Ex Parte Pujare et al

Board of Patent Appeals and Interferences

Jun 24, 2009

09826607 (B.P.A.I. Jun. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SANJAY PUJARE, ROBERT DEUEL, NICHOLAS RYAN,
MANUEL BENITEZ, and DAVID LIN
__________

Appeal 2009-000027
Application 09/826,607
Technology Center 2400
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Decided:1 June 24, 2009
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Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).
DECISION ON APPEAL

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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1-52. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on June 11, 2009.
We AFFIRM.

THE INVENTION
Appellants’ invention relates generally to the streaming of computer
program object code across a network in a computer environment. More
particularly, the invention relates to streaming and execution of existing
applications across a network of servers streaming computer program object
code and other related data to clients in a computer environment. (Spec. 1).
Claim 1 is illustrative:
1. A process for converting a conventionally coded
computer application program into a data set suitable for
streamed delivery across a network from a server to a client in a
computer environment, comprising the steps of:

providing installation monitoring means for monitoring
an installation process of said conventionally coded application
program on a local computer system;

wherein said installation monitoring means gathers
modification information including system registry
modifications that said installation process makes to certain file
paths in a system registry of said local computer system;

parameterizing said system registry modifications by
replacing certain of said file paths in said system registry
modifications with parameters that are recognizable by said
client to re-direct requests for reading said system registry to a
registry spoofer; and
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providing data set creation means for processing said
modification information for converting said application
program into a data set suitable for deceiving said client into
allowing streaming of bits of said data set over said network to
said client such that said application program is capable of
beginning execution on said client prior to downloading all of
said application program.

PRIOR ART
The Examiner relies upon the following references as evidence in
support of the obviousness rejections:

Kumar US 6,343,287 B1 Jan. 29, 2002
Schmeidler US 6,374,402 B1 Apr. 16, 2002
Cheng US 6,457,076 B1 Sep. 24, 2002
Eylon US 6,574,618 B2 Jun. 3, 2003

THE REJECTIONS
1. The Examiner rejected claims 1-6, 8-19, 21-32, 34-45, and 47-52
under 35 U.S.C. § 103(a) as being unpatentable over the combination
of Eylon, Kumar, and Schmeidler.

2. The Examiner rejected claims 7, 20, 33, and 46 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Eylon, Kumar,
Schmeidler, and Cheng.

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GROUPING OF CLAIMS
Appellants argue independent claims 1, 14, and 27 as a group. (App.
Br. 12-13). We will, therefore, treat claims 14 and 27 as standing or falling
with representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue independent claim 40 and dependent claims 2, 3, 5,
6, 7, 8, and 13 separately (App. Br. 13-16).

APPELLANTS’ CONTENTIONS
Appellants contend that the Eylon, Kumar, and Cheng references may
not be prior art. (See App. Br. 9 and 28). Assuming arguendo that the cited
combination references are prior art, Appellants further contend that certain
claim limitations are not disclosed by the Examiner’s proffered combination
of cited references (App. Br. 12-16). We have enumerated the specific claim
limitations argued by Appellants in the ISSUES section infra. We address
Appellants’ specific arguments for each issue in our ANALYSIS section infra.

EXAMINER’S RESPONSE
In the “Response to Arguments” section of the Answer, the Examiner
disputes Appellants’ contention that the references relied upon are not prior
art (Ans. 11-12). The Examiner also maintains that the limitations argued by
Appellants are taught or suggested by the cited combination of references.
(Ans. 12-19).

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ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:
1. Have Appellants shown the Examiner erred in relying upon the
Eylon, Kumar, and Cheng references as prior art? (See App. Br.
9 and 28).
2. Have Appellants shown the Examiner erred in finding that the
combination of Eylon, Kumar, and Schmeidler teaches or
suggests conversion of a conventionally coded application into
a streaming application? (See claims 1 and 40).
3. Have Appellants shown the Examiner erred in finding that the
combination of Eylon, Kumar, and Schmeidler teaches or
suggests installation monitoring means (as in recited claim 1),
or monitoring an installation process and gathering
modification information (as recited in claim 40)?
4. Have Appellants shown the Examiner erred in finding that the
combination of Eylon, Kumar, and Schmeidler teaches or
suggests parameterizing system registry modifications (See
claims 1 and 40).
PRINCIPLES OF LAW
“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.
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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.

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).
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). Therefore, we look to Appellants’ Briefs to show error in
the Examiner’s proffered prima facie case.

