Ex Parte Coker

Board of Patent Appeals and Interferences

May 19, 2009

10254384 (B.P.A.I. May. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOHN COKER
____________________

Appeal 2008-3901
Application 10/254,384
Technology Center 2400
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Decided:1 May 19, 2009
____________________

Before ALLEN R. MACDONALD, ST. JOHN COURTENAY, III, and
DEBRA K. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1, 3, 4, 8, 11-14, 22, 23, 26, and 33-35. Claims 2, 5-7, 9-10, 15-21,
24-25, and 27-32 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

Introduction
According to Appellant, the invention is a system and method for
processing a request received from a client, with a web emulator (Abstract).
The request is serviced using available data (id.)

Exemplary Claim(s)
Claim 1 is an exemplary claim and is reproduced below:
1. A method of operating a web application comprising:

receiving a request from a client web browser;

processing the request with a web emulator;

if an external database is accessible over a network, servicing the
processed request from data in the external database; and

if the external database is not accessible over the network, servicing
the processed request from data in a local database.

Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Maddalozzo US 5,878,218 Mar. 2, 1999
Butts US 6,233,542 B1 May 15, 2001
Maddalozzo US 5,878,218 Mar. 2, 1999

Rejection
The Examiner rejected claims 1, 3, 4, 8, 11-14, 22, 23, 26, and 33-35
under 35 U.S.C. § 103(a) as being obvious over Butts and Maddalozzo.

GROUPING OF CLAIMS
Appellant argues claims 1, 3, 4, 8, 11-14, 22, 23, 26, and 33-35 as a
group (App. Br. 6 and 13). Since Appellant’s arguments are based on two
elements Appellant indicates are substantially the same in the four
independent claims on appeal (claims 1, 22, 23, and 33), we choose claim 1
as the representative claim. Therefore, claims 3, 4, 8, 11-14, 22, 23, 26, and
33-35 will be treated as standing or falling with claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii) (“Notwithstanding any other
provision of this paragraph, the failure of appellant to separately argue
claims which appellant has grouped together shall constitute a waiver of any
argument that the Board must consider the patentability of any grouped
claim separately.”)

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ISSUES
35 U.S.C. § 103(a): claims 1, 3, 4, 8, 11-14, 22, 23, 26, and 33-35
Appellant asserts that Maddalozzo describes a system designed to
access data sources within a private network if the data is available (App. Br.
7). More specifically, Appellant contends Maddalozzo first checks for a file
in a local cache on a computer, then in a cache provided by a collection of
computers on a private network (“common cache”), and finally in sources
located in an external network if a valid version of the file is not located
either in the local cache or the “common cache” (App. Br. 8-9). Therefore,
Appellant argues Maddalozzo “discloses the reverse of the claim
limitations.” (App. Br. 9, emphasis in original).
The Examiner finds Maddalozzo teaches that if an external database is
accessible over a network, the processed request is serviced from data in the
external database (Ans. 7).

Issue 1: Has Appellant met the burden of showing the Examiner erred
in finding Maddalozzo teaches and/or suggests servicing a processed request
in an external database if the external database is accessible over a network,
and, if the external database is not accessible over the network, servicing the
processed request from data in a local database?

Appellant further contends that the Examiner has not provided
evidence to show motivation absent impermissible hindsight (App. Br. 10).
Specifically, Appellant argues Butts discloses a network environment that
allows connection of a client system to a legacy host system using an
intermediate server system but provides no indication of a need for finding
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data in either a local or common cache (App. Br. 11). Appellant asserts that
Butts teaches the data is resident on the host machine and is accessed via a
terminal session on that host machine. (id.) Appellant also argues
Maddalozzo does not disclose performing the process through a web
emulator, and thus a motivation to combine Butts and Maddalozzo does not
exist (App. Br. 6 and 12). Additionally, Appellant argues Butts will not
work in an off-line mode, as described by Appellant’s claims (App. Br. 13).
The Examiner finds the motivation to combine Maddalozzo’s
teachings with the computer system of Butts would have been to enable
users to download from a private network specific data originating from a
source external to the defined private network (Ans. 7-8). The Examiner
further finds that both Butts and Maddalozzo operate in a network and
download/access information in a communication network (Ans. 8). The
Examiner points out that since “an off-line mode” is not recited in
Appellant’s claim, the question of whether Butts teaches this feature is not
considered (Ans. 8).

Issue 2: Has Appellant met the burden of showing the Examiner erred
in by improperly combining the Butts and Maddalozzo referencesfinding
motivation existed to combine Butts and Maddalozzo?

