Ex Parte Fairchild et al

Board of Patent Appeals and Interferences

Jul 26, 2010

10716781 (B.P.A.I. Jul. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GRANVILLE R. FAIRCHILD, BILL FRISCHLING,
JOHN KEELING, DAN PACHECO, and MYRON ROSMARIN
____________

Appeal 2008-005500
Application 10/716,781
Technology Center 2100
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
JEAN R. HOMERE, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL 1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1, 2, 4, 5, 7, 8, 10, 11, and 13. The
Appellants appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b). Claims 3, 6, 9, and 12 are objected to by the
Examiner as being allowable if rewritten in independent format. The
Examiner withdrew the rejections under 35 U.S.C. § 101 of claims 1, 7, and
13.
We affirm.

A. INVENTION
The invention at issue on appeal "relates to computer-driven data
management systems. More particularly, the invention concerns a method
and apparatus for performing an omnibus search providing a consolidated
view of an online service subscriber's online and local data objects, and for
conducting additional operations such as viewing, changing, and sharing the
data objects." (Spec. 1).

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. 1. A method for operating an online service facility
selectively accessed by multiple member computers, the online
service facility including a plurality of online data centers
operated by an online service provider (OSP) to store members'
data objects relating to a variety of online services that the OSP
renders to its members, the method comprising operations of:
providing an aggregated catalog that contains
information including: (1) metadata identifying members' data
objects residing in the data centers, and (2) metadata identifying
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members' data objects residing in local storage of respective
member computers;
monitoring contents of the data centers to detect new
storage of prescribed types of data objects owned by the
members;
communicating with the member computers to identify
prescribed types of data objects newly stored in the member
computers' local storage;
updating the aggregated catalog to list the newly stored
data objects from the online data centers and member
computers' local storage;
responsive to each request by a member, searching the
aggregated catalog and utilizing results of the search to provide
an output for display at the requesting member's computer, the
output comprising a consolidated listing of both online data
objects and locally stored data objects owned by the requesting
member.

C. REFERENCES
The Examiner relies on the following references as evidence:
Kumamoto US 5,805,858 Sept. 8, 1998
Johnson '384 US 5,878,384 Mar. 2, 1999
Johnson '839 US 5,964,839 Oct. 12, 1999
Hsiao US 6,804,674 B2 Oct. 12, 2004

D. REJECTIONS
Claims 1, 4, 7, 10, and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hsiao in view of Johnson '384).
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Claims 2 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hsiao in view of Johnson '384 and in further view of
Kumamoto.
Claims 5 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hsiao in view of Johnson '384 and in further view of
Johnson '839.

II. ISSUE
Has the Examiner set forth a sufficient line of reasoning for the
conclusion of obviousness in the rejection of independent claim 1?
Specifically, has the Examiner made a showing of each of the limitations of
independent claim 1 with respect to the member and the member computer?

III. PRINCIPLES OF LAW
Obviousness under §103
"What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103." KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
"more than the predictable use of prior art elements according to their
established functions." Id. at 417.
Invention or discovery is the requirement which
constitutes the foundation of the right to obtain a patent . . .
unless more ingenuity and skill were required in making or
applying the said improvement than are possessed by an
ordinary mechanic acquainted with the business, there is an
absence of that degree of skill and ingenuity which constitute
the essential elements of every invention.

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Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood,
52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited with approval
by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).
Obviousness requires that all limitations be taught or suggested by the
reference or references. 35 U.S.C. § 103(a).

IV. ANALYSIS
Appellants argue that "[b]y unfortunate coincidence, Hsiao contains a
number of references to 'local' storage and 'local' components. However, the
mere use of the terms 'local' and 'remote' cannot be taken on face value-as
their meaning and content as used in Hsiao is completely different than the
claimed invention." (Reply Br. 2). Appellants contend that Hsiao's use of
the term "local" is inconsistent, and at any rate, unrelated to the data objects
"residing in local storage of respective members computers" as recited in
claim 1. We disagree with Appellants.
In the statement of the rejection at page 4 of the Answer the Examiner
relies upon the teachings of Hsiao with respect to the scalable content
manager of 515 manages the metadata stored in the data base 525 and the
primary content stored in the local file system 530 or resource manager,
providing an integrated function of both metadata management and data
(primary content) management.
Appellants' main arguments appear in the Reply Brief where
Appellants address each of the limitations of independent claim 1.
Appellants contend that the arguments within the Examiner's Answer
contradict each other. (Reply Br. 2). While we agree with Appellants that
the Examiner's choice of wording appears self-contradictory, and we find
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that it is in the Examiner's formulation of the rejection which causes that
appearance and find it to be another unfortunate coincidence for Appellants.
Appellants contend that:
By unfortunate coincidence, Hsiao contains a number of
references to "local" storage and "local" components.
However, the mere use of the terms "local" and "remote" cannot
be taken on face value-as their meaning and context as used in
Hsaio is completely different than the claimed invention.
Hsiao's "local" aspect refers to entities connected with a
particular network or content management system rather than
being "local" to a user's computer.

