Ex Parte Terribile

Board of Patent Appeals and Interferences

May 26, 2009

09850301 (B.P.A.I. May. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK A. TERRIBILE
____________

Appeal 2008-003097
Application 09/850,3011
Technology Center 2400
____________

Decided: 2 May 27, 2009
____________

Before LEE E. BARRETT, LANCE LEONARD BARRY, and
CAROLYN D. THOMAS, Administrative Patent Judges.

C. THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed May 7, 2001. The real party in interest is Lucent
Technologies Inc.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 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 Date (electronic delivery).

Appeal 2008-003097
Application 09/850,301

2
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection
of claims 1-20, 22-31, and 33-423 mailed March 28, 2006, which are all the
claims remaining in the application, as claims 21 and 32 are cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

A. INVENTION
Appellant invented an apparatus, method, and computer readable
medium for building a table to select r most frequently used Internet site
names. (Spec. 16, Abstract.)

B. ILLUSTRATIVE CLAIMS
The appeal contains claims 1-20, 22-31, and 33-42. Claims 1, 6, 16,
and 27 are independent claims. Claims 1 and 38 are illustrative:
1. A caching method comprising the steps of:
(a) receiving an Internet site name;
(b) storing the Internet site name in an entry of a table
having n entries if the Internet site name is not in the table;
(c) counting the number of times the Internet site name
has been received, and if the Internet site name is new and the table is

3 The Examiner objects to claims 1-20, 22-31, and 33-36 (Ans. 3) – a
petitionable matter that is not before us. See MPEP § 706.01 (“[T]he Board
will not hear or decide issues pertaining to objections and formal matters
which are not properly before the Board.”); see also MPEP § 1201 (“The
Board will not ordinarily hear a question that should be decided by the
Director on petition . . . .”).
Appeal 2008-003097
Application 09/850,301

3
full, selecting an entry from a set of replaceable entries in the table,
where the table includes both replaceable and irreplaceable entries;
(d) replacing the selected entry with the new entry; and
(e) caching a resource corresponding to at least one of a
most frequently used Internet sites r where r ≤ n.

38. The method of clam 1 wherein the cached resource is an
audio file.

C. REFERENCES
The references relied upon by the Examiner in rejecting the claims on
appeal are as follows:
Peercy US 5,960,429 Sep. 28, 1999
Swildens US 2001/0034792 A1 Oct. 25, 2001
(Filed Feb. 7, 2001)
Doyle US 2002/0099807 A1 Jul. 25, 2002
(Filed Jan 22, 2001)
Chauvel US 6,826,652 B1 Nov. 30, 2004
(Filed Jun. 9, 2000)

D. REJECTIONS
The Examiner entered the following rejections which are before us for
review:
(1) Claims 1-15 and 37-40 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Peercy in view of Doyle. In addition, Chauvel is
used to support well-known teachings; and
(2) Claims 16-20, 22-31, 33-36, 41, and 42 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Peercy in view of Doyle and
Swildens.
Appeal 2008-003097
Application 09/850,301

4

II. PROSECUTION HISTORY
Appellant appealed from the Final Rejection and filed a corrected
Appeal Brief (App. Br.) on December 15, 2006. The Examiner mailed a
substitute Examiner’s Answer (Ans.) on June 4, 2007. Appellant filed a
supplemental Reply Brief (Reply Br.) on July 3, 2007.

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Peercy
1. Peercy discloses that “[a] count of retrievals of a web page is
accumulated and the accumulated count and an address for the web page are
stored in a record of a history log database at the network server.” (Col. 1, ll.
49-52.)
2. In Peercy, “[t]he database may be a table comprised of rows and
columns, . . . each row of the table typically includes a name or title for the
web page 26, an HTTP URL 28 for the web page, and a counter 30 that is
incremented every time the web page is accessed.” (Col. 4, ll. 30-37.)
3. Peercy discloses that “[i]f the web page is of some interest to the
user, they ‘bookmark’ the HTTP Uniform Resource Locator (URL) for that
page in their browser in order to easily find the web page in the future.”
(Col. 2, ll. 28-31.)
Appeal 2008-003097
Application 09/850,301

5

Doyle
4. Doyle discloses:
As shown in FIG. 4, in Step 400, a determination is made
whether the cache of the server is full. . . . [E]ach of the pages
stored in the cache is associated with the generation cost
information identifying the generation cost of that page. If in
Step 400 the determination indicates that the cache is full, the
generation cost tag(s) associated with the current page are
examined in Step 410. Then in Step 420, the generation cost
information associated with each of the pages stored in the
cache is examined to search for a cache entry having the page
generation cost that is lower than the generation cost of the
current page. . . . If, in Step 425, the search indicates that a
cache entry with a lower generation cost is found, the lower-
cost cached entry is replaced with the current page . . . .

(Page 3, ¶ [0026].)
5. Doyle discloses that
other schemes may be utilized to narrow the entries to one. For
instance, applying the conventional Least Recently Used (LRU)
method or Hit Count method herein, from the multiple cached
entries that are found, the entry that was least recently or least
frequently accessed by the user may be replaced with the
current page and its tags.

