Ex Parte Mogul et al

Board of Patent Appeals and Interferences

Feb 5, 2008

10033404 (B.P.A.I. Feb. 5, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JEFFREY CLIFFORD MOGUL, KEITH ISTVAN FARKAS,
PARTHASARATHY RANGANATHAN, AND EDUARDO S. PINHEIRO
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Appeal 2007-1654
Application 10/033,4041
Technology Center 2100
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Decided: February 5, 2008
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Before ALLEN R. MACDONALD, MARC S. HOFF, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, C., Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection
of claims 1-39 entered February 26, 2006. We have jurisdiction under
35 U.S.C. § 6(b).

1 Application filed December 27, 2001. The real party in interest is Hewlett-
Packard Development Company, L.P.
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We reverse the rejections under 35 U.S.C. § 103, and enter a new
ground of rejection as to claims 1-10 and 37 under 35 U.S.C. § 101.

A. INVENTION
Appellants invented a system, method, and computer program product
for providing energy-efficient prefetching of files in a network environment.
The system uses a prefetch prediction model having energy usage
parameters to predict the impact of prefetching specified files on the
system’s energy usage. (Spec., Abstract).

B. ILLUSTRATIVE CLAIM(S)
The appeal contains claims 1-39. Claims 1, 11, 21, 32, and 37-39 are
independent claims. As best representative of the disclosed and claimed
invention, claims 1, 32, and 37 are reproduced below:
1. A computer program product for use in conjunction with a
client computer system having at least one application having instructions
for specifying files to be fetched from a server, the computer program
product comprising a computer readable storage medium and a computer
program mechanism embedded therein, the computer program mechanism
comprising:

a prefetch prediction model including energy usage parameters
for predicting an impact on energy usage by the client computer system that
would result from prefetching specified files;

a prefetch prediction engine coupled to the prefetch prediction
model for evaluating the specified files with respect to prefetch criteria,
including energy efficiency prefetch criteria, and generating a prefetch
decision with respect to each file of the specified files;

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instructions for storing in a queue entries identifying each
specified file for which the prefetch prediction engine generates an
affirmative prefetch decision; and

instructions for fetching files identified by entries in the queue.

32. A computer system comprising:

at least one processing unit for executing procedures containing
executable instructions;

a server module, executable by the at least one processing unit,
for responding to a request from a client computer for a specified file and for
generating a reply to the request, the reply including a content portion
comprising the specified file; and

a prefetch predictor, executable by the at least one processing
unit, for identifying additional files for possible prefetching by the client
computer;

the server module including instructions for including in a
supplemental portion of the reply to the request from the client computer
prefetch hint information identifying at least one of the additional files,
wherein the supplemental portion is distinct from the content portion of the
reply.

37. A computer program product for use in conjunction with a
client computer system having at least one application having instructions
for specifying files to be fetched from a server, the computer program
product comprising a computer readable storage medium and a computer
program mechanism embedded therein, the computer program mechanism
comprising:

a prefetch prediction model including cost parameters for
predicting an impact on monetary charges incurred by the client computer
system that would result from prefetching specified files;

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a prefetch prediction engine coupled to the prefetch prediction
model for evaluating the specified files with respect to prefetch criteria,
including cost efficiency prefetch criteria, and generating a prefetch decision
with respect to each file of the specified files;

instructions for storing in a queue entries identifying each
specified file for which the prefetch prediction engine generates an
affirmative prefetch decision; and

instructions for fetching files identified by entries in the queue.

C. REFERENCES
The references relied upon by the Examiner in rejecting the claims on
appeal are as follows:
Malkin US 6,085,193 Jul. 4, 2000
Shinozaki US 6,173,392 B1 Jan. 9, 2001
Saxena US 2002/0103778 A1 Aug. 1, 2002
(Filed Dec. 6, 2000)
Shatil US 6,728,840 B1 Apr. 27, 2004
(Filed Oct. 20, 2000)

D. REJECTION(S)
The Examiner entered a Final Rejection with the following rejections
which are before us for review:
Claims 1-31, and 37-39 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shatil in view of Saxena;
Claims 32-34 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Malkin in view of Shatil; and
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Claims 35 and 36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Malkin in view of Shatil and further in view of
Shinozaki.2

II. PROSECUTION HISTORY
Appellants appealed from the Final Rejection and filed an Appeal
Brief (Br.) on August 28, 2006. The Examiner mailed an Examiner’s
Answer (Answer) on November 1, 2006. Appellants filed a Reply Brief
(Reply Br.) on January 3, 2007.

