Ex Parte Breiter et al

Patent Trial and Appeal Board

Jul 15, 2013

12171744 (P.T.A.B. Jul. 15, 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.
12/171,744 07/11/2008 Gerd Breiter DE920010005US2 3504
58139 7590 07/15/2013
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
EXAMINER
NAJJAR, SALEH
ART UNIT PAPER NUMBER
2492
MAIL DATE DELIVERY MODE
07/15/2013 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 GERD BREITER, WILFRIED BRUEGMANN,
BERNHARD SCHMID, and HENDRIK WAGNER
____________

Appeal 2010-011970
Application 12/171,744
Technology Center 2400
____________

Before DENISE M. POTHIER, JEFFREY S. SMITH, and
DAVID C. MCKONE, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 16-20 and 25. Claims 1-15, 24, and 26-29 have been
canceled, and claims 21-23 have been withdrawn from consideration. Br. 1.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Invention
Appellants’ invention distributes and streams data from
remotely-stored locations. See Spec. 1:4-9. Claim 16 is reproduced below
with the key disputed limitations emphasized:
16. A method for selecting a first server computer for sending of data
to a client computer, the method comprising the steps of:
accessing a second server computer through a path in a computer
network, the path comprising a first set of one or more server
computers;
adding information indicative of at least one server computer of the
first set of one or more server computers to a locator of a resource on
the second server computer, the resource having a unique signature as
part of its identifier; and
selecting the first server computer based on the information added
to the locator;
the second server computer being a Web application server
comprising a Web page with a hyperlink referencing the data to be
sent to the client computer, the hyperlink including a unique signature,
the method further comprising the steps of
selecting the hyperlink by the client computer, and
subsequently generating an http request out of this hyperlink by a
web browser, this http request containing the unique signature
identifying a media request.

The Examiner relies on the following as evidence of unpatentability:
Jindal US 6,327,622 B1 Dec. 4, 2001
Garcia-Luna-Aceves
(“Garcia”)
US 2002/0026511 A1 Feb. 28, 2002
Albert US 6,970,913 B1 Nov. 29, 2005
(filed July 2, 1999)

The Rejections
Claims 16-18 and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jindal and Garcia. Ans. 4-5.
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Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Jindal and Albert. Ans. 5-6.
Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Jindal, Garcia, and Albert. Ans. 6-7.
1

OBVIOUSNESS REJECTION OVER JINDAL AND GARCIA
Regarding illustrative independent claim 16, the Examiner finds that
Jindal teaches many of the claim limitations (Ans. 3
2
-4), except for the
recited details concerning the hyperlink and http request having a unique
signature and generating an http request from a hyperlink, for which Garcia
is cited. Ans. 4-5. The Examiner further provides a reason for combining
Garcia with Jindal, including preventing unauthorized access to servers.
Ans. 5, 8.
Appellants argue that neither reference teaches an http request
containing the unique signature identifying a media request. Br. 7.
Appellants also assert that the Examiner fails to establish a prima facie case
of obviousness because no reason has been provided for combining Garcia
with Jindal. Br. 12-14.

