10818760 (B.P.A.I. Apr. 11, 2011)

Ex Parte Wayman

Board of Patent Appeals and InterferencesApr 11, 2011

10818760 (B.P.A.I. Apr. 11, 2011)

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. 10/818,760 04/06/2004 Taylor B. Wayman END920030118US1(1397-5U) 5068 68786 7590 04/11/2011 CHRISTOPHER & WEISBERG, P.A. 200 EAST LAS OLAS BOULEVARD SUITE 2040 FORT LAUDERDALE, FL 33301 EXAMINER RUTTEN, JAMES D ART UNIT PAPER NUMBER 2197 MAIL DATE DELIVERY MODE 04/11/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte TAYLOR B. WAYMAN ____________________ Appeal 2009-0088421 Application 10/818,760 Technology Center 2100 ____________________ Before JEAN R. HOMERE, THU A. DANG, and JAMES R. HUGHES, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is International Business Machines, Corp. (Br. 1.) Appeal 2009-008842 Application 10/818,760 2 I. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1, 3-6, and 8-14. Claims 2 and 7 have been canceled. (Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellant’s Invention Appellant invented a technique for identifying changes to a set of files including updated files not particularly identified by a vendor. (Spec. 1, ll. 1- 3, spec. 3, ll. 1-5.) Illustrative Claim Independent claim 1 further illustrates the invention and a copy of the claim is appended to this decision. Prior Art Relied Upon Storisteanu US 2002/0143522 A1 Oct. 3, 2002 Witchel US 6,748,584 B1 Jun. 8, 2004 Wayman, Background section of Applicant’s Originally Filed Specification, Application Serial Number 101818,760, (April 06,2004), pp. 1-2 (“Background”). Rejections2 on Appeal The Examiner rejects the claims on appeal as follows: 2 The Examiner withdrew the rejection of claims 1, 3-5, 11 and 12 as being directed to non-statutory subject matter under 35 U.S.C. § 101. (Ans. 9.) Appeal 2009-008842 Application 10/818,760 3 1. Claims 1, 3-6, 8-11, and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of the background section of Appellant’s application (“Background”) and Storisteanu. 2. Claims 12 and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Background, Storisteanu, and Witchel. . Appellant’s Contentions Appellant contends that the combination of Background and Storisteanu does not teach or suggest program instructions that identify actual changes in a second lower-level file, wherein the changes were not identified by an external source, as recited in independent claim 1. (Br. 11- 12.) According to Appellant, while Storisteanu teaches identifying actual changes between two different sets of code, the reference does not particularly identify changes that were not identified by an external source (e.g. a vendor.) (Id. at 12.) Examiner’s Findings The Examiner finds that the combination of Background and Storisteanu’s disclosure teaches or suggests the disputed limitation. (Ans. at 10.) In particular, the Examiner finds Background explicitly teaches a vendor that identifies updated files from a set of files sent to a customer. The Examiner also finds that Background discloses that, in certain instances, the vendor may fail to identify some of the updated files thereby omitting them from the list of updated files sent to the customer. The Examiner then finds that Storisteanu complements Background’s disclosure by teaching Appeal 2009-008842 Application 10/818,760 4 finding changes in identified and unidentified files regardless of whether such identification or lack thereof was done by an external source. Therefore, the Examiner submits that by identifying all kinds of changes to the files, Storisteanu teaches identifying those not specifically identified by the vendor in Background. (Id.) II. ISSUE Has Appellant shown that the Examiner erred in finding that the combination of Background and Storisteanu teaches or suggests program instructions that identify actual changes in a second lower-level file, wherein the changes were not identified by an external source, as recited in independent claim 1? III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Background 1. The Background of Appellant’s invention indicates that it is customary for a vendor to send updates of a pre-existing set of files to a customer. In particular, upon the vendor supplying a list of files that were updated, the customer can then verify that the specified files were actually changed. (Spec. 1, ll. 17-24.) However, the vendor may at times inadvertently omit updates certain files from the list. (Id. at 2, ll. 13-15.) Appeal 2009-008842 Application 10/818,760 5 Storisteanu 2. Storisteanu discloses a method for comparing two C language documents, wherein the differences therebetween consist in code changes and comment changes. The method performs a line-by-line comparison of the documents to identify the effectuated changes between them. (P. 8, ¶ [0083].) IV. ANALYSIS Independent claim 1 requires, inter alia, program instructions