Ex Parte Schnetzler

Board of Patent Appeals and Interferences

Jan 31, 2011

10083557 (B.P.A.I. Jan. 31, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/083,557 02/27/2002 Steve Schnetzler 2207/14007 5880
23838 7590 01/31/2011
KENYON & KENYON LLP
1500 K STREET N.W.
SUITE 700
WASHINGTON, DC 20005
EXAMINER
BENGZON, GREG C
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
01/31/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEVE SCHNETZLER
____________________

Appeal 2009-006705
Application 10/083,5571
Technology Center 2400
____________________

Before JAY P. LUCAS, JOHN A. JEFFERY, and DEBRA K. STEPHENS,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed February 27, 2002. The real party in interest is Intel
Corp.
2 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.

Appeal 2009-006705
Application 10/083,557

STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1 to 21 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

We affirm the rejections.

Appellant’s invention relates to maintaining persistence to a single
remote server that is accessed through the Internet (Spec. 1, ¶ [0001]). In
the words of Appellant:
[A] load balancer determines if [a] URL request
includes the identity of one of [the] servers. If the
URL request does not include a server ID, then
[the] load balancer forwards the URL request to
one of [the] servers based on known load
balancing algorithms or techniques.
(Spec. 4, ¶ [0015]).
[The] load balancer adds a server ID to each of the
URLs included in [a] received HTML page that
correspond to an HTML page or query located on
[the] servers. The server ID corresponds to the
particular server … that sent the HTML page to
[the] load balancer. Using [an] example, and
assuming that the HTML page was received from
server 43, the URL would be changed to
www.xxx.com?Sticky=server43, where
“[server]43” is the server ID for server 43.
(Spec. 5, ¶ [0018]).

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The following claim illustrates the claims on appeal:
Claim 1:
1. A method comprising:

receiving a request for the data from a client
computer;

sending the request to a first server of a
plurality of servers;

receiving the data from the first server; and

adding an identity of the first server to the
data and forwarding the data to the client
computer.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
O’Neil US 6,128,279 Oct. 03, 2000
Barrera US 6,748,448 B1 Jun. 08, 2004
(Dec. 13, 1999)
Bodwell US 6,954,783 B1 Oct. 11, 2005
(Nov. 10, 2000)

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1 to 21 stand rejected under 35 U.S.C. § 103(a) for being
obvious over O’Neil in view of Barrera.
R2: Claims 1 to 21 stand rejected under 35 U.S.C. § 103(a) for being
obvious over O’Neil in view of Bodwell.

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We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). The issue specifically turns
on whether O’Neil and Barrera render obvious Appellant’s method step of
“adding an identity of the first server to the data and forwarding the data to
the client computer,” as recited in claim 1.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellant has invented a method, load balancer, and medium for
maintaining persistence to a single remote server accessed by a client
computer via the Internet (Spec. 1, ¶ [0001]; Fig. 1). Appellant’s claimed
method includes the step of “adding an identity of the first server to the data
and forwarding the data to the client computer.” (Claim 1).
O’Neil
2. The O’Neil reference discloses maintaining persistence to a single
remote server accessed by a remote source via the Internet. (See col. 9, ll. 23
to 27 and 29 to 31; Fig. 4, step S405, “route requests to server dedicated to
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Application 10/083,557

processing requests for this URI” and step S406, “process requests in server
dedicated to processing requests for the URI.”)
Barrera
3. The Barrera reference discloses identifying a specific data storage
device controller using a URL (col. 8, ll. 8 to 12).
Bodwell
4. The Bodwell reference discloses adding an identifier of a target web
server to data and forwarding the data to a client web browser (col. 4, l. 64 to
col. 5, l. 10).

PRINCIPLE OF LAW
Appellant has the burden on appeal to the Board to demonstrate
Examiner error. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).

ANALYSIS
Arguments with respect to the rejection
of claims 1 to 21
under 35 U.S.C. § 103(a) [R1, R2]

