Ex Parte Cheshire

Patent Trial and Appeal Board

May 27, 2014

10676572 (P.T.A.B. May. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte STUART D. CHESHIRE
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Appeal 2012-003505
Application 10/676,572
Technology Center 2400
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Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
THOMAS F. SMEGAL, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Stuart C. Cheshire (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1, 5-9, 13-17, 35-37 and 41-43.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We REVERSE and enter a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
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CLAIMED SUBJECT MATTER
An understanding of the claimed subject matter can be derived from
reading independent claim 1, which is reproduced below.
1. A method for invalidating resource records in a local cache at a
client computer system within a network, comprising:
receiving a multicast message from another client
querying a device;
locating a resource record associated with the device;
waiting for a multicast response from the device to the
multicast message querying the device; and
when a predetermined number of multicast messages
from the other client querying the device have been received
without receiving the multicast response from the device to the
other client, invalidating the resource record associated with the
device.

REJECTIONS ON APPEAL
The following Examiner’s rejections are before us for review:
1. Claims 1, 5-9, 13-17, 21-24, 35-37 and 41-43 are rejected under
35 U.S.C. §112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which Applicant
regards as the invention.
2. Claims 1, 8, 9, 16-17, 24 and 41-43 are rejected under
35 U.S.C. §103(a) as being unpatentable over Danknick (US 6,021,429, iss.
Feb. 1, 2000) and Eatough (US 2003/0050955 A1, publ. Mar. 13, 2003).
3. Claims 35-37 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Danknick, Eatough and George (US 7,143,108 B1, iss.
Nov. 28, 2006).

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ANALYSIS
Indefiniteness Rejection
We are persuaded by Appellant’s arguments that the Examiner erred
in rejecting claims 1, 5-9, 13-17, 21-24, 35-37 and 41-43 under 35 U.S.C.
§112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which Applicant regards as the
invention.
Claim 1 recites “receiving a multicast message from another client
querying a device” and thereafter “when a predetermined number of
multicast messages from the other client querying the device have been
received without receiving the multicast response from the device to the
other client”. The Examiner finds that “[t]here is no recitation of ‘other
client’ in the claim prior to the recitation of ‘the other client’” thus, “no
relation between ‘another client’ and ‘the other client’ in the claims” and
that “recitation of ‘another client’ prior to ‘the other client’ does not provide
proper antecedent basis” Ans. 7.
Appellant argues that the Examiner erred in finding that there is
insufficient antecedent basis for the limitation “the other client” in claim 1.
Appellant also contends that “[t]he usage of the term "the other client" after
referring to "another client" does not render the claim indefinite. . . because
common spoken usage renders the terms related clearly enough for a person
having ordinary skill in the art to recognize their equivalence and thereby to
determine the scope of the claimed embodiments” Br. 9.
The difficulty with the Examiner’s position is that no claim
construction analysis has been done. “That determination [for definiteness]
requires a construction of the claims according to the familiar canons of
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claim construction. Only after a thorough attempt to understand the
meaning of a claim has failed to resolve material ambiguities can one
conclude that the claim is invalid for indefiniteness.” All Dental Prodx. LLC
v. Advantage Dental Prods. Inc., 309 F.3d 774, 779 (Fed. Cir. 2002).
For these reasons, we reverse the rejection of claims 1, 5-9, 13-17, 21-
24, 35-37 and 41-43 under 35 U.S.C. §112, second paragraph.
Obviousness of claims 1, 8, 9, 16-17, 24 and 41-43 over Danknick and
Eatough.
We are persuaded that the Examiner failed to establish a prima facie
showing of obviousness in rejecting claims 1, 8, 9, 16-17, 24 and 41-43 over
Danknick and Eatough.
The Examiner finds that “Danknick teaches a method for invalidating
a resource record in a local cache at a client computer system within a
network” including “when a predetermined number of messages from the
other client querying the device have been received without receiving the
multicast response from the device to the other client, invalidating the
resource record associated with the device (Col. 9, lines 35-40, Col. 10, lines
39-45)” Ans. 5.
In particular, the Examiner states that “Danknick teaches NEB (the
examiner equated NEB to be the client) broadcasts for device addresses from
another device in the LAN (the examiner equated device addresses to be the
resource record) (see Col. 9, lines 22-29). NEB waits predetermined period
of times for response (see Col. 9, lines 30-32)” and that “Danknick’ s
teaching of sending broadcast request for device address, waiting for
response and removing the device address from the device address list when
it doesn't receive response after predetermined number of request meets the
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claim limitation” Ans. 9. The Examiner’s findings are not supported by
Danknick.
Danknick does not disclose a method where a device “broadcasts for
device addresses from another device” as found by the Examiner, but
teaches a method where a device broadcasts a request to other network
devices to determine whether any other device is operating as list manager,
and in the absence of which, designates itself as the list manager. See
Danknick, column 9, lines 21-60.
Thus we agree with Appellant that while “Danknick describes a
device that (when configured as a list manager) creates and stores a list of
devices on the LAN, and provides the list of devices to other peripheral
devices on request”, the Examiner did not identify any teaching in Danknick
of “an interaction between three entities, i.e., (1) a client computer system;
(2) another client; and (3) a device, such as in the claimed embodiments”
App. Br. 11.
Accordingly, we will not sustain the Examiner’s obviousness rejection
of independent claims 1, 9 and 17, or of claims 8, 16, 24 and 41-43 which
depend therefrom.
Obviousness of claims 35-37 over Danknick, Eatough and George
Claim 35 depends from claim 1, claim 36 depends from claim 9 and
claim 37 depends from claim 17. George does not cure the deficiency in the
rejection of claims 1, 9 and 17 discussed supra. Accordingly, claims 35-37
suffer from the same deficiency and we do not sustain the Examiner’s
rejection of these claims.

