Ex Parte Both

Board of Patent Appeals and Interferences

May 7, 2012

10454389 (B.P.A.I. May. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HANS-JOACHIM BOTH
____________________

Appeal 2010-002011
Application 10/454,389
Technology Center 2100
____________________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE,
and THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-54 and 58-69. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellant’s invention is directed to a system for storage and retrieval
of a document from a content server; wherein, the system sequentially
generates and stores in a document repository: (1) a query object derived
from the client request, (2) a document object that initiates the transfer of the
document, and (3) a data retrieval object that reads data from the client
including a component of the document (Abstract; Spec. ¶ [0048]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A computer implemented method for storing a
document in a document repository comprising:

receiving, at a server, a client request to store a document
residing on the client;

sequentially generating a query object, a document
object, and a data retrieval object at the server, where:

the query object validates the client request,

the document object initiates a transaction in the
document repository using data in the client request, and

the data retrieval object reads data from the client,
wherein the data comprises a component of the
document; and
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storing the component in the document repository;

wherein the query object, the document object, and the
data retrieval object are generated in sequence after receiving
the client request, and only the data retrieval object receives the
entire contents of the document.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Montulli US 5,774,670 Jun. 30 , 1998
Rothfus US 6,044,372 Mar. 28, 2000
Serbinis US 6,314,425 B1 Nov. 06, 2001
Ito US 2002/0023114 A1 Feb. 21, 2002
Dougherty US 2002/0161602 A1 Oct. 31, 2002
Kamath US 2004/0003093 A1 Jan. 01, 2004
(filed Mar. 20, 2003)
Berry US 2004/0205249 A1 Oct. 14, 2004
(filed Mar. 17, 2003)

Claims 1-54 and 58-69 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 47, 62, 64, 65, and 67 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Ito.
Claims 1, 6, 9, 11, 12, 17, 20, 22, 23, 28, 31, 32, 37, 40-46, 48-52, 68,
and 69 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Ito.
Claims 2, 3, 13, 14, 24, 25, 33, and 34 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ito in view of Rothfus.
Claims 4, 15, 26, and 35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ito in view of Rothfus and Kamath.
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Claims 5, 16, 27, 36, and 58-61 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Ito in view of Serbinis.
Claims 7, 18, 29, 38, 53, 54, 63, and 66 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ito in view of Montulli.
Claims 8, 19, 30, and 39 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ito in view of Berry.
Claims 10 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ito in view of Dougherty.

II. ISSUES
The dispositive issues before us are whether the Examiner has erred in
concluding that:
1. the Specification fails to support the claim limitation “wherein the
query object, the document object, and the data retrieval object are generated
in sequence after receiving the client request, and only the data retrieval
object receives the entire contents of the document” (claim 1, emphasis
added); and
2. Ito teaches or would have suggested “sequentially generating a
query object, a document object, and a data retrieval object at the server”
and “wherein the query object, the document object, and the data retrieval
object are generated in sequence after receiving the client request, and only
the data retrieval object receives the entire contents of the document” (claim
1, emphasis added).

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellant, data retrieval objects including
compressor object 114A or non-compressor object 114B read out the
majority of the data that forms the document from the stream interface 109
(Spec. ¶¶ [0047]-[0048]).
2. Each object within the content server does not receive the entire
contents of the document (Spec. ¶ [0048]).
Ito
3. Ito discloses a system that analyzes a document’s structure and
generates a table of contents; wherein, the document is divided into several
“pieces” in accordance with the table of contents (Figs. 1-3; ¶¶ [0004]-
[0005] and [0050]).
4. A client may submit a request to the proxy server for the table
of contents or a “piece” of the document corresponding to the table of
contents (¶¶ [0050], [0054], and [0055]).
5. A client may request that “pieces” of the document be replaced
by updating the corresponding document stored on the server; wherein, the
client request includes a document piece storage request containing the
document pieces F_i and the identifier indicating where the document pieces
F_i reside in the document (Fig. 1; ¶¶ [0059]-[0064]).
6. The proxy server divides the client request into two requests: a
first request to the server to retrieve the corresponding document F and a
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second request for document conversion processing of the document piece
storage request (Fig. 1; ¶ [0061]).
7. The server retrieves document F from the document data
storage section S3 and transmits document F from the response transmitter
section S2 to proxy server P at the response receiver section P21 (Fig. 1;
¶[0062]).

