Ex Parte Shorter

Board of Patent Appeals and Interferences

Sep 24, 2003

08980336 (B.P.A.I. Sep. 24, 2003)

The opinion in support of the decision being entered today
was not written for publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID UEL SHORTER
____________
Appeal No. 2002-0580
Application No. 08/980,336
____________
ON BRIEF
____________
Before BARRETT, FLEMING, and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1, 4-8,
11-16, 19 and 20, which are all of the claims pending in this application. Claims 2, 3, 9,
10, 17 and 18 have been canceled.
We REVERSE
Appeal No. 2002-0580
Application No. 08/980,336
2
Appellant's invention relates to a unique object identification in a network of
computing systems. An understanding of the invention can be derived from a reading
of exemplary claim 1, which is reproduced below.
1. A method of uniquely identifying an object, comprising:
associating a unique host identifier with a data processing
system within a plurality of data processing systems;
associating a unique data item identifier with an object within
a plurality of objects within the data processing system;
associating a unique network identifier with a network of
data processing systems within a plurality of networks of data processing
systems, wherein the network includes the data processing system
containing the object; and
constructing a unique object identifier for the object by
combining a plurality of fields including a first field containing the data item
identifier, a second field containing the host system identifier, and a third
field containing the network identifier.
The prior art of record relied upon by the examiner in rejecting the appealed
claims is as follows:
Sidhu et al. (Sidhu) 5,884,322 Mar. 16, 1999
Munroe et al. (Munroe) 5,581,765 Dec. 03, 1996
Claims 1, 4-8, 11-16, 19 and 20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Sidhu in view of Munroe.
Appeal No. 2002-0580
Application No. 08/980,336
3
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 21, mailed Nov. 9, 2001) for the examiner's reasoning in support of
the rejections, and to appellant's brief (Paper No. 20, filed Oct. 16, 2001) for appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
Appellant argues that it the examiner’s burden to establish a prima facie case of
obviousness of the claimed invention and that the examiner has not met this initial
burden. (See brief at page 5.) We agree with appellant. Appellant argues that the
claimed invention requires that the unique identifier include a network identifier as well
as a system identifier and an object identifier. (See brief at page 5.) Appellant argues
that the system identifier and object identifier of Sidhu in combination with the process
identifier and object identifier of Munroe would not have suggested the unique identifier
which includes a network identifier as well as a system identifier and an object identifier.
Appeal No. 2002-0580
Application No. 08/980,336
4
The examiner maintains that Munroe teaches that it is desirable to be able to
uniquely identify objects across some domain including a network of systems. (See
answer at page 4.) While we agree with the examiner that Munroe provides a clear
motivation for the unique identifier, Munroe also provides teachings of various
methodologies to perform this goal, but we find no specific teaching or suggestion of
the use of three identifiers or a suggestion to include a network identifier in addition to
two other identifiers.
With respect to the examiner’s response to appellant’s argument concerning no
reasonable expectation of success, we find that the examiner is merely speculating as
to the extension of the unique identifier to include the network identifier. From the
teachings of Munroe, we do find a motivation for a unique identifier across a network of
systems, but no realization of the use of a network identifier in combination with other
identifiers to make the composite which uniquely identifies the object. Therefore, we
find that the examiner has not established a prima facie case of obviousness of the
claimed invention, and we cannot sustain the rejection of independent claims 1, 8 and
16 and their respective dependent claims which have similar limitations.
Appeal No. 2002-0580
Application No. 08/980,336
5
CONCLUSION
To summarize, the decision of the examiner to reject claims 1, 4-8, 11-16, 19
and 20 under 35 U.S.C. § 103 is reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
JLD/vsh
Appeal No. 2002-0580
Application No. 08/980,336
6
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