Ex Parte Ali et al

Board of Patent Appeals and Interferences

Mar 5, 2008

09997927 (B.P.A.I. Mar. 5, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SYED M. ALI, PETER A. YARED,
BRUCE K. DANIELS, ROBERT N. GOLDBERG, and
YURY KAMEN
____________________

Appeal 2007-2997
Application 09/997,9271
Technology Center 2100
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Decided: March 5, 2008
____________________

Before JOSEPH L. DIXON, JAY P. LUCAS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed 11/30/01. The real party in interest is Sun Microsystems,
Inc.

Appeal 2007-2997
Application 09/997,927

STATEMENT OF CASE
Appellants appeal from a final rejection of claims 2 to 8, 10 to 24, 31,
and 32 under authority of 35 U.S.C. § 134. The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
Appellants’ invention relates to a method in a client-server system for
communicating calls from programming segments within a client to remote
objects in the server in a more efficient manner. In the words of the
Appellants:
In general, in one aspect, the invention relates to a
method for transparently injecting a proxy into a distributed
application having a server portion and a client portion
which comprises analyzing the server portion to find each
remote object in the server portion. The method further
includes creating the proxy for each remote object in the
server portion and including the proxy in a runtime library. The
method further includes analyzing the client portion to
determine calls made to remote objects in the server portion and
replacing calls for remote objects with calls for a corresponding
proxy. The method further includes interposing the runtime
library between the client portion and the server portion.

(Specification 4).

Claim 8 is exemplary:

8. A method for transparently injecting proxies into a distributed
application having a server portion and a client portion, comprising:

creating a proxy for each of a plurality of remote objects in the server
portion, each proxy implementing an interface of a
corresponding remote object and having a capability to cache
data from the corresponding remote object;

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Application 09/997,927

modifying the client portion to substitute a call for a remote object
with a call for a corresponding proxy; and

interposing a runtime that includes the proxy for each of the plurality
of remote objects between the client portion and the server
portion,

wherein creating the proxy for each of the plurality of remote objects
in the server portion comprises analyzing the server portion to
determine each of the plurality the remote objects in the server
portion.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Glass US 6,629,128 B1 Sep. 30, 2003
Rejection:
Claims 2 to 8, 10 to 24, 31 and 32 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Glass.
Groups of Claims:
Group I: Claims 2 to 8, 11 to 14, 16 to 24 and 32, with claim 8
representative;
Group II: Claim 31
Group III: Claim 10
Group IV: Claim 15
Appellants contend that the claimed subject matter is not anticipated
by Glass for failure of Glass to teach the claimed limitations. The Examiner
contends that each of the four groups of claims is properly rejected.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
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Application 09/997,927

Only those arguments actually made by Appellants have been considered in
this opinion. Arguments which Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2004).2
We affirm the rejection.
ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 102(e). The issue turns on whether
each limitation in the claims is to be found in the Glass reference.

PRINCIPLES OF LAW
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).
Both anticipation under 35 U.S.C. § 102 and obviousness under § 103
are two-step inquiries, in which the first step is a proper construction of the
claims, and the second step requires a comparison of the properly construed
claim to the prior art. Medichem S.A. v. Rolabo S.L., 353 F.3d 928, 933
(Fed. Cir. 2003).

2 Appellants have not presented any substantive arguments directed
separately to the patentability of the dependent claims or related claims in
each group, except as will be noted in this opinion. In the absence of a
separate argument with respect to those claims, they stand or fall with the
representative independent claim. See In re Young, 927 F.2d 588, 590 (Fed.
Cir. 1991).

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Our reviewing court states in In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989) that “claims must be interpreted as broadly as their terms reasonably
allow.” Our reviewing court further states that "the words of a claim 'are
generally given their ordinary and customary meaning.'" Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). The "ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application." Id. at 1313.

ANALYSIS
From our review of the administrative record, we find that the
Examiner has presented a prima facie case for the rejection of Appellants’
claims under 35 U.S.C. § 102(e). The prima facie case is presented on pages
3 to 7 of the Examiner’s Answer.
Group I: Claim 8 representative
In opposition to the prima facie case, Appellants present two main
arguments concerning this group of claims. The first argument addresses
whether the wording of claim 8 requires that all of the remote objects in the
server to have proxies (Brief 8).
In relevant part, claim 8 reads, “creating a proxy for each of a
plurality of remote objects in the server portion . . .” Later in claim 8, we
read “wherein creating the proxy for each of the plurality of remote objects
in the server portion comprises analyzing . . ." As the Examiner has
realized, a fair but broad interpretation of a plurality of remote objects, in
accordance with the common meaning, is not a totality of the remote objects.
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(See Phillips v. AWH Corp., cited above.) It need not even be a majority of
the remote objects. It is merely a grouping of more than one remote object.
True, the claim requires a proxy for every one (“each”) of the remote objects
in the plurality, but that does not require that every remote object in the
server portion have a proxy assigned to it. In Glass, the proxies are assigned
to classes of remote objects, as they are needed (col. 7, lines 50 et seq.).
They are assigned to each of a plurality of remote objects, namely those
objects in the class. We find this to be a fair reading of the Glass reference.
Appellants then argue (Brief 9, bottom; Reply 6, middle) that though
Glass may “generate[s] remote proxy 22 on client system 14” (col. 8, l. 4),
there is no explicit teaching of modifying the client to use them (Reply 6,
middle). We have considered this argument and find it unpersuasive. Glass
certainly teaches using the new client side proxies, which inherently means
that he modifies the calls to address them (see Glass, fig. 7; col. 7, l. 40).
We do not find that the Appellants have shown error in the
Examiner’s prima facie case of anticipation.
Group II, Claim 31
Appellants repeat the argument concerning the interpretation of “each
remote object” discussed above. Similarly, we do not find error in the
rejection of this claim for the reasons cited above.
Group III, Claim 10
Claim 10 requires parsing machine code. Appellants indicate that
Glass teaches only the parsing of byte code, and alleges that in the claim
they are not equivalent (Brief 13, first para.). We do not find this argument
persuasive for the reasons cited by the Examiner, (Answer 8, bottom), but
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even more so because of the Appellants' own admission in ¶ [0025], namely:
“this process would involve parsing the machine code (bytecode) or source
code for the client program 16 . . .” (Specification 7). This passage from the
Appellants' specification supports the reasonableness in the Examiner’s
interpretation of the equivalence of the term in this context.
We do not find error in the rejection.
Group IV, Claim 15
We do not find error in the rejection for the reasons stated by the
Examiner (Answer 9).

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting the claims on appeal.

DECISION
The Examiner's rejection of claims 2 to 8, 10 to 24, 31, and 32 is
affirmed.
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

clj
OSHA LIANG L.L.P./SUN
1221 MCKINNEY, SUITE 2800
HOUSTON, TX 77010
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