Ex Parte Barraclough et al

Patent Trial and Appeal Board

Jul 30, 2014

11435357 (P.T.A.B. Jul. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KEITH BARRACLOUGH, DAVID IRVINE,
RODRIGO PHILANDER, MICHAEL J. ALBANESE,
and JAMES ROLAND HENDERSON
____________________

Appeal 2011-012950
Application 11/435,357
Technology Center 2400
____________________

Before JOHN C. KERINS, MICHAEL L. HOELTER and
PATRICK R. SCANLON, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Keith Barraclough et al. (Appellants) appeal under 35 U.S.C. § 134
from a final rejection of claims 1–18 and 20–27. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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THE INVENTION
Appellants’ invention is directed to a method involving use of a
network cache employing caching rules specified by a registered user.
Claim 1, reproduced below, is illustrative:
1. A method comprising:

causing, at least in part, at a computer, authenticating a content
request from a remote user as a function of authentication
information provided by a registered user and information in
the request,

in response to the request being authenticated, ascertaining
availability of the requested content at a network cache in
accordance with caching rules specified by the registered user,

in response to the requested content being available at the
network cache and in accordance with the caching rules,
selectively directing the transfer of the requested content from
the network cache to the remote user at a remote packet-
communicating terminal, and

responsive to the availability of the requested content at the
network cache and to the caching rules, selectively directing,
via an established communications link, the transfer of the
requested content from a data source to the remote packet-
communicating terminal.

THE REJECTIONS
The Examiner has rejected:
(i) claims 1–7, 16–18, and 20–23 under 35 U.S.C. § 103(a) as being
unpatentable over Coates (US 2001/0047400 A1, published Nov. 29, 2001)
in view of Bhide (US 2003/0194998 A1, published Oct. 16, 2003);
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(ii) claims 8–12, 24, and 25 under 35 U.S.C. § 103(a) as being
unpatentable over Coates in view of Bhide and Burns (US 6,298,373 B1,
issued Oct. 2, 2001); and
(iii) claims 13–15, 26, and 27 under 35 U.S.C. § 103(a) as being
unpatentable over Matsubara (US 2004/0148434 A1, published July 29,
2004) in view of Coates.

ANALYSIS
Claims 1–7, 16–18, and 20–23--§ 103(a)--Coates/Bhide
Appellants argue claims 1–7, 16–18, and 20–23 as a group. Appeal
Br. 9–13. We will take claim 1 as representative, and claims 2–7, 16–18,
and 20–23 stand or fall with claim 1.1 See 37 C.F.R. §
41.37(c)(1)(vii)(2011).
The Examiner finds that Coates discloses all method steps set forth in
claim 1, including a step corresponding to the claim limitation requiring
ascertaining, in response to the request being authenticated, availability of
requested content at a network cache in accordance with caching rules.
Answer 6–7. The Examiner notes that Coates does not “explicitly teach ‘the
caching rules [are] specified by the registered user’.” Id. at 7. The
Examiner finds that Bhide includes a disclosure of caching rules that are
specified by a user, and concludes that it would have been obvious to modify
Coates, in view of this disclosure in Bhide, in order “to allow the system to
manage personal cache in a network and to be able to access information

1 Appellants identify independent claim 16 within their arguments, but only
in the context that claim 16 contains a similar limitation to claim 1, which
limitation is argued to not be rendered obvious by the cited prior art. See,
e.g., Appeal Br. 10.
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stored on a web site/server affords [sic] customers flexibility.” Id. at 7-8
(citing to Bhide, paras. [0018] and [0004]; and at 22–23 (citing to Bhide,
paras. [0015], [0018], and [0023]).
Appellants do not challenge the Examiner’s findings relative to the
Coates reference, and instead argue that Bhide “does not . . . teach the claim
feature, ‘in response to the request being authenticated, ascertaining
availability of the requested content at a network cache in accordance with
caching rules specified by the registered user.’” Appeal Br. 10.
Appellants argue that neither paragraph [0015] nor paragraph [0018] of
Bhide relied on by the Examiner identifies that any rules disclosed therein
are specified by the user. Id. at 10–11. More specifically, for paragraph
[0015], which discloses that information in a personal cache may be sent to a
destination based upon a set of rules in a user-defined profile, Appellants
maintain that Bhide does not disclose that the rules are specified by the user,
and that there is no basis for assuming that to be the case. Id. at 10. Further,
Appellants take the position that, although paragraph [0018] discloses the
use of “‘rules that determine the retrieval, transmittal and the content of the
information in the personal cache 150,’” “this does not mean that the user
himself/herself actually specified those rules[, as a] service provider could
have specified the rules.2 Id. at 11.
The Examiner additionally relies on passages from paragraph [0023]
of Bhide as evidencing that Bhide employs user-specified caching rules,

