Ex Parte Wakefield

Patent Trial and Appeal Board

Apr 22, 2014

11783586 (P.T.A.B. Apr. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KEVIN WAKEFIELD

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Appeal 2011-003892
Application 11/783,586
Technology Center 2100
____________

Before JASON V. MORGAN, ERIC B. CHEN, and IRVIN E. BRANCH,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/783,586

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-30, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellant’s invention relates to a system for accessing data in a
directory by a requesting entity. The system includes a name resolution
module, a search/update module, and an alias hiding module. The name
resolution module determines a location for data in the directory by
resolving a path to an entry containing the data using an original path and
alias dereferencing instructions. The search/update module performs actions
on data in the entry using a location for the entry in the directory and alias
dereferencing instructions. The alias hiding module intercepts a request to
perform an action on data in a first entry stored in the directory sent by the
requesting entity. (Spec. 3:24-32.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A system, comprising:
a processor comprising
a name resolution module configured to determine a location
for data in a directory by resolving a path to an entry containing the
data using an original path and alias dereferencing instructions,
a search/update module configured to perform actions on data
in the entry using a location for the entry in the directory and alias
dereferencing instructions, and
an alias hiding module configured to
intercept a request to perform an action on data in a first
entry stored in the directory sent by a requesting entity, wherein
the request includes an original path to the first entry in the
directory,
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locate instructions regarding alias dereferencing pertinent
to the requesting entity,
provide the original path to the name resolution module
along with the located instructions for alias dereferencing
pertinent to the requesting entity,
receive from the name resolution module a resolved
location for the data in the directory and an alias dereferenced
path to a resolved entry that contains the data,
request the search/update module to perform the action
on the data at the resolved location by providing the requested
action and the located instructions for alias dereferencing, and
report to the requesting entity that the action has been
performed on the data in the first entry having replaced the
alias dereferenced path to the data with the original path.

Claims 1-15 stand rejected under 35 U.S.C. §101 as directed to non-
statutory subject matter.
Claims 1-30 stand rejected under 35 U.S.C. §103(a) as obvious over
Harvey (US 2003/0208478 A1; Nov. 6, 2003) and Bettels (US 5,678,045;
Oct. 14, 1997).

§ 101 Rejection
With respect to independent claim 1, we are unpersuaded by
Appellant’s arguments (App. Br. 10-12; see also Reply Br. 3-5) that this
claim complies with 35 U.S.C. § 101 as statutory subject matter.
The Examiner found that “the system [of claims 1-15] would
reasonably be interpreted by one of ordinary skill in the art as software per
se.” (Ans. 4.) In particular, the Examiner found that because claims 1-15
“fail[] to recite a hardware component (i.e. tangible processor or memory) to
enable the function to be realized” and that “[w]hile the claims do recite ‘a
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processor,’ a person having ordinary skill in the art at the time of invention
would reasonably interpret the claimed ‘processor’ as being software per
se.” (Id.) We agree with the Examiner.
Independent claim 1 recites “[a] system, comprising: a processor”
(emphasis added). In the context of computing, a “processor” is defined as
either “[a] device that performs one or many functions, usually a central
processing unit” or “[a] program that transforms some input into some
output, such as an assembler, compiler, or linkage editor.” MCGRAW-HILL
DICTIONARY OF ELECTRONICS AND COMPUTER TECHNOLOGY 416 (1984).
Based on this common understanding of “processor” within the context of
computing, the broadest reasonable construction of the recited “processor”
includes a “program,” which is a computer program or software.
Appellant argues that “[o]ne would . . . have understood that a
hardware element, e.g., ‘processor,’ could include software modules for
performing the functions (e.g., determining a location for data in a directory,
performing actions on the data, etc.) of the system” and that “the ‘processor’
cannot be interpreted as software per se.” (App. Br. 12.) However, as
discussed previously, one definition of “processor” encompasses both a
central processing unit and a computer program.
Thus, we agree with the Examiner that independent claim 1 is not
directed to one of the four patent-eligible subject matter categories.
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 101. Claims 2-15 depend from independent claim 1. We sustain
the rejection of claims 2-15 under 35 U.S.C. § 101 for the same reasons
discussed with respect to independent claim 1.

