International Business Machines Corporation

Patent Trials and Appeals Board

May 10, 2021

2020000948 (P.T.A.B. May. 10, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/155,554 01/15/2014 Nicholas A. Baldwin AU920130040US1 7811
11601 7590 05/10/2021
IBM Corporation - Patent Center
1701 North Street
B/256-3
Endicott, NY 13760
EXAMINER
MCGHEE, TRACY M
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
05/10/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICHOLAS A. BALDWIN, LEE BERRY, ASELA J.
MALLAWAARATCHY, and ERIC M. MORENTIN
____________

Appeal 2020-000948
Application 14/155,554
Technology Center 2100
____________

Before JOHN A. JEFFERY, ELENI MANTIS MERCADER, and
JENNIFER L. MCKEOWN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 22–24, 26, and 32–35. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 3.
Appeal 2020-000948
Application 14/155,554

2
STATEMENT OF THE CASE
Appellant’s invention is a content management system with
functionality to reduce errors from syndication—the method by which
content items are replicated from one web content repository to another
repository. See Spec. 6–10. For each unresolved reference to a content item
for syndication, a transport reference item is generated that points to
temporary stand in content, so that a website remains operational while
content is being updated. See Spec. 10–11. The transport reference item
replaces the unresolved reference, and the content is committed to a content
item file repository 122 in the subscriber device. See Spec. 11–12; Fig. 1.
Claim 22 is illustrative:
22. A computer program product (CPP) for replicating a set of
content data from a syndicator computer system to a set of subscriber
computer system(s), the CPP comprising:
a non-transitory machine readable storage device; and
computer code stored on the non-transitory machine readable
storage device, with the computer code including instructions for
causing a processor(s) set to perform the replication by operations
including at least the following:
determining that a set of content data includes a first
unresolved reference to a first unresolved content item that
exists in the syndicator computer system and does not exist in
the subscriber computer system(s),
for each given subscriber computer system of the set of
subscriber computer system(s), committing the first unresolved
content item, from the syndicator computer system, to a
repository as an alternative content item in the given subscriber
computer system, and
during replication of the set of content data from the
syndicator computer system to each given subscriber computer
system of the set of subscriber computer system(s), replacing
the first unresolved reference in the set of content data with a
transport reference that points to the alternative content item
Appeal 2020-000948
Application 14/155,554

3
that has been committed to the repository in the given
subscriber computer system.

THE REJECTIONS2
The Examiner rejected claims 22–24, 26, and 32–35 under 35 U.S.C.
§ 103 as unpatentable over Keebler (US 2012/0284290 A1; published Nov.
8, 2012), and Steele (US 2012/0278343 A1; published Nov. 1, 2012). Final
Act. 6–11.3
The Examiner rejected claims 22–24, 26, and 32–35 under the
judicially created doctrine of obviousness-type double patenting over claims
1 and 3–6 of U.S. Application No. 14/494,623.4 Final Act. 2–3.

THE OBVIOUSNESS REJECTION OVER KEEBLER AND STEELE
Regarding independent claim 22, the Examiner finds that Keebler
discloses a computer program product for replicating a set of content data
from a syndicator system to a subscriber system. Final Act. 6–7. The
Examiner also finds Keebler’s computer program product comprises a non-
transitory machine readable storage device and computer code including

2 The 35 U.S.C. § 101 subject matter ineligibility rejection of claims 22–24,
26, and 32–35 was withdrawn on page 8 of the Examiner’s Answer mailed
September 16, 2019, and thus is not before us.
3 Throughout this opinion, we refer to (1) the Final Rejection mailed
November 2, 2018 (“Final Act.”); (2) the Advisory Action mailed February
11, 2019 (“Advisory Act.”); (3) the Appeal Brief filed April 9, 2019
(“Appeal Br.”); (4) the Examiner’s Answer mailed September 16, 2019
(“Ans.”); and (5) the Reply Brief filed November 18, 2019 (“Reply Br.”).
4 Although the Examiner erroneously states the Application number to be
“1494623,” we presume the Application number to be “14494623.” We
treat the Examiner’s error here as harmless.
Appeal 2020-000948
Application 14/155,554

