Ex Parte Chen et al

Patent Trial and Appeal Board

Jun 12, 2014

12207005 (P.T.A.B. Jun. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte BENSON KWUAN-YI CHEN, 7
MICHAEL GILFIX, 8
VICTOR S. MOORE, AND 9
ANTHONY WILLIAM WROBEL, JR. 10
___________ 11
12
Appeal 2012-003991 13
Application 12/207,0051 14
Technology Center 2400 15
___________ 16
17
18
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 19
MICHAEL W. KIM, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
22
23
24
DECISION ON APPEAL 25

1 The real party in interest is International Business Machines Corporation.
App. Br. 2.
Appeal 2012-003991
Application 12/207,005

2
STATEMENT OF THE CASE2 1

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed July 12, 2011) and Reply Brief (“Reply Br.,” filed December 19,
2011), and the Examiner’s Answer (“Ans.,” mailed October 24, 2011).
Benson Kwuan-Yi Chen, Michael Gilfix, Victor S. Moore, and 2
Anthony William Wrobel Jr. (Appellants) seek review under 3
35 U.S.C. § 134 of a final rejection of claims 1-20. We have jurisdiction 4
over the appeal pursuant to 35 U.S.C. § 6(b). 5
The Appellants’ invention relates to techniques for improving the 6
efficiency of a cache server by “utilizing a starting and ending identifier 7
encoded into an entity tag (ETAG) in order for the cache server to identify 8
and provide unique web feed update entries to clients without querying a 9
feed server.” Specification ¶¶ 1–2. 10
An understanding of the invention can be derived from a reading of 11
exemplary claim 1, which is reproduced below [bracketed matter and some 12
paragraphing added]. 13
1. A machine-implemented method comprising: 14
[1] receiving 15
a request 16
from a client, 17
the request including 18
a first entity tag that includes 19
a first starting identifier 20
and 21
Appeal 2012-003991
Application 12/207,005

3
a first ending identifier, 1
the first starting identifier associated with 2
a starting entry 3
and 4
the first ending identifier associated with 5
an ending entry; 6
[2] selecting 7
a second entity tag 8
that corresponds to 9
one or more update entries; 10
[3] determining 11
whether the second entity tag includes 12
a second starting identifier 13
that matches 14
the first ending identifier 15
included in the first entity tag; and 16
[4] in response to 17
determining 18
that the second entity tag includes 19
the second starting identifier that 20
matches the first ending identifier, 21
sending the second entity tag 22
and 23
one or more of the update entries to the client. 24
25
26
Appeal 2012-003991
Application 12/207,005

4
The Examiner relies upon the following prior art: 1
Sundarrajan et al.
(hereinafter “Sundarrajan”)
US 2006/0195660 A1 Aug. 31, 2006
Claims 14-20 stand rejected under 35 U.S.C. § 101 as being directed 2
to non-statutory subject matter. 3
Claims 1-20 stand rejected under 35 U.S.C. § 102(b) as anticipated by 4
Sundarrajan. 5
ISSUES 6
The issue of patentable subject matter turns on whether claims 14-20 7
encompass transitory media in their scope. 8
The issue of anticipation turns primarily on whether Sundarrajan 9
describes “a first entity tag that includes a first starting identifier and a first 10
ending identifier, the first starting identifier associated with a starting entry 11
and the first ending identifier associated with an ending entry” (claim 1). 12
FACTS PERTINENT TO THE ISSUES 13
The following enumerated Findings of Fact (FF) are believed to be 14
supported by a preponderance of the evidence. 15
Sundarrajan 16
01. Sundarrajan is directed towards a method and system for 17
modifying cache responses by inserting an ETAG into the 18
response “to provide cache control for objects provided without 19
entity tags and/or cache control information from an originating 20
server.” Sundarrajan ¶ 9. 21
Appeal 2012-003991
Application 12/207,005