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by a preponderance of the evidence:
THE EYLON REFERENCE
1. Eylon teaches that “[p]rior to streaming an application, the
application files are divided into small segments called
streamlets.” (Col. 5, ll. 53-54).

2. Eylon teaches “[a]ccording to one aspect of the invention, a
virtual file system ("VFS") 160 is provided to store and
organize received program streamlets and present an
appearance to the operating system 140 that all of the
application files are locally present. The VFS 160 resides on a
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local storage device, such as the client's hard drive. Some or all
of the VFS 160 can alternatively be retained in system
memory.” (Col. 8, ll. 14-19).
3. Eylon teaches
The VFS 160, through the FSD driver 150, is
configured to appear to the operating system as a
local virtual file system which can be accessed by
the operating system in the same manner as other
data storage devices 190. When a streaming
application is launched, it is configured to indicate
the VFS 160 as the source for application files.
Thus, from the operating system point of view, the
application appears to be present on a local drive.
However, unlike a conventional local file system
190, such as a hard disk or CD-ROM accessed
through a conventional device driver 180, the VFS
160 does not need to (and generally will not)
contain complete copies of the various required
application files. Instead, only those portions of the
various data files which have been provided to the
client as streamlets are present. The data behind
some files may be missing and other files may be
only partially present.
(Col. 8, ll. 23-39).

4. Eylon teaches “[i]n configurations where the server
autonomously streams data to the client, it is useful in making
the selection of which streamlets to forward for the server to
monitor the state of the client executed streamed application.”
(Col. 12, l. 66 through col. 13, l. 2).

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ANALYSIS
At the outset, we consider Appellants’ arguments in the Briefs only to
the extent that such arguments are directed to claimed subject matter.

ISSUE 1
We decide the question of whether Appellants have shown the
Examiner erred in relying upon the Eylon, Kumar, Schmeidler, and Cheng
references as prior art (See App. Br. 9 and 28).
We note that the instant application on appeal has an effective filing
date of April 5, 2001, and also claims the benefit of U.S. Provisional Patent
Application Serial No. 60/246,384 that was filed on November 6, 2000
(Spec. 1).
We begin with Eylon, which was filed on Dec. 28, 2000, before the
April 5, 2001 filing date of the instant application on appeal. Because the
filing date of Eylon antedates the filing date of the instant application on
appeal, we find Eylon is prior art subject to a showing by Appellants that
each of the instant claims on appeal is fully supported by common subject
matter described in U.S. Provisional Patent Application Serial No.
60/246,384, (filed on November 6, 2000). See Hyatt v. Dudas, 492 F.3d
1365, 1369 (Fed. Cir. 2007) (“As we explained in In re Oetiker, the prima
facie case is merely a procedural device that enables an appropriate shift of
the burden of production.”) See Id. (“Once the applicant is so notified, the
burden shifts to the applicant to rebut the prima facie case with evidence
and/or argument.”)
Because Appellants have not provided a showing of the requisite
provisional support in the Briefs, we find Appellants’ argument that
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“applicants believe that Eylon is not prior art because the filing date of Eylon
is later than the effective date of the present application” to be unavailing.
(App. Br. 9, emphasis added). We decline to ground our decision on
Appellants’ asserted beliefs. We note that arguments Appellants could have
made but chose not to make in the Briefs are deemed to have been waived.
See 37 C.F.R. § 41.37(c)(1)(vii).
We acknowledge that references within the statutory terms of 35
U.S.C. § 103 qualify as prior art for an obviousness determination only when
analogous to the claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir.
1992). However, we find Appellants have adopted an unreasonably narrow
interpretation regarding the purported field of endeavor of the instant claims,
and have not convincingly addressed the Examiner’s broader findings which
we adopt, as follows:
Applicant's invention operates within the field of endeavor for
the delivery of software. Steamed delivery is merely one format
for the delivery of software over a communications network.
All of the selected prior art references, Eylon (6,574,618),
Kumar (6,343,287), Schmeidler (6,374,402) and Cheng
(6,457,076), are in the same field of endeavor as
Applicant's Invention, which is the delivery and installation of
software over network communications.
(Ans. 12).

Accordingly, we find Eylon (filed on Dec. 28, 2000), Kumar (filed
May 19, 1999), Schmeidler (filed May 12, 1999), and Cheng (filed Sept. 13,
2000) are each available as prior art because (1), each of these references has
a filing date that antedates the effective filing date of the instant application

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on appeal (April 5, 2001) and (2), because Appellants have not established
that each of the instant claims on appeal are entitled to the benefit of the
November 6, 2000 filing date of U.S. Provisional Patent Application Serial
No. 60/246,384.

