Ex Parte Rankin et al

Board of Patent Appeals and Interferences

Jan 27, 2010

10101331 (B.P.A.I. Jan. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL J. RANKIN and DAVID C. YULE
____________

Appeal 2009-001508
Application 10/101,331
Technology Center 2400
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Decided: January 27, 2010
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Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP, and
THU A. DANG, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-20. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

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INVENTION
A communications system comprises a beacon (10) storing a
portion of available data (20) and having access to all of the
available data over a first network (60). The beacon (10) is
arranged to communicate with a client terminal (30) over a
second network (35, 40) to supply data from said stored portion
(20) of available data. The client terminal (30) has access to all
of the available data (70) over a third network (80, 90). Upon a
request by the client terminal (30) for data of the available data
not within the stored portion (20), a network is selected from
the first network (30) and the third network (80, 90) in
dependence on one or more predetermined criteria, the
requested data being accessed over the selected network.
(Spec. 18.)

ILLUSTRATIVE CLAIM
11. A data supply method for supplying data to a client terminal
comprising:
maintaining a beacon storing a portion of available data
and having access to all of the available data over a first
network;
communicating between the beacon and the client
terminal over a second network to supply data from the stored
portion of available data and information to access all of the
available data;
the method further comprising the steps of:
upon request by the client terminal for data of the
available data not within the stored portion, selecting a network
from the first network and a third network in dependence on
one or more predetermined criteria; and,
accessing the requested data over the selected network.

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PRIOR ART
Sim 2003/0031176 A1 Feb. 13, 2003
(Filed May 17, 2001)

Johnson 2002/0129123 A1 Sept. 12, 2002
(Filed Nov. 2, 2001)

REJECTION
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sim and Johnson.

CLAIM GROUPING
37 C.F.R. § 41.37(c)(1)(vii) follows in pertinent part.
When multiple claims subject to the same ground of rejection
are argued as a group by appellant, the Board may select a
single claim from the group of claims that are argued together
to decide the appeal with respect to the group of claims as to the
ground of rejection on the basis of the selected claim alone.
Notwithstanding any other provision of this paragraph, the
failure of appellant to separately argue claims which appellant
has grouped together shall constitute a waiver of any argument
that the Board must consider the patentability of any grouped
claim separately.

Here, the Appellants argue claims 1-20, which are subject to the same
ground of rejection as a group. (App. Br. 4-13.) Therefore, we select
claim 11 as the sole claim on which to decide the appeal of the group.

ISSUE
The Examiner finds that Figure 1 of Sim anticipates a first network
and second network. (Ans. 9.) He also finds that "Sim on page 2,
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paragraphs 9-10 describes web caching process through a cache server . . . in
which a client can obtain the information from the origin server on the
internet when the information being requested is not readily available on the
cache server." (Id. at 9-10.)

The Appellants argue that "[b]ecause there is only one network over
which the invention of Sim operates, Sim lacks any teaching of a second
network over which a beacon and a client terminal communicate . . . ."
(App. Br. 7.) They also argue that "[t]he Sim reference also lacks any
teaching or disclosure of supplying information to either of the end-user,
application servers 721-724 or VCFS 702 to access all of the available data."
(Id.)

Therefore, the issue before us is whether the Appellants have shown
error in the Examiner's findings that Sim teaches or would have suggested a
first network providing a beacon with access to all of the available data and
a second network by which the beacon and a client can communicate
information to access all of the available data.

LAW
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). "'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
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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)).

FINDINGS OF FACT ("FFS")
1. Figure 1 of Sim follows.

The reference explains that "FIG. 1 is an illustration of caching methods of
content delivery." (¶ 0053.)

2. In Sim "[a] client user at browser 104 in Local Area Network
(LAN) 108 desiring to obtain data available from origin server 100 enters
the Universal Resource Locator (URL) address of the desired data into
browser 104." (¶ 0009.) "The request is forwarded to cache appliance 102,
which is an HTTP (Hyper Text Transport Protocol) proxy server in this
illustration." (Id.)
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3. "Proxy server (i.e., cache appliance) 102 processes the request
received from client at browser 104 and searches its cache (i.e., memory) for
the requested data, if the data is not available in its cache, proxy server 102
forwards the request to origin server 100 via network router 101." (¶ 0010.)
"Origin server 100 services the request and forwards the requested data to
cache appliance 102. Upon receipt of the data, cache appliance 102 may
save the data in its local cache memory and also forwards it to browser 104."
(Id. at ¶ 0011)

4. The Appellants' Figure 1 follows.

"Figure 1 is a schematic diagram of a beacon network illustrating one
embodiment of the [Appellants'] invention . . . ." (Spec. 4.)

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5. The Appellants read the claimed first network on the connection
labeled as item 60 in their Figure 1. (Spec. 18.)

6. The Appellants read the claimed second network on the connection
labeled as item 35 and the area labeled as item 40 in their Figure 1. (Id.)

ANALYSIS
Figure 1 of Sim shows caching methods of content delivery. (FF 1.)
More specifically, the Figure shows a browser 104, a proxy server (i.e.,
cache appliance) 102, and an origin server 100. (Id.) Figure 1 also shows a
Transmission Control Protocol/Internet Protocol ("TCP/IP") connection
between the proxy server and the origin server. (Id.) It is uncontested that
the proxy server teaches the claimed beacon, and that the origin server stores
all available data. Therefore, we find that the TCP/IP connection constitutes
a first network providing a beacon with access to all of the available data.
We note that the reference's TCP/IP constitutes a first network the same way
as the connection labeled as item 60 in the Appellants' Figure 1 (FF 4)
embodies the claimed first network (FF 5.)

In Sim, a client browser 104 desiring to obtain data from the origin
server enters the URL address of the desired data into the browser 104. (FF
2.) The request is forwarded to the proxy server/beacon. (Id.) If the
requested data are not available in its cache, the proxy server/beacon
forwards the request to the origin server. For its part, the origin server 100
services the request and forwards the requested data to the proxy server,
which also forwards it to the client browser 104. (FF 3.)
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Figure 1 shows that the client browser's request with its URL address
is forwarded to the proxy server via LAN (i.e., local area network) A. (FF
1.) Because the client browser sends the request with its URL address to
obtain data from the origin server (FF 2), we find that these constitute
information to access all of the available data. We further find that LAN A
constitutes a second network by which the beacon and a client can
communicate information to access all of the available data. We note that
the reference's LAN A constitutes a first network the same way as the
connection labeled as item 35 and the area labeled as item 40 in the
Appellants' Figure 1 (FF 4) embodies the claimed first network (FF 6.)

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellants have shown no error in the Examiner's findings that Sim teaches
or would have suggested a first network providing a beacon with access to
all of the available data and a second network by which the beacon and a
client can communicate information to access all of the available data.

DECISION
We affirm the rejection of claims 1-20.

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

AFFIRMED

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