5
02. Sundarrajan describes “an object determinant is identified in the 1
intercepted communication. The cache manager 232 may extract, 2
interpret, parse, access, read, or otherwise process the intercepted 3
communication to determine or identify one or more objects 4
determinants in the communications. Any parameter, value, 5
syntax, data, structure or set of one or more characters of the 6
communication may be used to identify an object determinant. In 7
one embodiment, the cache manager 232 may identify the name or 8
identifier of an object in a request from the client 102a-102n to the 9
server 106a-106n, in which the client requests the object. In 10
another embodiment, the cache manager 232 may identify the 11
name or identifier of a first object in the request of the client 102a-12
102n or response from the server 106a-106n that indicates a 13
change has occurred or will occur to a second object stored in the 14
cache.” Sundarrajan ¶ 102. 15
03. Sundarrajan describes “[a]t step 760, the cache manager 232 16
compares the entity tag value received from the client 102a-102B 17
with the entity tag for the object to determine if the cache manager 18
232 has a different version of the object than the client 102a-102n. 19
The cache manager 232 may use any suitable means and/or 20
mechanisms to compare the entity tag value from the client 102a-21
102n with the entity tag value for the cached object. In one 22
embodiment, the cache manager 232 performs a byte-compare on 23
the etag value from the request with the etag stored with the object 24
in the cache. In another embodiment, the cache manager 232 25
performs and uses hash algorithms on the entity tag and/or the 26
Appeal 2012-003991
Application 12/207,005

6
cache object to determine if the object has been modified. In 1
further embodiments, the cache manager 232 requests the object 2
from the server 106a-106n, and compared the received object with 3
the cached object to determine if the object has been modified.” 4
Sundarrajan ¶ 184. 5
04. Sundarrajan further describes that “[i]f, at step 765, the entity 6
tag from the client 102a-102n does not match the entity tag stored 7
with the object in the cache manager 232 then at step 770, the 8
cache manager 232 sends a response to the client indicating the 9
entity tags do not match or otherwise the object has been 10
modified. In one embodiment, the cache manager 232 sends a 11
response to the client 102a-102n providing a new entity tag value 12
for the object. In another embodiment, the cache manager 232 13
sends a response to the client 102a-102n provide a new version of 14
the object, or the modified object, such as a modified object with a 15
new entity tag stored in the cache manager 232. If, at step 765, 16
the entity tag from the client 102a-102n does match the entity tag 17
stored with the object in the cache manager 232 then at step 775, 18
the cache manager 232 sends a response to the client indicating 19
the entity tags do match or otherwise the object has not been 20
modified.” Sundarrajan ¶ 185 (emphasis added). 21
Appeal 2012-003991
Application 12/207,005

7
ANALYSIS 1
Claims 14-20 rejected under 35 U.S.C. § 101 as directed to 2
non-statutory subject matter. 3
Transitory propagating signals are unpatentable under 35 U.S.C. § 101. 4
In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007). According to U.S. 5
Patent & Trademark Office (USPTO) guidelines: 6
A claim that covers both statutory and non-statutory 7
embodiments . . . embraces subject matter that is not eligible for 8
patent protection and therefore is directed to non-statutory 9
subject matter. . . . For example, a claim to a computer readable 10
medium that can be a compact disc or a carrier wave covers a 11
non-statutory embodiment and therefore should be rejected 12
under § 101 as being directed to non-statutory subject matter. 13
USPTO, Interim Examination Instructions for Evaluating Subject Matter 14
Eligibility Under 35 U.S.C. § 101, 2 (Aug. 2009), available at 15
http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-25_interim_101_ 16
instructions.pdf (“Interim Instructions”). 17
The USPTO also provides the following guidance: 18
The broadest reasonable interpretation of a claim drawn to a 19
computer readable medium . . . typically covers forms of non-20
transitory tangible media and transitory propagating signals per 21
se in view of the ordinary and customary meaning of computer 22
readable media, particularly when the specification is 23
silent. . . . When the broadest reasonable interpretation of a 24
claim covers a signal per se, the claim must be rejected under 25
35 U.S.C. § 101 as covering non-statutory subject matter. 26
David J. Kappos, USPTO, Subject Matter Eligibility of Computer Readable 27
Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). 28
Independent claim 14 recites, in pertinent part, “[a] computer program 29
product stored on a tangible computer operable storage medium . . . .” Upon 30
reviewing Appellants’ Specification for context, we do not find any 31
Appeal 2012-003991
Application 12/207,005

