Ex Parte Jensen et al

Board of Patent Appeals and Interferences

Jul 12, 2010

09877928 (B.P.A.I. Jul. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KELL MICHAEL JENSEN and ALEX AGERHOLM
____________

Appeal 2009-001268
Application 09/877,928
Technology Center 2400
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Before JAMES D. THOMAS, JOSEPH L. DIXON, and JAY P. LUCAS,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL1

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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The Appellants appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a method and apparatus for
increasing the speed of information retrieval from a server (Spec. 4).

The Illustrative Claim
Claim 1, an illustrative claim, reads as follows:
1. A method to retrieve information, comprising:

receiving a first request for information from a client at a
network node over a first connection;

establishing a second connection to retrieve said
information;

detecting that said first connection is terminated prior to
retrieval of said information over said second connection;

retrieving said information over said second connection;

receiving a second request at the network node for said
information over a third connection;

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determining whether said second request matches said
first request, including whether said second request is from said
client;
sending said information over said third connection in
accordance with said determination; and

deleting said information at the network node upon
delivery of said information to said client.

The References
The Examiner relies on the following references as evidence:
Tso US 6,421,733 B1 July. 16, 2002
Burns US 5,991,306 Nov. 23, 1999

WinRoute Pro 3.0 User’s Manual (Tiny Software Inc., 1999), available at
http://tportal.vaz.ru/doc/winroute%20manual3.pdf (hereinafter “Winroute”).

The Rejections
The following rejections are before us for review:
Claims 1, 2-5, 7-12, and 14-18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Tso and
Winroute, further in view of Burns.
Claims 6 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Tso and Winroute and Burns, and
further in view of well-known Internet standards.

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II. ISSUE
Has the Examiner erred in finding that the combination of Tso,
Winroute, and Burns teaches or fairly suggests “deleting said information at
the network node upon delivery of said information to said client,” as recited
in independent claim 1?

III. PRINCIPLES OF LAW
Obviousness
“Obviousness is a question of law based on underlying findings of
fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying
factual inquiries are: (1) the scope and content of the prior art; (2) the
differences between the prior art and the claims at issue; (3) the level of
ordinary skill in the pertinent art; and (4) secondary considerations of
nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
(citation omitted).

IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
Burns
1. Burns discloses a pull-based, intelligent caching system and
method for delivering data over a network, a local service provider includes
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a policy manager which defines and administrates rules for documents
storage :
Deletion policies are a function of the content itself
(e.g., its TTL tags), the subscriber patterns (e.g., how
frequently the content is requested), the cost to request
newer updated content, and the constraints imposed by
capacity limitations of the cache memory.
(col. 11, ll. 15-19).
2. Burns also discloses that:
For instance, caching rules might call for caching
resources that are routinely requested by many
subscribers, but foregoing caching resources that are
rarely or infrequently requested. The policy rules also
coordinate cache maintenance by deciding when
documents are out-of-date and how these documents are
deleted form the cache memory 124.

(col. 10, ll. 53-58).

V. ANALYSIS
The Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner sets forth a detailed explanation of a reasoned
conclusion of unpatentability in the Examiner’s Answer. Therefore, we look
to the Appellants’ Brief to show error in the proffered reasoned conclusion.
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The Common Feature in Claims
Independent claim 1, recites, inter alia, “deleting said information at
the network node upon delivery of said information to said client.”
Independent claims 8 and 15, contain these similar limitations.
35 U.S.C. § 103(a) Rejection
With respect to independent claim 1, the Appellants contend that
“Burns fails to teach and indeed teaches away from deleting information at a
network node upon delivery of the information to a client.” (App. Br. 13).
“In particular, Tso, Winroute, and Burns each describe[s] a caching
mechanism and thus teach[es] away from deleting information upon
delivery.” (Reply Br. 5).
The Examiner states that Burns teaches the argued limitation (Ans. 6,
11). The Examiner also states that “Burns teaches that deletion policies may
be the function of ‘content itself’. . . . Burns also teaches that certain types of
content, such as those rarely or infrequently requested, are less desirable to
cache.” (Ans. 11), and “[a]t least some of the aborted client requests would
have contained content ‘rarely and infrequently requested’ that would not
normally be subject to caching . . . . ” Id.
We disagree with the Examiner’s reading of the reference. We find
that the paragraph of the Burns reference relied upon by the Examiner only
discusses a deletion policy that depends upon the content itself, the
subscriber patterns, the cost to request newer updated content, and the
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constraints imposed by capacity of the cache memory (FF. 1). From the four
explicitly listed factors, none of them relates to “deleting said information at
the network node upon delivery of said information to said client,” as recited
in the independent claim 1. Regarding the reasoning of the Examiner that it
is predictable that some of the rarely and infrequently requested contents
may be immediately deleted upon delivery (Ans. 12), we find no factual
basis in Burns for the Examiner’s stated reasoning and conclusion. Again,
we find that there is no teaching in Burns for deleting the information upon
delivery (FFs. 1-2). In contrast to the Examiner findings, Burns explicitly
teaches that the policy deletes the rarely and infrequently requested contents
by measuring “how frequently the content is requested” (FF. 1), and thus
foregoing the cache resources for those contents (FF. 2). It is contrary to the
teachings of Burns that deleting rarely and infrequently requested contents
upon delivery as argued by the Examiner, because without storage of the
contents it is impossible to measure “how frequently the content is
requested” (FF. 1).
We, therefore, find the Examiner’s position is untenable.
Because we agree with at least one of the Appellants’ contentions, we
find that the Examiner has not made a requisite showing of obviousness as
required to teach or fairly suggest the invention as recited in claim 1 by the
combined of Tso, Winroute, and Burns. The rejection of the dependent
claims 2-7 contains the same deficiency. The Appellants, thus, have
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demonstrated error in the Examiner’s reasoned conclusion for obviousness
of the subject matter of claims 1-7.
The independent claims 8 and 15 contain the similar limitations to
those found in independent claim 1. The Appellants present similar
arguments as set forth with respect to independent claim 1 in response to the
rejection of independent claims 8 and 15 (App. Br. 12-14).
As we found above in our discussion with respect to independent
claim 1, we similarly find that the Appellants have demonstrated error in the
Examiner’s conclusion for obviousness of the subject matter of independent
claims 8 and 15. The rejection of dependent claims 9-14 and 16-18 also
contains the same deficiency. Hence, the Appellants’ argument persuades us
that the Examiner erred in rejecting claims 1-18.
We, therefore, cannot sustain the rejection of claims 1-18 under 35
U.S.C. § 103.

VI. CONCLUSION
We conclude that the Examiner erred in finding that the combination
of Tso, Winroute, and Burns teaches or fairly suggests “deleting said
information at the network node upon delivery of said information to said
client,” as recited in independent claim 1.

VII. ORDER
We reverse the obviousness rejections of claims 1-18 under 35 U.S.C.
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§ 103(a).
REVERSED

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