1
The Examiner discusses the rejections of canceled claims 15, 24 and 26.
See Ans. 3, 5. Because these claims have been cancelled, these rejections
for these claims are moot.
2
While the Examiner includes the discussion of the first three steps under a
§ 102 rejection for claim 15 (see Ans. 3), we presume that the same mapping
to Jindal applies for claim 16, which before the entered After-Final
Amendment was dependent on claim 15.
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ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 16 by
finding that Jindal and Garcia collectively would have taught or suggested
an http request containing the unique signature identifying a media request?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ANALYSIS
We begin by construing the key disputed limitation of claim 16 which
calls for an http request containing the unique signature identifying a media
request. We conclude that this limitation merely recites what the data on the
request represents constituting non-functional descriptive material. No
functional relationship exists in the claim between the http request and the
data (e.g., the unique signature identifying a media request) such that the
claimed request has been given a property it would not have had if either the
request or the unique signature changed. Moreover, the particular type of
request (i.e., “media”) only recites what data on the request represents. Such
non-functional descriptive material does not patentably distinguish over
prior art that otherwise renders the claims unpatentable. See also Ex parte
Nehls, 88 USPQ2d 1883, 1887-89 (BPAI 2008)(precedential)(citing Ex
parte Curry, 84 USPQ2d 1272 (BPAI 2005), aff’d (Fed. Cir. Appeal No.
2006-1003, aff’d Rule 36 June 12, 2006) and Ex parte Mathias, 84 USPQ2d
1276 (BPAI 2005), aff’d 191 Fed.Appx. 959 (Fed. Cir. 2006)).
Given the above construction, neither reference needs to teach the http
request contains the unique signature identifying the media request. Rather,
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the references need only teach that the http request includes some
information. The Examiner finds that the combined Jindal/Garcia method
would result in an http request containing a signature or information and is
adequate to meet the http request as broadly as recited. See Ans. 4-5, 7-8.
Even assuming that the phrase, “containing the unique signature
identifying a media request” is considered limiting, we further agree with the
Examiner (Ans. 7-8) that Garcia teaches or suggests such an http request.
The Examiner finds that Garcia teaches including a signature (e.g., access
control label signature) as part of the hyperlink request or its uniform
resource locator (URL). See Ans. 4-5, 7 (citing ¶¶ 0096, 0102). The
Examiner explains that this signature is unique because the signature is part
of the URL requesting access to an object on the server and this signature is
used to determine whether access will be obtained. See Ans. 4, 7-8 (citing
¶¶ 0096, 0102; Fig. 4)). This signature also identifies a media request
because the objects contain links to information objects with which content
is rendered as audio, video, images, text, or data. See Ans. 5, 7-8 (citing
¶ 0003)).
Appellants further assert that the Examiner’s reason for combining
Garcia with Jindal is insufficient to establish a prima facie case of
obviousness. Br. 12-14. We disagree. The Examiner finds that combining
Garcia’s teaching of including a signature in an http request with Jindal
would provide authorized access to information objects. See Ans. 5 (citing
Garcia ¶ 0046). That is, Garcia teaches that signatures are used to determine
which requesting clients have proper access to an information object. See
Garcia ¶ 0046. The Examiner elaborates in the Response to Argument
section that including Garcia’s teaching in Jindal would prevent
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unauthorized access to servers. Ans. 8 (citing Garcia ¶ 0102). For example,
Garcia teaches that the access control label signature provides cryptographic
protection. See ¶ 0102. We find that both these reasons provide some
rational underpinning within Garcia to support an obviousness conclusion.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Lastly, while Appellants quote claim language and state they traverse
the Examiner’s findings (Br. 5-6), Appellants present no particular argument
concerning these limitations, except for the http request containing the
unique signature identifying a media request. See Br. 5-8. As no specific
arguments have been presented, we are not persuaded.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 16 and claims 25 not separately argued
with particularity.

Claim 17
Appellants refer back to the arguments made for claim 16. Br. 9. We
are not persuaded for the reasons previously set forth. Additionally,
Appellants argue that the references do not teach temporarily storing the
information added to the locator on the second server computer (Br. 10) or
providing information to a media request broker in response to selecting the
hyperlink by the client (Br. 10, 15). The Appellants also assert that the
Examiner’s combination does not establish a prima facie case of
obviousness. Br. 14-16.