8
explanation for what constitutes the claimed “tangible computer operable 1
storage medium,” as recited in claim 14. Therefore, because Appellants’ 2
Specification is silent in this regard, we conclude that the claimed “computer 3
program product” can be broadly, but reasonably, construed to encompass 4
both non-transitory tangible media and transitory propagating signals per se. 5
As independent claim 14 covers both statutory and non-statutory 6
embodiments, it embraces subject matter that is not eligible for patent 7
protection and, therefore, is directed to non-statutory subject matter. 8
We note Appellants are not precluded from amending the claims to 9
overcome the rejection. Relevant guidance is in the 1351 Off. Gaz. Pat. 10
Office 212 (“A claim drawn to such a computer readable medium that 11
covers both transitory and non-transitory embodiments may be amended to 12
narrow the claim to cover only statutory embodiments to avoid a rejection 13
under 35 U.S.C. § 101 by adding the limitation ‘non-transitory’ to the 14
claim.”); USPTO, Evaluating Subject Matter Eligibility Under 35 U.S.C. 15
§ 101 (August 2012 Update) (pp. 11-14), available at 16
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf (noting 17
that while “non-transitory” is a viable option for overcoming the 18
presumption that the media encompass signals or carrier waves, merely 19
indicating that such media are “physical” or “tangible” will not overcome 20
such presumption) (emphasis added). See id. at 14. 21
Claims 1-20 stand rejected under 35 U.S.C. § 102(b) as anticipated by 22
Sundarrajan. 23
We are persuaded by the Appellants’ argument that Sundarrajan fails to 24
disclose the subject matter of independent claim 1, because the ETAG 25
assigned in Sundarrajan does not include a starting identifier or an ending 26
Appeal 2012-003991
Application 12/207,005

9
identifier. App. Br. 5-7; Reply Br. 2-4. Specifically, Appellants argue that 1
because Sundarrajan fails to disclose the ETAG recited by claim 1, 2
limitation [1], Sundarrajan cannot anticipate “determining whether the 3
second entity tag includes a second starting identifier that matches the first 4
ending identifier included in the first entity tag,” as recited by claim 1, 5
limitation [3] (emphasis added) and “sending the second entity tag and one 6
or more of the update entries to the client” when “the second entity tag 7
includes the second starting identifier that matches the first ending 8
identifier,” as required by claim 1, limitation [4]. 9
In response, the Examiner acknowledges that “Sundarrajan does not 10
explicitly disclose a starting identifier that matches a first ending identifier” 11
(Ans. 10), but argues that “an ETAG is merely a unique textual identifier 12
associated with an object/entity; or one or more characters associated with a 13
data set” (Ans. 11), and as such, finds that Sundarrajan at paragraphs 184– 14
185 discloses the claimed ETAG. Ans. 10-12. We disagree. 15
While we agree with the Examiner that Sundarrajan discloses an ETAG 16
(FF 01, 02, 03, 04) and that an ETAG is merely an identifier associated with 17
an object/entity, we disagree with the Examiner that Sundarrajan discloses 18
“a first entity tag that includes a first starting identifier and a first ending 19
identifier, the first starting identifier associated with a starting entry and the 20
first ending identifier associated with an ending entry,” as claim 1, limitation 21
[1] requires. Sundarrajan describes that an ETAG may be comprised of 22
“[a]ny parameter, value, syntax, data, structure or set of one or more 23
characters of the communication may be used to identify an object 24
determinant” (FF 02 citing to Sundarrajan ¶ 0102), however, Sundarrajan 25
does not describe or suggest that its ETAG includes two distinct value (i.e., a 26
Appeal 2012-003991
Application 12/207,005

10
first starting identifier and a first ending identifier), as opposed to a single 1
value. Thus, Sundarrajan does not “determin[e] whether the second entity 2
tag includes a second starting identifier that matches the first ending 3
identifier included in the first entity tag,” as recited by claim 1, limitation [3] 4
because Sundarrajan does not disclose an ETAG with these two distinct 5
values. 6
Independent claims 8 and 14 include similar limitations. 7
CONCLUSIONS OF LAW 8
The rejection of claims 14-20 under 35 U.S.C. § 101 as being directed to 9
non-statutory subject matter is proper. 10
The rejection of claims 1-20 under 35 U.S.C. § 102(b) as anticipated by 11
Sundarrajan is improper. 12
DECISION 13
The rejection of claims 14-20 under 35 U.S.C. § 101 as being directed to 14
non-statutory subject matter affirmed. 15
The rejection of claims 1-20 under 35 U.S.C. § 102(b) as anticipated by 16
Sundarrajan is reversed. 17
No time period for taking any subsequent action in connection with this 18
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 19
§ 1.136(a)(1)(iv) (2011). 20
AFFIRMED-IN-PART 21
llw 22