Ex Parte Belknap et al

Board of Patent Appeals and Interferences

Jan 9, 2012

09986248 (B.P.A.I. Jan. 9, 2012)

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.
09/986,248 11/08/2001 William Russell Belknap SVL920010059US1/A8506 5036
46159 7590 01/09/2012
SUGHRUE MION PLLC
USPTO CUSTOMER NO WITH IBM/SVL
2100 PENNSYLVANIA AVENUE, N.W.
WASHINGTON, DC 20037
EXAMINER
BONSHOCK, DENNIS G
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
01/09/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILLIAM RUSSELL BELKNAPP and
STEVEN VICTOR KAUFFMAN

Appeal 2009-0144511
Application 09/986,248
Technology Center 2100
____________________

Before MAHSHID D. SAADAT, JEAN R. HOMERE, and
THU A. DANG, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines, Corp. (App.
Br. 2.) This appeal relates to 2007-0264, which was previously decided by
the BPAI on February 22, 2007.
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-3, 7-10, 13-15, 19-23, 25-29, 31, 32, and 34-36. Claims 4-6, 11,
12, 16-18, 24, 30 and 33 have been canceled. (App. Br. 4.) We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method, apparatus and a computer-readable
medium for packing and unpacking objects in an electronic message to
facilitate the request and transfer of the objects between a client and a server.
(Spec. 5). In particular, upon receiving a message from the client (1)
requesting a plurality of objects, the server (4) searches a plurality of object
databases (9a, 9b, 9c) from which it retrieves the requested objects. The
server (4) then sends to the client the retrieved objects packed in the
response message. Upon reaching the client (1), the packed objects are
automatically unpacked in the order specified in the response message.
(Spec. 7).
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method of requesting and processing a plurality of
objects from a server, comprising:

opening a session with at least one server;

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searching in the at least one server for an information element
based upon a search criteria after the opening of the session
with the at least one server;

receiving from at least one server search results
displayable on a web page comprising a list identifying
occurrences of the information element, wherein at least some
of said occurrences of the information element identify objects;

generating for at least two identified objects, requests to
the at least one server for obtaining the at least two objects;

packing the plurality of requests for the at least two
objects into a packed request message and transmitting the
packed request message to the at least one server;

receiving a response message from the at least one
server, the response message containing the at least two objects
packed into the response message;

ending the session with the at least one server after the
receiving the response message; and

automatically unpacking the at least two objects
contained in the response message for displaying on the web
page.

Prior Art Relied Upon
Feinman US 6,075,943 Jun. 13, 2000
Halpern US 6,282,711 B2 Aug. 28, 2001
(Filed Aug. 10, 1999)
Jones US 7,099,950 B2 Aug. 29, 2006
(Filed Mar. 8, 2001)
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Appellants’ Admitted Prior Art, Specification pgs. 1-4. (AAPA)

