Ex Parte Britton et al

Board of Patent Appeals and Interferences

Jan 21, 2009

10171504 (B.P.A.I. Jan. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte EDWARD GLEN BRITTON,
WESLEY MCMILLAN DEVINE, LAP THIET HUYNH,
BALA RAJARAMAN, and ARTHUR JAMES STAGG
________________

Appeal 2008-1361
Application 10/171,504
Technology Center 2400
________________

Decided: January 21, 2009
________________

Before LANCE LEONARD BARRY, JOHN A. JEFFERY,
and THU ANN DANG, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

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STATEMENT OF THE CASE
Appellants invented a system for retrieving data from network storage
that reduces network traffic by eliminating the need for all requested data to
go through an application server prior to transmission to a client.1
Specifically, when a client requests personalized data, a data request
manager (DRM), disposed in an application server, is responsible for the
tasks of determining if re-direction of data is needed, and forwarding a re-
direction request to a data transmission manager (DTM).2 The DTM,
disposed in network storage, responds to the request and sends the requested
personalized data directly back to the client without going through the
application server.3
Claim 1 is illustrative:
1. A personalized data re-direction system comprising:
at least one data request agent (DRA) disposed in at least one
corresponding client point of contact (POC), each said DRA having a
configuration for requesting data re-direction for personalized data
associated with one of a particular client and a particular client type;
a data request manager (DRM) disposed in an application
server and configured both to process data re-direction requests
received from a DRA and to request data re-direction for said
personalized data associated with said one of a particular client and
particular client type; and,
a data transmission manager (DTM) disposed in network
storage and configured to respond to requests for personalized data
received from a DRM by directly forwarding said requested

1 Spec. 12:16-18.
2 See generally Spec. 9 and 21; see also Abstract.
3 Id.
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personalized data to a requesting client through one of said at least
one DRAs in said at least one corresponding client POC, wherein
the DRM configured to determine if data re-direction is
required for a client data request from the DRA.
The Examiner relies on the following prior art references to show
unpatentability:
Fitzgerald US 5,473,362 Dec. 5, 1995
Brendel US 5,774,660 Jun. 30, 1998
Benantar US 6,141,758 Oct. 31, 2000
Brewer US 6,876,656 B2 Apr. 5, 2005
(June 15, 2001)
1. The Examiner rejected claims 12 and 134 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
2. The Examiner rejected claims 1-4, 6, 7, 9, and 10 under 35 U.S.C.
§ 103 as unpatentable over Appellants' Admitted Prior Art (hereafter
“the Admitted Prior Art”) and Brendel.
3. The Examiner rejected claim 5 under 35 U.S.C. § 103 as unpatentable
over the Admitted Prior Art, Brendel, and Fitzgerald.
4. The Examiner rejected claims 8 and 115 under 35 U.S.C. § 103 as
unpantentable over the Admitted Prior Art, Brendel, and Benantar.

4 Although the Examiner omits claim 13 in the initial statement of this
rejection (Ans. 3), the Examiner nonetheless includes claim 13 in the body
of the rejection (Ans. 4). Furthermore, Appellants indicate that claims 12
and 13 were rejected under § 112 (App. Br. 3-5). Based on the record before
us, we therefore presume that the Examiner intended to include claim 13 in
this rejection.
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5. The Examiner rejected claims 12-15 under 35 U.S.C. § 103 as
unpatentable over the Admitted Prior Art, Brendel and Brewer.
6. The Examiner rejected claims 1, 6, 9, and 12-15 under 35 U.S.C.
§ 103 as unpatentable over the Admitted Prior Art and Brewer.
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs and the Answer6 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments which Appellants could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

THE REJECTION UNDER 35 U.S.C. §112, SECOND PARAGRAPH
The Examiner rejected claims 12 and 13 under 35 U.S.C. § 112,
second paragraph (Ans. 3-4). Appellants contend that one having ordinary
skill in the art would not have difficulty understanding the scope of claims
12 and 13 when interpreted in light of the specification (App. Br. 4-5).
However, the Examiner finds that the limitation, “wherein the DRM
requesting data re-direction for said personalized data after determining that
said personalized data is not found in a cache portion of the application
server ” of claim 12 is unclear (Ans. 3). The Examiner also finds that this

5 Although the Examiner omits claim 8 in the statement of the rejection
(Ans. 9), the Examiner nevertheless indicates in Section (6) of the Answer
that claim 8 was intended to be rejected with claim 11 (Ans. 2). See also
App. Br. 15 (presuming that claim 8 was intended to be rejected with claim
11).
6 Throughout this opinion, we refer to (1) the Appeal Brief filed Jan. 22,
2007; (2) the Examiner’s Answer mailed June 1, 2007; and (3) the Reply
Brief filed Aug. 1, 2007.
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limitation is a fragment that causes possible antecedent basis problems (Id.).
Similarly, the Examiner finds that the limitation, “wherein the DRM
determining if data-re-direction is required for the request based upon at
least one data element selected from the group consisting of a client identity
and a Quality of Service (QOS) rating” of claim 13 is unclear (Ans. 4). The
Examiner also contends that this limitation is a fragment that causes possible
antecedent basis problems. Id.
Appellants contend that (1) the claim limitations are participle phrases
which act as adjectives modifying the noun “DRM,” and (2) one having
ordinary skill in the art would not have difficulty understanding the scope of
claims 12 and 13 when reasonably interpreted in light of the specification
(App. Br. 4-5; Reply Br. 3).

