Ex Parte Schnier

Board of Patent Appeals and Interferences

Aug 18, 2006

08818185 (B.P.A.I. Aug. 18, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RANDALL R. SCHNIER
__________

Appeal No. 2006-0979
Application No. 08/818,185
__________

ON BRIEF
__________

Before JERRY SMITH, RUGGIERO and HOMERE, Administrative Patent
Judges.

JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s rejection of claims 1-9, 11, 15-36 and 39. Claims 10, 12-14, 37
and 38 have been canceled.

Appeal No. 2006-0979
Application No. 08/818,185

The disclosed invention pertains to a bootstrapping technique for
distributed object client systems.
Representative claims 28 and 33 are reproduced as follows:
28. A program product comprising:
(A) an applet, said applet being used to retrieve an object reference
for a naming context object from a server apparatus; and

(B) signal bearing media bearing said applet.

33. An apparatus comprising:
at least one processor;
a memory coupled to the at least one processor;
a server system, said server system comprising:
a) at least one object server, said at least one object server
including a naming context object;

b) a web server, said web server having access to a stringified
object reference for said naming context object, wherein said web server
downloads said stringified object reference to a web browser when said
stringified object reference is requested by said web browser.

The examiner relies on the following references:
Tang et al. (Tang) 5,793,365 Aug. 11, 1998
(filed Jan. 2, 1996)
Hamilton et al. (Hamilton) 6,009,464 Dec. 28, 1999
(filed Oct. 16, 1995)

Kessler et al. (Kessler), “JavaOne ‘96 Presentations,”
www.javasoft.com/javaone/javaone96/pres/, pages 1-23.

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The examiner relies on the following references to support the taking of
official notice:
Cheng et al. (Cheng) 5,873,092 Feb. 16, 1999
(filed Dec. 14, 1995)

Phillips et al. (Phillips) 6,151,637 Nov. 21, 2000
(filed Sep. 4, 1996)

The following rejections are on appeal before us:
1. Claims 1-4, 6, 7, 9, 11 and 15-32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hamilton in view of Kessler, and further
in view of the examiner’s taking of Official Notice, relying upon Cheng and
Phillips.
2. Claims 5, 8, 33-36 and 39 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hamilton in view of Kessler, and further in view
of Tang.
Rather than repeat the arguments of appellant or the examiner, we
make reference to the brief and the answer for the respective details
thereof.
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Appeal No. 2006-0979
Application No. 08/818,185

