Ex Parte van Ingen et al

Patent Trial and Appeal Board

Oct 23, 2012

11090586 (P.T.A.B. Oct. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CATHARINE VAN INGEN, DAN TEODOSIU, BRIAN T.
BERKOWITZ and NIKHIL R. JOSHI
____________

Appeal 2011-006338
Application 11/090,586
Technology Center 2100
____________

Before JEAN R. HOMERE, CAROLYN D. THOMAS, and GREGORY J.
GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006338
Application 11/090,586

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1, 2, 6, 21, 22, 25-27, 30, and 31 (App. Br. 2). Claims 3-5, 7-20, 23,
24, 28, and 29 were canceled (id.). We have jurisdiction under 35 U.S.C. §
6(b).
We affirm.
The Invention
Exemplary claim 1 follows:
1. A method for identifying one or more files that are
to be included in a protection copy, the method comprising:

receiving an identification of how a temporal version of
one or more files is to be created, the temporal version being
identified as one of a total copy and a backup copy, and
wherein, when identified as a backup copy, the backup copy is
further identified as one of a full backup copy, an incremental
backup copy, and a chunked incremental backup copy;

identifying a file, the file having a file extension and a
file location;

determining if the file extension of the identified file
indicates that the identified file can be recovered from sources
independent of a protection copy;

when the file extension of the identified file indicates that
the identified file can be recovered from sources independent of
a protection copy, excluding the identified file from the
protection copy;

when the file extension of the identified file does not
indicate that the identified file be recovered from sources
independent of a protection copy, determining if a heuristic rule
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Application 11/090,586

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indicates that the identified file can be recovered from sources
independent of a protection copy;

when the heuristic rule indicates that the identified file
can be recovered from sources independent of a protection
copy, excluding the identified file from the protection copy;

when the heuristic rule does not indicate that the
identified file can be recovered from sources independent of a
protection copy, including the identified file in the protection
copy;

determining a media size for storing the protection copy;

storing the protection copy on one or more tangible
computer-readable media;

storing a backup catalog of one or more tangible
computer readable media, the backup catalog comprising an
identification of the contents and location of one or more
protection copies.

Claims 1, 2, 21, 22, 25, 27, and 31 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bacastow (U.S. 2005/0228836 A1,
claiming priority to the Bacastow Provisional (U.S. 60/560,840 A1) in view
of McNeil (US 7,310,654 B2) (Ans. 4-9).
Claims 6 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bacastow in view of McNeil and Cane (U.S. 6,157,931)
(Ans. 9-11).
Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bacastow in view of McNeil and Whiting (U.S.
2002/0107877 A1) (Ans. 11-12).

Appeal 2011-006338
Application 11/090,586

4

ISSUES
Appellants’ responses to the Examiner’s positions present the
following issue:
Did the Examiner err in finding that the Bacastow Provisional teaches
or suggests “determining if the file extension of the identified file indicates
that the identified file can be recovered from sources independent of a
protection copy; [and] when the file extension of the identified file indicates
that the identified file can be recovered from sources independent of a
protection copy, excluding the identified file from the protection copy,” as
recited in independent claim 1 (emphasis added) and as similarly required by
independent claim 21?

ANALYSIS
We disagree with Appellants’ assertions regarding the Examiner’s
obviousness rejections of claims 1, 2, 6, 21, 22, 25-27, and 30-31. We adopt
as our own (1) the findings and reasons set forth by the Examiner in the
action from which this appeal is taken and (2) the reasons set forth by the
Examiner in the Answer (Ans. 3-19) in response to arguments made in
Appellants’ Appeal Brief. We concur with the conclusion reached by the
Examiner. We highlight and address certain findings and arguments below.
Appellants contend that the Examiner erred in rejecting claims 1, 21,
and 25 as obvious because the Bacastow Provisional fails to provide the
disclosure and enablement to teach or suggest the claim limitations
emphasized above (App. Br. 6-8). In support of this contention, Appellants
argue that “cautioning a user ‘against selecting or searching for backup swap
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files, system work files, temporary work files or internet files;’ see Bacastow
Provisional p. 10; fails to teach or suggest – as is explicitly recited n the
claim(s) – determining if a file extension indicates that the file can be
recovered from a source independent of a protection copy” (App. Br. 7
(emphasis omitted)). Appellants also argue that “the Bacastow Provisional
is completely silent and fails to provide any teaching as to excluding file
from a protection copy (other than a possible ‘caution’ to a user against the
user selecting particular files)” (id. at 8). More particularly, Appellants
argue that “even assuming, arguendo, that a .exe or .sys file might be
recoverable from an ‘operating system recovery CD,’ there is no teaching or
suggestion within the Bacastow Provisional that such information is actually
used to exclude such a file from a protection copy” (id. (emphasis omitted)).
The Examiner found, however, that the Bacastow Provisional teaches
the claim limitations in dispute because it discloses:
that a user is provided with [an] option of excluding or
including a file from the backup list. The system warns [the]
user against selection of specify [sic] type such [as] system files
or internet files. The user has the ability and option to
determine based on the file type (system work files or user’s
file with extension such as .com) if the particular file can be
recovered from other sources such [as an] Operating System
backup CD
(Ans. 15 (emphasis and citations omitted)). We agree with the Examiner.
The Bacastow Provisional teaches that files can be designated by the user to
be copied and stored by the operations of the invention (p. 10). The
Bacastow Provisional cautions the user “against selecting . . . for backup
swap files, system work files, temporary work files, or internet files” (p. 10).
Thus, with this caution and the ability to designate particular files for
backup, a user of Bacatow’s system would choose to exclude from a
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protection copy certain files for copying that are already available from other
sources such as operating system files having the .sys extension. In other
words, it would have been obvious, in light of the disclosure of the Bacastow
Provisional, to identify files that could be recovered from other sources by
their file extension and to exclude the identified files from a protection
system. Accordingly, we find no error in the Examiner’s obviousness
rejections of independent claims 1, 21, and 25 as well as the claims
dependent therefrom (i.e., claims 2, 6, 22, 26, 27, 30 and 31) because
Appellants did not set forth any separate patentability arguments for them
(see App. Br. 9).

DECISION
We affirm the Examiner’s decision rejecting claims 1, 2, 6, 21, 22, 25-
27, 30, and 31 as obvious.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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