4
instructions to perform replication by operations. Final Act. 6–7. Although
the Examiner acknowledges that Keebler lacks (1) determining that content
data includes an unresolved reference to an unresolved content item existing
in the syndicator system but not the subscriber system, and (2) committing
the unresolved content item from the syndicator system to a repository as an
alternative content item in the subscriber system, the Examiner cites Steele
as teaching these features. Final Act. 7–8. Finally, the Examiner also
acknowledges Keebler lacks, but Steele teaches during replication, replacing
the first unresolved reference in the set of content data with a transport
reference that points to the alternative content item committed to the
repository in the subscriber system in concluding that the claim would have
been obvious. Final Act. 8.
Appellant argues that Steele fails to disclose (1) replacing the first
unresolved reference with a transport reference that points to the alternative
content item, and (2) the alternative content item is in a repository of the
subscriber system. See Appeal Br. 15–16; Reply Br. 3–4.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 22 by finding
that Steele collectively would have taught or suggested replacing a reference
to content in a syndicated system with a transport reference pointing to an
alternative content in a repository of a subscriber system?

ANALYSIS
We begin by noting that the Examiner’s reliance on Keebler to teach a
computer program product for replicating content from a syndicator system
Appeal 2020-000948
Application 14/155,554

5
to a subscriber system, a non-transitory machine readable storage device,
and computer code to perform the replication by operations is undisputed, as
is the cited references’ combinability. See Final Act. 6–8. Rather, as noted
above, this dispute turns solely on the Examiner’s reliance on Steele for
teaching the recited replacing the first unresolved reference in the set of
content data with a transport reference that points to the alternative content
item that has been committed to the repository in the given subscriber
computer system. See Appeal Br. 15–16; Reply Br. 3–4. Therefore, we
confine our discussion to Steele.
This appeal turns on one key question: Where does Steele teach a
transport reference that points to content in the subscriber repository? The
answer is crucial, for independent claim 22 requires that an existing first
unresolved reference is replaced with a transport reference pointing to an
alternative content item that has been committed to a subscriber system
repository. Notably, the claimed content in the subscriber repository is not
just any content, but rather alternative content that has been committed from
the syndicator system to the subscriber system.
Although the Examiner’s rejection and citations to Steele presumably
map Steele’s link to syndicated content to the claimed first unresolved
reference (see Final Act. 7–8 (citing Steele Figs. 1, 3, 4, 5A, ¶ 17, Abstract);
see Ans. 11–12 (citing Steele ¶ 23)), both the Examiner’s rejection and the
Examiner’s Answer are hardly models of clarity on what exactly in Steele
constitutes the transport reference pointing to content in the subscriber
repository.
The Examiner presumably finds correspondence between Steele’s
repository 118 to one of either (1) the claimed syndicator computer system
Appeal 2020-000948
Application 14/155,554

6
where content items “exist,” or (2) the claimed repository in the subscriber
computer system. See Final Act. 9 (citing Steele Fig. 1, ¶¶ 39–40); Ans. 11–
12 (citing Steele ¶ 23). Steele’s repository 118 is part of a server device 102
containing a syndicated content retriever 122 that obtains syndicated content
items and sends them to a client device 100. See Steele Fig. 1, ¶¶ 17–23.
The Examiner further equates the claimed committing the first unresolved
content item from the syndicator system to a repository in the given
subscriber system to Steele’s teachings of providing syndicated content from
repository 118 to a second device for display at the second device. See Final
Act. 7–8 (citing Steele Figs. 1, 3, 4, 5A, Abstract and ¶ 17). Thus, the
Examiner’s findings appear to map functionality associated with Steele’s
client device’s display apparatus 112 with the claimed repository in the
subscriber computer system. See Final Act. 7–9; Ans. 11–12 (citing Steele
Figs. 1, 3, 4, 5A, Abstract and ¶ 17). Notably, Steele’s Figure 1 does not
show any memory in the client device 100, let alone a repository, unlike
server device 102 that has a repository 118. Despite Steele’s client device
lacking an identified repository in Figure 1, there must nonetheless be some
sort of memory, and therefore a “repository,” in the client device to store
received syndicated content items to render them for display. See Steele
¶ 25.
Accordingly, the Examiner presumably maps (1) Steele’s server
device 102 to the claimed syndicated computer system, and (2) Steele’s
client device 100 to the claimed subscriber computer system.
This finding is critical as the claims require that an existing first
unresolved reference is replaced with a transport reference pointing to
content in the subscriber repository. Given the Examiner’s presumed
Appeal 2020-000948
Application 14/155,554