OPINION

We have carefully considered the subject matter on appeal, the
rejections advanced by the examiner and the evidence of obviousness relied
upon by the examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision, the
appellant’s arguments set forth in the brief along with the examiner’s
rationale in support of the rejections and arguments in rebuttal set forth in
the examiner’s answer. Only those arguments actually made by appellant
have been considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been considered and
are deemed to be waived. See 37 CFR § 41.37(c)(1)(vii) (2004). See also
In re Watts, 354 F.3d 1362, 1368, 69 USPQ2d 1453, 1458 (Fed. Cir. 2004).
It is our view, after consideration of the record before us, that the
evidence relied upon by the examiner does not support the examiner’s
rejection of claims 1-9, 11, 15-36 and 39. Accordingly, we reverse.
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We consider the obviousness of the following logical groups of claims,
as defined under separate subheadings [brief, page 6] and argued
separately by appellant in the brief:
GROUP I: Claims 1-9, 11, and 15-32 [brief, page 8].
GROUP II: Claims 33-36 and 39 [brief, page 12].
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). The examiner must articulate reasons for the
examiner’s decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430,
1434 (Fed. Cir. 2002). In particular, the examiner must show that there is a
teaching, motivation, or suggestion of a motivation to combine references
relied on as evidence of obviousness. Id. at 1343. The examiner cannot
simply reach conclusions based on the examiner’s own understanding or
experience - or on his or her assessment of what would be basic knowledge
or common sense. Rather, the examiner must point to some concrete
evidence in the record in support of these findings. In re Zurko, 258 F.3d
1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001). Thus the examiner
must not only assure that the requisite findings are made, based on
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evidence of record, but must also explain the reasoning by which the
findings are deemed to support the examiner’s conclusion. However, a
suggestion, teaching, or motivation to combine the relevant prior art
teachings does not have to be found explicitly in the prior art, as the
teaching, motivation, or suggestion may be implicit from the prior art as a
whole, rather than expressly stated in the references. The test for an
implicit showing is what the combined teachings, knowledge of one of
ordinary skill in the art, and the nature of the problem to be solved as a
whole would have suggested to those of ordinary skill in the art. In re Kahn,
441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) citing In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313 (Fed. Cir. 2000). See also
In re Thrift, 298 F. 3d 1357, 1363, 63 USPQ2d 2002, 2008 (Fed. Cir. 2002).
These showings by the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that
burden is met, the burden then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then determined
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on the basis of the evidence as a whole and the relative persuasiveness of
the arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976).
GROUP I, claims 1-9, 11 and 15-32
I. We consider first the examiner’s rejection of the claims in Group I. We
note that the examiner has rejected claims 1-4, 6, 7, 9, 11 and 15-32 as
being unpatentable over Hamilton in view of Kessler, and further in view of
the examiner’s taking of Official Notice, relying upon Cheng and Phillips.
However, the examiner has rejected claims 5 and 8, also within Group I, as
being unpatentable over Hamilton in view of Kessler, and further in view of
Tang. Pursuant to our authority under 37 CFR § 41.37(c)(1)(vii)(2004), we
will select independent claim 28 as the representative claim because it is the
broadest independent claim in Group I.
Appellant notes that the independent claims in Group I (i.e., claims 1,
7, 21 and 28) recite the basic concept of delivering an object reference for a
Naming Context Object (NCO) to a client after that client has contacted or
requested the object reference from a server [brief, page 8]. Appellant
argues that this feature is not disclosed or suggested by the combination of
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Hamilton and Kessler, nor by any of the other references cited by the
examiner [id.]. Appellant asserts that Hamilton and Kessler disclose
essentially the same subject matter as a number of other prior art
references utilized by the examiner in previous Office Actions [id.].
Appellant asserts that the examiner is focusing on the language in these
references related to obtaining object references from a Naming Context
Object, rather than obtaining an object reference for the Naming Context
Object itself, which is the subject of the Group I claims [brief, page 9,
emphasis added]. Appellant further asserts that the cited references all
discuss, at most, how a Naming Context Object is used to obtain object
references for other objects [id.]. Appellant notes that this is the well known
purpose of a Naming Context Object [id.]. Appellant argues that the
references do not disclose precisely how an object reference for the Naming
Context Object is obtained for the purpose of retrieving a proxy object for
the NCO, whereby the proxy object facilitates further usage of the NCO in a
standard CORBA environment [id.]. Appellant concludes that none of the
passages in Hamilton cited by the examiner disclose delivering an object
reference for a Naming Context Object to a “zero install client” after the
“zero install client” has contacted a server, contrary to the examiner's
assertion [id.].
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Application No. 08/818,185

