Ex Parte Montero

Board of Patent Appeals and Interferences

Mar 30, 2010

10026385 (B.P.A.I. Mar. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GABRIEL GARCIA MONTERO
____________

Appeal 2009-007027
Application 10/026,3851
Technology Center 2400
____________

Decided: March 30, 2010
____________

Before THU A. DANG, CAROLYN D. THOMAS, and STEPHEN C. SIU,
Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed December 21, 2001. The real party in interest is IBM
Corporation.
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I. STATEMENT OF THE CASE
Appellant appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 1-9, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellant invented a system, method, a readable storage medium for
dynamically partitioning a message topic into one or more subtopics so that
multiple threads can service publishers and subscribers of messages
associated with the message topic. (Spec., 4:4-6.)

B. ILLUSTRATIVE CLAIMS
The appeal contains claims 1-9. Claims 1, 6, 8, and 9 are independent
claims. Claims 1, 5, and 6 are illustrative:
1. A messaging system comprising:
at least one message server;
a plurality of topics stored in said at least one message
server;
a plurality of subtopics associated with at least one of
said topics in said at least one message server; and
a dynamic topic partitioning system configured to
partition said at least one of said topics into said subtopics, wherein
messages are posted to and retrieved from individual
ones of said plurality of topics.
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5. The message system of claim 1, further comprising a
plurality of threads of execution, each said thread hosting a process
for communicating a message between one of said subtopics in said at
least one message server and a message subscriber.

6. A dynamic topic partitioning system comprising:
a message interface through which message publishers
can post messages to selected topics, and from which message
subscribers can request messages which have been published to
selected topics;
a subtopic store configured to distribute messages of said
selected topics within associated subtopics; and
a request processor in which requests to post and retrieve
messages to and from individuals ones of said selected topics can be
converted into message system requests to respectively post and
retrieve messages to and from said associated subtopics in said
subtopic store, said request processor processing each of said
converted messages system requests in individual threads of
execution.

C. REFERENCES
The references relied upon by the Examiner as evidence in rejecting
the claims on appeal are as follows:
Razdan US 2002/0141584 A1 Oct. 3, 2002
Knight US 6,493,703 Dec. 10, 2002

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D. REJECTIONS
The Examiner entered the following rejections which are before us for
review:
(1) Claims 1, 3-6, 8 and 9 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Knight; and
(2) Claims 2 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Knight in view of Razdan.

II. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Knight
1. Knight discloses that “[a]n online message board system monitors
message traffic generated by subscribers so that intelligent decisions can be
made concerning what types of content to locate and retrieve, what priority
to use for locating such content, how to organize such content for ease of
access by the subscribers, etc.” (Abstract.)
2. Knight discloses that “a message entry is sent from the user’s
computer system to server 220 where it is posted by posting logic 235 to an
appropriate subject matter area/class/subclass index 241 based on both the
content and the context of the message entry.” (Col. 12, ll. 2-6.)
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3. Knight discloses that “[t]he information in these subject matter
areas is then broken down further into class and sub-classifications as
desired.” (Col. 10, ll. 12-14.)
4. Knight discloses that “[t]his process is dynamic, iterative, and
continuous, so that a number of community/custom search robots may be
simultaneously parsing database 270 to create, update or remove their
associated subject matter area/class/subclass indices.” (Col. 10, ll. 15-19.)
5. Knight discloses that “each posting is sorted and/or tagged with
one or more additional parameter field(s) specifying one or more categories
which such posting should fall under. . . . the present invention also
intelligently classifies and stores messages by subject matter
area/class/subclass in advance.” (Col. 12, ll. 16-23.)

III. 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 (Fed. Cir. 2005), citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
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then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.
Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(internal citations omitted).

IV. ANALYSIS
Grouping of Claims
In the Brief, Appellant argues claims 1, 2, 3, and 4 as a group (App.
Br. 6-8). For claims 2-4, Appellant repeats the same argument made for
claim 1. We will, therefore, treat claims 2-4 as standing or falling with
claim 1.
Appellant separately argues claim 5 (App. Br. 6).
Appellant argues claims 6-9 as a group (App. Br. 8). For claims 7-9,
Appellant repeats the same argument made for claim 6. We will, therefore,
treat claims 7-9 as standing or falling with claim 6. See 37 C.F.R.
§ 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991).

The Anticipation Rejection
We first consider the Examiner’s rejection of the claims under
35 U.S.C. § 102(e) as being anticipated by Knight.

