Ex Parte Carlson et al - Page 11


               Appeal 2007-2131                                                                             
               Application 10/401,331                                                                       
                      When files to be compressed are picked up, they are subject to                        
                      data compression processing (Step 250).  The file compression                         
                      method selection portion 104 here selects the method with                             
                      suitable compression ratio and compression/decompression                              
                      speed depending on the file access frequency and data attribute                       
                      [emphasis added].                                                                     

               (Ishii, col. 7, ll. 15-20).                                                                  

                      The file search portion 102 is provided with an additional                            
                      function to search for files with high access frequency from the                      
                      files compressed already.  According to this embodiment, when                         
                      the file status monitor portion 101 judges that the threshold                         
                      value is the initial value and that the available file capacity is                    
                      over the threshold, the file search portion 102 searches the                          
                      already compressed files for files with high access frequency so                      
                      that the file decompression portion 106 decompresses such files                       
                      [emphasis added].                                                                     
               (Ishii, col. 8, ll. 32-41).                                                                  

                      Lastly, we note that in the description of the prior art, Appellants                  
               expressly acknowledge that “[a]rchived files are normally compressed to                      
               maximize storage media.”  (Specification 2: 4-5).  We note that the Supreme                  
               Court has explicitly recognized that “[b]oth the novelty and the                             
               nonobviousness requirements of federal patent law are grounded in the                        
               notion that concepts within the public grasp, or those so obvious that they                  
               readily could be, are the tools of creation available to all.  They provide the              
               baseline of free competition upon which the patent system's incentive to                     
               creative effort depends.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489               
               U.S. 141, 156, 9 USPQ2d 1847, 1854 (1989) [emphasis added].  We find                         
               this reasoning applicable here, given that we find archiving as claimed by                   


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