FINDINGS OF FACT (FF)
Appellant’s Invention
(1) The system environment may include more than one database
(Spec. 9, [0049]). One or more subsets of the database can be created or
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replicated by a replication manager (id.). In addition, mobile web clients can
have additional remote databases, also called local databases (id.). These
mobile web clients can create and update data locally that will be ultimately
propagated up to the primary database when each mobile web client
synchronizes with the system server (Spec. 9, [0049]).
(2) The mobile web clients are designed and configured for local
data access and thus can have their own local database and/or local file
system (Spec. 11, [0060]). Mobile web clients can interact with other
components within the system via the gateway server (id.). Through
synchronization, the modifications from the local database and the server
database can be exchanged (id.).

Butts’ Invention
(3) Butts teaches a server and terminal emulator for persistent
connection to a legacy host system (col. 1, ll. 20-23). The connection to the
legacy host system provides access to data and applications on the host
system by client system users (col. 1, ll. 36-38 and col. 4, ll. 59-63).
(4) The system provides connectivity to legacy host systems
through a web browser without the need for specialized emulation software
to be manually loaded on each client system and without the need for user
programming (col. 4, ll. 5-10). Existing network capabilities may be used to
provide a network environment that allows use of a public Internet/intranet
environment having web browser tools and web-serving to incorporate
Internet-type technologies with existing network architectures (col. 4, ll. 15-
23).
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(5) An interface to legacy data flows across a TCP/IP socket
connections giving users persistent bidirectional access to legacy host
system data in terminal sessions using a web browser (col. 5, ll. 12-16 and ll.
25-27).
Maddalozzo’s Invention
(6) Maddalozzo teaches a system and method for accessing the
most recent version of a requested data file that has been downloaded into a
private network from a source external to the private network (Abstract).
(7) A network of computers defines the private network (Abstract).
More than one computer within the defined private network (usually
network servers also serving as gateways between the sub-networks of the
private network or gateways to connect the private network to one or more
external networks) are specified as composing a “common cache” (Abstract
and col. 8, ll. 35-46 ).
(8) A copy of any data file entering the defined private network
from an external source is cached at one or more computers which are part
of the “common cache” (Abstract).
(9) When a web browser application makes a request for a specific
data file, the system checks if the local cache has a copy (col. 9, ll. 18-21
and Fig. 5, element 112).
(10) If a copy is on local cache, then a timestamp and checksum are
established for the data file copy on the local cache (col. 9, ll. 23-28 and Fig.
5, element 114). Once the timestamp and checksum for the copy of the file
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in local cache has been established, a check is performed to determine, if a
private network address of a defined “common cache” computer that has a
copy of the file is known (col. 9, ll. 28-33 and Fig. 5, element 115).
(11) If no private network address is found, various private network
computers comprising the common cache are queried if they have a copy of
the file (col. 9, ll. 35-39 and Fig. 5, element 116).
(12) The order in which private data caches are searched is
determined by a network administrator (col. 9, ll. 39-41). For example, if
common cache is defined as computers with network caches, network server
cache would be searched first (col. 9, ll. 41-45). In an example, the network
server cache would be searched first and if no copy existed, the search
would proceed to an Internet host cache and if the file is still not found, the
search would continue throughout the private network as specified by the
network administrator (col. 9, ll. 45-53).

PRINCIPLES OF LAW
Claim Construction

“The Patent and Trademark Office (PTO) must consider all claim
limitations when determining patentability of an invention over the prior
art." In re Lowry, 32 F.3d 1579, 1582 (Fed. Cir. 1994) (citing In re Gulack,
703 F.2d 1381, 1385 (Fed. Cir. 1983)). "Claims must be read in view of the
specification, of which they are a part." Markman v. Westview Instruments,
Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc) (citations omitted).

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§103 - Obviousness
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). If the Examiner’s burden is met, the burden
then shifts to the Appellants to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the arguments. See
Oetiker, 977 F.2d at 1445.

While this court indeed warns against employing hindsight, its
counsel is just that – a warning. That warning does not provide
a rule of law that an express, written motivation to combine
must appear in prior art references before a finding of
obviousness. Stated differently, this court has consistently
stated that a court or examiner may find a motivation to
combine prior art references in the nature of the problem to be
solved.
Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276 (Fed. Cir. 2004); See
also Pro-Mold & Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573
(Fed. Cir. 1996); In re Huang, 100 F.3d 135, 139 n.5 (Fed. Cir. 1996).

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We note our reviewing court has recently reaffirmed that:

an implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but
when the “improvement” is technology-independent and the
combination of references results in a product or process that is
more desirable, for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient
… In such situations, the proper question is whether the
ordinary artisan possesses knowledge and skills rendering him
capable of combining the prior art references.

DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (emphasis in original).