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Claims 1-4
Appellant contends that “the Examiner’s cited passage is to what
Knight considers to be prior art; and therefore, the Examiner is not relying
upon the teachings of Knight.” (App. Br. 6.) Appellant further contends
that “Knight appears to teach that the message is posted to a sub-topic (i.e.,
‘subject matter area/class/subclass index’). On the contrary, although the
claimed invention recites that topics are portioned into subtopics, messages
are posted to and retrieved from individual ones of the plurality of topics.”
(App. Br. 7.) Appellant further contends that “[t]he selection of a subtopic,
however, does not establish that the user selected a ‘parent topic,’ as asserted
by the Examiner.” (Reply Br., 3:6-7.)
The Examiner found “that posting to a sub-topic implies the selection
of a ‘parent’ topic, and that posting to the sub-topic implicitly includes
posting to the selected topic.” (Ans. 8.)

Issue: Has Appellant shown that the Examiner erred in finding that
Knight discloses that messages are posted to and retrieved from individual
ones of said plurality of topics?

Knight discloses an online message board system that defines ways of
locating, retrieving, and organizing messages (FF 1). Specifically, Knight
discloses posting messages to each of subject matter areas, classes, and a
subclass index (FF 2). Claim 1 requires, inter alia, that messages are posted
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to . . . plurality of topics. We find that the claimed “topics” includes any
subject matter. Knight starts with subject matter areas, which are then
broken down into class and sub-classifications (FF 3). Thus, we find that the
claimed “messages are posted to . . . topics” reads on at least Knight’s
posting to subject matter areas. The fact that Knight also posts to class and
subclass groups is irrelevant because claim 1 is not limited to only posting to
topics.
Thus, Appellant has not persuaded us of error in the Examiner’s
conclusion of anticipation for representative claim 1. Therefore, we affirm
the Examiner’s § 102 rejection of independent claim 1 and of claims 2-4,
which fall therewith.

Claim 5
Appellant contends that Knight fails to disclose a “plurality of threads
of execution.” (App. Br. 7: see also Reply Br. 5.)
The Examiner found that Knight discloses this feature on lines 22-27
of column 10 (Ans. 9).
Issue: Has Appellant shown that the Examiner erred in finding that
Knight discloses a plurality of threads of execution as claimed?

Here, the Examiner found that Appellant is merely making a general
allegation without pointing out how the language of the claims patentably
distinguishes over the reference (Ans. 9). We agree. Appellant merely
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argue that “entirely absent from these passages is a teaching as to the
claimed ‘plurality of threads of execution.’” (App. Br. 7.) However, the
Examiner found that Knight discloses customized search robots performing
independent functionality (Ans. 9-10). We add that Knight discloses that the
search robots may simultaneously parse the database to update or remove
entries (FF 4). We find that the reference, read in its entirety, provides
adequate support for the Examiner’s interpretation of the plurality of threads
limitation in claim 5.
Therefore, we find that the claimed “plurality of threads” reads on
Knight’s simultaneously operating search robots and Appellant has failed to
establish otherwise.
Thus, Appellant has not persuaded us of error in the Examiner’s
conclusion of anticipation for representative claim 5. Therefore, we affirm
the Examiner’s § 102 rejection of claim 5.

Claims 6-9
Appellant contends that “these passages are silent as to converting
request to post and retrieve messages to and from individual ones of the
selected topics into requests to and from associated subtopics.” (App. Br. 8:
see also Reply Br. 5-6.)
The Examiner found that Knight discloses the above-noted features in
lines 18-30 of column 12. (Ans. 10.)

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Issue: Has Appellant shown that the Examiner erred in finding that
Knight discloses requests to post are “converted into message system
requests to respectively post and retrieve messages to and from said
associated subtopics”?

Knight discloses that each message is posted in multiple categories,
i.e., subject matter area/class/subclass (FF 5). Thus, the Examiner concluded
that “Knight performs the exact limitation the appellant argues.” (Ans. 11.)
In other words, the Examiner appears to reason that if a single message is
given multiple classifications, there must be some type of
correlation/conversion between the classifications. We agree.
For example, claim 6 recites “can be converted” and we find that
Knight demonstrates that a request for a subject matter can be converted into
a requested for a subclass given that each posting is associated with
additional parameters specifying one or more categories. (FF 5).
Thus, Appellant has not persuaded us of error in the Examiner’s
conclusion of anticipation for representative claim 6. Therefore, we affirm
the Examiner’s § 102 rejection of independent claim 6 and of claims 7-9,
which fall therewith.

The Obviousness Rejection
We now consider the Examiner’s rejection of the claims under
35 U.S.C. § 103(a).
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For the obviousness rejection, Appellant relies upon the same
arguments as presented above, which we have already found unpersuasive.
Thus, Appellants have not persuaded us of error in the Examiner’s
conclusion of obviousness for representative claims 2 and 7. Therefore, we
affirm the Examiner’s § 103 rejection of claims 2 and 7.

V. CONCLUSIONS
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-9.
Thus, claims 1-9 are not patentable.

VI. DECISION
In view of the foregoing discussion, we affirm the Examiner’s
rejection of claims 1-9.

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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) (2009).

AFFIRMED

rwk

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