Ex Parte England et alDownload PDFBoard of Patent Appeals and InterferencesJan 3, 200810314471 (B.P.A.I. Jan. 3, 2008) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte LAURENCE EDWARD ENGLAND and CHENHONG XIA __________ Appeal 2007-3449 Application 10/314,471 Technology Center 2100 __________ Decided: January 3, 2008 _________ 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. Appeal 2007-3449 Application 10/314,471 2 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. Appeal 2007-3449 Application 10/314,471 3 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; Appeal 2007-3449 Application 10/314,471 4 (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 Appeal 2007-3449 Application 10/314,471 5 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.”). Appeal 2007-3449 Application 10/314,471 6 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). Appeal 2007-3449 Application 10/314,471 7 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 Appeal 2007-3449 Application 10/314,471 8 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 Appeal 2007-3449 Application 10/314,471 9 tdl/ce SUGHRUE MION, PLLC 2100 PENNSYLVANIA AVENUE, N.W. SUITE 800 WASHINGTON DC 20037 Copy with citationCopy as parenthetical citation