(Page 3, ¶ [0026].)

Chauvel
6. Chauvel discloses that “[s]ome cache systems provide mechanisms
for locking entries in a cache, so that the cache entries will not be
overwritten as other locations are accessed.” (Col. 1, ll. 49-51.)
Appeal 2008-003097
Application 09/850,301

6
7. Chauvel discloses that “locking entries of a cache reduces the size
and associativity of the cache. . . . greatly reducing the efficiency of the
cache.” (Col. 1, ll. 53-56.)

IV. 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.
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) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)). Therefore, we look to Appellants’ Brief to show error in
the proffered prima facie case. Only those arguments actually made by
Appellants have been considered in this decision. Arguments which
Appellants could have made but chose not to make in the Brief has not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appeal 2008-003097
Application 09/850,301

7
V. ANALYSIS
Grouping of Claims
In the Brief:
Group I: Appellant argues claims 1-15, 37, and 39 as a group (App.
Br. 6-7). For claims 2-15, 37, and 39, Appellant repeats the same argument
made for claim 1. We will, therefore, treat claims 2-15, 37 and 39 as
standing or falling with claim 1.
Group II: Appellant argues claims 16-20, 22-31, 33-36, and 41 as a
group (App. Br. 7-8). For claims 17-20, 22-31, 33-36, and 41, Appellant
repeats the same argument made for claim 16. We will, therefore, treat
claims 17-20, 22-31, 33-36, 41, and 42 as standing or falling with claim 16.
Group III: Appellant argues claims 38, 40, and 42 as a group (App.
Br. 8). For claims 40 and 42, Appellant repeats the same argument made for
claim 38. We will, therefore, treat claims 40 and 42 as standing or falling
with claim 38.
See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588,
590 (Fed. Cir. 1991).

The Obviousness Rejection
We now consider the Examiner’s rejection of the claims under 35
U.S.C. § 103(a).

Group I
Claims 1-15, 37, and 39
Appellant contends that Chauvel “does not disclose or suggest the
selection of an entry from a set of replaceable entries in a table, where the
Appeal 2008-003097
Application 09/850,301

8
table includes both replaceable and irreplaceable entries as in claims 1-15
and 37-40.” (App. Br. 7: See also Reply Br. 2) Appellant further contends
that “[w]hile Chauvel appears to disclose some type of irreplaceable entry
(e.g., Chauvel’s ‘locked entries’) it does not disclose or suggest replaceable
entries.” (App. Br. 7.)
The Examiner used Chauvel to support well-known teachings (Ans. 4)
and took Official Notice that a “table including both replaceable and
irreplaceable entries is well-known” (Ans. 4-5).
Issue: Has Appellant shown that the Examiner erred in finding that it
is well known for a table to include both replaceable and irreplaceable
entries?

In essence, the only feature disputed in representative claim 1 by
Appellant regards the feature - “the table includes both replaceable and
irreplaceable entries.” Peercy discloses keeping a count record in a table of
retrieved web pages every time the web page is accessed (FF 1-2).
Similarly, Doyle discloses storing web pages whereby a determination is
made as to whether a cache is full, and if so, a search is done to find an entry
that can be replaced (i.e., replaceable entry) (FF 4). Doyle further discloses
that several schemes may be used for replacing entries including the
conventional Least Recently Used (LRU) method or the Hit Count method
(FF 5). Thus, the combination of Peercy and Doyle discloses counting the
number of times the Internet site name has been received, and if the Internet
site name is new and the table is full, selecting an entry from a set of
replaceable entries in the table. While the Examiner has not shown that
Appeal 2008-003097
Application 09/850,301

9
Peercy and Doyle expressly disclose irreplaceable entries in the table, the
Examiner took Official Notice that such a feature is well-known and
introduced Chauvel to make reference thereto (Ans. 4-5). Specifically,
Chauvel discloses that some cache systems provide locked entries in the
cache (FF 6).
Because it is undisputed that the combination of Peercy and Doyle
teaches every element of the device of claim 1 but for the “irreplaceable
entries,” the sole difference between Appellant’s claim 1 and the teachings
of Peercy and Doyle is having irreplaceable entries in a table. In that regard,
Chauvel shows that it was known in the art at the time of the invention to
use locked entries in a cache (FF 6-7). We find, based on our examination
of the prior art and the state of the art in cache devices, that the cited art
evidences a common usage of replaceable and irreplaceable cache entries.
Since each individual element and its function, as described in claim
1, as shown in the prior art, albeit shown in separate references, the
difference between the claimed subject matter and that of the prior art rests
not on any individual element or function but in the very combination itself.