ISSUE 2
We decide the question of whether Appellants have shown the
Examiner erred in finding that the combination of Eylon, Kumar, and
Schmeidler teaches or suggests conversion of a conventionally coded
application into a streaming application (See claims 1 and 40).
Referring to paragraph [0072] of the Specification pointed to by
Appellants in the Brief (page 19), we find Appellants have given no special
definition to the claim term “conventionally coded application” (claim 1)
that differs from the meaning it would otherwise possess. See In re Paulsen,
30 F.3d 1475, 1480 (Fed. Cir. 1994). Cf. Phillips v. AWH Corp., 415 F.3d
1303, 1316 (Fed. Cir. 2005) (en banc) (“[T]he specification may reveal a
special definition given to a claim term by the patentee that differs from the
meaning it would otherwise possess. In such cases, the inventor's
lexicography governs.”).
Here, Appellants proffer an example of a “conventionally coded
application” as “an application that has to be installed before execution,”
(App. Br. 10, ¶3). However, we find claims 1 and 40 are silent regarding
such argued limitations. Moreover, claim 40 is silent regarding the term
“conventionally.” Therefore, we broadly but reasonably construe the
claimed conventionally coded application (claim 1) as any application that is
coded using any conventional technique or language.
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We particularly note that Appellants appear to acknowledge that
either Eylon or Schmeidler disclose a conventionally coded application, at
least in the Background section: “It should be noted that since Eylon and
Schmeidler do not disclose installation of a conventionally coded application
(other than in the Background), it follows . . . .” (App. Br. 12). Eylon teaches
that “[p]rior to streaming an application, the application files are divided into
small segments called streamlets.” (FF 1). We note that FF 1 does not
reference the “Background” section of Eylon. Given our aforementioned
claim construction, we find Eylon teaches a conventionally coded
application that is converted to a streaming application when it is divided
(i.e., converted) into small segments called streamlets. We find this teaching
meets the argued preamble limitations of each of independent claims 1 and
40.
ISSUE 3
We decide the question of whether Appellants have shown the
Examiner erred in finding that the combination of Eylon, Kumar, and
Schmeidler teaches or suggests installation monitoring means (as in recited
claim 1), or monitoring an installation process and gathering modification
information (as recited in claim 40).
Regarding claim 1, Appellants merely recite the language of the
claim, and assert that “since Eylon and Schmeidler do not disclose
installation of a conventionally coded application (other than in the
Background), it follows that Eylon and Schmeidler do not disclose providing
installation monitoring means for monitoring an installation for a
conventionally coded application, as in claim 1. Moreover, the Background
does not disclose installation monitoring means.” (App. Br. 12).
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Regarding claim 40, Appellants restate this same argument on pages
13-14 of the Brief, and further assert that “[s]ince Eylon and Schmeidler do
not disclose[] monitoring an installation process, it follows that Eylon and
Schmeidler do not disclose gathering modification information as in claim
40.”
We begin our analysis by noting that Appellants stated during the
hearing on June 11, 2009 that the “local computer system” recited in the
body of claims 1 and 40 could be any computer system and did not have to
be the same computer as either the client or server recited in the preamble of
the claims.
We note that Eylon teaches “[a]ccording to one aspect of the
invention, a virtual file system ("VFS") 160 is provided to store and organize
received program streamlets and present an appearance to the operating
system 140 that all of the application files are locally present. The VFS 160
resides on a local storage device, such as the client's hard drive.” (FF 2). We
note that Eylon further teaches “[s]ome or all of the VFS 160 can
alternatively be retained in system memory.” (FF 2).
Because Eylon’s virtual file system ("VFS") 160 (or system memory)
stores at least some of the streamed application streamlets that are required
for execution of the streamed application at a particular time (FF 2), we find
they are part of a conventionally coded application that is at least
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temporarily “installed” (i.e., stored) on Eylon’s computer system.2 Further,
we note Eylon expressly teaches that “[i]n configurations where the server
autonomously streams data to the client, it is useful in making the selection
of which streamlets to forward for the server to monitor the state of the
client executed streamed application.” (FF 4, emphasis added). Therefore,
based on our review of the evidence, we find Eylon at least suggests the
argued limitations of installation monitoring means for monitoring an
installation process, monitoring an installation process of an application
program, and gathering modification information on modifications, as
claimed. We note that the Examiner looks to the Kumar and Schmeidler
references for teaching or suggesting the claimed registry modifications.
(See Ans. 13-14 and 17-18).
The issue of whether Eylon’s application is “installed” appears to be
the crux of the disagreement between the Appellants and the Examiner. We
acknowledge that Appellants clearly do not consider Eylon’s streamed
application to be an installed application (See e.g., App. Br. 28, “Eylon and
Schmeidler are directed to streamed applications that are streamed rather
than installed.”) (Emphasis in original). However, we broadly but
reasonably construe an application as being “installed” if it is stored for
execution in a computer system in any manner, even if the application is

