Ex Parte Barda

Board of Patent Appeals and Interferences

May 28, 2010

10836521 (B.P.A.I. May. 28, 2010)

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.
10/836,521 04/29/2004 Noam Barda 11884/417401 1605
26646 7590 12/08/2010
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
TSAI, SHENG JEN
ART UNIT PAPER NUMBER
2186
MAIL DATE DELIVERY MODE
12/08/2010 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 NOAM BARDA
____________________

Appeal 2009-001880
Application 10/836,5211
Technology Center 2100
____________________

Before JAY P. LUCAS, DEBRA K. STEPHENS, and JAMES R. HUGHES,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING2

1 Application filed April 29, 2004. The real party in interest is SAP.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-001880
Application 10/836,521

Appellant requests a rehearing of the Decision mailed June 1, 2010,
affirming the final rejection of claims 1 to 29.
Appellant’s invention relates to a data retrieval system for efficiently
responding to a client’s webpage requests (¶ [002]).
Representative claim 1 illustrates the claims on Rehearing:
1. A system for data retrieval comprising:

a data retrieval device including a cache
memory;

the data retrieval device configured to:

responsive to a request selectively requesting a
particular one of a plurality of content elements
associated with a transaction:

determine whether a copy of all of the
plurality of content elements is stored in the
cache memory;

only if the cache memory includes the copy,
return the requested content element from the
cache memory; and

only if the cache memory does not include
the copy, initiate a request for the transaction
from a content server.

Appellant, in his Request for Rehearing, contends that the Board of
Patent Appeals and Interferences (the “Board”), in its analysis, mistakenly
read the claimed “selectively requesting a particular one of a plurality of
content elements” upon Li’s disclosure of choosing a particular one of a
plurality of web pages. (Req. Reh’g. 3, top to middle). More specifically,
2
Appeal 2009-001880
Application 10/836,521

Appellant contends that the argued claim language can be distinguished
from “requesting the plurality of content elements as a whole” (id.).
We disagree. The Office interprets the claims in the broadest
reasonable fashion. (See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989.) In
this case, we read the claim element, “a particular one,” as being one of Li’s
web pages. We weighed the evidence and concluded that the claimed “of a
plurality of content elements” (claim 1) read upon Li’s plurality of web
pages from which a user may select. In doing so, we note that although the
Specification refers to “content elements” as “e.g., text, graphics,” these are
mere examples of what “content elements,” as recited in claim 1, may
include (¶ [014]). Since Appellant provided no special meaning3 for the
claimed “content elements,” a person of ordinary skill in the art would have
recognized that another of the claimed “content elements” may simply be a
web page, as Li teaches. Accordingly, we do not agree that the Board
misapprehended or overlooked Appellant’s argument (Request for Reh’g 1,
bottom).

DECISION
The Request for Rehearing has been fully considered and is denied.

3 “To be his own lexicographer, a patentee must use a ‘special definition of
the term [that] is clearly stated in the patent specification or file history.’”
The Laryngeal Mask Company Ltd. v. Ambu A/S, 618 F.3d 1367, 1372 (Fed.
Cir. 2010) (internal citations omitted). “The specification does not clearly
convey the patentee’s intent to appoint a special meaning to the term [].
Having concluded that the patentee did not act as his own lexicographer in
this case by clearly defining a claim term, we must determine the ordinary
meaning of [the term] as used in these claims to one of skill in the art in light
of the specification and prosecution history.” Id.
3
Appeal 2009-001880
Application 10/836,521

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REHEARING DENIED

peb

KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
4