III. ISSUE(S)
Whether Appellants have shown that the Examiner erred in rejecting
claims 1-39 as being obvious over the combination of cited references.

IV. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Invention
1. The Specification discloses that “the prefetch prediction model 118
preferably includes two or more of the following types of parameters: CPU
energy usage parameters 160, for instance indicating CPU energy usage per
prefetch . . . Network interface energy usage parameters 162, for instance

2 On page 16 of the Examiner’s Answer, the Examiner noted that the Final
Action mailed [February] 26, 2006 contained a typographical error. Claims
35 and 36 are rejected over Malkin in view of Shatil and further in view of
Shinozaki.
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network interface fixed energy required to send a packet . . . Memory access
energy usage parameters 163, for instance memory read/write energy costs
per byte or word . . . Energy supply parameters 164, for instance total energy
availability . . .” (Spec., 6-7).

Shatil
2. Shatil discloses that the system “create rule-like prefetch criteria
entries . . . to govern caching operations.” (Col. 12, ll. 27-30.)
3. Shatil discloses that “[t]he example prefetch database 220 includes
columns of prefetch criteria including ‘requester criteria’ 401, ‘data access
technique criteria’ 402, ‘data criteria’ 403 and optionally, one or more
columns of ‘other criteria’ 404.” (Col. 16, ll. 56-61: Fig. 5.)

Saxena
4. Saxena discloses that a “transaction weight represents the
importance of the link and associated web page to the origin server and may
be used to control the prefetching of web pages by the cache server.”
(Abstract.)

V. PRINCIPLES OF LAW
The scope of patentable subject matter under section 101 is broad, but
not infinitely broad. “Congress included in patentable subject matter only
those things that qualify as ‘any … process, machine, manufacture, or
composition of matter, or any … improvement thereof….”’ In re
Warmerdam, 33 F.3d 1354, 1358 (Fed. Cir. 1994) (quoting 35 U.S.C.
§ 101) (emphasis added). Thus, “[d]espite the oft-quoted statement in the
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legislative history of the 1952 Patent Act that Congress intended that
statutory subject matter ‘include anything under the sun that is made by
man,’[citation omitted], Congress did not so mandate.” Id.
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

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VI. ANALYSIS
Grouping of Claims
In the Brief, Appellants argue claims 1-31 as a group. In other words,
for claims 2-31, Appellants merely repeat the same argument made for claim
1. Thus, the Board selects representative claim 1 to decide the appeal for
this group. 37 C.F.R. § 41.37(c)(1)(vii)(2006). Accordingly, the remaining
claims in this group stand or fall with claim 1.
Appellants argue claims 37-39 as a group. For claims 38 and 39,
Appellants repeat the same argument made for claim 37. We will, therefore,
treat claims 38 and 39 as standing or falling with claim 37.
Appellants argue claims 32-36 as a group. For claims 33-36,
Appellants repeat the same argument made for claim 32. We will, therefore,
treat claims 33-36 as standing or falling with claim 32. See 37 C.F.R.
§ 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991).

The Board's Claim Construction
"Our analysis begins with construing the claim limitations at issue."
Ex Parte Filatov, No. 2006-1160, 2007 WL 1317144, at *2 (BPAI 2007).
Claims are given their broadest reasonable construction “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
We note that Appellants have identified several “energy usage
parameters” in the Specification, all of which appear to look at the “energy
required” and/or “energy cost” for performing a particular act (FF 1).
Therefore, we find that Appellants have defined the claimed term “energy
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usage parameters” broadly to include any power requirements and/or costs
required to performed specific tasks.