ANALYSIS
35 U.S.C. § 103(a): claims 1, 3, 4, 8, 11-14, 22, 23, 26, and 33-35

Issue 1
In the system of Maddalozzo, when a web browser requests a specific
file, the local cache is checked and the common cache is checked (FF 9 and
FF 10). Since “external” is defined as “situated outside, apart, or beyond”
Merriam Webster’s Collegiate Dictionary 411 (10th ed. 2000), we find the
common cache is an “external” database. Therefore, we find that in the
system of Maddalozzo, when a web browser requests a specific file, the
local cache is checked, and then the external (common) cache is checked.
The common cache is composed of more than one computer within
the private network (FF 7 and Fig. 4). When a request is made for a specific
data file, the common cache is queried as to whether it has a copy (FF 11).
Therefore, the common cache can be communicated with by the computers
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within the private network (FF 7). Since “accessible” is defined as
providing access (permission, liberty, or ability to enter, approach,
communicate with, or pass to and from) Merriam Webster’s Collegiate
Dictionary 6 (10th ed. 2000), we find the external or common cache of
Maddalozzo is accessible over the private network.
Maddalozzo additionally teaches that, in response to a request from a
web browser, the local cache and the common cache are checked to
determine if a copy of the file is resident in the common cache (FF 9, FF 10,
and Fig. 5A, steps 112, 115, 117, 118, 144, and 146). Therefore, we find in
the system of Maddalozzo, if an external database is accessible over a
network, the request is serviced in the external database. Further, we find
Maddalozzo teaches if the external database is not accessible over the
network, the processed request is serviced from data in a local database.
We additionally consider Appellant’s argument that Maddalozzo’s
sequence of searching discloses the reverse of the claim limitations. In
response, we note that our reviewing court has determined that “[u]nless the
steps of a method actually recite an order, the steps are not ordinarily
construed to require one.” Interactive Gift Express, Inc. v. CompuServe, Inc.,
256 F.3d 1323, 1342 (Fed. Cir. 2001) (citation omitted). See also Altiris,
Inc. v. Symantec Corp., 318 F.3d 1363, 1369-71 (Fed. Cir. 2003) (District
court erred in claim construction by reading a step order from the written
description into the claims). Here, Maddalozzo teaches that if an external
database is accessible, the external database services the processed request;
and, if an external database is not accessible, the local cache services the
processed request, as discussed supra. Therefore, we find Maddalozzo
teaches both steps.
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Accordingly, Appellant has not met the burden of showing the
Examiner erred in finding that Maddalozzo teaches and/or suggests servicing
a processed request in an external database if the external database is
accessible over a network, and, if the external database is not accessible over
the network, servicing the processed request from data in a local database.

Issue 2
Appellant additionally argues an ordinary person skilled in the art
would not have been motivated to incorporate the technology of Maddalozzo
into the system of Butts (App. Br. 12). We find both Butts and Maddalozzo
teach computer networks that allow a first computer access to data resident
on another computer (FF 3 and FF 6). Specifically, Butts allows a client
computer access to the data and applications on the host computer across a
TCP/IP socket connections or a web browser (FF 5). Maddalozzo allows
access to data across a private network (FF 6). Further, we find the
inventions of Butts and Maddalozzo are from the same field of endeavor –
providing one computer access to data on another computer in a network.
The Examiner has found that incorporating Maddalozzo into the system of
Butts would enable users to download specific data from an external source
(Ans. 7-8). We agree. We find that incorporating Maddalozzo’s use of a
common cache with the system of Butts (which emulates a computer and
allows access to the computer’s data) would have given a user the ability to
retrieve data from different computer systems on the network, and the ability
to retrieve the most current version of the data.
Appellant’s claims do not require working in an off-line mode and
thus, we do not consider this feature.
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We find the Examiner has offered a rational underpinning to support
his conclusion of obviousness. Further, we find the Examnier’s proffered
combination of Butts and Maddalozzo would have resulted in a product that
allows downloading of specific data from external sources. We additionally
find the ordinary artisan would have possessed the common knowledge and
skills rendering him or her capable of combining the technology of Butts and
Maddalozzo. See DyStar, 464 F.3d at 1368. Therefore, based on the record
before us, we conclude that modifying the system of Butts with the invention
taught by Maddalozzo would have been obvious to one skilled in the art.
Accordingly, we conclude Appellant has not met the burden of showing the
Examiner erred by improperly combining the Butts and Maddalozzo
references.

CONCLUSION
Based on the findings of facts and analysis above, Appellant has not
established the Examiner erred in finding that Maddalozzo teaches and/or
suggests servicing a processed request in an external database if the external
database is accessible over a network, and, if the external database is not
accessible over the network, servicing the processed request from data in a
local database.
Additionally, Appellant has not established the Examiner erred by
improperly combining the Butts and Maddalozzo references.
Thus, Appellant has not established the Examiner erred in concluding
that claim 1 is obvious over the combination of Butts and Maddalozzo.
Based on Appellant’s arguments and grouping, claims 3, 4, 8, 11-14, 22, 23,
26, and 33-35 fall with claim 1.
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DECISION
We affirm the Examiner’s decision rejecting claims 1, 3, 4, 8, 11-14,
22, 23, 26, and 33-35 under 35 U.S.C. § 103(a).

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

erc

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