that identify actual changes in a second lower-level file, wherein the changes were not identified by an external source. (Appendix.) As set forth in the Findings of Fact section, Background discloses that a vendor can identify a list of updated files within a set of files sent to a customer. Background also indicates that the vendor may at times fail to identify some of the updated files thereby omitting those files from the list of updated files sent to the customer (FF. 1). Further, Storisteanu discloses a line by line comparison of two documents to identify differences therebetween. (FF. 2.) We agree with the Examiner that, by comparing the two document files in their entirety, Storisteanu teaches identifying all kinds of changes including those specified and unspecified by an external source such as the vendor in Background. Therefore, we agree with the Examiner that Storisteanu’s line-by-line comparison of the two files complements Background since albeit the vendor may omit to identify a particular updated file or set of changes, Storisteanu’s comparison will identify such changes. Appeal 2009-008842 Application 10/818,760 6 We further note that since the Background-Storisteanu’s comparison encompasses the claimed unidentified changes, and Appellant’s claim does not preclude the identification of changes specified by the vendor, we find that the proffered combination does teach or suggest the disputed limitation. Since Appellants argue the rejection of claims 1, 3-6, and 8-14 as a single group, claims 3-6, and 8-14 fall together with claim 1 for the same reasons set forth above. See 37 C.F.R. § 41.37(c)(1)(vii). V. CONCLUSION OF LAW Appellants have not established that the Examiner erred in rejecting claims 1, 3-6, and 8-14 as set forth above. VI. DECISION We affirm the Examiner’s rejection that claims 1, 3-6, and 8-14. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Vsh Appeal 2009-008842 Application 10/818,760 7 Appendix Claim 1 1. A computer program product tangibly embodied in a computer readable medium for comparing a preexisting, hierarchical set of program container files to an updated, hierarchical set of program container files to identify one or more of said program container files or files within said program container files that have been deleted, added or changed in said updated program container file, said program product comprising: first program instructions to expand a first higher-level program container file within the preexisting set of program container files into first lower-level program container file(s) and other file(s), and expand a corresponding second higher- level program container file within the updated set of program container files into second lower-level program container file(s) and other file(s); second program instructions to identify one or more of said first lower-level program container file(s) and other file(s) that do not exist in said second lower-level program container file(s) and other file(s), and identify one or more of said second lower-level program container file(s) and other file(s) that do not appear in said first lower-level program container file(s) and other file(s); third program instructions to identify one or more of said second lower-level program container file(s) and other file(s) which have been changed relative to corresponding one or more of said first lower-level program container file(s) and other file(s); and fourth program instructions to automatically iterate said first and second program instructions for (a) each of said one or Appeal 2009-008842 Application 10/818,760 8 more second lower-level program container file(s) which have been changed and (b) each of said corresponding one or more of said first lower-level program container file(s), such that said first and second program instructions operate upon (i) each of said one or more second lower-level program container file(s) which have been changed as said first and second program instructions operated upon said second higher-level program container file and (ii) each of said corresponding one or more of said first lower-level program container file(s) as said first and second program instructions operated upon said first higher-level program container file; and fifth program instructions to receive identification from an external source of one or more of said second lower-level other files that have been changed in said updated set of program container files relative to said preexisting set of program container files, wherein said third program instructions identifies one or more of said second lower-level other files which have been changed that were not identified from said external source and identifies the actual changes in the second lower-level other files; and wherein said first, second, third, fourth and fifth program instructions are recorded on said medium.