The Obviousness Rejection
Regarding Claim 1
We now consider the Examiner’s rejection of claims 1-31 under
35 U.S.C. § 103(a) as being obvious over the combination of Shatil and
Saxena.
"Having determined what subject matter is being claimed, the next
inquiry is whether the subject matter would have been obvious." Ex Parte
Massingill, No. 2003-0506, 2004 WL 1646421, at *3 (B.P.A.I 2004). The
question of obviousness is "based on underlying factual determinations
including . . . what th[e] prior art teaches explicitly and inherently . . . ." In
re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citing Graham v. John
Deere Co., 383 U.S. 1, 17-18 (1966); In re Dembiczak, 175 F.3d 994, 998
(Fed. Cir. 1999); In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995)). "In
rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness." In re Rijckaert, 9 F.3d
1531, 1532 (Fed. Cir. 1993) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992)). "'A prima facie case of obviousness is established when the
teachings from the prior art itself would appear to have suggested the
claimed subject matter to a person of ordinary skill in the art.'" In re Bell,
991 F.2d 781, 783 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048,
1051 (CCPA 1976)).
Appellants contend that “[w]hile Shatil is drawn to a prefetch engine
using prefetch criteria, Shatil fails to teach or suggest energy usage
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parameters.” (Br. 8.) Appellants further contend that “Saxena, like the
remaining prior art of record, fails to cure the deficiencies of Shatil, because
Saxena also fails to teach or suggest energy usage parameters. The
Applicants note that the Examiner has not attempted to allege that Saxena
teaches or suggests energy usage parameters.” (Br. 9.)
The Examiner responds that “Shatil et al teaches of comparing access
data against prefetch criteria, which can include various types of data
including energy efficiency data and is not limited and does not exclude any
type of possible criteria including energy usage parameters.” (Answer 14.)
We disagree.
We are in agreement with Appellants that Shatil fails to specifically
disclose energy usage parameters that represent power usage or costs
required to perform particular actions. Instead, Shatil merely discloses
criteria entries for requesters, data access techniques, data type, file sizes,
time requirements, and user designations (FF 2-3). The Examiner has failed
to specifically show that Shatil’s criteria make any reference to power
consumption or cost. The Examiner’s conclusionary statement that Shatil’s
prefetch criteria can include energy efficiency data can not be a substitute
for evidence in the record. Therefore, we reverse this rejection.

Regarding Claim37
Appellants contend that “cost is not a factor used in Saxena to make a
prefetch determination, but only the ‘importance of web pages,’ which is not
based on cost or monetary charges. In contrast, claims 37-39 recite the use
of ‘cost parameters for predicting an impact on monetary charges incurred
by the client computer system.’” (Br. 10.) Appellants further contend that
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“Saxena fails to teach or suggest ‘predicting an impact on monetary charges
incurred by the client computer system,’ as recited in independent claims 37-
38. Saxena specifically discloses that the ‘origin server is paying for
caching services.’ Therefore, Saxena only discloses using importance as a
factor in relation to the origin server and not a client machine.” (Br. 11.)
The Examiner responds that “Saxena teaches . . . transaction weight
feature, which may comprise of a numeric or other indication of weight,
which is widely known to include various indicators including cost.”
(Answer 15.) We disagree.
Again, we find that the Examiner’s conclusionary statement that the
numeric transaction weight feature is widely known to include cost can not
be a substitute for evidence in the record. Here, the Examiner has failed to
show any cost factors in Saxena. Saxena discloses a transaction weight that
merely represents the importance of the link (FF 4). We find that while
Saxena’s “importance factor” may be used to control prefetching, the
Examiner has failed to establish that such a factor is equivalent to “cost
parameters for predicting an impact on monetary charges.”
Therefore, we reverse this rejection.

Regarding Claim 32
Appellants contend that “Malkin and Shinozaki . . . fail to teach or
suggest energy efficient criteria. The Examiner . . . does not even attempt to
allege that this feature is taught or suggested by Shinozaki.” (Br. 12.)
Appellants further contend that “claim 36 recites ‘predicting an impact on
energy usage by the client computer.’ The Examiner . . . fails to address it.”
(Br. 12.)
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The Examiner states that Malkin fails to teach of using an energy
efficiency criteria and instead notes that Shatil teaches using various types of
criteria to allow access to files. (Answer 12 and 15) We disagree.
Moreover, the Examiner applies the same reasoning as used in the
rejection of claim 1, as noted supra. Therefore, we reverse this rejection for
the same reasons as noted supra regarding claim 1.

