Ex parte Chapa

Board of Patent Appeals and Interferences

Sep 27, 1999

08221124 (B.P.A.I. Sep. 27, 1999)

Application for patent filed March 30, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte BRUCE E. CHAPA
_____________
Appeal No. 1997-3104
Application 08/221,1241
______________
ON BRIEF
_______________
Before BARRETT, FLEMING and GROSS, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1997-3104
Application 08/221,124
2
This is a decision on appeal from the final rejec-
tion of claims 1 through 6, all the claims pending in the
present application.
The invention relates to remote application primary
interface (API) processing methods using network protocols in
a network which includes personal computers and a server. In
particular, Appellant discloses on page 1 of the specification
that an API is a collection of commands which enables a pro-
grammer to obtain services from an application. Appellant
discloses further that networks typically include personal
computers which are connected to a server. The server may
handle tasks, such as electronic mail and electronic faxing
for the network. Personal computers have limited resources
and, as a result, such personal computers are not capable of
executing applications that require large amounts of extended
memory. On page 2 of the specification, Appellant discloses
that it would be desirable to provide a method for networking
personal computers in which memory-intensive tasks are off-
Appeal No. 1997-3104
Application 08/221,124
3
loaded to a server which will have the required amount of
large extended memory.
On page 3 of the specification, Appellant discloses
that figure 4 is a flow diagram of the method of the present
invention. On page 7 of the specification, Appellant dis-
closes the method of the present invention referring to figure
4. On
pages 7 through 9 of the specification, Appellant discloses in
detail the method steps in which the personal computer is able
to off-load API requests generated by an application program
to a server.
Independent claim 1 is reproduced as follows:
1. A method for processing an API request generated
by an application program that is executing in a client termi-
nal by a server computer networked to the client terminal
comprising the steps of:
(a) allocating a block of operating memory by the
client terminal;
(b) placing data defining the client terminal API
request in the block of operating memory by the client termi-
nal;
Appeal No. 1997-3104
Application 08/221,124
4
(c) sending the data and instructions for creating
the block of memory to the server computer by the client terminal;
(d) allocating a second block of operating memory
like the first block of operating memory by the server com-
puter using the instructions received from the client termi-
nal;
(e) storing the data from the client terminal in the
second block of operating memory by the server computer;
(f) processing the client terminal API request and
storing API response data in the second block of memory by an
API service routine executed by the server computer;
(g) sending the API response data and instructions
for creating the second block of memory to the client terminal
by the server computer;
(h) storing the API response data from the server
computer in the one block of operating memory by the client
terminal; and
(i) processing the API response data from the one
block of operating memory by the application program.
The reference relied on by the Examiner is as fol-
lows:
Moeller et al. (Moeller) 5,473,777 Dec. 5,
1995
Claims 1 through 6 stand rejected under 35 U.S.C.
§ 102 as being anticipated by Moeller.
Appeal No. 1997-3104
Application 08/221,124
5
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the brief and answer for de-
tails thereof.
OPINION
After careful review of the evidence before us, we
do not agree with the Examiner that claims 1 through 6 are
anticipated by Moeller.
It is axiomatic that anticipation of a claim under
§ 102 can be found only if the prior art reference discloses
every element of the claim. See In re King, 801 F.2d 1324,
1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d
1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984). "Anticipation
is established
only when a single prior art reference discloses, expressly or
under principles of inherency, each and every element of a
claimed invention." RCA Corp. v. Applied Digital Data Sys.,
Appeal No. 1997-3104
Application 08/221,124
6
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.),
cert. dismissed, 468 U.S. 1228 (1984), citing Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Furthermore, "[t]o establish inherency, the
extrinsic evidence 'must make clear that the missing
descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized
by persons of ordinary skill.'" In re Robertson, 169 F.3d
743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) citing
