Ex Parte Haskey et al

Patent Trial and Appeal Board

Feb 5, 2015

12333228 (P.T.A.B. Feb. 5, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/333,228 12/11/2008 Stephen J. Haskey GB920070141US1/40403-045 5962
75949 7590 02/06/2015
IBM CORPORATION
C/O: VanCott Bagley, Cornwall & McCarthy
36 South State Street
Suite 1900
Salt Lake City, UT 84111
EXAMINER
KIM, TAELOR
ART UNIT PAPER NUMBER
2156
MAIL DATE DELIVERY MODE
02/06/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte STEPHEN J. HASKEY and BRIAN D. PEACOCK
__________

Appeal 2012-011370
Application 12/333,2281
Technology Center 2100
___________

Before JAMESON LEE, SALLY C. MEDLEY, and JONI Y. CHANG,
Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1, 3–16, and 18–20.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 According to Appellants, the real party in interest is International Business
Machines Corporation (“IBM”). App. Br. 2.
2 Claims 2 and 17 have been cancelled. App. Br. 4.
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STATEMENT OF THE CASE
The Applied Prior Art
Goldberg U.S. 2008/0082941 A1 Apr. 3, 2008
Kassab U.S. 2006/0031404 A1 Feb. 9, 2006

The Rejections on Appeal

1. Claims 1 and 3–14 were finally rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
2. Claims 1, 3–10, 12–16, and 18–20 were finally rejected under
35 U.S.C. § 102(e) as anticipated by Goldberg.
3. Claim 11 was finally rejected under 35 U.S.C. § 103(a) as
obvious over Goldberg and Kassab.

The Invention
The disclosed invention is directed to tracking usage of data feeds.
Data feeds are a mechanism that enables data users or subscribers to receive
periodically updated data from a data source or publisher. Spec. ¶ 2. Data
feeds are disseminated from a server computer to client computers over a
network. Id. at ¶ 19, Fig. 1. The server collects usage data for the data feeds
that it provides to the client computers. The usage data comprises an
indication of the number of instances of a supplied data feed that have been
viewed by respective users. Id. at ¶ 20. In particular, once a data feed client
has subscribed to a given data feed, it is arranged to poll the data feed server
periodically for updates to the content of the given data feed. When a data
feed has been viewed by the user a data feed reader is arranged to provide a
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corresponding indication to the data feed client. An example given is that a
“viewed” flag is appended to a Universal Resource Locator (URL). Id. at
¶ 22. In such a case, and in response to each data feed poll, the data feed
server is arranged to inspect the requested URL for a “viewed” flag. If no
such flag is present, the data feed request is handled as normal, but if a
“viewed” flag has been appended, a record of the data feed URL along with
a time stamp is entered in a data feed usage statistics. Id. at ¶ 23.

Claims 1, 8, and 15 are independent. Claim 1 is reproduced
below.
1. A system for tracking usage of a data feed, comprising:

a data feed server configured to respond to polls from
client computers and transmit a data feed in response to a said
poll from a said client computer;

in which said data feed server is further configured to
receive usage data from a client computer that indicates usage
of said data feed at said client computer,

in which said usage data is appended to a poll received
from a said client computer.

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DISCUSSION

35 U.S.C. § 101 Rejection of Claims 1 and 3–14

The Examiner rejected claims 1 and 3–14 as claiming non-statutory
subject matter, because the claims are directed to “software per se.” Ans. 3,
13. In particular, the Examiner contends that claim 1 recites a system and
independent claim 8 recites a client computer “both of which are not
hardware per se because they do not recite any computer hardware or
processor associated with such server or computer.” Id. at 3. The Examiner
directs attention to the following sentence from paragraph 13 of Appellants’
specification that describes the following.
Accordingly, the present invention may take the form of an
entirely hardware embodiment, an entirely software
embodiment (including firmware, resident software, micro-
code, etc.) or an embodiment combining software and hardware
aspects that may all generally be referred to herein as a
“circuit,” “module” or “system.”

