Ex Parte Allan et al

Patent Trial and Appeal Board

May 16, 2013

10992518 (P.T.A.B. May. 16, 2013)

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.
10/992,518 11/18/2004 Ronald Campbell Allan AUS920040533US1 9465
48916 7590 05/16/2013
Greg Goshorn, P.C.
9600 Escarpment
Suite 745-9
AUSTIN, TX 78749
EXAMINER
NGUYEN, THU N
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
05/16/2013 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 RONALD CAMPBELL ALLAN,
ANMOL NEELAMMNA MATADA, and
CHRISTOPHER N. VAUGHAN
____________________

Appeal 2011-002163
Application 10/992,518
Technology Center 2100
____________________

Before KALYAN K. DESHPANDE, MICHAEL J. STRAUSS, and
GREGG I. ANDERSON, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002163
Application 10/992,518

2
STATEMENT OF CASE1
The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-27, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

The Appellants invented a method and system for a unique naming
scheme for content management systems. Specification ¶ 0001.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added]:
1. A method for unique naming for a content management
system, comprising:
[1] receiving a first request including
[a] a relative uniform resource identifier (URI),
wherein the relative URI resolves to a plurality of
alternative resources, each alternative resource storing
the identical content in a different format; and
[b] request-specific information;
[2] creating a second request including:
[a] a long URI based upon:
[i] the relative URI; and
[ii] the request-specific information,
[iii] wherein the long URI uniquely identifies a
particular resource of the plurality of alternative
resources;
[3] sending the request.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 19, 2010), the Examiner’s Answer (“Ans.,” mailed Jul. 30,
2010) and Final Rejection (“Final Rej.,” mailed Jan. 19, 2010).
Appeal 2011-002163
Application 10/992,518

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REFERENCES
The Examiner relies on the following prior art:

Ullmann
Jorgenson
Aoshima
Aoki
US 2003/0187668 A1
US 2005/0021848 A1
US 7,188,136 B1
US 2008/0209069 A1
Oct. 2, 2003
Jan. 27, 2005
Mar. 6, 2007
Aug. 28, 2008

REJECTIONS
Claims 1, 6-8, 12, and 20 stand rejected under 35 U.S.C. §112 first
paragraph as failing to comply with the written description requirement.2
Claims 1-3, 5, 12, 20-21, 24, and 27 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Aoshima and Aoki3.
Claims 4, 6-19, 22-23, and 25-26 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Aoshima, Aoki, and Jorgenson.
Claim 23 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Aoshima, Aoki, Jorgenson, and Ullmann.

2 We note that although the Examiner has stated that every ground of
rejection set forth in the Final Rejection is maintained (Ans. 3), the Answer
fails to present the 35 U.S.C. § 112, 1st paragraph, rejection and the
Examiner has not provided any responses to the Appellants’ arguments in
the Appeal Brief towards this rejection. While it is unclear as to whether the
Examiner has withdrawn this rejection, we will nonetheless address this
rejection in the interest of compact prosecution.
3 The Final Rejection and Appeal Brief reject claims 1-3, 5, 12, 20-21, 24,
and 27 under 35 U.S.C. § 103(a). Final Rej. 4-5 and App. Br. 15. The
Examiner’s Answer, however, uses a 35 U.S.C. § 103(a) heading but the
statement of rejection lists these claims as being rejected under 35 U.S.C. §
102(e) as anticipated by Aoshima and Aoki. Ans. 4. We understand this
statement of the rejection to be a typographical, harmless error and the
proper statement of rejection of these claims is under 35 U.S.C. § 103(a).
Appeal 2011-002163
Application 10/992,518

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ISSUES
The issue of whether the Examiner erred in rejecting claims 1, 6-8, 12,
and 20 stand rejected under 35 U.S.C. §112 first paragraph as failing to
comply with the written description requirement turns on whether the
Specification describes the limitation “wherein the relative URI resolves to a
plurality of alternative resources, each alternative resource storing the
identical content in a different format” in a manner to convey to a person
with ordinary skill in the art that the Appellants were in possession of the
invention.
The issue of whether the Examiner erred in rejecting claims 1-27
under 35 U.S.C. § 103(a) as unpatentable over the cited prior art turns on
whether Aoki describes “each alternative resource storing the identical
content in a different format.”