In response, the examiner argues that Hamilton, as modified by
Kessler, teaches a method and apparatus for enabling application programs
(e.g., a web browser) to invoke objects within network servers that have
different network protocols, e.g., a document server downloads Object
Request Brokers (ORBs) and network protocols to application programs, thus
enabling application programs to invoke objects within network servers, as
taught by Hamilton at col. 2 line 40 through col. 3, line 25; col. 7, lines 3-52
and col. 9, lines 25-35 [answer, page 8]. The examiner notes that Kessler
teaches a Java ORB which provides a “zero install client” [answer, page 9].
The examiner concludes that it is obvious that the prior art teaches the
process of obtaining the Interface Definition Language (IDL) object reference
for the “zero install client” [id.].
At the outset, we note that to reach a proper conclusion under § 103,
the examiner, as finder of fact, must step backward in time and into the
mind of a person of ordinary skill in the art at a time when the invention was
unknown, and just before it was made. In light of all the evidence, we
review the specific factual determinations of the examiner to ascertain
whether the examiner has convincingly established that the claimed
invention as a whole would have been obvious at the time of the invention to
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a person of ordinary skill in the art. We note that to establish a prima facie
case of obviousness, the examiner must meet three basic criteria: Firstly,
there must be some suggestion or motivation, either in the references
themselves or in the knowledge generally available to one of ordinary skill in
the art, to modify the reference or to combine reference teachings. In re
Rouffet, 149 F.3d 1350, 1355-57, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998).
Secondly, there must be a reasonable expectation of success. Medchem
S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 77 USPQ2d 1865, 1870 (Fed. Cir.
2006); In re Merck & Co., Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 379
(Fed. Cir. 1986). Finally, the prior art references when combined must
teach or suggest all the claim limitations. In re Gulack, 703 F.2d 1381, 1385
n. 9, 217 USPQ 401, 403 n. 9 (Fed. Cir. 1983); In re Royka, 490 F.2d 981,
985, 180 USPQ 580, 583 (CCPA 1974). (obviousness requires a suggestion
of all limitations in a claim).
We note that the relevant portion of instant claim 28 recites: “an
applet, said applet being used to retrieve an object reference for a naming
context object from a server apparatus” [claim 28, emphasis added]. We
note that Hamilton teaches that application program 510 may only be given
a logical name for the network server and, in order to find the network
server machine within which network server 570 resides, application
program 510 refers to network name server 540 to find the particular
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network server machine address [col. 7, lines 6-14]. We further note that
Hamilton teaches that once application program 510 has located the network
server machine, it refers to object name server 560 to find a reference to
network server 570 [col. 7, lines 15-18]. Thus, we find that Hamilton
merely teaches that a network name server may be accessed to obtain the
machine address for a network server.
Significantly, we find that the combined teachings of the Hamilton and
Kessler references do not support the examiner’s finding, as set forth in the
rejection, that an object reference is retrieved (i.e., delivered) for a Naming
Context Object, as claimed [answer, page 4, ¶1; see also instant claim 28].
We agree with appellant that the passages of Hamilton cited by the
examiner are analogous to the well known use of a Naming Context Object
to obtain an object reference for an object on a server, such that a proxy
object can be obtained [brief, page 10].
With respect to the Phillips and Cheng references that the examiner
has relied upon as support for the taking of Official Notice, we note that the
examiner has failed to point out the specific portions of these references that
support the examiner’s contention. We find that Cheng merely teaches that
an object name server implements one or more Naming Context Objects
[col. 1, lines 53-54]. We find that Phillips merely teaches the use of Object
Management Group (OMG) name binding where a “naming context” is
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defined as an object that contains a set of “name bindings” in which each
name is unique and every object has a unique object ID or reference [col. 8,
lines 50-53]. We note that the appellant has conceded that it is well known
for a Naming Context Object to be used to obtain object references for other
objects [brief, page 9, ¶3]. However, we find that the use of a Naming
Context Object to obtain object references for other objects fails to meet the
language of the representative claim that specifically requires retrieving an
object reference for a naming context object from a server apparatus [claim
28].
We further note that the examiner has failed to set forth a convincing
line of reasoning to establish why an artisan would have been motivated at
the time of the invention to combine the Hamilton and Kessler references
