Ex Parte Drake et al

Board of Patent Appeals and Interferences

Aug 21, 2009

10184216 (B.P.A.I. Aug. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte WILLIAM TREY DRAKE, KENT ARTHUR SPAULDING, and
DAVID GREGORY GADBOIS
__________

Appeal 2008-004159
Application 10/184,216
Technology Center 2400
__________

Decided: August 21, 2009
__________

Before JAMES D. THOMAS, LANCE LEONARD BARRY, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-16 and 33-41. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
Appeal 2008-004159
Application 10/184,216

2
Invention
The invention relates to runtime versioning in the context of
information processing systems (e.g., dynamic modification of an
information processing system without taking the overall system off-line)
(Spec. ¶ [1001]).
Independent claims 1 is illustrative:
1. A service implementation comprising:
at least one persistent data store;
a configuration manager that is asynchronously updated in
correspondence with changes to the at least one persistent data store;
and
a request handling interface that employs a factory to instantiate
a handler instance for handling of a particular request, the handler
instance being instantiated based on then current factory-specific
configuration information the configuration manager.

Reference
The Examiner relies upon the following reference as evidence in
support of the rejections:
Ma US 5,920,725 Jul. 6, 1999

Rejections
Claims 1, 2, 4-7, 16, 33-38, and 41 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Ma.
Appeal 2008-004159
Application 10/184,216

3
Claims 3, 8-15, 39, and 40 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ma.
ISSUE 1
Appellants argue that Ma’s “object adapter” is not a configuration
manager because “[a] configuration manager, as understood by one of
ordinary skill in the art . . . does more than merely act as a broker for notice
of modifications” (App. Br. 4) and “Ma’s ‘object adapter’ does not maintain,
e.g., cache, an up-to-date version of configuration data” (id.).
Issue: Did Appellants demonstrate that the Examiner erred in finding
that Ma teaches a configuration manager?
ISSUE 2
Appellants argue that Ma does not teach a configuration manager that
is asynchronously updated in correspondence with changes to at least one
persistent data store because “Ma appears to use synchronous updating
techniques” (App. Br. 4).
Issue: Did Appellants demonstrate that the Examiner erred in finding
that Ma teaches its configuration manager is asynchronously updated in
correspondence with changes to at least one persistent data store?
ISSUE 3
Appellants argue that “Ma has an out-of-band notification that object
definition information has changed” (App. Br. 6) rather than performing “a
Appeal 2008-004159
Application 10/184,216

4
persistent search, e.g., Ma does not detect that configuration information has
changed” (id.).
Issue: Did Appellants demonstrate that the Examiner erred in finding
that Ma teaches a service implementation configured to initiate a persistent
search?
ISSUE 4
Appellants argue that Ma does not teach a configuration manager
notifying a factory because “[t]he object cache of Ma is not a factory” (App.
Br. 6).
Issue: Did Appellants demonstrate that the Examiner erred in finding
that Ma teaches its configuration manager is configured to notify a factory?
ISSUE 5
Appellants argue that Ma does not teach accessing updated factory-
specific configuration information of a configuration manager by a factory
responsive to receiving a second message for processing by the factory
because “Ma does not disclose a factory receiving a first message or a
second message” (App. Br. 7), “[r]eleasing an object instance upon a
reference count reaching zero does not disclose or suggest a factory
accessing updated factory-specific configuration information in response to
receiving a second message” (id.), and “the object adapter [of Ma] does not
have configuration information” (id.).
Issue: Did Appellants demonstrate that the Examiner erred in finding
that Ma teaches accessing updated factory-specific configuration
Appeal 2008-004159
Application 10/184,216

5
information of a configuration manager by a factory responsive to receiving
a message for processing by the factory?
ISSUE 6
Appellants argue that Ma does not teach a request factory and that the
“Examiner merely refers to the background of Ma disclosing a browser,
which is clearly not a request factory” (App. Br. 7).
Issue: Did Appellants demonstrate that the Examiner erred in finding
that Ma teaches a request factory?
ISSUE 7
Appellants argue that Ma does not teach initiating a directory server
persistent search to detect changes to the information stored in a data storage
device because “Ma’s disclosure of the object adapter notifying an object
cache of modified object classes does not disclose or suggest such a
persistent search” (App. Br. 8).
Issue: Did Appellants demonstrate that the Examiner erred in finding
that Ma teaches initiating a directory server persistent search to detect
changes to the information stored in a data storage device?
ISSUE 8
Appellants argue that the “Examiner improperly takes official notice
of the state of the art” (App. Br. 8).
Issue: Did Appellants demonstrate that the Examiner improperly took
official notice of the state of the art?
Appeal 2008-004159
Application 10/184,216