ANALYSIS
Claims 1, 6-8, 12, and 20 stand rejected under 35 U.S.C. §112 first
paragraph as failing to comply with the written description requirement
The Examiner found that the limitation “wherein the relative URI
resolves to a plurality of alternative resources, each alternative resource
storing the identical content in a different format” is not described in the
Specification in a manner as to convey to a person with ordinary skill in the
art that the Appellants were in possession of the invention. Final Rej. 3-4.
The Appellants contend that the Specification provides support for this
limitation at ¶¶ 0039-0040. App. Br. 16.
We agree with the Appellants. The Specification describes an initial
resource “somecontent.xml” that can be converted into “somecontent.html”
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Application 10/992,518

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and “somecontent.pdf,” where XML, HTML, and PDF are different formats.
Specification ¶ 0039. A person with ordinary skill in the art would have
understood by this description that the term “converts” can correspond to the
claimed “resolves.” As such, a person with ordinary skill in the art would
have understood that the Appellants were in possession of the invention at
the time of filing.

Claims 1-27 rejected under 35 U.S.C. § 103(a) as unpatentable over the
cited prior art
We have reviewed the Examiner’s rejections in light of the
Appellants’ contentions that the Examiner has erred.
We disagree with the Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to the Appellants’ Appeal Brief. We
concur with the conclusion reached by the Examiner. We highlight the
following arguments for emphasis.
The Appellants contend that Aoki fails to describe the limitation “each
alternative resource storing the identical content in a different format,” as
per independent claims 1, 6, 12, and 20 and dependent claims 2-5, 7-11, 13-
19, and 21-27. App. Br. 17-21. The Appellants specifically argue that Aoki
describes “a ‘caching module’ and a ‘regular cache’ and a ‘priority cache’. .
. [but] submit that any particular content would be stored in one or the other
of the two different cache areas and certainly not both. Therefore, the cache
area does not store ‘identical content.’” Id.
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Application 10/992,518

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We disagree with the Appellants. As found by the Examiner, Aoki
describes priority caching and regular caching. Ans. 20 (citing Aoki ¶¶ 0083
and 0089 and Fig. 13). “[T]he priority caching and regular caching entries
are different in the value of the cashing [sic.] entry type but have the same
contents.” Aoki ¶ 0089. As such, we agree with the Examiner that Aoki
describes that each alternative resource, i.e. type of caching, stores the same
content in a different entry type. The Appellants have not rebutted this
finding by the Examiner. Absent any evidence or rationale from the
Appellants, we are not persuaded by the Appellants.
We are further unpersuaded by the Appellants contention that “[t]he
Examiner has provided no justification why one of ordinary skill in the art
would further modify the teachings of Aoshima . . . or Aoki . . . [because]
Aoki does not disclose ‘identical resources in different formats.’” App. Br.
17-21. As discussed supra, Aoki describes “each alternative resource
storing the identical content in a different format” and accordingly the
Appellants’ contention is not persuasive. Furthermore, the Examiner has
provided an articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness, in finding that a person with
ordinary skill in the art would have been motivated to combine the teachings
of Aoki with Aoshima in order to “provide the information and operation to
refer to the information interest of the user.” Ans. 5. The Appellants have
not provided any evidence or rationale to illustrate why this finding is in
error.
Appeal 2011-002163
Application 10/992,518

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CONCLUSIONS
The Examiner erred in rejecting claims 1, 6-8, 12, and 20 under 35
U.S.C. § 112, 1st paragraph, as failing to comply with the written description
requirement.
The Examiner did not err in rejecting claims 1-27 under 35 U.S.C. §
103(a) as unpatentable over the cited prior art.

DECISION
To summarize, our decision is as follows.
 The rejection of claims 1, 6-8, 12, and 20 under 35 U.S.C. § 112, 1st
paragraph, as failing to comply with the written description
requirement is not sustained.
 The rejection of claims 1-27 under 35 U.S.C. § 103(a) as unpatentable
over the cited prior art is sustained.

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) (2010).

AFFIRMED

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