with the examiner’s finding that it is well known in the art that a Naming
Context Object is located on the object name server [answer, page 4].
Accordingly, because Phillips and Cheng fail to make up for the deficiencies
of Hamilton and Kessler, we will not sustain the examiner’s rejection of
representative claim 28. We note that each of independent claims 1, 7, 21,
and 28 recites the equivalent limitation of retrieving (or “delivering” or
“creating” and “downloading”) an object reference for a Naming Context
Object. We agree with appellant that this limitation is not fairly taught nor
suggested by the references relied upon by the examiner. Because claims
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1-9, 11 and 15-27 and 29-32 stand or fall together with representative claim
28, we will also reverse the examiner’s rejection of these claims.
GROUP II, claims 33-36 and 39
II. We next consider the examiner’s rejection of claims 33-36 and 39 as
being unpatentable over Hamilton in view of Kessler, and further in view of
Tang. Pursuant to our authority under 37 C.F.R.§ 41.37(c)(1)(vii)(2004), we
will select independent claim 33 as the representative claim for this group,
because it is the broadest independent claim in Group II.
Appellant notes that Group II independent claims 33 and 34 add the
concept of a “stringified object reference” being used as the format for the
object reference for the Naming Context Object [brief, page 12]. Appellant
further notes that these claims still recite in various forms the on-demand
download of an object reference for a Naming Context Object to a web
browser or applet executing therein [id.]. Appellant argues that Hamilton
and Kessler do not disclose nor suggest this claimed feature [id.]. Appellant
further argues that the Tang reference (which is relied upon to disclose the
use of “stringified object references”) also does not disclose or suggest this
feature [id.].
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In response, the examiner notes the prior art teaches the use of an
Object Request Broker for handling object references and conversions
between strings (i.e., “stringified object references”) [answer, page 9]. The
examiner further notes that the applications communicate with the ORB to
convert and de-convert object references to “stringified object references”
(Tang, col. 12, lines 40-60) [id.]. The examiner concludes that it is obvious
that the ORB converts or formats “stringified object references” as a format
for the object reference and for use by the ORB naming service [id.].
We agree with the examiner that Tang teaches the use of “stringified
object references” and associated conversions between strings and object
references [Tang, col. 12, lines 46-60]. However, we do not agree with the
examiner that the combination of Hamilton, Kessler, and Tang meets the
language of the representative claim that specifically requires: “a web
server, said web server having access to a stringified object reference for
said naming context object, wherein said web server downloads said
stringified object reference to a web browser when said stringified object
reference is requested by said web browser” [claim 33, emphasis added].
We agree with appellant that this limitation is not fairly taught nor suggested
by the references relied upon by the examiner. Therefore, we will not
sustain the examiner’s rejection of representative claim 33 for essentially
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the same reasons argued by the appellant in the brief. Because claims 34-
36 and 39 stand or fall together with representative claim 33, we will also
reverse the examiner’s rejection of these claims.
In summary, we agree with appellant that the examiner has failed to
meet his/her burden of presenting a prima facie case of obviousness.
Therefore, we will not sustain the examiner’s rejection of any of the claims
on appeal. Accordingly, the decision of the examiner rejecting claims 1-9,
11, 15-36 and 39 is reversed.
Lastly, we note that “signal bearing media” is recited in independent
claims 21 and 28. We further note that the support found in the instant
specification broadly encompasses “transmission type media such as digital
and analog communication links,” thus appearing to encompass a signal
encoded with functional descriptive material [instant specification, page 21,
¶1]. We note that under the PTO’s “Interim Guidelines for Examination of
Patent Applications for Patent Subject Matter Eligibility” [OG, 22 Nov. 2005],
a claim reciting a signal encoded with functional descriptive material does
not appear to fall within any of the categories of patentable subject matter
set forth in §101. Accordingly, we leave it to the examiner to consider
whether a rejection under 35 U.S.C. § 101 is appropriate for instant claims
21-32.

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REVERSED

)
Jerry Smith )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Joseph F. Ruggiero )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Jean R. Homere )
Administrative Patent Judge )
)

JS/ce
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Appeal No. 2006-0979
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WOOD, HERRON & EVANS, LLP (IBM)
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