Ex Parte Eisinger et al

Patent Trial and Appeal Board

Nov 26, 2014

12272081 (P.T.A.B. Nov. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JACOB D. EISINGER, SIR RAMANATHAN,
WILLIAM A. REICHERT III, and
MATTHEW B. TREVATHAN
____________________

Appeal 2012-006628
Application 12/272,081
Technology Center 2400
____________________

Before ROBERT E. NAPPI, MICHAEL J. STRAUSS, and
JOHN F. HORVATH, Administrative Patent Judges.

HORVATH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants request review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1–24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
SUMMARY OF THE INVENTION
The invention is directed to a system and method for securely caching
objects based on annotations associated with the objects. Spec. ¶ 1.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method implemented in a computer infrastructure and
comprising:
receiving an object requiring caching from an application
server;
detecting that an object encryption is activated for the
object;
inspecting an annotation for the object;
determining that the object or one or more attributes of
the object require encryption based on the inspecting;
encrypting the object or the one or more attributes of the
object that require encryption based on the determining using
an encryption type; and
serializing and caching the object in a cache storage,
wherein the computer infrastructure comprises a computing
device including a caching engine that performs the receiving,
the detecting, the inspecting, the determining, the encrypting,
and the serializing and caching.

REJECTIONS
1. Claims 18–23 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Final Action 11.

2. Claims 1–8, 10–13, and 18–24 stand rejected under 35 U.S.C.
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§ 103(a) in view of Bhogal1 and Banditwattanawong.2 Final
Action 14–15.

3. Claims 9 and 15–17 stand rejected under 35 U.S.C. § 103(a) in
view of Bhogal, Banditwattanawong, and Kahn.3 Final Action 41.

4. Claim 14 stands rejected under 35 U.S.C. § 103(a) in view of
Bhogal, Banditwattanawong, and Giereth.4 Final Action 46.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner erred. We are not persuaded by Appellants’
arguments, and sustain the Examiner’s rejections for the reasons that follow.

A. Whether claims 18–22 are directed to patentable subject matter.

Claim 18 recites a system, comprising: “a computing device including
a caching engine operable to: receive an object requiring caching from an
application server . . . and serialize and cache the object in a cache storage.”
Claims App’x.
The Examiner finds claim 18 is directed to software per se. Final
Rejection 11–12. Appellants argue claim 18 recites a computing device,
cache engine and cache storage, and these are physical devices. App. Br. 6.
The Examiner finds the caching engine is included in the computing device,
and the computing device can be provided entirely by software. Ans. 41–42

1 U.S. Patent Pub. No. 2007/0079117 A1 published Apr. 5, 2007.
2 Banditwattanawong et al., Proxy-and-Hook: A Java-based Distributed
Object Caching Framework, 3rd IEEE Int’l Conference on Indus.
Informatics, 819–823 (2005).
3 U.S. Patent Pub. No. 2004/0064692 A1 published Apr. 1, 2004.
4 Giereth, On Partial Encryption of RDF-Graphs, 308–322 (Y. Gil et al.
eds., 2005).
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(citing Spec. ¶¶ 44, 48). Appellants do not challenge this finding, but argue
that claim 18 is nonetheless patent eligible because it also recites receiving
an object from an application server, which is a machine. Reply Br. 2–3.
We are not persuaded by Appellants’ arguments.
Claim 18 recites a system comprising “a computing device . . .
operable to” perform various functions. Claims App’x. Thus, the recited
system need only contain a computing device that performs the recited
functions, including interacting with a cache storage and an application
server, but it need not contain the cache storage and application server.
Because we agree with the Examiner’s finding that the Specification teaches
the computing device can be entirely software based, Ans. 41–42, and
software per se is not patent eligible, see Manual of Patent Examining
Procedure (MPEP) § 2106, I. (8th ed., Rev. 9, Aug. 2012) (citing Gottschalk
v. Benson, 409 U.S. 63, 72, (1972)), we sustain the Examiner’s rejection of
claim 18 under 35 U.S.C. § 101. Moreover, because claims 19–22 depend
from claim 18 and Appellants do not separately argue for their patentability,
we sustain the Examiner’s rejection of claims 19–22 under 35 U.S.C. § 101
as well. See App. Br. 8.
B. Whether claim 23 is directed to patentable subject matter.
Claim 23 recites “[a] computer program product comprising a
computer usable storage medium . . . being an apparatus that stores the
program code, the computer program product includes at least one
component operable to” perform various functions. Claims App’x.
The Examiner finds claim 23 is directed to media that carry transitory
signals, such as wires carrying electrical signals and optical fibers carrying
electromagnetic signals, and therefore not patent eligible. Ans. 44–45
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(citing Spec. ¶¶ 29–40, In re Nuijten, 500 F.3d 1346, 1356–57 (Fed. Cir.
2007)). Appellants argue the claim expressly recites “the computer usable
storage medium being an apparatus,” which cannot be considered a
transitory signal. App. Br. 8. Appellants further argue the Board found
computer usable storage media directed to statutory subject matter. Reply
Brief 3–4 (citing Ex Parte Hu, Appeal No. 2010-000151 (BPAI 2012)). We
are not persuaded by Appellants’ arguments.
Although Appellants’ Specification gives several examples of a
computer readable storage medium, the examples provided neither limit nor
define the term. See Spec. ¶ 55. Similarly, although claim 23 recites the
medium is an apparatus, the Specification teaches an apparatus can be a
medium for propagating signals. Id. (teaching a computer-usable medium is
“any apparatus that can . . . propagate, or transport [a] program . . . . The
medium can be an electronic, magnetic, optical, electromagnetic, infrared
. . . or a propagation medium.”) (Emphasis added). Consequently, we are
not persuaded the Examiner erred in finding a computer readable storage
medium includes a medium for carrying non-transitory signals.
Regarding Ex Parte Hu, a non-precedential decision, the Board
subsequently issued a precedential decision addressing the same issue. Ex
Parte Mewherter, 2013 WL 4477509 (PTAB 2013). In Mewherter, the
Board determined, absent an express limitation in the specification, “the
ordinary and customary meaning of ‘computer readable storage medium’ to
a person of ordinary skill in the art was broad enough to encompass both
non-transitory and transitory media.” Mewherter 2013 WL 4477509 at *3.
Consequently, the Board found “the claim term ‘machine-readable storage
medium’ would include signals per se. . . . [and] must be rejected under 35
U.S.C. § 101 as covering non-statutory subject matter.” Id. at *7.
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C. Whether claim 1 is patentable over the combination of Bhogal and
Banditwattanawong.

