Ex Parte Austin et al

Board of Patent Appeals and Interferences

Aug 18, 2006

09374740 (B.P.A.I. Aug. 18, 2006)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL AUSTIN, DAVID FULLER, KURT M. CARLSON,
CHRIS MAYER, STEPHEN ROGERS, JOE SAVAGE, and BRIAN SIERER

____________

Appeal No. 2006-0619
Application No. 09/374,740

____________

ON BRIEF
____________

Before JERRY SMITH, BARRY, and SAADAT, Administrative Patent Judges.
BARRY, Administrative Patent Judge.

A patent examiner rejected claims 1-34 and 36-57. The appellants appeal
therefrom under 35 U.S.C. § 134(a). We reverse.

I. BACKGROUND
The invention at issue on appeal concerns computer input/output ("I/O"). (Spec.,
p. 1, l. 10.) In networked computer systems, computers obtain data from sources and
write data to targets, e.g., local memory, I/O devices, and other computers. (Id. at ll. 16-
20.)

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Application No. 09/374,740

U.S. Patent No. 6,370,569 describes a "Data Socket" and a "Data Socket URL."
A Data Socket client addresses data sources and data targets using a Uniform
Resource Locator (URL), much the way a URL is used to address web pages anywhere
in the world. To read from a data source, the Data Socket reads raw data, parses the
data, and returns it in a form usable by a user's applications. To write to a data target,
the Data Socket formats data from a user into an appropriate format for the target. (Id.,
p. 2, ll. 5-16.)

The URL contains all the data that a Data Socket system needs to identify the
type of source/target, determine its address, and connect thereto. The URL may also
contain data that the Data Socket system uses to configure the source/target. The user,
however, must supply the appropriate URL to the Data Socket system. (Id. at ll. 20-25.)

In contrast, the appellants' invention generates URLs automatically. A further
understanding of the invention can be achieved by reading the following claim.
1. A computer-implemented method for enabling access to one or more
data sources or targets in a computer system, comprising:

automatically determining one or more data sources or targets
connected to the computer;

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Application No. 09/374,740

automatically generating one or more URLs for each of the data
sources or targets;

wherein each of the URLs is useable for reading data from the
respective data source or writing data to the respective data target.

Claims 1-34 and 36-57 stand rejected under 35 U.S.C. § 103(a) as obvious over
U.S. Patent No. 6,047,332 ("Viswanathan") and U.S. Patent No. 6,094,684
("Pallmann").

II. OPINION
"Rather than reiterate the positions of the examiner or the appellants in toto, we
focus on a point of contention therebetween." Ex parte Sienel, No. 2005-2429, 2006
WL 1665423, at *1 (Bd.Pat.App & Int. 2006). The examiner admits that "the system
taught by Viswanathan does not use the term 'URL' (i.e.[,] uniform resource locator) in
describing [its] logical names." (Examiner's Answer at 4.) Finding that "Pallmann
discloses a data access system for accessing remote network devices that are
addressed via globally unique names, wherein the unique names are Internet URLS
(col. 8, lines 30-68, wherein HTTP over TCP/IP uses lnternet URLs)," (id.), however, he
alleges that "it would have been obvious to replace the resource locators taught by
Viswanathan with 'URLs' as they are known on the Internet, thereby extending the
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Application No. 09/374,740

Viswanathan system to encompass Internet URLs in order to allow true 'global' access
to the devices on the system." (Id. at 16.) The appellants argue that "the device
access taught by Viswanathan cannot be extended in the platform-independent manner
proposed by the Examiner." (Appeal Br. at 8.)

"When determining the patentability of a claimed invention which combines two
known elements, 'the question is whether there is something in the prior art as a whole
to suggest the desirability, and thus the obviousness, of making the combination.'" In re
Beattie, 974 F.2d 1309, 1311-12, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992) (quoting
Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1462,
221 USPQ 481, 488 (Fed. Cir. 1984)).

Here, Viswanathan's "invention is a system and method for use in a cluster that
maps local device names to globally unique, logical names that enable an application
running on any of the cluster nodes to access a device located on a different cluster
node." (Col. 6, ll. 34-38.) "The cluster 201 includes a plurality of nodes 202 with
associated devices 106 and applications 150." (Col. 8, ll. 61-62.) It is uncontested that
the reference does not use URLs for its names.

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Application No. 09/374,740

We are unpersuaded, moreover, by the examiner's aforementioned allegation
that substituting URLs for Viswanathan's names would have allowed "true 'global'
access to the devices on the system." (Examiner's Answer at 16.) To the contrary, we
agree with the appellants' aforementioned argument that "the device access taught by
Viswanathan cannot be extended in the platform-independent manner proposed by the
Examiner." (Appeal Br. at 8.) As noted by the appellants, such "device access can only
be performed by computers that are a part of [the] cluster 201 and have access to [the
reference's] global file system 206 and execute a modified operating system kernel 242
taught in Viswanathan." (Id.) "It is well known that computers connected to the Internet
utilize a plethora of different operating systems and that communication over the
Internet is performed largely independently of any particular operating system or file
system." (Id.) Because "many computers connected to the Internet . . . either are not a
part of the cluster 201, do not have access to the global file system 206, [or] do not
execute the modified operating system kernel 242," (id.), we are persuaded that these
computers would not have been able to perform the device access taught in
Viswanathan even if URLs were used in the reference.

A reason that is desirable and practicable reason may exist for using URLs in
Viswanathan may exist. We will not, however, "resort to speculation [or] unfounded
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Application No. 09/374,740

assumptions," In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967) as
to such a reason. We instead reverse the rejection of claims 1-34 and 36-57.

III. CONCLUSION
In summary, the rejection of claims 1-34 and 36-57 under § 103(a) is reversed.

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Application No. 09/374,740

REVERSED

JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
Appeal No. 2006-0619 Page 8
Application No. 09/374,740

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