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NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION against independent claim 9 and dependent
claims 13-16, 36 and 42 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.
Claim 9 is directed to “[a] computer-readable storage medium storing
instructions that when executed by a computer cause the computer to
perform a method for invalidating resource records in a local cache at a
client computer system within a network”. We note that paragraph [0021] of
the Specification describes that the computer readable storage medium may
be “computer instruction signals embodied in a transmission medium (with
or without a carrier wave upon which the signals are modulated).” Giving
this claim the broadest reasonable construction in light of the Specification,
the “computer-readable storage medium” of claim 9 encompasses transitory
propagating signals. Accordingly, these claims are directed to non-statutory
subject matter. See In re Nuijten, 500 F.3d 1346, 1357-58 (Fed. Cir. 2007)
(“A transitory, propagating signal like Nuitjen’s is not a ‘process, machine,
manufacture, or composition of matter.’. . . [T]hus, such a signal cannot be
patentable subject matter.”); see also Subject Matter Eligibility of Computer
Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (“A claim
drawn to such a computer readable medium that covers both transitory and
non-transitory embodiments may be amended to narrow the claim to cover
only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by
adding the limitation ‘non-transitory’ to the claim.”).
In light of the above, claims 9, 13-16, 36 and 42 are rejected under
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35 U.S.C. § 101 as being directed to non-statutory subject matter pursuant to
our authority under 37 C.F.R. § 41.50(b).

DECISION
The rejection of claims 1, 5-9, 13-17, 21-24, 35-37 and 41-43 under
35 U.S.C. §112, second paragraph, is REVERSED.
The rejection of claims 1, 8, 9, 16-17, 24 and 41-43 under 35 U.S.C.
103(a) as unpatentable over Danknick and Eatough is REVERSED.
The rejection of claims 35-37 under 35 U.S.C. 103(a) as unpatentable
over Danknick, Eatough and George is REVERSED.
We enter a NEW GROUND OF REJECETION of claims 9, 13-16, 36
and 42 under 35 U.S.C. § 101.
The decision contains a NEW GROUND OF REJECTION pursuant
to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that, “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THIS DECISION:
must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner.
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a) (1)(iv).
REVERSED; 37 C.F.R. § 41.50(b)

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