absence of that degree of skill and ingenuity
which constitute the essential elements of every invention.

Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood,
52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited with approval
by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006). Therefore, we look to Appellants’ Briefs to show error in
the proffered prima facie case.

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FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF):

THE CARPENTIER REFERENCE
1. Carpentier discloses a directory structure. Carpentier teaches
that “[a] hierarchy of folders may be created, folder and directory attributes
may be assigned and individual file attributes may be identified for assigning
to particular files once these files are retrieved.” (Pg. 25, ll. 4-6 and Fig. 5).
2. Carpentier teaches a descriptor file. Any number of folders and
any hierarchy may be represented in the descriptor file. (Pg. 16, ll. 21-23
and Fig. 3).
3. Carpentier discloses a directory (folder name) “net” which is
denoted by at least an end symbol (). The files within “net” (i.e.,
FtpClient.class, etc.) each have at least a start symbol, e.g., ). The files within “net” (i.e.,
FtpClient.class etc.) each have at least a start symbol (