6
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
1. Ma teaches that “[o]bject adapter 80 receives a list of the
modified object classes and sends a notification to the object
cache” (col. 8, ll. 11-12).
2. Ma teaches that when an object class has been revised
“[s]ome objects can be deleted right away when their reference
count is zero . . . [but] busy objects remain until released by the
other objects” (col. 8, ll. 15-19).
3. Ma teaches that “[o]bject adaptor 80 is called by meta
server 70, which sends a list of the modified classes to object
adaptor 80” (col. 11, ll. 14-15).
4. Ma teaches that “[o]bject caches subscribe to object
adaptor 80 for a particular class” (col. 9, ll. 9-10) and, after
receiving notification from the object adapter that the object
class has changed, “[a]ny new object instances are generated
from the new class definition” (id., ll. 20-21).
5. Ma teaches that “[t]he revised object definition will be
stored into meta server’s non-volatile storage 62 and is
compiled and linked by meta server 70 to generate a new class
factory for the revised object, modified class 68” (col. 6, ll. 52-
55).
Appeal 2008-004159
Application 10/184,216

7
6. Ma teaches that “[e]very time an object is instantiated,
the object class definition in meta server 70 serves as the
blueprint” (col. 6, ll. 48-49).
7. Figure 1 of Ma describes “a diagram of a distributed
application” (col. 1, l. 50), in the prior art (Fig. 1), wherein
“[t]hin clients such as browser 16 on client 10′ merely request
data from database 26 on server machine 20 using server
objects 22” (col. 1, ll. 53-55).
8. Ma teaches that
[o]bjects may be in use by another object and often
cannot immediately be deleted . . . . Instead of
immediately deleting obsolete objects, a check is made to
determine if other objects are using the object about to be
re-loaded. The object’s reference count is tested . . . .
Once the reference count reaches zero, then no other
objects are referencing the object. The object can then be
deleted safely.

(Col. 7, ll. 26-36).
9. Appellants’ Specification teaches that a “[c]onfiguration
manager 180 detects the update via a persistent search message
to directory server 190. Responsive to detecting the update at
directory server 190, configuration manager 180 updates its
own respective client-specific caches . . . as appropriate, and
informs the appropriate clients . . . via callback messages”
(¶ [1022]) (emphasis added).
Appeal 2008-004159
Application 10/184,216

8
PRINCIPLES OF LAW
Claim interpretation
“In the patentability context, claims are to be given their broadest
reasonable interpretations. . . . [L]imitations are not to be read into the
claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted).

Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).

Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17
(1966).
ANALYSIS
Issue 1
Appellants’ arguments that Ma does not teach the claimed
configuration manager are unpersuasive because Appellants have not shown
why a configuration manager must do more than act as a broker for notice of
Appeal 2008-004159
Application 10/184,216

9
modifications. Because Appellants’ configuration manager informs clients
of detected directory server updates, brokering is one of the managing
functions of Appellants’ configuration manager (FF 9). Thus, one of
ordinary skill in the art would appreciate that Ma’s object adapter performs
at least one of the functions of a configuration manager.
Appellants point to additional disclosed features of a configuration
manager, such as maintaining an up-to-date version of configuration data
(App. Br. 4). However, Appellants do not identify claim language
identifying a minimal set of configuration manager features. “[L]imitations
are not to be read into the claims from the specification.” In re Van Geuns,
988 F.2d at 1184. Therefore, Appellants cannot rely on the language found
only in the Specification and not in the claims.
For at least these reasons, we find that Appellants have not sustained
the requisite burden on appeal in providing arguments or evidence
persuasive of error in the Examiner’s 35 U.S.C. § 102(b) rejection of claims
1 and 33, and of claims 2, 4-7, 16, 32-38, and 41 which depend therefrom,
with respect to Issue 1.
Issue 2
We find unpersuasive Appellants’ arguments that Ma does not teach
its configuration manager is asynchronously updated in correspondence with
changes to at least one persistent data store. Appellants argue that Ma uses
synchronous updating techniques but that Appellants’ invention uses
asynchronous update techniques (App. Br. 4-5), but Appellants do not define
Appeal 2008-004159
Application 10/184,216

