Ex Parte England et al

Board of Patent Appeals and Interferences

Jan 3, 2008

10314471 (B.P.A.I. Jan. 3, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte LAURENCE EDWARD ENGLAND and CHENHONG XIA
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Appeal 2007-3449
Application 10/314,471
Technology Center 2100
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Decided: January 3, 2008
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Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-28. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
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THE INVENTION
The disclosed invention relates generally to information retrieval and
presentation systems. More particularly, Appellants’ invention relates to
techniques for the efficient retrieval, integration and presentation of
distributed information via an integrated Graphical User Interface (GUI)
(Spec. 1). GUI performance is enhanced by mapping GUI display
components to replicated model information that is stored locally on the GUI
client. GUI display components are updated according to demand
information mapping rules created by a remote information source based
upon demand request information received from a client (Spec. 3).

Independent claim 23 is illustrative:
23. A method of enhancing performance of a recipient's graphical
user interface that displays information originating from at least one of a
plurality of information sources, the method comprising:

receiving at an information source a demand request from a
requestor that refers to a model and requests an asynchronous update
message;

building a demand information mapping rule based upon
information received in the demand request; and

sending an asynchronous update message to the recipient in
response to a change in information associated with the model held in a
source information store on the information source, wherein the recipient is
identified based upon the demand information mapping rule.
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THE REFERENCE
The Examiner relies upon the following reference as evidence in
support of the rejection:
Chandra US 2002/0138582 A1 Sep. 26, 2002

THE REJECTION
Claims 1-28 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Chandra.

PRINCIPLES OF LAW
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, 1375-76 (Fed. Cir. 2005) (citation omitted).
ISSUE(S)
We decide the question of whether Appellants have shown the
Examiner erred in holding that the cited Chandra reference anticipates the
claimed subject matter. More particularly, we have determined that the
following issue is dispositive in this appeal:
Whether Appellants have shown the Examiner erred in finding that
Chandra discloses the following limitations:
receiving at an information source a demand request from a
requestor that refers to a model and requests an asynchronous
update message;
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(Claim 23).
Claims 1-28
We consider the Examiner’s rejection of claims 1-28 as being
anticipated by Chandra.
At the outset, we find it unnecessary to reach the question of whether
Chandra discloses a demand request including metadata (see independent
claims 1 and 12). While Appellants have argued this limitation in the Briefs
(see App. Br. 13, ¶1; see also Reply Br. 7, ¶3), Appellants’ arguments have
treated claims 1-28 as a single group which stand or fall together (see App.
Br. 9, 17). In particular, we note that independent claim 23 does not recite
the argued limitation of a demand request including metadata. Thus,
Appellants are arguing that all claims in a group (claims 1-28) are patentable
on the basis of an independent claim (claim 1) that is clearly not the broadest
claim in the group. Therefore, pursuant to our authority under 37 C.F.R.
41.37(c)(1)(vii)(2006), we select independent claim 23 as the representative
claim for this rejection because we find it is the broadest independent claim
in this group. 1
Thus, we decide the question of whether Appellants have shown the
Examiner erred in finding that Chandra discloses the following limitations:

1 37 C.F.R. § 41.37(c)(1)(vii)(2006) (“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
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receiving at an information source a demand request from a
requestor that refers to a model and requests an asynchronous
update message;

(see representative claim 23).
Appellants contend that Chandra fails to disclose a demand request
from a requestor that is sent to at least one information source and, further,
that the request is for an asynchronous update message (App. Br. 12).
As noted by Appellants in the Reply Brief (4-5), the Examiner has
pointed out that the transportable application in Chandra’s email system is
asynchronously updated (Ans. 12). Thus, the Examiner contends that
Chandra discloses a “demand request” that requests an “asynchronous
update message” when Chandra’s client requests a transportable application
(Id.).
After considering the record before us, we find the weight of the
evidence supports the Examiner’s position. We find the claimed
“information source” broadly but reasonably reads on Chandra’s
transportable application that contains asynchronously updated content that
is accessed by a user request, as follows:
[0187] The client 102 creates requests for transportable
applications and dispatches the requests into network 108. The
requests are received by service unit 105 and processed,

decide the appeal with respect to the group of claims as to the ground of
rejection on the basis of the selected claim alone.”).
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resulting in creation of a response, which is sent back over
network 108 to client 102.
(Chandra, ¶0187, emphasis added).

[0180] A transportable application can be transported among
different computer systems, clients and servers using transport
mechanisms such as e-mail and other data transport protocols.
When a transportable application arrives at a destination
computer system, a user of that system can open the
transportable application, view content that is dynamically
asynchronously updated from a server source, and interact with
functional elements of the transportable application in order to
carry out work or other useful tasks.
(Chandra, ¶0180, emphasis added).

Moreover, we find the claim language “a requestor that refers to a
model” broadly but reasonably reads on Chandra’s client requesting a
transportable application (i.e., where a transportable application is a type of
model application) (see Chandra, ¶0187).
Although we need not reach the issue of metadata to decide this
appeal, we nevertheless find that Chandra discloses a request that necessarily
(i.e., inherently) includes metadata (i.e., data about data), as a particular
email message (containing a transportable application) must be referenced in
a client request with some form of identifier (i.e., metadata). We further
note that Chandra expressly discloses that “metadata may include . . . [a]
transportable application identifier, etc.” (see Chandra, ¶0337).
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Therefore, we agree with the Examiner that Chandra discloses all that
is claimed. Thus, we find Appellants have failed to persuasively rebut the
Examiner’s finding of anticipation. Because Appellants have not established
that the Examiner erred with respect to establishing a prima facie case of
anticipation, we sustain the Examiner’s rejection of representative claim 23
as being anticipated by Chandra for essentially the same reasons set forth in
the Answer, and as discussed above.
Pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii), we have
decided the appeal with respect to the remaining claims in this group on the
basis of the selected claim alone. Therefore, we sustain the Examiner’s
rejection of claims 1-22 and 24-28 for the same reasons discussed supra
with respect to representative claim 23.

OTHER ISSUE
In the event that prosecution is reopened in this application, we leave
it to the Examiner to consider a 35 U.S.C. § 101 rejection of claims 12-22 as
being directed to non-statutory subject matter. From the Specification, it is
clear that the scope of the claimed “article of manufacture comprising a
computer program carrier readable by a computer and embodying one or
more instructions executable by the computer” (independent claim 12)
broadly reads on carrier waves (i.e., signals), as follows:
The integrated GUI client 102 and information source 104
modules can be stored on recorded medium (e.g., floppy
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diskettes, CD-ROM, memory devices, etc.) for loading on
stand-alone systems or systems connected by a network, or can
be downloaded (e.g., in the form of carrier waves, packets, etc.)
to systems from a network.

(Spec. p. 19, l. 21 through p. 20, l. 3, emphasis added).

A claim directed to computer instructions embodied in a signal is not
statutory under 35 U.S.C. § 101. See In re Nuijten, 500 F.3d 1346, 1357
(Fed. Cir. 2007) (“A transitory, propagating signal like Nuijten’s is not a
‘process, machine, manufacture, or composition of matter.’ Those four
categories define the explicit scope and reach of subject matter patentable
under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject
matter.”).
CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not shown the Examiner erred in rejecting claims 1-28
under 35 U.S.C. § 102(e) for anticipation.

DECISION
The decision of the Examiner rejecting claims 1-28 is affirmed.
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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