Ex Parte Thompson

Patent Trial and Appeal Board

Oct 25, 2017

13613318 (P.T.A.B. Oct. 25, 2017)

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.
13/613,318 09/13/2012 ROBERT W. THOMPSON AUS920090075US2 8648
75916 7590
IBM AUS IPLAW (GLF)
c/o Garg Law Firm, PLLC
4521 Copper Mountain Lane
Richardson, TX 75082
EXAMINER
NGUYEN, MERILYN P
ART UNIT PAPER NUMBER
2153
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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):
dpandy a @ garglaw. com
uspto@garglaw.com
garglaw @gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT W. THOMPSON
Appeal 2017-000267
Application 13/613,318
Technology Center 2100
Before ROBERT E. NAPPI, JAMES W. DEJMEK, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—12 and 14—20, which are all of the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is International Business
Machines Corporation of Armonk, New York. App. Br. 2.
Appeal 2017-000267
Application 13/613,318
INVENTION
Appellant’s invention relates to tracking file contents. Abstract.
Claim 1 reads as follows, with the disputed limitations shown in italics:
1. A computer implemented method for tracking file content in a
computer memory, the computer implemented method
comprising:
creating a content inode corresponding to a content, the
content being a part of a file, the file being stored in a computer
memory, and the file being locatable using a file system
executing under an operating system in a data processing system,
wherein the content inode corresponding to the content is distinct
from a inode corresponding to the file in a file-system;
detecting one of (i) an operation, (ii) a component, and (iii)
an application, operating with respect to the content;
determining a descriptor and a location corresponding to
the one of the operation, the component, and the application;
adding the descriptor to the content inode; and
adding a location identifier corresponding to the location
to the content inode, the content inode with the added descriptor
and location identifier enabling a second application to learn
about the one of the operation, the component, and the
application having operated with respect to the content.
REJECTIONS
Claims 1—12 and 14—20 stand rejected under the judicially created
doctrine of obviousness-type double patenting as unpatentable over claims
1-17 of U.S. Patent No. 8,392,386. Final Act. 2-3.
Claims 1—12 and 14—20 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Pasupathy et al. (US 7,962,528 Bl; issued June 14, 2011)
(“Pasupathy”). Final Act. 3—8.
2
Appeal 2017-000267
Application 13/613,318
ANALYSIS
Double Patenting Rejection of Claims 1—12 and 14—20
Appellant requests that the provisional double patenting rejection be
held in abeyance until allowable claims are indicated “in order to allow
determination if the allowed claims would potentially extend the patent
rights of the claims of the parent application.” App. Br. 9. Because
Appellant has not appealed the double patenting rejection, the rejection is
summarily affirmed. See 37 C.F.R. § 41.37(c)(l)(iv); Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) (the Board may treat arguments appellant
failed to make for a given ground of rejection as waived); MPEP § 1205.02
(“If a ground of rejection stated by the examiner is not addressed in the
appellant’s brief, that ground of rejection will be summarily sustained by the
Board.”).
Anticipation Rejection of Claims 1—12 and 14—20
Appellant contends the Examiner erred in rejecting claim 1 as
anticipated by Pasupathy because Pasupathy does not disclose the limitations
“determining a descriptor” and “adding the descriptor,” recited in claim 1.
App. Br. 11.
For the disputed limitations, the Examiner relies on Pasupathy’s
disclosure that each inode includes a metadata section, in which information
such as a time stamp of a modification can be stored. Ans. 4—5 (citing
Pasupathy, Fig. 4, col. 12:1—10, col. 13:50—col. 14:15). The Examiner does
not adequately explain, and we do not see, how the cited portions of
Pasupathy’s disclose the claimed “determining” and “adding” for the
anticipation rejection.
3
Appeal 2017-000267
Application 13/613,318
We agree with Appellant that the Examiner fails to show the cited
portion of Pasupathy discloses “determining a descriptor” and “adding the
descriptor to the content inode,” as claim 1 requires.
On the record before us, because the Examiner fails to provide
sufficient support for the anticipation rejection, we reverse the Examiner’s
rejection of independent claim 1, as well as the Examiner’s rejection of
independent claims 11 and 19, and dependent claims 2—10, 12, 14—18, and
20 for similar reasons.
DECISION
The decision of the Examiner to reject claims 1—12 and 14—20 under
the doctrine of obviousness-type double patenting is affirmed.
The decision of the Examiner to reject claims 1—12 and 14—20 under
35 U.S.C. § 102(e) is reversed.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 1—12 and 14—
20 is affirmed. See 37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. §41.50(f).
AFFIRMED
4