IV. ANALYSIS
Claims 1-54 and 58-69
Appellant contends that the claimed limitation “only the data retrieval
object receives the entire contents of the document” (claim 1) is “adequately
described in a least Figure 1 and paragraphs 47-59 [of the Specification]”
since the recited portions disclose that “some of the objects, for example, the
query object and the document object, may not receive the entire contents of
the document, since each object only receives the data it needs (and some
objects do not need the entire contents of the document)” (App. Br. 22).
Appellant argues that “‘data retrieval objects can include a compressor
object 114A and a non-compressor object 114B;’” wherein, “‘the majority of
the data that forms the document is read from the stream interface 109 only
near the end of the process by the compressor object 114A,’ and ‘[t]he
previous objects required little or no data from the stream interface 109’”
(App. Br. 23 (quoting Spec. ¶ [0049]).
However, the Examiner finds that “nowhere does the [S]pecification
state that only the data retrieval object receives the entire contents of the
document” (Ans. 18). In particular, “while [the Specification] states that the
data retrieval object receives the majority of the data that forms the
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document and that previous objects required little or no data, it certainly
does not state that the data retrieval object receives the entirety of the
document” (id.).
In order to comply with the written description requirement, it must be
demonstrated that the patentee was in possession of the invention that is
claimed. Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005). The
Specification as originally filed describes that a “majority of the data that
forms the document is read from the stream interface 109 … by the
compressor object 114A or the non-compressor object 114B” (FF 1). The
recited portion of the Specification only states that some of the objects may
not receive the entire contents and the compressor object receives a majority
of the contents (FF 1 and 2). There is no description as to “only the data
retrieval object receives the entire contents of the document” as recited in
independent claims 1, 12, 23, 32, 41-48, 62, and 65. As such, a person with
ordinary skill in the art would not have understood that Appellant was in
possession of the claimed invention. Rather, we find this limitation to be
new matter because it is not described by the Specification as originally
filed.
Accordingly, since the recitation in independent claims 1, 12, 23, 32,
41-48, 62, and 65 of a method for storing a document wherein “only the data
retrieval object receives the entire contents of the document” is not
supported by the originally filed Specification, Appellant has not
demonstrated error in the rejection of claims 1, 12, 23, 32, 41-48, 62, and 65
and thus claims 2-11, 13-22, 24-31, 33-40, 49-54, 58-61, 63, 64, and 66-69
depending therefrom under § 112, first paragraph. We therefore sustain the
rejection.
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Claims 1, 6, 9, 11, 12, 17, 20, 22, 23, 28, 31, 32,
37, 40-52, 62, 64, 65, and 67-69
At the outset, we note that Appellant did not present arguments
directed to the Examiner’s rejection of claims 47, 62, 64, 65, and 67 under
35 U.S.C. § 102(b) over Ito separate from the Examiner’s rejection of claims
1, 6, 9, 11, 12, 17, 20, 22, 23, 28, 31, 32, 37, 40-46, 48-52, 68, and 69 under
35 U.S.C. § 103(a) over Ito. Particularly, Appellant does not provide
separate arguments with respect to independent claims 1, 12, 23, 32, 41-48,
62 and 65 (App. Br. 23-28). Further, Appellant does not provide arguments
with respect to dependent claims 6, 9, 11, 17, 20, 22, 28, 31, 37, 40, 49-52,
64, 67, 68, and 69 (id.). Accordingly, we select claim 1 as being
representative of the claims. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant contends that the Examiner’s “reliance on Ito to reject the
present claims is inappropriate because Ito teaches a document storage and
retrieval system that requires the entire document to be transmitted over a
network before it can be processed according to a client request” (App. Br.
23). Appellant argues that “Ito fails to explicitly or inherently disclose: (i)
‘sequentially generating a query object, a document object, and a data
retrieval object,’ where (ii) ‘the query object, the document object, and the
data retrieval object are generated in sequence after receiving the client
request,’ and (iii) that ‘only the data retrieval object receives the entire
contents of the document’” (id.). Appellant asserts that the Examiner “could
not point to any [support]” for an “‘object’” (App. Br. 24) and that Ito’s
“alleged document object must be generated after the alleged data retrieval
object” (App. Br. 25).
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However, the Examiner finds that “[t]he objects in Ito are clearly
generated to correspond to the needs of a particular request and are
generated after a request from a client is made in order to be able to satisfy
the needs of that particular request” and, as such, “they are clearly generated
in some sequence” (Ans. 19). The Examiner notes that “the appellant has
not explicitly defined the term object in the originally filed specification and
the term is therefore being given its broadest reasonable interpretation” (id.)
as “the functionality specified [and] necessarily performed by some piece of
software code [within a computer implemented system]” (Ans. 20). In
particular, the Examiner finds that “Ito teaches the data retrieval object
reading the data from the client [which] is[,] at the very least[,] obvious that
only the data retrieval object would receive the contents of the document,