Rejections on Appeal
The Examiner ejects the claims on appeal as follows:
Claims 1-3, 7-10, 13-15, 19-23, 25-29, and 34-36 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Halpern,
AAPA, and Jones.
Claims 31 and 32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Halpern, Feinman and AAPA.
Appellants’ Contentions
Appellants argue that the disclosures of Halpern, AAPA, and Jones
are not properly combined to teach or fairly suggest searching, retrieving
search results, generating, packing, and receiving a response message during
an active server session, and unpacking the objects from the response
message after the session has ended, as recited in independent claim 1. (App.
Br. 17-23, Reply Br.1- 3.) According to Appellants, while Jones discloses
initiating and ending a session with a server, there is simply no suggestion in
the present record to perform during an active server session most of the
steps provided in Halpern and AAP, and to unpack the objects received in
the response after the session has ended. (App. Br. 22) In particular,
Appellants argue that because Jones discloses that all operations are carried
out before terminating the session, it cannot teach ending the session after
receiving the response, and automatically unpacking the objects thereafter.
(App. Br. 22.) Consequently, Appellants submit that the proposed
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combination is only achievable through impermissible hindsight. (Id., Reply
Br. 6-9)
Examiner’s Findings and Conclusions
In response, the Examiner finds that because Jones discloses
terminating a server session when the data transmission therewith is
complete, it implicitly suggests that the unpacking of the objects received
from the transmission is carried out after the session has been terminated.
(Ans. 36-37.)
Therefore, the pivotal issue before us is as follows:
II. ISSUE
Have Appellants shown that the Examiner erred in concluding that
Halpern, AAPA, and Jones are properly combined to teach or fairly suggest
searching, retrieving search results, generating, packing, and receiving a
response message during an active server session, and unpacking the objects
from the response message after the session has ended , as recited in
independent claim 1?
III. FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Halpern
1. Halpern discloses a method for allowing a client user to select
from a remote server location software components that he wishes to be
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included in a software package. (Abstract). In particular, the server retrieves
the requested software components from a database (108) and pool
components (107), then utilizes an installer set generator (109) to bundle the
retrieved components into a custom installation file. (Col. 6, lines 1-6). The
installer set generator (109) then forwards the custom installation file to a
packager (110), which transforms the file into a custom installation package.
(Col. 6, lines 6-10). The packager (110) transforms the custom installation
package into a self- extracting executable file by submitting the package to a
compression process (111), and then to a self-extractor process (112). The
self-extracting executable file is subsequently delivered to the client as a
single file via a packetization transport protocol. (Col. 6, lines 14-22).
Jones
2. Jones discloses a client initiating a connection with a server to
establish a session therewith. Upon authenticating the client, the server
allows the authenticated client to submit requests, responds thereto by
providing the requested data to the client, and subsequently ends the session.
(Abstract, col. 2, ll. 52-63.)
3. Jones discloses that the server can perform certain functions
such as retrieving attribute values for a specified result set or deleting the
objects that satisfy a filter (Fig. 3.) Likewise, the server can return to the
client result sets previously retrieved or with deleted object ids. (Fig. 4.)
4. Jones also discloses that the server returns responses in a
different order from the order of the requests initiated by the client. Further,
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Jones discloses that pieces of a response can be transmitted out of order, and
may need to be reordered. (Col. 11, ll. 44-52.)
Feinman
5. Feinman discloses a method and system for remotely
transferring application programs from a remote server and automatically
installing them on a client computer via a network. (Col.2, lines 34-36). In
particular, Feinman discloses packaging a plurality of application programs
into a compressed file that records all subdirectories of the application
programs. The compressed file is transmitted to the client along with a
sequential file containing delivery information such that decompression of
the application program at the client computer recreates the exact directory
structure. (col.2, lines 38-45).