(Reply Br. 2). The Examiner states:
Hsaio, column 1, lines 55-62, teaches a content management system
as "[i]n a content management system, three types of information are
stored: primary content (also referred to as Data or Object), User
Metadata, and System Metadata. Semi-structured and unstructured
data, such as text file, image, web page, video clip, etc., constitute the
primary content in a content management system. Description of, and
information about the stored primary content, which are normally
provided by the users, are referred to as user metadata." Therefore,
in light of the specification, the Examiner believes that an aggregate
catalog is a content management system as taught in Hsaio.
Furthermore, Hsaio teaches that content information including: (1)
metadata identifying members' data objects ("Description of, and
information about the stored primary content, which are normally
provided by the users, are referred to as user metadata." The
preceding text clearly indicates that the stored primary content is the
data object and the description of, and information are the metadata
identifying member's data object.)(column 1, lines 60-62) residing in
the data centers (i.e. "A scalable content management system manages
searches from a local content manager and a plurality of remote
content managers. A single scalable content manager manages data
in a content repository or file system and its associated metadata in
the same content repository or in a database, which will greatly
simplify both content management logic and client application logic."
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The preceding text clearly indicates that the data centers are the
plurality of remote content managers)(Abstract), (2) metadata
identifying members' data objects ("Description of, and information
about the stored primary content, which are normally provided by the
users, are referred to as user metadata." The preceding text clearly
indicates that the stored primary content is the data object and the
description of, and information are the metadata identifying member's
data object.)(column 1, lines 60-62) residing in the local storage of
respective members computers (i.e. "A scalable content management
system manages searches from a local content manager and a
plurality of remote content managers. A single scalable content
manager manages data in a content repository or file system and its
associated metadata in the same content repository or in a database,
which will greatly simplify both content management logic and client
application logic." The preceding text clearly indicates that the local
storage of respective members computer is a local content
manager.)(Abstract). Also, the Examiner cites Figure 6 of Hsiao to
further illustrate the prior art's teaching of this particular limitation.
Since it is clear that the scalable content manager searches both the
local AND a plurality of remote content managers, Hsaio clearly
teaches the limitations of providing an aggregate catalog that contains
information including: (1) metadata identifying members' data objects
residing in the data centers, and (2) metadata identifying members'
data objects residing in the local storage of respective members
computers.

(Ans. 12-13). We find the Examiner's reliance on the user metadata and
system metadata in column 1 of Hsiao to evidence the storage of multiple
types of metadata at each location of the content management systems and
remote content managers as taught by Hsaio teaches the data for the claimed
"an aggregated catalog that contains information including: (1) metadata
identifying members' data objects residing in the data centers, and (2)
metadata identifying members' data objects residing in the local storage of
respective members computers," as recited in claim 1.
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Since each of the content management systems and remote content
managers each would have user metadata and system metadata, they would
thereby have multiple metadatas to be used.
Appellants further argue the limitation "[c]ommunicating with the
member computers to identify prescribed types of data objects newly
stored in the member computers' local storage . . . " (Reply Br. 3).
Appellants argue that:
The Examiner argued that Hsiao discloses this feature, as Hsiao
shows a content management system 10 connected to a network 20
that includes servers 25, 27 providing access to stored information
(50, 55, 60) that may include links to other "locally stored" pages.
[Ex. Answer: page 13]. Appellant[s] respectfully disagrees. The
Examiner's argument is not persuasive because, as discussed above,
Hsiao uses the term "local" in a manner that contrasts with the claim
language.
Furthermore, Hsiao's Figure 1 explicitly contradicts the
Examiner's argument because Hsiao explicitly illustrates the
Examiner's cited information (50, 55, 60) outside the user computers
37, 39. The Examiner's interpretation of Hsiao's "local" to mean
"stored on the user computers 37, 39" does not find any support in
Hsiao's text and drawings. Once it is understood that Hsiao's use of
the term "local" is unrelated to the user computers 37, 39, the
attempted reading (pages 13-14) of the claimed feature on Hsiao's
disclosure falls apart.

