Ex Parte Dale et al

Board of Patent Appeals and Interferences

Dec 13, 2007

10064080 (B.P.A.I. Dec. 13, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN G. DALE and BRADFRED W. CULP
____________

Appeal 2007-3132
Application 10/064,080
Technology Center 2100
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Decided: December 13, 2007
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Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-19 and 22. Claims 21 and 21 have been withdrawn in
response to a Restriction Requirement filed Nov. 16, 2205 (App. Br. 6). We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal 2007-3132
Application 10/064,080

A. INVENTION
The invention at issue involves a network system in which
information pertaining to devices in the network is provided to devices that
request the data. In particular, Appellants’ invention provides for a router
coupled to a cache where the cache stores data associated with a device
(Spec. 5). In response to an inquiry or request, the router reads the stored
data from cache and forwards the data from the cache to the requesting
device (Id. 7).

B. ILLUSTRATIVE CLAIMS
Claims 1 and 11, which further illustrate the invention, follow.
1. A method of using a router to cache inquiry data
corresponding to a target device in a network having a plurality of
client devices, the method comprising:
storing inquiry data corresponding to a target device in a cache
memory;
receiving a request for the inquiry data corresponding to the
target device;
reading the inquiry data from the cache memory; and
providing the inquiry data corresponding to the target device in
response to the request.

11. A device comprising:
a router configured to route data between one or more hosts and
one or more target devices; and
a cache memory coupled to the router;
wherein the router is configured to store inquiry data received
from the one or more target devices and to provide at least a portion of
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the stored inquiry data in response to a request for inquiry data
corresponding to one of the target devices that is busy.

C. REJECTION
Claims 1-19 and 22 stand rejected under 35 U.S.C. § 102(e) as
anticipated by U.S. Patent No. 6,725,272 (“Susai”).

II. CLAIM GROUPINGS
“When multiple claims subject to the same ground of rejection are
argued as a group by appellant, the Board may select a single claim from the
group of claims that are argued together to decide the appeal with respect to
the group of claims as to the ground of rejection on the basis of the selected
claim alone. 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.” 37 C.F.R.
§ 41.37(c)(1)(vii) (2006).1
Here, Appellants argue claims 1-10 and 22, which are subject to the
same ground of rejection, as a first group (App. Br. 16-22) and claims 11-19
as a second group (Id. 23-25). We select claim 1 as the sole claim on which
to decide the appeal of the first group and claim 11 as the sole claim on
which to decide the appeal of the second group.

1 We cite to the version of the Code of Federal Regulations in effect at the
time of the Appeal Brief. The current version includes the same rules.