10
the different between synchronous and asynchronous updating techniques
such that the alleged differences are apparent.
Based on Appellants’ disclosure, a person of ordinary skill in the art
would understand asynchronous updates to mean updates “[r]esponsive to
detecting [an] update” (FF 9). Likewise, Ma teaches that its object adapter
receives a list of modified object classes (i.e., detecting an update) and sends
a notification (i.e., updating in response to the detection) (FF 1). Moreover,
Ma teaches delayed deletion of busy objects (FF 2), which is a type of
asynchronous update.
For at least these reasons, we find that Appellants have not sustained
the requisite burden on appeal in providing arguments or evidence
persuasive of error in the Examiner’s 35 U.S.C. § 102(b) rejection of claim
1, and of claims 2, 4-7, 16 which depend therefrom, with respect to Issue 2.
Issue 3
We find unpersuasive Appellants’ argument that Ma teaches an out-
of-band notification that object definition information has changed rather
than performing a persistent search (App. Br. 6). Appellants do not offer
arguments or evidence as to why a reasonably broad interpretation of
“persistent search” would exclude receipt of out-of-band notifications. Ma’s
object adapter detects changes to configuration information by receiving a
list of modifications (FF 1). In doing so, Ma’s object adapter is
continuously (i.e., persistently) receiving the results of an analysis of
whether any modifications have taken place (i.e., searching). Thus we find
that Ma teaches performing a persistent search.
Appeal 2008-004159
Application 10/184,216

11
For at least these reasons, we find that Appellants have not sustained
the requisite burden on appeal in providing arguments or evidence
persuasive of error in the Examiner’s 35 U.S.C. § 102(b) rejection of claim 2
with respect to Issue 3.
Issue 4
We find unpersuasive Appellants’ argument that Ma does not teach
that its configuration manager notifies a factory because the object cache of
Ma is not a factory (App. Br. 6). Appellants merely state that the object
cache is not a factory without offering arguments or evidence to support
their position.
Furthermore, Ma teaches that object caches subscribe to the object
adapter for a particular class, and after receiving notification from the object
adapter that the object class has changed, new object instances are generated
from the new class definition (FF 4). These teachings show that Ma’s class
factories for new object instances are notified when the object cache is
notified (FF 4).
For at least these reasons, we find that Appellants have not sustained
the requisite burden on appeal in providing arguments or evidence
persuasive of error in the Examiner’s 35 U.S.C. § 102(b) rejection of claim 4
with respect to Issue 4.
Issue 5
Appellants offer multiple reasons why Ma does not teach accessing
updated factory-specific configuration information of a configuration
Appeal 2008-004159
Application 10/184,216

12
manager by a factory responsive to receiving a second message for
processing by the factory. Appellants argue that Ma does not disclose a
factory receiving either a first or second message (App. Br. 7). This
argument is unpersuasive because (1) Ma teaches that a generated factory
receives a revised object definition message (i.e., a first message) (FF 5) and
(2) Ma teaches that the generated factory processes a delete message (i.e., a
second message) (FF 8).
Appellants do not offer arguments or evidence to show that the first
message is not processed. They do assert that releasing an object instance
upon a reference count reaching zero does not teach processing a second
message (App. Br. 7), but Appellants do not provide any arguments or
evidence to support this assertion.
Appellants also argue that the object adapter of Ma does not have
configuration information (App. Br. 7). This argument is unpersuasive
because the object class definitions in Ma serve as blueprints for object
instantiation (FF 6). The object class definitions are a form of configuration
information because they describe how the system is configured to work.
For at least these reasons, we find that Appellants have not sustained
the requisite burden on appeal in providing arguments or evidence
persuasive of error in the Examiner’s 35 U.S.C. § 102(b) rejection of claim
35, and of claims 36-38 which depend therefrom, with respect to Issue 5.
Issue 6
We find that Appellants’ argument that Ma does not teach a request
factory is persuasive. The teachings of Ma that the Examiner relied on to
Appeal 2008-004159
Application 10/184,216