The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Bhogal in view of Banditwattanawong. Final Action 14–
15. The Examiner finds Bhogal’s disclosure of receiving an object requiring
unmarshalling or serializing requires local storage or caching of the object,
and therefore teaches receiving an object requiring caching. Id. at 15–16
(citing Bhogal ¶¶ 10, 50–57, 67–69; Fig. 4A). The Examiner also finds
Bhogal implicitly discloses caching the received object in a cache storage,
and Banditwattanawong explicitly teaches caching a received object in a
cache storage. Id. at 16–17 (citing Banditwattanawong 819–820). The
Examiner finds it would have been obvious to modify Bhogal’s system for
serializing and selectively encrypting an object to include caching the
serialized object using Banditwattanawong’s object caching system to
improve the scalability of a distributed object caching system. Id. at 18.
Appellants argue the Examiner erred in rejecting claim 1 because (a)
neither Bhogal nor Banditwattanawong disclose a caching engine that
receives an object requiring caching, and (b) the Examiner has not properly
articulated MPEP § 2143(A) findings (2) and (3), namely, that a person of
ordinary skill in the art could have combined Bhogal’s selective object
encryption element with Banditwattanawong’s object caching element using
known methods, that the elements would perform the same function in the
combination as they separately do in Bhogal and Banditwattanawong, and
that the results of the combination were predictable.. App. Br. 13–15. We
are not persuaded by Appellants’ arguments for the reasons that follow.

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a. Whether Bhogal teaches or suggests a caching engine that
receives an object requiring caching and caches the object.

Appellants argue Bhogal’s security engine is not a caching engine.
App. Br.12. The Specification does not define a caching engine, but
describes it as software that receives objects from an application, encrypts
object attributes that require encryption, and serializes and caches the
encrypted objects. Spec. ¶ 34. The Examiner finds Bhogal’s security engine
is software that “operates on a computer system and uses cache and bulk
memories for storing data and code,” and that receives an object from an
application server, deserializes and stores the object in a cache, and encrypts
object attributes that require encryption. Ans. 46–47 (citing Bhogal ¶¶ 33–
36, 40–46, 50–56, 65–70 and 74; Figs. 4A, 6). Consequently, the Examiner
finds Bhogal’s security engine is a caching engine since it has the same
structure and provides the same functionality as Appellants’ caching engine.
Id. We agree with the Examiner’s findings, and adopt them as our own.
Appellants next argue that Bhogal’s security engine does not receive
an object requiring caching. App. Br. 11–12. The Examiner finds Bhogal’s
security engine receives and locally serializes and stores or caches objects
while they are encrypted. Final Action 16. Appellants argue “the temporary
storage of Bhogal’s data transmission in a memory during an encryption
process is inconsistent with the plain meaning of the claim term caching,”
which Appellants propose means “storing data in a manner such that future
requests for the same data are faster.” App. Br. 11–12 (citing Spec. ¶ 2).
The Specification does not define the term caching, although it does
describe a cache in terms that are consistent with Appellants’ proposed
construction. However, since the Specification does not evince an express
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intent to impart a novel meaning to the terms cache or caching, we find them
to have their plain and ordinary meaning. See Optical Disc Corp. v. Del
Mar Avionics, 208 F.3d 1324, 1334 (Fed. Cir. 2000). Caching refers to
accessing a cache. The Authoritative Dictionary of IEEE Standard Terms
135 (IEEE, 7th Ed. 2000). And a cache is, in addition to a buffer for storing
frequently used data as Appellants contend, “[a] buffer inserted between one
or more processors and [a] bus, used to hold currently active copies of
blocks from main memory.” Id. (emphasis added). Thus, we are not
persuaded by Appellants’ argument that Bhogal’s teaching of temporarily
storing an object during an encryption process (i.e., currently active copy of
data) fails to teach or suggest caching the object as the Examiner found.
Finally, Appellants argue that Bhogal only discloses storing program
code in cache memory, not program data. Reply Br. 5–6 (citing Bhogal ¶¶
33–36, 74). But the test for obviousness is not what a reference literally
discloses, but what it fairly teaches or suggests to a person of ordinary skill
in the art. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). The Examiner
finds Bhogal teaches a processor on an application server that runs a security
engine that uses cache memory to store serialized objects prior to encryption
and transmission to a distant application server. Ans. 46–47 (citing, Bhogal
¶¶ 19, 33–36, 40–57, Fig. 4A). Paragraph 33 of Bhogal, cited by the
Examiner, teaches the invention may be performed by processing unit 202,
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Appeal 2012-006628
Application 12/272,081
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b. Whether the Examiner has properly articulated an
argument for rejecting claim 1 as obvious.