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III. CLAIMS 1-10 AND 22
“Rather than reiterate the positions of parties in toto, we focus on the
issue therebetween.” Ex Parte Filatov, No. 2006-1160, 2007 WL 1317144,
at *2 (BPAI 2007). Appellants argue that Susai fails to disclose “inquiry
data” as defined in the instant specification (App. Br. 17-18) and fails to
disclose responding to a request by providing requested data from a cache
memory (Id. 19-22).
In response, the Examiner finds that Susai discloses a response time,
waiting time, or availability of a network device and equates any of these
elements with inquiry data recited in claim 1. The Examiner further finds
that Susai discloses a “proxy cache” and equates the proxy cache with the
cache memory recited in claim 1 (Ans. 11-12).
Appellants assert that a request for “inquiry data” as defined in the
specification at paragraph [0005]-[0006] is “not simply a request for any
data stored on a target device, but is a request for data about the target
device itself.” (App. Br. 17-18). Based on this interpretation, Appellants
assert that Susai’s disclosure of “availability of a network device” is not
equivalent to the claimed “inquiry data.” (Reply Br. 5).
Contrary to Appellants’ assertion, we note that the Specification fails
to provide a definition of the term “inquiry data.” Rather, the Specification
discloses that inquiry data “typically relates to the device itself . . .” (Spec.
2). We construe the term “typically” in accordance with its plain meaning,
e.g., “typically” means “in most cases” or “characteristically.” Based on this
usage of the term “typically,” it stands to reason that if “inquiry data” is data
about the target device itself “most of the time,” then inquiry data is some
other form of data at any of the remaining times.
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In view of the lack of a definitive explanation in the Specification of
what “inquiry data” includes and the lack of extrinsic evidence indicating
what one of ordinary skill in the art would have understood the term “inquiry
data” to encompass, we turn to the plain meaning of the terms. Chef
America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373 (Fed. Cir. 2004)
(Ordinary, simple English words whose meaning is clear and
unquestionable, absent any indication that their use in a particular context
changes their meaning, are construed to mean exactly what they say).
Based on the plain meaning of the terms, we apply a reasonably broad
interpretation and construe the term “inquiry data” to include any data
associated with an inquiry or request. “[T]he PTO gives claims their
‘broadest reasonable interpretation.’” In re Bigio, 381 F.3d 1320, 1324
(Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).
Susai discloses that “the process begins when a client requests access
to one of the servers in the server farm . . . tended by the interface unit 202”
(col. 5, ll. 3-6). Because information on the availability of a network device
is associated with the device and this information is provided in response to
a client’s request, we find that information on the availability of a network
device constitutes “inquiry data” as defined herein. Hence, we agree with
the Examiner that any of response time, waiting time, or availability of a
device can constitute “inquiry data.”
We also find that, regardless of its definition, “inquiry data”
constitutes “non-functional descriptive material” and is not accorded
patentable weight. Functional descriptive material consists of data
structures or computer programs which impart functionality when employed
as a computer component. Non-functional descriptive material refers to data
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content that does not exhibit a functional interrelationship with the substrate
and does not affect the way the computing processes are performed. See
MPEP § 2106.01 (2007) (“‘Non-functional descriptive material’ includes but
is not limited to music, literary works and a compilation of mere
arrangement of data.”).
When “non functional descriptive material” is recorded or stored in a
memory or other medium (i.e., substrate) it is treated as analogous to printed
matter cases where what is printed on a substrate bears no functional
relationship to the substrate and is given no patentable weight. See In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (“Where the printed matter is
not functionally related to the substrate, the printed matter will not
distinguish the invention from the prior art in terms of patentability.
Although the printed matter must be considered, in that situation it may not
be entitled to patentable weight.”). See also Ex parte Curry, 84 USPQ2d
1272 (BPAI 2005) (nonprecedential) (Federal Circuit Appeal No. 2006-
1003; affirmed without opinion Jun. 12, 2006). The Examiner need not give
patentable weight to descriptive material absent a new and unobvious
functional relationship between the descriptive material and the substrate.
See In re Lowry, 32 F.3d 1579, 1582-83 (Fed. Cir. 1994); In re Ngai, 367
F.3d 1336, 1338 (Fed. Cir. 2004). See also Ex parte Mathias, 84 USPQ2d
1276 (BPAI 2005) (nonprecedential) (Federal Circuit Appeal No. 2006-
1103; affirmed without opinion Aug. 17, 2006); Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise
been obvious. In re Ngai, 367 F.3d at 1339.
We find that the inquiry data constitutes non-functional descriptive
material. In other words, we find that the steps of storing the inquiry data
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and providing the inquiry data in response to a request do not change their
functions based upon the content of the inquiry data. Because the inquiry
data bears no functional relationship to the substrate (i.e., the storage or
cache memory), we accord these claim limitations no patentable weight as
non-functional descriptive material.
Based on the assertion that Susai fails to disclose inquiry data,
Appellants further argue that Susai fails to disclose responding to a request
by providing the requested (inquiry) data from a cache memory (Reply Br.
10). Because we find that Susai discloses “inquiry data” and that “inquiry
data” is accorded no patentable weight in claim 1, we are unconvinced by
Appellants’ argument.
Because Appellants have failed to demonstrate that the Examiner
erred in rejecting claim 1, we affirm the rejection of claim 1 and of claims 2-
10 and 22, which fall therewith.

IV. CLAIMS 11-19
As set forth above, we select claim 11 as the sole claim on which to
decide the appeal of the group.
Appellants assert that Susai fails to disclose inquiry data (App. Br. 23-
24). As aforementioned, we are unpersuaded by this argument.
Appellants further assert that Susai fails to disclose a router
configured to respond to a request for inquiry data corresponding to one of
the target devices that is busy using stored inquiry data (App. Br. 24-25). In
response, the Examiner finds that Susai discloses an interface unit 202 that
“could be a router (See column 4, lines 22-24).” (Ans. 13). In addition, the
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Examiner finds that interface unit 202 of Susai “could be a proxy cache (See
column 4, lines 22-24).” (Ans. 12).
We agree with the Examiner that Susai discloses the device of claim
11. Susai discloses a network with an interface unit 202 that includes any of
a proxy cache, router, or any other network device (col. 4, ll. 21-24).
Therefore, Susai discloses a router and a cache memory. The interface unit
202 receives a client request (col. 5, ll. 3-6) and provides data from a
requested server based on the request (col. 6, ll. 25-27). Based on standard
operation of a proxy cache, interface unit 202 (as a proxy cache) stores or
caches retrieved data (such as commonly used web page information) from a
server. The proxy cache receives the data from target devices (i.e., the
server) and stores the information locally such that the data can be delivered
to the next request in a timely manner. Hence, based on the standard
definition of proxy cache, the interface unit 202 of Susai receives “inquiry
data” (as aforementioned, including non-functional descriptive material)
from a target device (i.e., a server), stores the data locally according to a
standard function of a proxy cache, and provides the inquiry data in response
to a request from a client.
Because Appellants have failed to demonstrate that the Examiner
erred in rejecting claim 11, we affirm the rejection of claim 11 and of claims
12-19, which fall therewith.

V. ORDER
In summary, the rejection of claims 1-19 and 22 under § 102(e) is
affirmed.

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No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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