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§ 103 Rejection
We are unpersuaded by Appellant’s arguments (App. Br. 13-16; see
also Reply Br. 6-12) that the combination of Harvey and Bettels would not
have rendered obvious independent claim 1, which includes the limitation
“an alias hiding module configured to . . . report to the requesting entity that
the action has been performed on the data in the first entry having replaced
the alias dereferenced path to the data with the original path.”
The Examiner found that the Read Service of Harvey, that performs a
tree walk using a Directory Information Tree (DIT) table to resolve aliases
and returns a Distinguished Name (DN), corresponds to the limitation
“report to the requesting entity that the action has been performed on the
data in the first entry. . . .” (Ans. 8-9; Harvey, ¶¶ [0407]-[0423].) The
Examiner further found that the search or look up operation of Bettels
corresponds to the limitation “alias hiding module . . . having replaced the
alias dereferenced path to the data with the original path.” (Ans. 40-41;
Bettels, col. 5, ll. 60-65, col. 6, ll. 7-10.) The Examiner concluded that:
[i]t would have been obvious . . . to combine the teachings of
Harvey with the teachings of Bettels by modifying Harvey such
that the results returned from a request that include the DN of
the requested entry and associated attributes and values, returns
the original DN submitted when aliases are present . . .
(Ans. 9.) We agree with the Examiner.
Harvey “relates to the field of directory services” in particular, the
“application of X.500 . . . to a relational database, a database design and use
of the database to perform X.500 services.” (¶ [0003].) During a “Read
Service” of Harvey, “[a] Read operation is used to extract information from
an explicitly identified entry.” (¶ [0408].) In performing this Read
operation of Harvey, a tree walk is performed using a DIT table, resolving
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aliases, and obtaining a base entry identification (EID). (¶ [0410].) In one
example of Harvey, an entry “Datacraft/Sales/Network Products/Peter
Evans” is read (¶ [0416]) such that a Tree Walk is performed using the DIT
table (¶ [0418]) using an Entry Table and the Attribute Table for each
matching EID (¶ [0421]), followed by returning a DN (¶ [0423]). Thus,
Harvey teaches the limitation “report to the requesting entity that the action
has been performed on the data in the first entry.”
Bettels relates to “multiscript aliasing of, and access to name entries in
a directory information tree (DIT) stored in one or more Directory Service
Agent (DSA) servers . . . .” (Abstract.) Bettels explains that “[a] request
such as a search or look-up using the alias object . . . will be reformulated
into a request using the original entry object . . . .” (Id.) In one example,
Bettels explains that using a directory user agent, “[a] user may now look up
either ‘DEC Japan’ . . . or ‘DEC Nihon’ in Kanji script . . . and access
information about DEC Japan exactly as if he or she had looked up under
‘DEC Japan.’” (Col. 5, ll. 60-65.) As a result, a “telephone number for
DEC Japan is returned, and the user is not even aware that the entered value
was (or had) an alias.” (Col. 6, ll. 7-10.) Thus, because Bettels explains that
the user is unaware of an alias, Bettels teaches “alias hiding module . . .
having replaced the alias dereferenced path to the data with the original
path.”
The combination of Harvey and Bettels is nothing more than
incorporating the known method of Bettels for accessing entries in a
directory, which returns name entries even if the user was unaware of an
alias, with the known Read Service of Harvey, that resolves aliases and
returns a DN, to yield predictable results. See KSR Int’l Co. v. Teleflex Inc.,
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550 U.S. 398, 416 (2007). Thus, we agree with the Examiner (Ans. 9) that
modifying Harvey to include the known method of Bettels for accessing
entries in a directory would have been obvious.
Appellant argues that “[w]hen the data is located at the same location
(location x), in other words where the location does not have an alias,
Harvey discloses that the location of the data is not reported back (Harvey,
paragraph [0439]).” (App. Br. 15.) However, the Examiner cited the “Read
Service” embodiment of Harvey, rather than the “Compare Service” of
Harvey, for teaching the limitation “report to the requesting entity that the
action has been performed on the data in the first entry.” (Ans. 39-40.)
Appellant further argues that “one of ordinary skill in the relevant art
would also not have found the combination of Harvey and Bettels obvious
because such a modification of Harvey with the description in Bettels would
have been practically difficult, requiring undue experimentation to arrive at
the features recited in claim 1.” (App. Br. 16.) However, Appellant does
not provide any persuasive evidence or rebuttal evidence to address the
“undue experimentation” that is required. Arguments of counsel cannot take
the place of factually supported objective evidence. See, e.g., In re Huang,
100 F.3d 135, 139-140 (Fed. Cir. 1996).
We find untimely Appellant’s additional arguments in the Reply
Brief. (Reply Br. 6-12.) We note that these new arguments were raised by
Appellant for the first time in the Reply Brief, and they are not in response
to a new issue brought up by the Examiner in the Answer. We therefore,
find these new arguments unavailing. Appellant is reminded that:
The purpose of a reply brief is to ensure the Appellant the
opportunity to have the last word on an issue raised by the
Examiner. The reply brief enables the Appellant to address any
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new grounds of rejection the Examiner may have raised in the
answer, or to address changes or developments in the law that
may have occurred after the principal brief was filed. The reply
brief is not an opportunity to make arguments that could have
been made during prosecution, but were not. Nor is the reply
brief an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not.

Giving cognizance to belated arguments in a reply would vitiate
the force of the requirement in Board Rule 37(c)(1)(vii) that
“[a]ny arguments or authorities not included in the brief . . . will
be refused consideration by the Board, unless good cause is
shown.” The reference in that section to the “reply brief filed
pursuant to § 41.41” does not create a right for the Appellant to
raise an argument in the reply brief that could have been raised
in the principal brief but was not. Rather, that reference merely
puts Appellants on notice that arguments that could be made in
the reply brief, but are not, are waived.
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010).
Thus, we agree with the Examiner that the combination of Harvey and
Bettels would have rendered obvious independent claim 1, which includes
the limitation “an alias hiding module configured to . . . report to the
requesting entity that the action has been performed on the data in the first
entry having replaced the alias dereferenced path to the data with the
original path.”
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claims 2-15 depend from claim 1, and Appellant has not
presented any substantive arguments with respect to these claims.
Therefore, we sustain the rejection of claims 2-15 under 35 U.S.C. § 103(a),
for the same reasons discussed with respect to independent claim 1.
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Independent claim 16 recites limitations similar to those discussed
with respect to independent claim 1, and Appellant has not presented any
substantive arguments with respect to this claim. We sustain the rejection of
claim 16, as well as dependent claims 17-30, for the same reasons discussed
with respect to claim 1.

DECISION
The Examiner’s decision rejecting claims 1-30 is affirmed.
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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