III. ANALYSIS
Claims 1-3, 7, 13-15, 19-23, 25-29, and 34-36
We find no error in the Examiner’s rejection of independent claim 1,
which recites, inter alia, searching, retrieving search results, generating,
packing, and receiving a response message during an active server session,
and unpacking the objects from the response message after the session has
ended . In particular, we agree with the Examiner that Halpern’s disclosure
of a server that retrieves certain software components requested by a client
to thereby customize a software application package for the client (FF. 1)
teaches that the server is performing those functions during an active
connection session. (FF. 3.) We further agree with the Examiner that Jones’
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disclosure of ending a session immediately after the server has responded to
the client’s request (FF. 2) fairly suggests a desire to keep the session active
no longer than necessary. That is, Jones teaches that the session ends as soon
as the client receives the requested response from the server. Therefore, we
find that the ordinarily skilled artisan would have readily appreciated that
incorporating Jones’s teaching in Halpern’s system would have predictably
resulted in a system wherein an active session ends upon a client receiving a
response to a request from a server thereby causing the client to
subsequently unpack the content of the response after the session has ended.
We find unavailing Appellants’ argument that the proposed
combination of Halpern, AAPA and Jones is motivated by impermissible
hindsight. It has been held that where the claimed subject matter involves
more than the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement, a holding of obviousness must be based on “an apparent
reason to combine the known elements in the fashion claimed.” KSR Int’l v.
Teleflex, Inc., 550 U.S. 398, 417-18 (2007). That is, “there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” Id., 550 U. S. at 418 (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)). Such reasoning can be based on
interrelated teachings of multiple patents, the effects of demands known to
the design community or present in the marketplace, and the background
knowledge possessed by a person having ordinary skill in the art. KSR, 550
U.S. at 417-18. In the present case, the Examiner found that the proposed
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combination would have resulted in setting up distinct times for establishing
connections between the client and the server. (Ans. 33-35). We find this
articulated rationale to be sufficient to justify this combination. In other
words, we find that the proposed substitution would merely require the
ordinarily skilled artisan to use common sense to appreciate that allowing a
session to remain active longer than necessary would result in a waste of
bandwidth, and unnecessarily tying up the server’s resources.
We are cognizant that our reviewing courts have not established a
bright-line test for hindsight. However, in KSR, the U.S. Supreme Court
stated that “[a] factfinder should be aware, of course, of the distortion caused
by hindsight bias and must be cautious of argument reliant upon ex post
reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383
U.S. 1, 36 (1966)). Nevertheless, in KSR the Supreme Court also qualified
the issue of hindsight by stating that “[r]igid preventative rules that deny
factfinders recourse to common sense, however, are neither necessary under
our case law nor consistent with it.” KSR, 550 U.S. at 421. Consequently,
we are satisfied that the portions of Halpern, AAPA and Jones relied upon in
the record before us disclose nothing other than prior art elements that
perform their ordinary functions to predictably result in a client system that
unpacks items received from a server after a client-server session has ended.
It follows that Appellants have not shown the Examiner erred in
concluding that the combination of Halpern, AAPA, and Jones renders
independent claim 1 unpatentable.
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Since Appellants argue claims 1-3, 7, 13-15, 19-23, 25-29, and
34-36 as a single group, those claims fall together with claim 1 for the same
reasons set forth above. See 37 C.F.R. § 41.37(c)(1)(vii).
Claims 8-10
Appellants argue that the combination of Halpern, AAPA and Jones
does not teach or suggest the order in which the objects in the response
message are packed is different from the order they are transmitted to the
client, as recited in independent claim 8. Appellants submit that Jones rather
discloses transmitting multiple responses corresponding to multiple requests.
(App. Br. 24, Reply Br. 9.) This argument is not persuasive. We agree with
the Examiner that Jones’ disclosure of assigning ID numbers to the various
pieces of a single response to preserve the display order therefor (FF. 4, Ans.
37) teaches that the pieces have been packed in the same numerical order in
which they are to be displayed. We also find that Jones’ disclosure that the
order of those response pieces while being transmitted to the client may be
different from their display order (FF. 4) explicitly teaches the disputed
limitation. It follows that Appellants have not shown the Examiner erred in
concluding that the combination of Halpern, AAPA, and Jones renders
independent claim 8 unpatentable.
Since Appellants argue claims 8-10 as a single group, those claims
fall together with claim 8 for the same reasons set forth above. See 37
C.F.R. § 41.37(c)(1)(vii).

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Claims 31 and 32
Appellants argue that the combination of Halpern, AAPA, and
Feinman does not teach or suggest objects are packed prior to receiving a
request therefor, and the response message includes an indicator of a
predetermined order in which the packed objects are to be presented, as
recited in independent claim 31. According to Appellants, while Feinman
discloses a compressed file that is automatically decompressed in a specified
order at the client, the compressed file does not include a sequential file
which is used to identify a remote client’s delivery points and delivery
timings. (App. Br. 25.) This argument is unavailing because it is not
commensurate with the scope of the claim. In particular, the claim does not
recite any identification of delivery points and delivery timings. We
therefore agree with the Examiner that Feinman’s disclosure of storing in
advance at the server subdirectories certain application programs that are
packed into a compressed file, which, upon being decompressed at the
server, recreates the exact same subdirectories teaches the disputed
limitations. (Ans. 39-41, FF. 5.) In particular, we find that in order for the
decompressed file to recreate the same subdirectories at the client, a
presentation order must be indicated in the decompressed file.
It follows that Appellants have not shown the Examiner erred in
concluding that the combination of Halpern, AAPA, and Feinman renders
independent claims 31 unpatentable.
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Since Appellant argues claims 31 and 32 as a single group claim 32
falls together with claim 31 for the same reasons set forth above. See 37
C.F.R. § 41.37(c)(1)(vii).

V. DECISION
We affirm the Examiner’s rejections of claims 1-3, 7-10, 13-15,
19-23, 25-29, 31, 32, and 34-36.
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

Vsh