Ex Parte Turicchi et al

Board of Patent Appeals and Interferences

Jan 28, 2008

09896794 (B.P.A.I. Jan. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte THOMAS EDWIN TURICCHI, JR., SHINOBU TOGASAKI, and
STEVEN R. LANDHERR

Appeal 2007-2653
Application 09/896,794
Technology Center 2100
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Decided: January 28, 2008
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Before JAMES D. THOMAS, ALLEN R. MACDONALD,
and THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF CASE
Appellants appeal the Examiner’s final rejection of claims 1-23 under
35 U.S.C. § 134(2002). We have jurisdiction under 35 U.S.C. § 6(b)(2002).

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A. INVENTION
According to Appellants, they invented an apparatus and method for
providing user-requested content through an alternate network service when
the preferred network service is unavailable. The apparatus is preferably
embodied in computer readable program code. The invention may include
the steps of assessing the availability of the user-requested content from the
preferred network service; selecting an alternate network service providing
substantially similar content to the user-requested content when the user-
requested content is unavailable from the preferred network service; and
linking to the alternate network service when the user-requested content is
unavailable from the preferred network service (Spec., Abstract).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A method for providing user-requested content over a network,
comprising:
assessing the availability of a preferred network service providing said
user- requested content;
selecting an alternate network service providing substantially the same
content as said user-requested content when said preferred network service
is unavailable; and
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linking to said selected alternate network service to provide
substantially the same content as said user-requested content when said
preferred network service is unavailable.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Choquier US 5,774,668 Jun. 30, 1998

Claims 1-23 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Choquier.

We affirm.

II. ISSUES
The issues are whether Appellants have shown that the Examiner
erred in finding that claims 1-23 are anticipated by Choquier.

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellants’ Invention
1. In embodiments of Appellants’ invention, a user may access a
preferred network service that is experiencing demand that exceeds
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the capacity of the resource allocated thereto, instead of allowing the
user to access the preferred network service, and thus degrade the
performance of the preferred network service, or instead of refusing
service to the user altogether, the user is provided with the same
content, or substantially similar content, through an alternate network
service (Spec. 3, ll. 2-9).

Choquier
2. Choquier teaches a dynamic load balancing feature, wherein, when a
user sends a request to open a service, the Gateway microcomputer
that receives the request initially identities the application servers that
are within the relevant service group. The Gateway microcomputer
then determines the current load of each application server in the
service group, and applies a load balancing method to select an
application server that is relatively lightly loaded. The service request
is then passed to the selected application server for processing (col. 2,
ll. 43-52).
3. Servers 120 within a service group are replicated, meaning that they
all run the same service application (or set of service applications) that
implements the server portion of a particular service (or set of related
services) (col. 9, ll. 3-7).
4. All servers run like service applications and provide access to like
service data, the service appears the same to all users, even though
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different user service sessions may be assigned (by the Gateways 126)
to different servers 120 of the service group (col. 9, ll. 11-16).