VII. NEW GROUND OF REJECTION UNDER 35 U.S.C. § 101
In addition to reversing the Examiner’s rejection of claim 1-39, this
decision, pursuant to our authority under 37 C.F.R. § 41.50(b), contains a
new ground of rejection.
On February 6, 2006, the Examiner rejected claims 1-10 and 37 under
35 U.S.C. § 101 because “[t]he specification refers to a computer program
product not tangibly embodied by the transmission of a computer data signal
on a carrier wave.” (Final Office Action, 2.)
In response, Appellants argued at page 6 of the Brief that “the
Examiner failed to fully consider the language of independent claims 1 and
37, because claims 1 and 37 specifically recite that the computer program
product is embodied in a ‘computer readable storage medium.’” Appellants
go on to argue on the same page that “[t]he only reference to a carrier wave
within the originally filed specification occurs with respect to the description
of software modules, which may also be included in the computer program
product. The specification states that software modules may be distributed
by computer data signals on a carrier wave.” Appellants then conclude on
page 7 that “claims 1-10 and 37 comply with the provisions of 35 U.S.C.
§ 101 and the rejection must be withdrawn.”
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In turn, the Examiner concluded that the arguments overcame the
rejection under 35 U.S.C. § 101. The rejection was withdrawn at page 2 of
the Answer. We disagree with the Examiner’s conclusion for the reasons
discussed infra, and we apply the rejection of claims 1-10 and 37 anew.
Claims 1-10 and 37 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Claims 1 and
37 are reproduced supra, are representative.
Specifically, claims 1 and 37 are directed to “[a] computer program
product . . . comprising a computer readable storage medium…” and
Appellants explicitly states that the “. . . program modules may be stored on
a CD-ROM, magnetic disk storage product, or any other computer readable
data or program storage product. The software modules in the computer
program product may also be distributed electronically, via the Internet or
otherwise, by transmission of a computer data signal (in which the software
modules are embedded) on a carrier wave. (Spec., 13.)
We find that Appellants’ description of a ‘computer readable storage
medium’ expressly implicates carrier waves and signals.
That said, the issue, quite simply, is whether a claimed computer
readable storage medium that is broad enough to include transmission-type
media – a media that includes carrier waves and signals – is statutory subject
matter. We have argued that a carrier wave or signal is not statutory subject
matter because it does not fall within any of the four categories of statutory
subject matter. See In re Petrus A.C.M. Nuijten, --- F.3d ---, (2007 WL
2728397) (Fed. Cir. Sept. 20, 2007). In this instance, claims 1 and 37
includes both statutory and non-statutory subject matter that, according to
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recent proposed USPTO interim guidelines, must be amended to recite
solely statutory subject matter.3
Even if as carrier wave or signal could be considered to be an article
of manufacture, however, we find that such a carrier wave or signal does not
operate as the claimed computer readable storage medium. Claims 1 and 37,
for example, recites a computer readable medium having instructions for
causing a client computer to execute a method. As a result, it is our view
that the computer cannot perform the claimed functions while the
instructions are embodied on a carrier wave or a signal. In other words, the
information, while on the carrier wave or signal, is unavailable to the
computer for performing the functions recited in the claims.
For the above reasons, we find that claims 1 and 37 recite non-
statutory subject matter. The “medium” of claims 2-10 shares the same
interpretations as discussed supra for “medium” in claim 1. For the reasons
supra, we conclude that claims 1-10 and 37 are also directed to non-statutory
subject matter.

37 C.F.R. § 41.50(b)
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”

3 See also “Interim Guidelines for Examination of Patent Applications for
Patent Subject Matter Eligibility,” 1300 Off. Gaz. Pat. Office 142, Annex
IV(C)(2)(Nov. 22, 205) (“[A] claim that can be read so broadly as to include
statutory and nonstatutory subject matter must be amended to limit the claim
to a practical application.”).

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37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of proceedings (37 C.F.R. § 1.197 (b) as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner …

(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record …

VIII. CONCLUSIONS
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-39 under 35 U.S.C. § 103.
We enter a new ground of rejection for claims 1-10 and 37 under
35 U.S.C. § 101.
Since we have entered a new ground of rejection against claims 1-10
and 37, our decision is not a final agency action.

IX. DECISION
In view of the foregoing discussion, we reverse the Examiner’s
rejection of claims 1-39 under 35 U.S.C. § 103.
Under 37 C.F.R. § 41.50 (b), we have entered a new ground of
rejection against claims 1-10 and 37 under 35 U.S.C. § 101.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).

5 REVERSED
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37 C.F.R. § 41.50(b)

pgc

HEWLETT PACKARD COMPANY
P O BOX 272400, 3404 E. HARMONY ROAD
INTELLECTUAL PROPERTY ADMINISTRATION
FORT COLLINS CO 80527-2400
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