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ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 17 by
finding that Jindal and Garcia collectively would have taught or suggested
(a) at least temporarily storing the information added to the locator on the
second server computer and (b) providing of the information to a media
request broker in response to a selection of the hyperlink by the client
computer?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of claim 17. The Examiner finds that Jindal teaches temporarily
storing information added to a locator on a server. See Ans. 4 (citing col. 1,
ll. 59-62; col. 2, ll. 1-4). This portion of Jindal discusses a load balancing
technique where a Domain Name Services (DNS) server passes information
on to a specialized hardware to determine the preferred server to handle an
access request to a URL. Col. 1, l. 59 – col. 2, l. 8. Jindal teaches that this
hardware includes a specialized updater object located on the DNS server
that updates the lookup table with an identifier (e.g., a network address) to
identify the preferred server to handle the requests. Col. 3, ll. 35-37, 42-46;
col. 12, ll. 13-23; col. 13, ll. 53-62. The Examiner also finds that this same
information can be changed or updated. See Ans. 8 (citing col. 5, ll. 25-41).
Thus, information is stored at least temporarily on a second server computer
(e.g., the DNS server).
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Despite Appellants’ assertion (Br. 10), this information is also the
information indicative of a server added to a locator. Appellants do not
define “a locator of a resource.” See generally Spec. In fact, other than in
the claims, this phrase is not found. At best, the Specification describes a
“uniform resource locator” (Spec. 3:30) on one occasion. However, claim
17 is not limited by this sole discussion to a URL, which is not recited in the
claims. Thus, as broadly as recited, “a locator of a resource” need not be a
URL address and includes addresses (e.g., network addresses) within a
lookup table.
The Examiner finds that the step of adding information to the locator
is taught by Jindal. See Ans. 3 (citing col. 4, ll. 56-61). Given our above
claim interpretation, we find this position reasonable. That is, Jindal teaches
collecting information (e.g., network addresses) that is added or stored, as
explained above, to the DNS’ lookup table. Col. 3, ll. 33-37; col. 4, ll. 57-
61; col. 5, ll. 15-24, 36-44. Consistent with the Examiner’s position (Ans. 3-
4, 8), Jindal teaches and suggests storing information added to the locator on
the second server at least temporarily.
Appellants also contend that the references fail to provide the
information to a media broker in response to the selection of the hyperlink
by the client. Br. 10, 15. We disagree. The Examiner focuses on Garcia to
teach this limitation and maps the discussed Web router as the media broker
in claim 17. See Ans. 4-5 (citing ¶¶ 0003, 0033), 8-9 (citing ¶ 0056).
Specifically, Garcia teaches a Web router that refers requests for an object to
a content server, and the web cache provides content through the web cache
to the client using a determined server. ¶ 0056. This referral is in response
to a client making a request for an object, which may include pages
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containing links (e.g., selecting a hyperlink). See ¶¶ 0003, 0056. We
therefore find that Garcia teaches or suggests providing the request to a
media request broker (e.g., a Web router) in response to client selection of a
hyperlink. Additionally, Garcia teaches that this approach includes mapping
the client address with the Web cache’s address (e.g., information that
represents a network address of a server when combined with Jindal) that
delivers the requested object to the client. See ¶ 0056.
Appellants further assert that the Examiner’s reason for combining
Garcia with Jindal is insufficient to establish a prima facie case of
obviousness. Br. 14-16. We disagree. For claim 17, the Examiner provides
the same reason for combining Garcia’s teaching with Jindal as the
Examiner provided for claim 16. See Ans. 5, 8. As stated above, we find
that these reasons provided have some rational underpinning to support an
obviousness conclusion and are not persuaded. Garcia also provides other
reasons to include a media broker, including optimally delivering requested
objects to the user and providing transparency. See ¶ 0056.
Accordingly, we will sustain the rejection of claim 17.

Claim 18
Appellants first refer back to the arguments made for claim 16. Br. 9.
We are not persuaded for the reasons previously set forth. Appellants also
repeat the argument that Garcia fails to teach a media request broker. Br. 12.
We are not persuaded for the above reasons in connection with claim 17.
Appellants further quote claim language and state they traverse the
Examiner’s findings. Br. 12, 17. Appellants present no particular argument
concerning these limitations, except for the references failing to teach the
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media broker. See Br. 12. As no additional specific arguments have been
presented concerning the entire quoted recitation, we are not persuaded.
Appellants further assert that the Examiner’s reason for combining
Garcia with Jindal is insufficient to establish a prima facie case of
obviousness. Br. 16-17. We disagree. For claim 18, the Examiner provides
the same reason for combining Garcia’s teaching with Jindal as the
Examiner provided for claim 16. See Ans. 5, 8. As stated above, we find
that these reasons provided have some rational underpinning to support an
obviousness conclusion and are not persuaded. We additionally refer to our
discussion of claim 17.
Accordingly, we will sustain the rejection of claim 18.