PRINCIPLES OF LAW
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).
Anticipation is established when a single prior art reference discloses
expressly or under the principles of inherency each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir.
1994).
"Moreover, limitations are not to be read into the claims from the
specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). Our reviewing court
has repeatedly warned against confining the claims to specific embodiments
described in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323
(Fed. Cir. 2005) (en banc). During prosecution before the USPTO, claims
are to be given their broadest reasonable interpretation, and the scope of a
claim cannot be narrowed by reading disclosed limitations into the claim.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989); In re Prater, 415 F.2d 1393, 1404-05 (CCPA
1969).
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ANALYSIS
35 U.S.C. § 102(b)
As to claim 1, the Appellants argue “Choquier emphasizes that a
transfer is made to the ‘same service’, but one that is replicated on a
different application server” (App. Br. 11; Reply Br. 2). Appellants
reference Fig. 1 in Appellants’ Specification for the depiction of Appellants’
preferred network service 120 as separate from Appellants’ alternate
network service 140, and assert that they are not Choquier’s ‘replicated
servers,’ in that they are not associated with the same host data center 104
(Reply Br. 2). Appellants further assert that “[b]y erroneously focusing on
the problems solved by the two inventions, rather than on the different
solutions to those problems, the examiner loses sight of the plain meaning of
the term ‘alternate network service’ as it appears in the pending claims”
(Reply Br. 3).
We disagree. The term “alternate network service” cannot be
confined to a specific exemplary embodiment in Appellants’ Specification.
Appellants’ claims simply do not place any limitation on what the “alternate
network service” is to be, to represent, or to mean, other than that the
alternate network service provides substantially the same content and is
selected when the preferred network service is unavailable. Appellants’
arguments that the alternate network service differs from Choquier’s service
because Choquier’s service is performed by a replicated server on the same
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host data center and that Choquier provides a different solution are not
commensurate with the invention that is claimed.
We construe the term “alternate network service” by giving the term
its customary and ordinary meaning. The customary and ordinary meaning
of to “alternate” is “serving or used in place of another; substitute.” The
American Heritage Dictionary of the English Language (4th ed. 2000), found
at www.bartelby.com.
Accordingly, we construe “alternate network service” as a network
service used in place of another when the other is unavailable. Appellants’
own disclosure sets forth that the alternate network service provides the
same content as well as substantially same content (FF 1).
Choquier discloses servers of a service group running like service
applications and providing access to like service data, wherein the service
appears the same to all users (FF 3-4). When a first application server is
heavily loaded, a second application server that is relatively lightly loaded is
selected (FF 2). We find that the selection of the service performed by the
second application server to be the selection of an alternate network service
providing same content or substantially the same content as the service of
the first application server, when the service of the first application server is
unavailable.
As to the other recited elements of claim 1, Appellants provide no
argument to dispute that the Examiner has correctly shown where all these
claimed elements appear in the prior art. Accordingly, we find that the
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Appellants have not shown that the Examiner erred in rejecting claim 1 as
anticipated by Choquier.
Appellants do not provide a separate argument for claims 9 and 19,
and thus, claims 9 and 19 fall with claim 1.
Claims 2-8 and 20 depend from claim 1, claims 10 and 12-18 depend
from claim 9, and claim 20 depends from claim 19. Accordingly, claims 2-
10 and 12-20 respectively include the same limitations as claims 1, 9, and
19, and thus, fall with claims 1, 9, and 19.
As to claims 11 and 21, Appellants repeat the argument that Choquier
“fails to disclose ‘selecting an alternate network service providing
substantially the same content as said user-requested content when said
preferred network service is unavailable’” (App. Br. 15). As discussed
above with respect to claim 1, we find that Choquier’s selection of service
performed by an application server to be the selection of an alternate
network service providing same content or substantially the same content as
the service of the first application server, when the service of the first
Choquier. Accordingly, we find that the Appellants have not shown that the
Examiner erred in rejecting claims 11 and 21 as anticipated by Choquier.
As to claims 22 and 23, the Examiner rejects the claims over the
teachings of Choquier by finding “The first server comprises ‘a first back-
end server hosting a preferred network service and the alternate server
comprises a second back-end server hosting an alternate network service’ in
order to allow users to receive the same content when the preferred server is
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unavailable (col. 8, line 65 through col. 9, line 16)” (Ans. 10). Appellants
provide no argument to dispute that the Examiner has correctly shown where
all the claimed elements appear in the prior art. Accordingly, we find that
the Appellants have not shown that the Examiner erred in rejecting claims
22 and 23 as anticipated by Choquier.
For at least the above reasons, we conclude that Appellants have not
shown that the Examiner erred in rejecting claims 1-23 under 35 U.S.C.
§ 102(b).

CONCLUSION OF LAW
(1) Appellants have not shown that the Examiner erred in finding that
claims 1-23 are unpatentable over the teachings of Choquier.
(2) Claims 1-23 are not patentable.

DECISION
The Examiner's rejection of claims 1-23 under 35 U.S.C. § 102(b) is
affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

rwk

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