Continental Can Co. v. Monsanto Co., 948 F.3d 1264, 1268, 20
USPQ2d 1746, 1749 (Fed. Cir. 1991). "Inherency, however, may
not be established by probabilities or possibili-ties. The
mere fact that a certain thing may result from a given set of
circumstances is not sufficient." Id. at 1269, 20 USPQ2d at
1749 (quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323,
326 (CCPA 1981).
Appeal No. 1997-3104
Application 08/221,124
7
On page 5 of the brief, Appellant argues that
Moeller does not disclose a method of remotely processing an
API request
by a server rather than a client terminal. Appellant argues
that the term "server" clearly refers to a computer which
services an API request instead of the client terminal that
executes the application which produces the API request. On
pages 7 and 8 of the brief, Appellant further argues that
Moeller does not inherently teach a method of remotely
processing an API request by a server rather than a client
terminal.
We note that Appellant's claim 1 recites the method
for processing an API request generated by an application
program that is executed in a client terminal. Furthermore,
we note that Appellant's claim 1 recites: allocating a block
of operating memory by the client terminal; placing the data
and defining the client terminal API request in the block of
operating memory by the client terminal; sending the data and
instructions for creating the block of memory to the server
Appeal No. 1997-3104
Application 08/221,124
8
computer by the client terminal; allocating a second block of
operating memory by the server computer using the instructions
received from the client terminal; storing the data from the
client terminal in a second block of operating memory by the
server computer; processing the client terminal API request;
sending the API response data and instructions to the client
terminal by the server computer;
storing the API response data from the server computer in the
one block of operating memory by the client terminal; and
processing the API response data from the one block of
operating memory by the application program. We further note
that Appellant claims similarly in the other remaining
independent claim, claim 6, a method for processing an API
request generated by an application program that is executing
a first computer by a second computer networked to the first
computer. Therefore, we find that the Appellant's claims
recite a method of remotely processing an API request
generated by an application program that is executing on a
Appeal No. 1997-3104
Application 08/221,124
9
client terminal by a server coupled to the client terminal
using network protocols that can be transported between
various operating systems.
Upon a careful review of Moeller, we find that
Moeller is directed to an apparatus for enabling an object-
oriented application to access in an object-oriented manner a
procedural operating system having a naive procedural
interface. See Abstract. Furthermore, Appellant discloses
that figure 1 illustrates a block diagram of a computer
platform in which a wrapper of the present invention operates.
See column 4, lines 34 through 37. Moeller further discloses
that figure 1
illustrates a block diagram of a computer platform 102 which
includes a single central processing unit (CPU) 106. See
column 5, lines 16 through 23. Moeller further teaches that
it should be noted that the CPU 106 may represent a single
processor, but preferably represents multiple processors
operating in parallel. See column 5, lines 23 through 25.
Appeal No. 1997-3104
Application 08/221,124
10
However, we fail to find that Moeller teaches a method for
processing an API request generated by an application program
that is executing in a client terminal by a server as recited
in Appellant's claims 1 through 6.
In the Examiner's answer, the Examiner argues that
the method claimed by the Appellant is inherent to Moeller.
However, to establish inherency, the Examiner must show that
the missing descriptive matter is necessarily present in the
system described in the reference. We fail to find that the
Examiner has met this burden. In particular, Moeller's system
may be operated with the processors in parallel but we fail to
find the method in which one processor will interchange memory
data and instructions with another processor in the
particular method as recited in Appellant's claim.
Furthermore, we fail to find that Moeller must operate in this
way to perform his disclosed wrapper for
enabling an object-oriented application to maintain virtual
memory using procedural function calls.
Appeal No. 1997-3104
Application 08/221,124
11
In view of the foregoing, the decision of the
Examiner rejecting claims 1 through 6 is reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )

MRF:psb
Appeal No. 1997-3104
Application 08/221,124
12
Paul W. Martin
Law Department, ECD-2
101 W. Schantz Avenue
Dayton, OH 45479