since it is the data retrieval object that is reading the document” (Ans. 22).
To determine whether Ito teaches or would have suggested a method
for storing a document in a document repository including “sequentially
generating a query object, a document object, and a data retrieval object at
the server,” “wherein … only the data retrieval object receives the entire
contents of the document” as recited in claim 1, we give the claim its
broadest reasonable interpretation consistent with the Specification. See In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). However, we will not read
limitations from the Specification into the claims. In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993).
Claim 1 does not place any limitation on what “query object,”
“document object,” and “data retrieval object” mean, include, or present;
other than, the query object validates a client request, the document object
initiates a transaction, and the data retrieval object reads data. The recited
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portions of the Specification are silent with respect to the definition of an
“object” (App. Br. 7; Spec. ¶¶ [0039], [0041]-[0044], and [0046]-[0048]).
Thus, we adopt the Examiner’s broadest reasonable interpretation of
“sequentially generating a query object, a document object, and a data
retrieval object at the server” (claim 1) as generating “the functionality
specified [and] necessarily performed by some piece of software code
[within a computer implemented system]” (Ans. 20), as consistent with the
Specification and as specifically defined in claim 1.
Ito discloses a system that analyzes a document’s structure and
generates a table of contents; wherein, the document is divided into several
“pieces” in accordance with the table of contents (FF 3) and a client may
submit a request for the table of contents or a “piece” of the document
corresponding to the table of contents to the proxy server (FF 4). We find
that the proxy server comprises an object that validates the client request.
That is, we find that “the query object validates the client request” (claim 1)
reads upon Ito’s proxy server that retrieves the client request.
In particular, Ito discloses that, when a client requests that “pieces” of
the document be replaced by updating the corresponding document stored on
the server with the “piece” provided in a document piece storage request (FF
5), the proxy server divides the client request into two requests: a first
request to the server to retrieve the corresponding document F and a second
request for document conversion processing of the document piece storage
request (FF 6). The server retrieves the document from storage and sends it
to the proxy server (FF 7). We find that the division of the client request
comprises a document object that initiates a transaction in the document
repository using data in the client request. That is, we find that “the
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document object initiates a transaction in the document repository using data
in the client request” (claim 1) reads on Ito’s proxy server function that
divides the client request into two requests.
In addition, we find that the first request portion sent to the server to
retrieve the corresponding document F comprises a data retrieval object that
reads data from the client; wherein, only the data retrieval object receives the
entire contents of the document. That is, we find that “the data retrieval
object reads data from the client, wherein the data comprises a component of
the document” and “only … receives the entire contents of the document”
(claim 1) reads on Ito’s first request sent by the proxy server to the server to
retrieve the entire stored document.
In view of our claim construction above, we find that Ito teaches or, at
least, suggests providing “wherein the query object, the document object,
and the data retrieval object are generated in sequence after receiving the
client request, and only the data retrieval object receives the entire contents
of the document,” as specifically required by claim 1.
Accordingly, we find that Appellant has not shown that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a) over Ito; and
independent claims 12, 23, 32, 41-46, and 48 and claims 6, 9, 11, 17, 20, 22,
28, 31, 32, 37, 40, 47, 49-52, 68, and 69 depending from claims 12, 23, 32,
and 48 which have been grouped therewith. Similarly, we find that
Appellant has not shown that the Examiner erred in rejecting claims 47, 62,
64, 65, and 67 under 35 U.S.C. § 102(b) over Ito.
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Claims 2-5, 7, 8, 10, 13-16, 18, 19, 21, 24-26,
29, 30, 33-36, 38, 39, 58-61, 63, and 66
Appellant argues that claims 2-5, 7, 8, 10, 13-16, 18, 19, 21, 24-26,
29, 30, 33-36, 38, 39, 58-61, 63, and 66 are patentable over the cited prior
art for the same reasons asserted with respect to claim 1 (App. Br. 29-30).
As noted supra, however, we find no deficiencies in Ito. We therefore
affirm the Examiner’s rejection of claims 2, 3, 13, 14, 24, 25, 33, and 34
over Ito in further view of Rothfus; of claims 4, 15, 26, and 35 over Ito in
further view of Rothfus and Kamath; of claims 5, 16, 27, 36, and 58-61 over
Ito in further view of Serbinis; of claims 7, 18, 29, 38, 53, 54, 63, and 66
over Ito in further view of Montulli; of claims 8, 19, 30, and 39 over Ito in
further view of Berry; and of claims 10 and 21 over Ito in further view of
Dougherty.

V. CONCLUSION AND DECISION
The Examiner’s rejections of claims 1-54 and 58-69 under 35 U.S.C.
§ 112, first paragraph; claims 47, 62, 64, 65, and 67 under 35 U.S.C. §
102(b); and claims 1-46, 48-54, 58-61, 63, 66, 68, and 69 under 35 U.S.C. §
103(a) are 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

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