13
support this limitation are part of the background section in Ma; they
describe teachings in the prior art for Ma (FF 7). The Examiner has not
shown that these teachings are themselves incorporated into Ma. Moreover,
the Examiner has not shown that the browser in Ma, which uses server
objects to request data (FF 7), actually creates any objects.
For at least these reasons, we find that Appellants have demonstrated
error in the Examiner’s 35 U.S.C. § 102(b) rejection of claim 38 with respect
to Issue 6. We also find that Appellants have demonstrated error in the
Examiner’s 35 U.S.C. § 103(a) rejection of claims 39 and 40, which depend
therefrom, with respect to Issue 6.
Issue 7
We find unpersuasive Appellants’ argument that Ma does not teach
initiating a directory server persistent search to detect changes to the
information stored in a storage device. Appellants argue that Ma’s
disclosure of an object adapter notifying an object cache of modified object
classes does not teach this limitation (App. Br. 8). However, this argument
is moot in light of the Examiner’s clarification that the rejection depends on
the teaching in Ma that the object adapter receives a list of modified object
classes (FF 1; Ans. 13).
For at least these reasons, we find that Appellants have not sustained
the requisite burden on appeal in providing arguments or evidence
persuasive of error in the Examiner’s 35 U.S.C. § 102(b) rejection of claim
41 with respect to Issue 7.
Appeal 2008-004159
Application 10/184,216

14
Issue 8
Appellants argue that the Examiner improperly takes official notice of
the state of the art, citing a passage from MPEP § 2144.03 A (App. Br. 8).
We find Appellants arguments unpersuasive because MPEP § 2144.03(C)
states that to adequately traverse an official notice of the state of the art, “an
applicant must specifically point out the supposed errors in the examiner’s
action, which would include stating why the noticed fact is not considered to
be common knowledge or well-known in the art.”
Appellants do not state why the Examiner’s official notice of the state
of the art includes noticed facts not considered to be common knowledge or
well-known in the art. Furthermore, Appellants have not shown that they
adequately traversed the Examiner’s official notice during prosecution, but
that the Examiner improperly responded to Appellants’ traversal. Therefore,
Appellants do not offer any arguments or evidence to show a basis for
appealing the Examiner’s taking of official notice.
For at least these reasons, we find that Appellants have not sustained
the requisite burden on appeal in providing arguments or evidence
persuasive of error in the Examiner’s 35 U.S.C. § 103(a) rejection of claims
3, 8, 15, 39, 40, and of claims 9-14 which depend therefrom, with respect to
Issue 8.
CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have failed to demonstrate:
Appeal 2008-004159
Application 10/184,216

15
1. that the Examiner erred in finding that Ma teaches a configuration
manager (Issue 1);
2. that the Examiner erred in finding that Ma teaches its configuration
manager is asynchronously updated in correspondence with changes to at
least one persistent data store (Issue 2);
3. that the Examiner erred in finding that Ma teaches a service
implementation configured to initiate a persistent search (Issue 3);
4. that the Examiner erred in finding that Ma teaches its configuration
manager is configured to notify a factory (Issue 4);
5. that the Examiner erred in finding that Ma teaches accessing
updated factory-specific configuration information of a configuration
manager by a factory responsive to receiving a message for processing by
the factory (Issue 5);
6. that the Examiner erred in finding that Ma teaches initiating a
directory server persistent search to detect changes to the information stored
in a data storage device (Issue 7); and
7. that the Examiner improperly took official notice of the state of the
art (Issue 8).
We further conclude that Appellants have demonstrated:
8. that the Examiner erred in finding that Ma teaches a request factory
(Issue 6);
DECISION
We affirm the Examiner’s decision rejecting claims 1-16, 33-37, and
41. We reverse the Examiner’s decision rejecting claims 38-40.
Appeal 2008-004159
Application 10/184,216

16
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-IN-PART

msc

BROOKS KUSHMAN P.C. / SUN / STK
1000 TOWN CENTER, TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075-1238