2 See FF 3: Eylon teaches that “the VFS 160 does not need to (and
generally will not) contain complete copies of the various required
application files. Instead, only those portions of the various data files
which have been provided to the client as streamlets are present. The
data behind some files may be missing and other files may be only
partially present.” (Emphasis added).

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only stored for execution of one application code portion at a time (e.g., as
application “streamlets” that are downloaded and temporarily installed for
execution in a dynamic fashion as required).
Because Eylon’s virtual file system ("VFS") 160 (or system memory)
stores (i.e., installs for execution) at least some of the streamed application
streamlets that are required for execution of the streamed application at a
particular time (FF 2), we find Appellants’ argued limitations broadly but
reasonably encompass the teachings and suggestions of Eylon (and the
Examiner’s proffered combination of references) for essentially the same
reasons argued by the Examiner in the Answer, and for the reasons discussed
above.
ISSUE 4
We decide the question of whether Appellants have shown the
Examiner erred in finding that the combination of Eylon, Kumar, and
Schmeidler teaches or suggests parameterizing system registry modifications
(See claims 1 and 40).
Appellants ground their arguments for claims 1 and 40 on the premise
that since “Eylon and Schmeidler do not disclose the installation monitoring
means, it follows that Eylon and Schmeidler do not discloses parameterizing
system registry modifications” (App. Br. 12, last paragraph, and 14,
paragraph 3).
Because we have found supra that at least Eylon teaches or suggests
installation monitoring means, we find Appellants’ arguments unavailing.
We disagree with Appellants for essentially the same reasons argued by the
Examiner on pages 13-15 of the Answer.

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Claims 2, 3, 5, and 6
With respect to each of claims 2, 3, 5, and 6, Appellants have: (1)
merely recited the language of the claim, (2) asserted that the limitations are
not taught or suggested by the combination of Eylon and Schmeidler, and
(3) failed to respond to the specifics of the Examiner’s rejection (which is
also based on Kumar) (see App. Br. 15). Appellants have not provided a
basis for any of their assertions. We note that a statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii).
Moreover, it is our view that Appellants have failed to comply with the
requirements of 37 C.F.R. § 1.111(b) by merely reciting the language of the
claim and asserting that such language is not taught by the reference.
Therefore, we find Appellants’ arguments are merely conclusory, and do not
meet the burden of showing error in the Examiner’s prima facie case of
obviousness.

Claims 7, 8, and 13
Appellants ground their arguments for these claims on the premise
that since Eylon and Schmeidler do not disclose an installation process or
installation monitoring means, it follows that Eylon and Schmeidler fail to
disclose a versioning table (claim 6), or providing a user interface (claim 7),
or recording common configurations (claim 13). (See App. Br. 15-16).
Because we have found supra that at least Eylon teaches or suggests
an installation process and installation monitoring means, we find
Appellants’ arguments unavailing. We disagree with Appellants for
essentially the same reasons argued by the Examiner in the Answer.
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Remaining claims on appeal
We have addressed independent claims 1 and 40 supra. Independent
claims 14 and 27 fall with claim 1. Appellants have not presented any
substantive arguments directed to the separate patentability of claims 4,
9-12, 15-26, 28-39, and 41-52. These claims fall with the respective
independent claim from which they depend.

Combinability of the cited references
We note that the presence or absence of a reason “to combine
references in an obviousness determination is a pure question of fact.” In re
Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000) (citing In re Dembiczak,
175 F.3d 994, 1000 (Fed. Cir. 1999)). To the extent that Appellants have
challenged the combinability of the references, we have considered
Appellants’ arguments (e.g., see App. Br. 17, 27). However, based upon our
review of the record before us, we find the Examiner has articulated a
reasoning having a sufficient rational underpinning to support the legal
conclusion of obviousness.

CONCLUSION
Based on the findings of facts and analysis above, Appellants have
not established that the Examiner erred in rejecting claims 1-52 as being
obvious over the cited prior art under 35 U.S.C. §103(a).

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DECISION
The Examiner’s decision rejecting claims 1-52 under 35 U.S.C.
§ 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

pgc

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