Tomas Lundborg

Patent Trials and Appeals Board

Jul 31, 2019

14649237 - (D) (P.T.A.B. Jul. 31, 2019)

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.
14/649,237 06/03/2015 Tomas LUNDBORG 4015-9184 / P37968-US1 6824
24112 7590 07/31/2019
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
MIRZA, ADNAN M
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
07/31/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte TOMAS LUNDBORG1
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Appeal 2018-008489
Application 14/649,237
Technology Center 2400
________________

Before BARBARA A. BENOIT, SHARON FENICK, and
RUSSELL E. CASS, Administrative Patent Judges.

CASS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 41–78. Appeal Br. 7.2 Claims 1–40 have been
cancelled. Id. at 25 (Claims Appendix). We have jurisdiction under
35 U.S.C. § 6(b). We reverse.

1 Appellant lists Telefonaktiebolaget L M Ericsson as the real party in
interest. Appeal Brief filed March 21, 2018 (“Appeal Br.”) 2.
2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
September 21, 2017 (“Final Act.”); the Examiner’s Answer mailed July 5,
2018 (“Ans.”); and the Reply Brief filed August 29, 2018 (“Reply Br.”).
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BACKGROUND
The present invention is directed to a method of caching in a
telecommunications network. Spec. 1:5–6. According to Appellant’s
Specification, in a typical file caching method in a telecommunications
network, a cache receives a file from a file server, stores the file, and then
serves the file to the client from the cache. Id. at 1:10–12. Because the
cache is typically located closer to the client than the server, the cache can
serve the file to the client more quickly than the server can. Id. at 1:12–23.
Under this approach, however, it is difficult for a server to monitor the data
that is actually sent from the cache to the client, which may be necessary for
billing or law enforcement purposes. Id. at 2:5–10.
The Specification explains that the present invention seeks to
overcome this problem by providing a telecommunications network with one
or more local caches and a central “mirror” cache. Id. at 6:5–6. The server
splits the data into fragments and sends them to the mirror cache, which
stores the fragments along with an index identifying the fragments, and then
forwards the fragments and indices to a local cache. Id. at 15:6–18; Fig. 13.
When the client makes a request for data from the local cache, the local
cache forwards this request to the mirror cache, which responds with an
index identifying the fragments that form the requested file, and notifies the
monitoring node of the file request. Id. at 6:8–14. This ensures that all
content downloaded to the client is recorded by the monitoring node. Id. at
6:17–18.
Claim 41 is illustrative of the claims at issue:
41. An apparatus configured to operate as a local cache in a
telecommunications network, the telecommunications network
having a distributed caching system including an upstream mirror
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cache and one or more downstream local cache(s), the apparatus
comprising:
a data storage unit, the data storage unit configured to store
fragments of content data, each fragment being associated
with an index;
an input/output (I/O) assembly, the I/O assembly configured to
receive a request for content from a user;
a processing circuit, the processing circuit configured to identify
fragments associated with the requested content;
wherein the I/O assembly is further configured to:
send the identified fragments towards the user;
send an identifier for the user, and any of an identifier for the
requested content and an index of the or each identified
fragment, towards a mirror cache upstream of the local
cache.
Appeal Br. 25 (Claims Appendix).

THE EXAMINER’S REJECTIONS AND APPELLANT’S
CONTENTIONS
In the Final Office Action, the Examiner rejected claims 41–78 as
being unpatentable over Rangaraman (US 2013/0336320 A1; published
December 19, 2013) in view of Varadharajan (US 2014/0201154 A1;
published July 17, 2014). Final Act. 2. The Examiner relies on Rangaraman
for most of the limitations of the claims. Id. at 2–3 (citing Rangaraman
¶¶ 45, 101, 262); see Ans. at 4–9, 11. The Examiner finds that Rangaraman
does not “disclose in detail to send an identifier for the user, and any of an
identifier for the requested content and an index of the or each identified
fragment, towards a mirror cache upstream of the local cache.” Id. at 3. The
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Examiner relies on Varadharajan for this limitation. Id. (citing Varadharajan
¶ 288). The Examiner further determines that it would have been obvious to
combine Varadharajan with Rangaraman “to increase productivity and
reduce latency.” Id. at 3–4; Ans. 9.
Appellant argues, inter alia, that neither of the cited references teach
or suggest a telecommunications network “having a distributed caching
system including an upstream mirror cache and one or more downstream
local cache(s),” which is recited in all of the claims on appeal. Appeal Br.
7–9. Appellant argues that this language in the preamble is a claim
limitation because it “describes the environment in which the claims are
operative” and “provides antecedent basis for the recitations of mirror and
local caches.” Id. at 7. According to Appellant, such language “breathes life
and meaning into the claims, and must be given patentable weight.” Id.
Appellant argues that Rangaraman discloses only “a laundry list of network
types” and “does not remotely suggest that the telecommunications network
includes an upstream mirror cache and one or more downstream local
cache(s).” Id. at 8. Appellant argues that “Varadharajan teaches neither a
telecommunications network nor any network caches.” Id. Appellant also
argues that the cited references fail to teach additional limitations in each of
the independent claims. Id. at 10–23.