Appellants contend that claim 1, in addition to being a system, recites
a data feed server that can transmit a data feed and receive usage data to and
from a client computer, and that claim 8 requires communication with a data
feed server by reciting that the client computer polls the data feed server for
the data feed and records usage data. Appellants argue that such
transmitting, receiving, polling, and recording require processors and data
storage hardware associated with the data feed server and client computer to
perform as claimed. App. Br. 12. In addition, Appellants argue that the
client computer and server are computers and the mere recitation of a
computer is sufficient to demonstrate patentable subject matter. Id.
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We agree with Appellants that the Examiner’s position is misplaced
because the Examiner did not consider either claim 1 or claim 8 as a whole.
The mere recitation of the term system in the preamble of claim 1 does not,
without more, establish a prima facie case that the claim is directed to
software per se. While we agree with the Examiner that the specification
explains that the invention may be embodied in entirely software, we must
look to the words of claim 1, which further limit the system recited in the
preamble. In other words, “the invention” described in the specification is
concerned with collecting usage data for a data feed. However, claims 1 and
8 are not only directed to that aspect of “the invention” but are directed to
those components that perform the collection of usage data.
In particular, claim 1 recites a data feed server and client computers.
A person of ordinary skill in the art would have understood a computer to
include hardware components3 and the Examiner has not directed us to
anything in the specification to indicate otherwise. We are not persuaded by
the Examiner’s arguments (Ans. 13) that a client computer does not
necessarily require hardware components because the Examiner does not
direct attention to where in the specification Appellants have defined a client
computer as software only or that the client computer is a “virtual computer”
as the Examiner contends. We also are not persuaded that the claim 1 client
computers should be given no patentable weight. Id. at 14. The client
computers interact with the data feed server of claim 1 (“said data feed
server is further configured to receive usage data from a client computer”)

3 A computer is defined as a programmable machine that can store, retrieve,
and process data. Merriam-Webster Dictionary, http://www.merriam-
webster.com/computer. (last accessed Feb. 3, 2015).
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and are part of the claim. Lastly, we find persuasive Appellants’ argument
(App. Br. 12) that claim 1 necessarily requires hardware so that the data feed
server can transmit and receive data, as software alone cannot transmit or
receive anything.
Claim 8 is directed to a client computer.4 We already have addressed
why the Examiner erred in finding that a client computer is per se software.
A computer is understood in the art to include hardware and the Examiner
has not directed us to persuasive evidence that Appellants defined a client
computer to mean something out of the ordinary. Moreover, and as pointed
out by Appellants (Id.), claim 8 requires more than software because the
claim requires that the client computer is “configured to record usage data,”
which cannot be performed by software alone. In order to record something,
there must be associated with the recordation some way to store what is
being recorded, which would include hardware.
We do not sustain the Examiner’s rejection of claims 1 and 3–14 as
claiming non-statutory subject matter.

4 Claim 8 recites:

A client computer for accessing a data feed, comprising:

a client computer configured to communicate with at least one
data feed server that publishes a data feed, wherein the client
computer selectively polls the data feed server for the data feed,

