Ex Parte Chen et al

Board of Patent Appeals and Interferences

Jul 28, 2010

10227673 (B.P.A.I. Jul. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/227,673 08/26/2002 Meng-Cheng Chen TW 010007 7103
24737 7590 07/28/2010
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
EXAMINER
DAFTUAR, SAKET K
ART UNIT PAPER NUMBER
2451
MAIL DATE DELIVERY MODE
07/28/2010 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 MENG-CHENG CHEN and CHI-FAN HO
____________

Appeal 2009-000781
Application 10/227,673
Technology Center 2400
____________

Before JOHN A. JEFFERY, LANCE LEONARD BARRY, and ST. JOHN
COURTENAY III, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

1 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 2009-000781
Application 10/227,673

STATEMENT OF THE CASE
Appellants invented a caching method and computer system. See
generally Spec. 1-2. Claim 1 is reproduced below with the key disputed
limitations emphasized:
1. A method of transmitting update-display data from a server device
to a client device, the method comprising:

generating a newly generated key representing new update-display
data to be transmitted;

comparing the newly generated key to a key or keys previously
generated; and

compiling a message to be transmitted to the client device, wherein

the message is set in dependence upon a result of the comparing,
to identify to the client device whether the update-display data is
already cached, to be cached, or not to be cached at the client device.

The Examiner relies on the following as evidence of unpatentability:
Housel, III US 6,061,714 May 9, 2000

THE REJECTION
The Examiner rejected claims 1-20 under 35 U.S.C. § 102(b) as
anticipated by Housel, III (“Housel”). Ans. 3-9.2

2 Throughout this opinion, we refer to (1) the Appeal Brief filed February
21, 2007; (2) the Examiner’s Answer mailed July 5, 2007; and (3) the Reply
Brief filed September 5, 2007.
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CLAIM GROUPING
Appellants argue claims 1 and 16 together as a group and do not
separately address claims 2-15 and 17-20 with particularity. See App. Br. 5-
7. Accordingly, we select claim 1 as representative of that group. See 37
C.F.R. § 41.37(c)(1)(vii).

CONTENTIONS
The Examiner finds that Housel discloses all the limitations of
representative claim 1, including setting the message to identify to the client
device whether the update-display data is already cached, to be cached, or
not to be cached. Ans. 3, 4, 10-14. Appellants argue that Housel teaches a
conventional caching technique, and does not teach determining whether the
data is not to be cached as recited in claim 1. App. Br. 5-7; Reply Br. 3.
The issue before us, then, is as follows:

ISSUE
Under § 102(b), has the Examiner erred in rejecting claim 1, given its
broadest reasonable construction, by finding that Housel sets the message to
identify to the client device whether the data is already cached, to be cached,
or not to be cached at the client device?

FINDINGS OF FACT (FF)
1. Claim 1 recites “the message is set in dependence upon a result of
the comparing, to identify to the client device whether the update-display
data is already cached, to be cached, or not to be cached at the client device”
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Application 10/227,673

depending on the results of comparing step. Claim 1, ll. 9-11
2. Appellants state that “applicants teach a ‘hybrid’ system, wherein
each message is set to one of the three possible classes.” Reply Br. 3.
3. Appellants state “Housel does not teach a third possible
classification of data beyond the conventional ‘already-cached’ and ‘to-be-
cached’ classifications.” Reply Br. 5.
4. Housel’s checkpoint technique uses the protocol cache from a
previous session rather than starting with no cache on a new session or a
restarted session that was interrupted. Housel, col. 14, l. 51-col. 15, l. 5;
Figs. 6-10.
5. Housel’s Figure 7 illustrates generating a checkpoint from the
second computer’s (30) perspective. Housel discloses: (a) receiving a
checkpoint request from the first computer 20 (step 116); (b) comparing
counters; (c) copying protocol cache to checkpoint cache (step 118); and (d)
creating and transmitting a checkpoint confirmation message at step 120
depending on whether the second computer’s checkpoint cache was copied
with error (e.g., failure) or without error (e.g., success). Housel, col. 15, ll.
8-10, col. 16, ll. 10-22, 35-49; Fig. 7.
6. Housel’s Figure 6 illustrates generating a checkpoint from the first
computer’s (20) perspective. Housel discloses at step 108 determining
whether the checkpoint message succeeds or fails. If the message indicates a
success, the temporary cache is converted to checkpoint cache at step 110.
Otherwise, the temporary cache is discarded at step 112. Housel, col. 15, ll.
5-8, 35-44; Fig. 6.

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Appeal 2009-000781
Application 10/227,673

ANALYSIS
We begin by construing the key disputed limitation of claim 1 which
calls for, in pertinent part, setting the message “to identify to the client
device whether the update-display data is already cached, to be cached, or
not to be cached at the client device” depending on the results of the
comparing step. FF 1 (emphasis added). As emphasized, this limitation
includes the word “or” as an alternative in setting the message to identify the
data’s cache state. Using the ordinary meaning for the term “or,” we agree
with the Examiner (Ans. 10-11) that claim 1 only requires the set message to
identify that the data is in one of three recited classes (i.e., (1) already
cached; (2) to be cached; or (3) not to be cached). See Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted).
Appellants acknowledge this interpretation by noting that Appellants
“teach a ‘hybrid’ system, wherein each message is set to one of the three
possible classes[.]” FF 2 (emphasis added). Nonetheless, Appellants assert
that Housel fails to teach the claimed set message recitation because Housel
does not teach selectively determining the data is not to be cached. App. Br.
6-7. We are not persuaded by Appellants’ arguments since Housel need
only disclose setting the message to identify one data cache class.
Moreover, claim 1 does not recite “selectively determining,” but only that
“the message is set” depending on the comparing step to identify whether
the data is one of three data cache classes.
Importantly, Appellants admit that Housel discloses a set message that
has two of the three data cache classifications. See FF 3. As the Examiner
explains (Ans. 4, 11), Housel’s checkpoint technique uses the protocol cache
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Application 10/227,673

from a previous session rather than starting with no cache. FF 4.
Specifically, Housel creates a checkpoint confirmation message depending
on a comparison (see FF 5) that identifies whether data is to be cached (i.e.,
message indicates success at step 110) or not (i.e., message indicates failure
at step 112) at the first computer or the client device (FF 5-6). From an
alternative view, this process identifies at the client device that the data is
already cached (e.g., already in temporary cache) or to be cached (e.g.,
temporary cache discarded). See id.
Lastly, Appellants contend that construing claim 1’s scope to read on
a message set to identify only one or two of the three recited cache classes
renders the claimed classes meaningless. Reply Br. 3. We disagree. On this
record, Appellants have chosen to recite claim 1 broadly to include setting
the message to identify any of three possible data cache classes. Moreover,
the phrase “to identify to the client device whether the data is already
cached, to be cached, or not to be cached at the client device” merely recites
the intended use of the setting step, rather than an active step. See In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). The prior art therefore
need only disclose one of the three classes to anticipate the claim.
Based on the record before us, we find no error in the Examiner’s
anticipation rejection of representative claim 1 and independent claim 16,
which is commensurate in scope. Dependent claims 2-15 and 17-20 are
likewise sustained.

CONCLUSION
The Examiner did not err in rejecting claims 1-20 under § 102.

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Appeal 2009-000781
Application 10/227,673

ORDER
The Examiner’s decision rejecting claims 1-20 is 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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