ANALYSIS
We agree with Appellant that the Examiner erred in determining that
the claims at issue are obvious over Rangaraman and Varadharajan. To
begin with, we agree with Appellant that the language reciting a
telecommunications network “having a distributed caching system including
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an upstream mirror cache and one or more downstream local cache(s)” is a
claim limitation. “In general, a preamble limits the invention if it recites
essential structure or steps, or if it is ‘necessary to give life, meaning, and
vitality’ to the claim.” Catalina Mktg Int’l, Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)); see MPEP § 2111.02
(“[T]erminology in the preamble that limits the structure of the claimed
invention must be treated as a claim limitation.” (citing Corning Glass
Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir.
1989)). Additionally, “when reciting additional structure or steps
underscored as important by the specification, the preamble may operate as a
claim limitation.” Catalina, 289 F.3d at 808.
Here, the claim language recites structure of the telecommunications
network in the form of a “mirror cache” and one or more downstream “local
cache(s)” forming a “distributed caching system.” Appeal Br. 25 (Claims
Appendix). Appellant’s Specification emphasizes the importance of these
caching structures to the invention. The title of the application is
“Distributed Caching,” which emphases the importance of multiple caches
in the system. The Background portion of the Specification explains that the
problem addressed by the invention is the need to monitor content
transmitted from a local cache to the client, and the Summary explains that
the invention overcomes this problem by providing “a method of providing
cached content in a telecommunications network” which comprises “at a
local cache, identifying fragments associated with the requested content,
sending the identified fragments toward a user, and sending an identifier for
the user and any of the identifier for the requested content and an index of
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each identified fragment towards a mirror cache upstream of the local
cache.” Spec. 2:5–10; 3:1–10 (emphasis added). And, the embodiments
described in the Specification all include a distributed caching system with
an upstream mirror cache and downstream local cache. Therefore, we
determine that the preamble language reciting “a distributed caching system
including an upstream mirror cache and one or more downstream local
cache(s)” recites structural limitations that are emphasized as important to
the invention, and therefore is a claim limitation.
Moreover, “dependence on a particular disputed preamble phrase for
antecedent basis may limit claim scope because it indicates a reliance on
both the preamble and claim body to define the claimed invention.”
Catalina Marketing, 289 F.3d at 808. Here, the distributed caching
limitation in the preambles provide antecedent basis for the recitations of
mirror and local caches in the body of the claims. For example, the body of
claim 41 states that the I/O assembly is configured to send particular
information “towards a mirror cache upstream of the local cache,” with “the
local cache” referring to “one or more downstream local cache(s)” recited in
the distributed caching system limitation. Appeal Br. 25 (Claims Appendix)
(emphasis added). This further confirms that the preamble language reciting
“a distributed caching system including an upstream mirror cache and one or
more downstream local cache(s)” is a limitation in the claims at issue.
The determination that “having a distributed caching system including
an upstream mirror cache and one or more downstream local cache(s)” limits
each claim is dispositive. In response to Appellant’s contentions that the
prior art does not disclose the recited distributed caching system, the
Examiner relies on paragraph 45 of Rangaraman as disclosing a distributed
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network system but does not address the upstream and downstream caches.
Ans. 3–4; see Final Act. 2. The Examiner also finds that Varadharajan in
paragraph 86 discloses a distributed network system without addressing
upstream and downstream caches. Ans. 4–5; see Final Act. 2. The
Examiner, however, has not sufficiently established that the cited prior art
teaches or suggests the use of a distributed caching system including an
upstream mirror cache and one or more downstream local caches.
Rangaraman discloses a system for transmitting data in packets that
addresses the situation where packets are fragmented and lack routing
information needed to send them to their destination. Rangaraman ¶¶ 2–3.
Rangaraman teaches that this problem can be overcome by forwarding and
reassembling fragmented packets by identifying a device as a “fragment
owner” responsible for assembling the packet fragments. Id. ¶ 4.
Rangaraman, however, does not disclose or suggest a distributed caching
system including an upstream mirror cache and one or more downstream
local caches. Paragraph 45, relied on by the Examiner, merely provides a
list of possible network types, but does not suggest the claimed mirror and
local caches. See Ans. 4; Rangaraman ¶ 45.
Varadharajan discloses a system that allows users to share a portion of
a file stored in secondary storage by specifying a portion of the file and
sending a link to another user, who can then access the shared portion from
the link. Varadharajan, Abstract. The Examiner does not sufficiently
establish that Varadharajan teaches or suggests network caches, including a
local cache and a mirror cache. Paragraph 86, relied on by the Examiner,
merely states that the computers of the invention can be connected using
various networks, and then lists known network types, such as the Internet, a
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wide area network (WAN), a local area network (LAN), etc., and does not
disclose mirror and local caches. Varadharajan ¶ 86; Ans. 4–5.
Each of the independent claims (claims 41, 49, 52, 53, 56, 71, 77, and
78) requires “a telecommunications network” with certain components—
“the telecommunications network having a distributed caching system
including an upstream mirror cache and one or more downstream local
cache(s).” Accordingly, Appellant has demonstrated error in the Examiner’s
determination that claims 41, 49, 52, 53, 56, 71, 77, and 78 are unpatentable
over Rangaraman and Varadharajan. We, therefore, reverse the Examiner’s
rejection of these claims, and of claims 42–48, 50, 51, 54, 55, 57–70, and
72–76, each of which is dependent, directly or indirectly, upon one of the
independent claims.

DECISION
The Examiner’s decision rejecting claims 41–78 is reversed.

REVERSED