wherein the client computer is further configured to record
usage data indicating usage of the data feed at the client
computer and, in a subsequent polling of the data feed server,
report the usage data for the data feed to the data feed server.
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Anticipation Rejection of Claims 1, 3–10, 12–16, and 18–20 over Goldberg
Claims 1 and 3–7
Claim 1 recites that the “usage data is appended to a poll” received
from the client computer. The Examiner asserts that the term “usage data is
appended to a poll” means that the usage data, which the Examiner finds
includes a flag or read indicator, is attached to a request for transmission of
data. Ans. 16. That construction is reasonable and not disputed by
Appellants. Nonetheless, we agree with Appellants that the Examiner has
failed to show that Goldberg discloses that the usage data, e.g., a read
indicator, is appended to a poll, e.g., a request for data from the client
computer, as recited.
Anticipation is established only when a single prior art reference
discloses, either expressly or under the principles of inherency, each and
every element of the claimed invention. In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The
Examiner bears the burden of presenting a prima facie case of anticipation.
In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In re Wilder, 429 F.2d
447, 450 (CCPA 1970).
Goldberg generally describes a system that tracks usage data of a data
feed. See, e.g., Goldberg ¶ 44. In particular, Goldberg describes that when a
client has viewed a data feed item, the client sends a message to the server
system indicating that the item has been read and the server system then
updates the status of the item in the server’s database. Id. at ¶¶ 41, 44, and
45. This description of Goldberg, to which the Examiner directs attention,
does not describe that usage data (e.g., whether an item has been read) is
attached to a request for transmission of data. Rather, we agree with
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Appellants that Goldberg teaches that the read status of an item is sent to a
server separate from any client computer polling or request for data. App.
Br. 14.
In response to the Appellants’ arguments, the Examiner directs
attention to further Goldberg passages. Ans. 16–17. In those passages, the
process of downloading a document begins with a transmission from a client
computer to a server specified by a bookmark. The request includes a token
that uniquely corresponds to the user identifier of the requesting user and a
login cookie containing the requesting user’s user identifier. Goldberg ¶ 84.
The server 500 (Figure 5) receives the request, identifies the user or user
account, and identifies an unread content item for the user. Id.
Specifically, a document associated with the identified item is first
identified 718 and then the server 500 marks the identified content item as
read 720 and updates the server database accordingly. Id. at ¶ 86, Fig. 7A.
Server 500 then sends client 400 a redirect to the identified document.
Client 400 receives the redirect and downloads the identified document to
the user. Id. at ¶ 87, Fig. 7A.
Contrary to the Examiner’s findings (Ans. 17), and as pointed out by
Appellants (Reply 8), Goldberg does not teach attaching usage data, such as
a read flag, to a poll made to a content server to retrieve updated content.
Rather, the server indicates that an item has been read by updating the
server’s database upon receiving a request from a client computer. Once the
update is made, the server then sends the client a redirect to the identified
document. A read status of the requested item is not appended to any data
request made from the client computer.
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Claims 3–7 depend directly or indirectly from claim 1. For the
foregoing reasons, the rejection of claims 1 and 3–7 under 35 U.S.C. § 102
as anticipated by Goldberg cannot be sustained.
Claims 8–10 and 12–14
Independent claim 8 recites “in a subsequent polling of the data feed
server, report the usage data for the data feed to the data feed server.” We
interpret this term to mean that the subsequent polling of the data feed must
include a report of the usage data. For reasons similar to those provided
above, with respect to claim 1, we agree with Appellants that the Examiner
erred in finding that Goldberg describes the disputed limitation. As already
explained, Goldberg describes, at best, sending a report of usage data
separately from any request or poll for data.
Claims 9, 10, and 12–14 depend directly or indirectly from claim 8.
For the foregoing reasons, the rejection of claims 8–10 and 12–14 under 35
U.S.C. § 102 as anticipated by Goldberg cannot be sustained.
Claims 15, 16, and 18–20
Independent claim 15 recites “transmitting said usage data to said data
server along with a poll from a client computer requesting a new
transmission of said data feed.” We interpret this term to mean that usage
data is transmitted along with a poll from a client computer. For reasons
similar to those provided above, with respect to claim 1, we agree with
Appellants that the Examiner erred in finding that Goldberg describes the
disputed limitation. As already explained, Goldberg describes, at best,
transmitting usage data separately from any request or poll for data.
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Claims 16 and 18–20 depend directly or indirectly from claim 15. For
the foregoing reasons, the rejection of claims 15, 16, and 18–20 under 35
U.S.C. § 102 as anticipated by Goldberg cannot be sustained.
Obviousness Rejection of Claim 11 over Goldberg and Kassab
Claim 11 depends directly from independent claim 8. Thus, claim 11
includes the “in a subsequent polling of the data feed server, report the usage
data for the data feed to the data feed server” limitation discussed above in
connection with the anticipation rejection of claim 8.
The Examiner’s obviousness analysis does not cure the above-noted
deficiency of Goldberg with respect to the claim 8 limitation. Accordingly,
the rejection of claim 11 under 35 U.S.C. § 103 as obvious over Goldberg
and Kassab cannot be sustained.
DECISION
The rejection of claims 1 and 3–14 under 35 U.S.C. § 101 as claiming
non-statutory subject matter is reversed.
The rejection of claims 1, 3–10, 12–16, and 18–20 under 35 U.S.C.
§ 102(e) as anticipated by Goldberg is reversed.
The rejection of claim 11 under 35 U.S.C. § 103 for obviousness over
Goldberg and Kassab is reversed.

REVERSED
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