OBVIOUSNESS REJECTION OVER JINDAL AND ALBERT
Regarding claim 19, Appellants argue that Albert fails to teach or
suggest determining a quality weight of a server computer in the path.
Br. 17-19. In particular, Appellants focus on column 4, lines 7-10, in Albert.
Br. 18. Yet, the Examiner relies on column 4 and claim 17 in Albert.
Ans. 6, 9. Specifically, claim 17 teaches applying a weighting factor to
determine the preferred server to handle a request. Albert, claim 17; see also
col. 4, ll. 41-51. We thus are not convinced that Albert fails to teach the
determining step as recited.
Appellants further contend that the Examiner provides no reason to
combine Albert with Jindal. Br. 19. We disagree. The Examiner finds that
Jindal teaches considering factors to select the preferred server and to load
balance. See Ans. 3 (citing col. 6, ll. 49-54). However, none of the factors
include quality weights. See Ans. 5. The Examiner relies on Albert to teach
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this missing recitation and states that modifying Jindal’s teaching of
considering factors to determine the preferred server with Albert’s
consideration of weights would improve the load balancing by providing
feedback. See Ans. 6 (citing col. 4, ll. 7-10). The Examiner further finds
that including Albert’s feature in Jindal would enhance Jindal’s ability to
determine the preferred server. See Ans. 9 (citing col. 4, ll. 41-52 and claim
17). Both these reasons have an adequate rational underpinning in Albert to
support an obviousness conclusion. See KSR, 550 U.S. at 418.
Accordingly, we will sustain the rejection of claim 19.

OBVIOUSNESS REJECTION OVER JINDAL, GARCIA, AND ALBERT
Appellants argue that Garcia fails to teach storing a set of locators of a
second set of one or more server computers being in the same
geographical/topological area as a server computer in the first set. Br. 20.
At the outset, we note that this limitation merely recites what the data or
information being stored (e.g., locators) represents and does not functionally
affect any of the recited method steps in the claim. The type of information
being stored thus constitutes non-functional descriptive material, as it does
not further limit the claimed invention either functionally or structurally, and
is given little patentable weight. See Nehls, 88 USPQ2d at 1887-89.
However, presuming that this limitation is entitled to weight, we
further note that that claim 20 recites “a first set of one or more server
computers” and “a second set of one or more server computers.” As broadly
as recited, both the first and second sets can be limited to one server
computer or include more than one. Thus, if each of the recited sets is a set
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of one, the “plurality of servers” discussed in Jindal (see Ans. 6) can be
considered the first and second sets of one server computer.
Further, the Examiner relies on Garcia to teach this limitation. Ans. 6,
9 (citing ¶¶ 0003, 0077). The Examiner states Garcia discusses storing
locators used to access web servers and the nearest web cache presents the
requested object to the client will be the same geographical area. See Ans. 9.
Given our claim construction, the combined teachings of the references
would result in the first server being the web cache in Garcia that delivers
the object and a second set of one server would be the next server closest to
the web cache. See Jindal, col. 2, ll. 57-61, col. 5, ll. 15-44; Garcia, ¶ 0003,
0077. Moreover, Jindal teaches storing the locators as discussed above in
connection with claim 16.
As such, the combined teachings of Jindal and Garcia teach or suggest
storing a locator of a second set of one server computer being in the same
geographical area as a server computer in the first set of one server computer
as recited. While Appellants assert that a Wide Area Network may have
servers in dispersed locations (Br. 20), we equally find that one skilled in the
art would have recognized various types of networks, including Local Area
Networks, where the second set of one server is “in the same
geographical/topological area as a server computer in the first set of one or
more server computers” as broadly as recited.
Appellants further contend that Albert does not teach determining a
weight of second set server. Br. 21-22. We disagree for the reasons
discussed above in connection with claim 19 and refer to our discussion.
Lastly, Appellants repeat that the Examiner provided no rationale to
combine Garcia with Jindal and Albert to teach weighting step. Br. 22. We
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disagree for the reasons presented in connection with claim 19. Appellants
also assert that the Examiner has provided no reason for combining Garcia
with Jindal and Albert in order to store a set of locators of a second set of
one server computer. Br. 22-23. Given that Appellants fail to elaborate, we
find this argument unpersuasive. In any event, the Examiner provides some
reason with rational underpinning for the combination. See Ans. 9
(discussing the locators provide access to web servers that store the
requested information).
Accordingly, we will sustain the rejection of claim 20.

CONCLUSION
The Examiner did not err in rejecting claims 16-20 and 25 under
§ 103.

DECISION
The Examiner’s decision rejecting claims 16-20 and 25 is affirmed.
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

kis