2 We question whether a service provider could have specified rules
pertaining to the content of the information in the personal cache in Bhide,
which is one of the types of rules disclosed in paragraph [0018], but since
we otherwise find a disclosure of user-specified caching rules in Bhide, we
need not specifically reach this issue.
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including rules that, when executed, retrieve information and save it to the
user’s personal cache. Answer 23. That paragraph references that a user
profile comprises a set of rules and may include the user’s static information,
such as a social security number or password, as well as rules that control
“location based information.” Bhide, para. [0023]. Bhide describes that the
rules controlling location-based information may be rules that, when
executed, generate location based information. Id. Bhide provides an
example of this in describing that:
a user may specify a rule that when executed generates a list of
hospitals, a list of restaurants, a list of business associates or
contacts etc. for a particular geographic area or a particular
MSC [Mobile Switching Center] serving area, and when the
rule executes, the information may be retrieved, e.g., from one
or more remote web sites or from a remote database, and the
retrieved information is saved in the user’s personal cache 250.
Id.
Appellants argue that “a user-defined rule for generating a list is
substantially different from user-specified ‘caching rules.’” Appeal Br. 11;
see also Reply Br. 4. The above-quoted passage, however, discloses that, in
addition to generating a list or lists, a user-specified rule, when executed,
also retrieves information from one or more sources, and saves that
information in the user’s personal cache.
At this point, we note that Appellants’ Specification does not provide
a lexicographic definition of the term “caching rule,” but does provide
several illustrative examples as to what may be considered to be a caching
rule. In a particularly apt example, the Specification states that, “a registered
user may specify caching rules indicating that a certain type of data and/or
data in a certain location, be stored (e.g., mirrored) at the network-based
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cache. The agent implements these caching rules at the data source by
accessing and sending the data to the cache.” Spec., p. 9, ll. 20–23.
Elsewhere, the Specification explains that, “[s]uch rules may include, for
example, rules for maintaining mirrored data in the cache for a specified
amount of time, until a certain event happens (e.g., the data is downloaded to
a remote user or a license expires), or until another condition applies.”
Spec., p. 24, ll. 21–23. More generally, according to the Specification,
caching policies or rules “are received from the registered user, and used to
indicate a manner in which to store shared data at the network-based cache.”
Spec., p. 6, ll. 2–4.
Thus, even if a user-defined rule for generating a list would not be
regarded as a caching rule, as urged by Appellants, the disclosure in Bhide
that execution of the user-specified rule results in the retrieval of particular
data and storage of the same in a personal cache, is seen as a disclosure of a
user-specified caching rule, under a broadest reasonable interpretation of the
term “caching rule,” as would be understood by persons of ordinary skill in
the art in light of Appellants’ Specification, and particularly in light of the
examples excerpted therefrom and presented above.
Appellants further argue that “the rules for generating lists in Bhide”
are not employed “to ascertain availability of requested content in response
to a request for content being authorized.” Reply Br. 4. Not only does this
argument fail to address that the user-defined rules in Bhide go beyond rules
for generating lists, it also fails to take into consideration that the Examiner
relies on Coates, and not Bhide, for the step of ascertaining availability of
requested content in accordance with caching rules, in response to a request
for content being authorized, a finding not contested by Appellants. Bhide is
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relied on only for the disclosure of a use of user-specified caching rules.
Answer 7.
Accordingly, we are not persuaded that the combination of the
teachings of Coates and Bhide fails to disclose all limitations set forth in
claim 1.
Appellants additionally maintain that “there would have been
insufficient motivation to combine Coates and Bhide in the manner proposed
by the Examiner.” Appeal Br. 12. Appellants maintain, in particular, that:
neither Bhide nor Coates teaches anything related to the
flexibility being realized by employing “caching rules specified
by the registered user,” as claimed. There would have been no
reason for the person of ordinary skill in the art to employ
Bhide’s teaching of user-specified rules for generating lists in
any way to modify the network storage and file transfer system
of Coates in order to arrive at the claimed invention. . . .
Id.; see also Reply Br. 4-5. Again, Appellants’ argument focuses on “user-
specified rules for generating lists,” where Bhide discloses not only that, but
user-specified rules that involve retrieval of data and storage of that data in a
personal cache. Bhide, para. [0023]. The argument thus does not persuade
us of error in the Examiner’s conclusion that it would have been obvious to
modify Coates in view of Bhide, for the reasons set forth by the Examiner.
The rejection of claim 1 is sustained. Claims 2–7, 16–18, and 20–23
fall with claim 1.