7
findings that Steele’s client device 100 corresponds to the subscriber, then
any reference in Steele must point to a repository in Steele’s client device.
As noted previously, Steele’s syndicated content that the client device
receives from the server device 102 for display at the client device (see Final
Act. 7–8; Advisory Act. 3–4; Ans. 11–12) suggests that a “repository” exists
in the client device 100 to which the syndicated content is provided, and
presumably subsequently stored. Therefore, any reference in Steele that
would correspond to the claimed “transport reference” must be disclosed as
pointing to content displayed in Steele’s client device 100.
Regarding the recited “transport reference,” the Examiner apparently
maps Steele’s web page link to the claimed transport reference (Final Act. 8
(citing Steele Figs. 1, 3, 4, 5A, Abstract and ¶ 17); Ans. 11–12 (citing Steele
¶ 23)), where Steele’s web page link references its associated syndicated
content (Steele ¶ 17) that can be contained in the server device’s 102
repository 118 (Steele ¶¶ 22, 42, 48) or on a website (Steele ¶¶ 23, 39, 49).
Neither Steele’s server device’s repository 118 nor website have been shown
to be a repository or otherwise content that is within Steele’s client device
100. Accordingly, we are persuaded by Appellant’s arguments that Steele
does not teach or suggest the claimed transport reference that links to
alternative content that is in a repository of the subscriber system. See
Appeal Br. 15–16; Reply Br. 3–4.
Lastly, we note that although Steele does not teach or suggest the
claimed transport reference that points to the alternative content item in the
repository of the subscriber system, and thus also does not teach or suggest
the claimed replacing the first unresolved reference in the set of content data
with a transport reference, we nevertheless find at least some suggestion in
Appeal 2020-000948
Application 14/155,554

8
Steele for replacing an unresolved reference. Steele’s web page link is
converted by server device 102 from a shortened Uniform Resource Locator
(URL) form to a full URL. Steele ¶¶ 11, 47. In this way, Steele effectively
replaces a first “unresolved” or partial reference with a full reference.
Nevertheless, we do not find—nor has the Examiner articulated—a
correspondence between Steele’s full URL and the claimed transport
reference, such a correspondence being necessary to meet the claimed
replacing the first unresolved reference with a transport reference.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 22; (2) independent claim 32 that recites commensurate
limitations; and (3) dependent claims 23, 24, 26, and 33–35 for similar
reasons. Because this issue is dispositive regarding our reversing the
Examiner’s obviousness rejection of these claims, we need not address
Appellant’s other associated arguments.

THE DOUBLE PATENTING REJECTION
The Examiner finds claims 22–24, 26, and 32–35 are unpatentable
under the judicially created doctrine of obviousness-type double patenting
over claims 1 and 3–6 of U.S. Application No. 14/494,623 which, according
tothe Examiner, was allowed as of April 21, 2017. Final Act. 2–3.
As an initial matter, we note that despite the Examiner relying on an
allowed application as the basis for the double patenting rejection, this
relied-upon application issued as U.S. Patent No. 9,747,327 on August 29,
2017—well before the Final Office Action. Therefore, we treat the
Examiner’s obviousness-type double patenting rejection as non-provisional,
notwithstanding the Examiner’s harmless error in relying on an allowed
Appeal 2020-000948
Application 14/155,554

9
application as a basis for the double patenting rejection. We further find that
claims 1 and 3–6 of U.S. Application No. 14/494,623, when the Notice of
Allowance mailed April 21, 2017, are identical to claims 1–5 of U.S. Patent
No. 9,747,327. Additionally, we note that Appellant has not filed a terminal
disclaimer.
Because the Examiner’s obviousness-type double patenting rejection
is uncontested, we treat any of Appellant’s such arguments as waived. See
Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant
fails to contest a ground of rejection to the Board, . . . the Board may treat
any argument with respect to that ground of rejection as waived.”); see also
Manual of Patent Examining Procedure (“MPEP”) § 1205.02 (9th ed., Rev.
10.2019, June 2020).
Accordingly, we summarily sustain the Examiner’s rejection of claims
22–24, 26, and 32–35 under the doctrine of nonstatutory obviousness-type
double patenting.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
22–24, 26,
32–35
103 Keebler, Steele 22–24, 26,
32–35
22–24, 26,
32–35
Obviousness-
type double
patenting
22–24, 26,
32–35

Overall
Outcome
22–24, 26,
32–35

Appeal 2020-000948
Application 14/155,554

10
TIME PERIOD FOR RESPONSE
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). See 37
C.F.R. § 41.50(f).

AFFIRMED