Appellant further contends that “Chauvel explicitly teaches away from
using irreplaceable entries to operate a cache.” (App. Br. 7.)
Specifically, Chauvel discloses that locking entries of a cache reduces
the size of the cache and reduces the efficiency of the cache (FF 7).
However, we do not find, and Appellant does not establish, that Chauvel
criticizes, discredits, or otherwise discourages the use of locked cache
entries. “[T]he prior art's mere disclosure of more than one alternative does
Appeal 2008-003097
Application 09/850,301

10
not constitute a teaching away from any of these alternative because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed . . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, . . . would be led in a direction divergent
from the path that was taken by the applicant.” In re Haruna, 249 F.3d
1327, 1335 (Fed. Cir. 2001) (omission in original) (citing Tec Air, Inc. v.
Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)). We do not
find this to be the situation before this Board. We find that being less
efficient is not a teaching away. “A known or obvious composition does not
become patentable simply because it has been described as somewhat
inferior to some other product for the same use.” In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994).

As to the other recited elements of claim 1, Appellant provides no
argument to dispute that the Examiner has correctly shown where all these
claimed elements appear in the prior art. Thus, we deem those arguments
waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).

Thus, Appellant has not persuaded us of error in the Examiner’s
conclusion of obviousness for representative claim 1. Therefore, we affirm
the Examiner’s § 103 rejection of independent claim 1 and of claims 2-15,
37, and 39, which fall therewith.

Appeal 2008-003097
Application 09/850,301

11
Group II
Claims 16-20, 22-31, 33-36, and 41
Appellant contends that “each of these claims also includes the feature
of a table that includes both replaceable and irreplaceable entries and that
Swildens does not make up for the deficiencies of Peercy or Doyle set forth
above.” (App. Br. 7.)
The Examiner found that the “limitations of claims 16-20, 22-31, 33-
36, and 41-42 that are similar to limitations of claims 1-5 and 37-38 are
being rejected under the same rationale.” (Ans. 6.)
Issue: Has Appellant shown that the Examiner erred in using the
same rationale for rejecting the limitations of claims 16-20, 22-31, 33-36,
and 41-42 that are similar to limitations of claims 1-5 and 37-38?

While Appellant’s arguments refer to the “replaceable and
irreplaceable entries” feature of the above-noted claims, Appellant fails to
recognize that the Examiner is relying on the same reasoning used in
rejecting claim 1 to reject this feature in representative claim 16, i.e., well-
known as shown in Chauvel (Ans. 6). As noted supra, we find that the
Examiner has set forth a sufficient initial showing of obviousness regarding
this feature. Examiner imports Swildens merely to disclose the hashing
feature (Ans. 6), which is undisputed by Appellant.
As to the other recited elements of the above-noted claims, Appellant
provides no argument to dispute that the Examiner has correctly shown
where all these claimed elements appear in the prior art. Thus, we deem
those arguments waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).
Appeal 2008-003097
Application 09/850,301

12
Thus, Appellant has not persuaded us of error in the Examiner’s
conclusion of obviousness for representative claim 16. Therefore, we affirm
the rejection of independent claim 16, and of claims 17-20, 22-31, 33-36,
and 41, which fall therewith.

Group III
Claims 38, 40, and 42
Appellant contends that claims 38, 40, and 42
include[] the feature of an audio file, cached resource. In the Final
Office Action the Examiner takes the position that an excerpt from
Peercy (column 2, lines 19-31) discloses a ‘multimedia file’ which, in
turn, is a disclosure of the claimed audio file. However, this excerpt
from Peercy is totally silent with respect to either a multimedia or
audio file.

(App. Br. 8.) Appellant further contends that “while an HTML-formatted
page may include audio information, by no means is the phrase ‘HTML’
synonymous with such information, nor must an HTML page include such
information, as the Examiner appears to suggest.” (Reply Br. 3.)
The Examiner found that “Peercy teaches server caches HTML file
[sic] which inherently includes multimedia file” (Ans. 8).
Issue: Has Appellant shown that the Examiner erred in finding that
Peercy inherently teaches that the cache resource is an audio file?

Peercy discloses book-marking HTTP URL for pages of interest (FF
3). The Examiner found that caching an HTTP URL inherently includes
caching an audio file. We disagree.
Appeal 2008-003097
Application 09/850,301

13
“Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citations omitted). When relying upon a theory of inherency, the
Examiner must provide a basis in fact and/or technical reasoning to
reasonably support the Examiner's determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.
Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990).
While it seems logical that a web page could include an audio file, our
reviewing court has determined that “[i]nherency . . . may not be established
by probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d at 745. The Examiner has left it up to us to speculate. We decline to
engage in speculation in deciding this appeal.
Therefore, we find that the Examiner has not set forth a sufficient
showing of obviousness, and that the Appellant has shown error in the
Examiner’s rejection of claim 38. Therefore, we reverse the rejection of
claim 38, and of claims 40 and 42, which stand therewith.

VI. CONCLUSIONS
We conclude:
Appellant has not shown that the Examiner erred in rejecting claims
1-20, 22-31, 33-37, 39, and 41.
Appellant has shown that the Examiner erred in rejecting claims 38,
40, and 42.
Appeal 2008-003097
Application 09/850,301

14

VII. DECISION
In view of the foregoing discussion:
We affirm the Examiner’s rejection of claims 1-20, 22-31, 33-37, 39,
and 41.
We reverse the Examiner’s rejection of claims 38, 40, and 42.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

msc

HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON VA 20195