Claim 8–12, 24, and 25--§ 103(a)--Coates/Bhide/Burns
Appellants rely on the same arguments for patentability advanced
with respect to claim 1, and further argue that Burns does not cure the
alleged deficiencies in the combination of the teachings of Coates and
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Banks. As noted above, we do not agree that the combination suffers from
any deficiencies, and therefore the rejection of claims 8–12, 24, and 25 is
sustained for the same reasons discussed in the foregoing section.

Claims 13–15, 26, and 27--§ 103(a)--Matsubara/Coates
Independent claim 13 is drawn to a method that includes a step of
“receiving, from the registered user, caching policies by which to store
shared data at the network-based cache,” as well as performing one or more
additional steps “as a function of the caching policies.”3 Appeal Br. 19,
Claims App. Independent claims 26 and 27, also subject to this ground of
rejection, are directed to a method and apparatus, respectively. The method
of claim 26 operates to receive data from a registered-user data source “in
accordance with caching rules specified by a registered user of the data
source.” Id. at 22 The apparatus of claim 27 is configured to
“administratively control registered user data sources to send user-provided
data to a network cache in accordance with caching rules specified by a
registered user.” Id. at 23.
The Examiner finds, inter alia, that Matsubara discloses the claimed
“caching rules” in the form of “access control information.” Answer 16,
citing to Matsubara, para. [0064] (“access control information, i.e., caching
rules”). The Examiner further elaborates on this position in setting forth
that:
Matsubara’s mechanism does teach “the register message(s)”
registered/specified by the registered user containing “access
control information” or at least “information used to

3 It appears that, as a general matter, the terms “caching policies” and
“caching rules” are essentially synonymous.
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create/produce access control information” associated with
the network-shared data stored at the network-based cache (i.e.,
wherein “access control information” contained in the
“registered message” sent/posted by a Web/Peer browser would
have been duly recognized by one of ordinary skill in the art as
“caching rules specified by the registered user”).
Answer 26–27.
Appellants maintain that paragraph [0064] of Matsubara discloses that
an HTTP server component, in cooperation with gateway logic, produces
information representing the files and access control information, and that
Matsubara does not there or elsewhere describe any features of the access
control information. Appeal Br. 14. Matsubara thus, according to
Appellants, “nowhere shows that shared data at the network-based
cache is stored based on the access control information, and thus fails to
teach the caching policies by which to store shared data at the network-
based cache, in the manner claimed.” Id.; see also Reply Br. 5-6.
Appellants have the better position here. Matsubara explicitly states
that the access control information, which, according to the Examiner,
corresponds to the claimed caching policies or rules, is generated by an
HTTP server component in cooperation with gateway logic resident in a
gateway server. Matsubara, para. [0064]; Figure 2. In contrast, the
Examiner appears to take the position that the access control information, or
at least some unspecified information that will be used to generate the access
control information, is contained in a message sent by a user requesting
“registration” of a file on a peer-to-peer network.
The Examiner has not adequately explained how this position can be
reconciled with the express disclosure that the access control information is
generated by an HTTP server component aided by gateway logic, in terms of
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what persons of ordinary skill in the art would understand from the
Matsubara disclosure. Matsubara does not disclose that any information is
extracted from the request message in order to generate access control
information for the file being registered, and the Examiner has not
established that such would necessarily be done. As such, the Examiner has
not shown that the access control information/caching policies/caching rules
is received from (claim 13) or specified by (claims 26, 27) a registered user
in Matsubara. The Coates reference is not relied upon in any respect as
teaching or suggesting this claim limitation.
Accordingly, the rejection of claims 13–15, 26, and 27 is not
sustained.

DECISION
The rejection of claims 1–7, 16–18, and 20–23 under 35 U.S.C.
§ 103(a) as being unpatentable over Coates and Bhide is AFFIRMED.
The rejection of claims 8–12, 24, and 25 under 35 U.S.C.
§ 103(a) as being unpatentable over Coates, Bhide, and Burns is
AFFIRMED.
The rejection of claims 13–15, 26, and 27 under 35 U.S.C.
§ 103(a) as being unpatentable over Matsubara and Coates is REVERSED.
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-IN-PART
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