The Examiner rejects the noted claims for being obvious over O’Neil
in view of Barrera or Bodwell, pages 4 to 10 of the Examiner’s Answer.
Appellant argues that Barrera does not teach the claimed invention
because Barrera discloses that a storage device controller, which is separate
from any server, performs retrieval of any requested file (App. Br. 6, top).
According to Appellant, the embedded physical I/O address of a resource
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file does not include an identity of a server responsible for forwarding the
requested data to the client computer (e.g., as in claim 1) because Barrera
does not require using servers at all in its retrieval process (id.).
The Examiner responds that Barrera’s storage device controller
operates no differently from Appellant’s claimed “first server” since
Barrera’s controller responds to client requests in the same manner (i.e.,
responding to client requests by providing requested data to the client) as the
claimed “first server.” (Ans. 11, bottom).
We disagree with Appellant for the following reasons. We find that
Appellant has invented a method, load balancer, and medium for
maintaining persistence to a single remote server accessed by a client
computer via the Internet (FF#1). Appellant’s claimed method includes the
step of “adding an identity of the first server to the data and forwarding the
data to the client computer.” (Id.).
In comparison, the O’Neil reference discloses maintaining persistence
to a single remote server accessed by a remote source via the Internet
(FF#2). Barrera discloses identifying (the claimed “adding” step) a specific
data storage device controller (Appellant’s claimed “first server”) using a
URL (FF#3). Moreover, the Bodwell reference also discloses adding
(Appellant’s claimed “adding” step) an identifier (the claimed “identity”) of
a target web server (the claimed “first server”) to data and forwarding the
data to a client web browser (the claimed “client computer”) (FF#4).
We find that Barrera discloses the claim limitation “adding an identity
of the first server to the data and forwarding the data to the client computer”
(claim 1) since a person of ordinary skill in the art would have recognized
Barrera’s storage device controller as being similar to Appellant’s claimed
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“first server.” We find unconvincing Appellant’s argument that Barrera’s
storage device controller is “separate from any servers” (App. Br. 6, top)
since the Examiner reads the claimed “first server” on Barrera’s “storage
device controller.” The location of Appellant’s “first server” relative to
other elements of claim 1 is not recited as a claim limitation. Thus, we find
that the Barrera controller’s location relative to “any servers,” as argued by
Appellant above, is not relevant to the obviousness inquiry. In accordance
with our factual findings and our above-stated analysis, we conclude that
Appellant has not demonstrated error in the obviousness rejections R1 in this
regard.
Appellant then argues that “the embedded address of Barrera is a
physical I/O address, otherwise known as a MAC address or Ethernet
address (e.g., 0000 0A27 94 40 FC).” (App. Br. 6, bottom). Appellant
argues that “[a] MAC is not the same as, for example, an IP identifying
address.” (Id.). Instead, Appellant contends that “[a] MAC address is a
hardware address used for interface with the network medium in the OSI
network standard.” (Id.). Appellant concludes that “a MAC address is not
sufficient to describe an identity of a first server as specifically recited in
claim 1.” (Id.).
In reply, the Examiner states that Barrera discloses embedding an IP
address to identify the server at column 8, ll. 1 to 10 (Ans. 13, bottom).
We note that Appellant points to nothing in the Specification that
would impart a Phillips3-type specific meaning to the term “identity.” In

3 “To be his own lexicographer, a patentee must use a ‘special definition of
the term [that] is clearly stated in the patent specification or file history.’”
The Laryngeal Mask Company Ltd. v. Ambu A/S, 618 F.3d 1367, 1372 (Fed.
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Application 10/083,557

failing to do so, Appellant fails to specify why Barrera’s MAC address
would not have been equated with Appellant’s claimed “identity” at the time
the invention was made. We thus find Appellant has not demonstrated error
in the rejection R1 in this regard.
Appellant makes several other arguments concerning the cited
secondary references Barrera and Bodwell. For example, Appellant
contends that Barrera fails to disclose the “adding” step of claim 1 since the
reference merely describes the request and transfer of a resource file
between computers and since the URL address cited by the Examiner at
column 7, lines 55 to 63, is merely sent as an identifier to aid in locating a
requested resource file stored on the web server host (App. Br. 8, top).
Appellant also argues that merely because mention is made of sending a
URL address as a part of a retrieval process to be sent to the requesting party
in column 6, ll. 20 to 30, the disclosure does not qualify as the “adding” step,
as claimed (App. Br. 8, bottom).
Regarding the rejection R2, Appellant argues that Bodwell’s
embedding (of the target server’s name and the special identifier) is directed
to communication between an intermediate server and a target server to
achieve the end of routing all future requests of the relevant target server
through the relevant intermediate server (App. Br. 10, bottom). Thus,
Bodwell fails to describe at least adding an identity of a server to data and
Cir. 2010) (internal citations omitted). “The specification does not clearly
convey the patentee’s intent to appoint a special meaning to the term … .
Having concluded that the patentee did not act as his own lexicographer in
this case by clearly defining a claim term, we must determine the ordinary
meaning of [the term] as used in these claims to one of skill in the art in light
of the specification and prosecution history.” Id.

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forwarding the data to a client computer (id.). Moreover, Appellant
contends that adding the data of a first server that provides the data is not the
same as adding the identity of an unrelated intermediate server (App. Br. 11,
bottom).
With respect to each of the above-stated arguments as to the
secondary references, we adopt and endorse the Examiner’s findings and
conclusion of obviousness (Ans. 4, top to 10, middle). We refer Appellant
to the “Response to Argument” section of the Examiner’s Answer for further
details (Ans. 10, bottom to 15, top). Accordingly, we find that Appellant has
not shown error in the obviousness rejections R1 and R2.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown that the Examiner erred in rejecting claims 1 to 21.

DECISION
We affirm the Examiner’s obviousness rejections R1 and R2 of claims
1 to 21.

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

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peb

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