(Reply Br. 3-4). We disagree with Appellants' position and find that the
teachings of Hsiao are only exemplary and Hsiao teaches at column 8 that
system 10 may be a stand alone database of documents. We find Hsiao
supports the Examiner's position that the data would be "local." Therefore,
we find Appellants' argument to be unavailing.
With respect to Appellants' argument concerning "[u]pdating the
aggregated catalog to list the newly stored data objects from the online
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data centers and member computers' local storage . . . " (Reply Br. 4),
Appellants rely upon the argument that the "'local content manager' 515 is a
component of the scalable content management system 10, which is clearly
apart from the client 505. [Hsiao: Fig. 5] [and] Hsiao’s Figure 1 [shows] the
content management system 10 is separate from the user's computers 37
[and] 39." (Reply Br. 4).
Here, we note that Appellants' argument is not commensurate with the
Examiner's express correlation of the claim language to the teachings of
Hsiao wherein the Examiner has identified the scalable content manager and
the remote content manager as the member computer and data center
computer rather than the user's computers 37 and 39. Therefore, we find
Appellants' argument to be unpersuasive of error in the Examiner's showing
of obviousness.
It would appear that Appellants have a breath of claims issue, wherein
Appellants have elected to recite a broad term "member computer" which
has given the Examiner broader interpretation than the Appellants may have
desired. If Appellants desired to claim the end-user, then Appellants should
have recited "end-user" or alternatively recited required intermediary
processing and end-user computers which would have obviated the
Examiner's interpretation. But neither has been done and allowed the
Examiner a broad yet reasonable interpretation of the claim terms "member"
and "member computer."
With respect to Appellants' argument concerning "[r]esponsive to
each request by a member, searching the aggregated catalog and
utilizing results of the search to provide an output for display at the
requesting member's computer, the output comprising a consolidated
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listing of both online data objects and locally stored data objects owned
by the requesting member . . . " (Reply Br. 4-5), Appellants argue that
"[a]ccordingly, Hsiao's single system view relates to a consolidated view of
all scalable content management systems (which Hsiao explicitly shows are
external to the user's computers), and lacks any relationship to data objects
residing on member's computers." (Reply Br. 4-5). Appellants merely
reiterate the language of the claim and provide an argument which is not
commensurate in scope with the language of the claim since there is no
recited "relationship." Therefore, we find Appellants' argument to be
unpersuasive of error in the Examiner's showing of obviousness. Since
Appellants have not set forth any persuasive showing of error in the
Examiner reasoned conclusion of obviousness, we will sustain the rejection
of independent claim 1 and claims 7 and 13 which Appellants have elected
to group with claim 1.
In the Appeal Brief, Appellants separately argue claims 4 and 10 as a
separate group. (App. Br. 21-24). Appellants argue that Johnson' 384 does
not show the limitations of dependent claim 4 since Johnson' 384 does not
show "display of the consolidated listing at the member's computer" and
"updating the display substantially in real time . . ." as claimed. (App. Br.
22). Appellants further argue that "there has been no suggestion or
motivation, either in the references themselves, or in the knowledge
generally available to one of ordinary skill in the art, to modify the reference
or to combine the reference teachings." (App. Br. 23). We find Appellants
attack the references individually and to summarily dismiss the Examiner's
line of reasoning for the combination since Appellants do not find an express
suggestion or motivation in the references. We find the Examiner's line of
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reasoning for the combination to be reasonable in light of the Examiners
stated correlation of the interpretation of the "member's computer."
Therefore, we find Appellants' argument to be unpersuasive of error in the
Examiner's showing of obviousness.
With respect to dependent claims 2 and 8, Appellants repeat the
language of independent claim 1 and maintains that Kumamoto does not
remedy the deficiency therein. (App. Br. 25). We find that Appellants'
contention does not rise to the level of a separate argument for patentability
and therefore we will group claims 2 and 8 as falling with the independent
claim 1.
With respect to dependent claims 5 and 11, Appellants repeat the
language of independent claim 1 and maintains that Johnson '839 does not
remedy the deficiency therein. (App. Br. 25-26). We find that Appellants'
contention does not rise to the level of a separate argument for patentability
and therefore we will group claims 5 and 11 as falling with the independent
claim 1.

V. CONCLUSION
For the aforementioned reasons, the Examiner has shown a sufficient
reasoned conclusion of obviousness which Appellants have not shown error
therein nor have Appellants presented evidence of non-obviousness.

VI. ORDER
We affirm the obviousness rejections of claims 1, 2, 4, 5, 7, 8, 10, 11,
and 13.

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AFFIRMED

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