Appellants argue the Examiner erred in rejecting claim 1 as obvious
because the rejection is based on combining prior art elements according to
known methods to achieve predictable results, and the Examiner has not
properly articulated findings (2) and (3) under MPEP § 2143(A). App. Br.
13–14. But the Examiner didn’t reject claim 1 using the reasoning
articulated in MPEP § 2143(A). Rather, the Examiner rejected claim 1 using
the reasoning articulated in MPEP § 2143(G) based on a motivation to
combine the references, which do not require the same findings.
Appellants further argue the Examiner’s motivation to combine does
not make sense because Bhogal does not teach a distributed object cache
system. App. Br. 15. We are not persuaded by Appellants’ argument.
The Examiner finds Bhogal discloses a “distributed system and
method of fast and efficient encryption mechanism of sensitive data fields of
an object (i.e., the class) in a data transmission system,” Ans. 46 (emphasis
added), and “a fast and efficient system of object encryption based on
serialization of objects in a data transmission wherein portions of the object
are being stored (i.e., cached) locally.” Id. at 54. The Examiner also finds
“Banditwattanawong is in [a] related field as Bhogal because it also teaches
fine-grained serialization of objects in a distributed system wherein the
system allows a server application program to be cached by the client in the
client's cache store in partial and incremental manner.” Id. at 54–55
(emphasis added). Consequently, the Examiner finds:
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It would have been obvious to one of ordinary skill in the art
the time the invention was made to modify the serialization and
selective encryption of objects in a data transmission of Bhogal
with Banditwattanawong to include a cache storage to store the
objects after the objects undergo serialization and selective
encryption.

The motivation to combine Bhogal and Banditwattanawong
would have been to improve performance and scalability of a
distributed object caching system wherein the caching of
distributed object-oreinted [sic] applications allows fast
accessed [sic] to both data part and code part of the objects.

Ans. 55.
While the Examiner’s rationale to combine refers to a distributed
object caching system rather than a distributed object system, it is evident
from the Examiner’s other findings that the Examiner was well aware that
the commonality between Bhogal and Banditwattanawong was that they
were both distributed object systems. See Ans. 46, 54–55. Moreover,
“where a rejection is predicated on two references each containing pertinent
disclosure which has been pointed out to the applicant, we deem it to be of
no significance . . . that the rejection is stated to be on A in view of B instead
of on B in view of A.” In re Bush, 296 F.2d 491, 496 (CCPA 1961).
Consequently, the Examiner’s articulated rationale to combine can equally
be considered a rationale to modify Banditwattanawong, which is a
distributed object caching system, to include the teaching of Bhogal to
selectively encrypt the objects being cached. Regardless of the order in
which the references are combined, the Examiner finds, and we agree, that
the combination yields a distributed object system that serializes, encrypts,
and caches objects.
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Finally, the Examiner finds Bhogal implicitly discloses caching
objects in a cache storage, and therefore “teaches all the elements of [the]
claimed invention.” Id. at 51 (citing ¶¶ 19, 33–36 and 74). We agree with
this finding for the reasons explained supra. And, since anticipation is the
epitome of obviousness, In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir.
2002), we sustain the Examiner’s rejection of claim 1 as obvious in view of
the teachings of Bhogal and Banditwattanawong for this reason as well.
Appellants do not separately argue the patentability of claims 2, 3, 5,
and 7–17 from the patentability of claim 1. App. Br. 15, 25. While
Appellants purport to separately argue the patentability of claims 4, 6, and
18–24, Appellants do not articulate reasons for the patentability of those
claims that differ from the reasons articulated for the patentability of claim
1. See App. Br. 16–25. We therefore sustain the Examiner’s rejection of
claims 2–24 for the same reasons as claim 1.

DECISION
For the reasons noted above, we sustain the Examiner’s rejection of
claims 1–24.
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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