ISSUE
The issue before us, then, is whether Appellants have shown that the
Examiner erred in finding claims 12 and 13 indefinite. The issue turns on
whether ordinarily skilled artisans would be able to reasonably construe the
disputed limitations of these claims in light of the specification.

FINDINGS OF FACT
1. Claim 12 recites "[t]he system of claim 1, wherein the
DRM requesting data re-direction for said personalized
data after determining that said personalized data is not
found in a cache portion of the application server"
(App. Br. Claims App’x).
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2. The Specification discloses that the DRM can be
disposed in an application server and can be configured
to process data re-direction requests received from the
DRA and to request data re-direction for personalized
data associated with one of a particular client and a
particular client type. (Spec. 4:3-9).
3. Claim 13 recites "[t]he system of claim 12, wherein the
DRM determining if data re-direction is required for the
request based upon at least one data element selected
from the group consisting of a client identity and a
Quality of Service (QoS) rating" (App. Br. Claims
App’x).
4. The Specification indicates that a re-direction primitive
can come from a group consisting of a client identity and
a QoS rating (Spec. 5:9-11). The Specification further
discloses that “upon receipt of the qualified request from
which the client or QoS rating can be determined, the
DRM can further determine whether personalized data
pertinent to the unit work specified by the primitives
ought to be re-directed to the DRA” (Spec. 11:1-3).

PRINCIPLES OF LAW
Claims must “particularly point out and distinctly claim the subject
matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2.
The test for definiteness under this standard is whether “those skilled in the
art would understand what is claimed when the claim is read in light of the
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specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted). Also, claims do not stand
alone, but rather “must be read in view of the specification, of which they
are a part.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005).
Our reviewing court has stated that only claims not amenable to
construction or insolubly ambiguous are indefinite. Star Scientific, Inc. v.
R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008) (internal
citations and quotation marks omitted). However, when reviewing a
pending claim for indefiniteness, we employ a lower threshold of ambiguity
than that used by post-issuance reviewing courts. Ex Parte Miyazaki, No.
2007-3300, slip op. at 11 (BPAI Nov. 19, 2008) (precedential), available at
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd073300.pdf. “The
USPTO is justified in using a lower threshold of ambiguity to support a
finding of indefiniteness under 35 U.S.C. § 112, second paragraph, because
the applicant has an opportunity and a duty to amend the claims during
prosecution to more clearly and precisely define the metes and bounds of the
claimed invention and to more clearly and precisely put the public on notice
of the scope of the patent.” Id. at 12.

ANALYSIS
We begin our analysis by noting that claims “must be read in view of
the specification, of which they are a part.” Phillips, 415 F.3d at 1315. As
such, when interpreted in light of the specification, we find claims 12 and 13
are clear, unambiguous, and amenable to construction.
Claim 12 depends from independent claim 1 (FF 1). Claim 1 recites,
in pertinent part, "a data request manager (DRM) disposed in an application
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server and configured both to process data re-direction requests received
from a DRA and to request data re-direction for said personalized data
associated with said one of a particular client and particular client type."
Thus, according to the claim, and supported by the Specification, the DRM
both (1) processes data re-direction requests, and (2) requests data re-
direction for personalized data (FF 2). Claim 12, which depends from claim
1, further limits requesting data re-direction for personalized data, namely
"after determining that said personalized data is not found in a cache portion
of the application server." We find no ambiguity in this limitation when
read in light of the specification. Accordingly, claim 12 is amenable to
construction and unambiguous.
Claim 13, which indirectly depends from claim 1, likewise further
limits the DRM functionality. Claim 13 recites, in pertinent part, "wherein
the DRM determining if data re-direction is required for the request based
upon at least one data element selected from the group consisting of a client
identity and a Quality of Service (QoS) rating" (FF 3). Thus, claim 13
presents a further limitation, which is supported by the specification, on the
requesting of data re-direction requests (FF 3-4). The additional limitation is
that the DRM is requesting data re-direction requests "based upon at least
one data element selected from the group consisting of a client identity and a
Quality of Service (Qos) rating" (FF 3-4). Accordingly, claim 13 is clear,
amenable to construction, and unambiguous.
As such, ordinarily skilled artisans would not have difficulty
discerning the meaning of claims 12 and 13 in light of the language of claim
1 from which these claims depend as well as the specification. Accordingly,
claims 12 and 13 are definite under § 112. Therefore, Appellants have
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persuaded us of error in the Examiner's indefiniteness rejection of claims 12
and 13.

THE REJECTION OVER THE ADMITTED PRIOR ART AND BRENDEL
Claims 1-4, 6, 7, 9, and 10
We now consider the Examiner’s obviousness rejection of claims 1-4,
6, 7, 9, and 10 over the Admitted Prior Art and Brendel (Ans. 4-6).
Regarding representative claim 1,7 Appellants argue that (1) the Examiner
incorrectly construes the definition of “re-direction” (App. Br. 6); (2) the
cited prior art does not teach or suggest data re-direction (App. Br. 7-8); (3)
Brendel fails to teach or suggest a DRM that determines if data re-direction
is required (App. Br. 7-10); and (4) there is no motivation to combine the
Admitted Prior Art with Brendel (App. Br. 19-20).
Re-direction
Appellants argue that the Examiner’s interpretation of the recited
term “re-direct” is erroneous (App. Br. 6-7). According to Appellants, the
term would be understood by ordinarily skilled artisans to mean “to the
change the course or direction of.” Id. This meaning, Appellants contend, is
evidenced by a dictionary definition of the term. Id.
The Examiner relied on Brendel for teaching re-direction (Ans. 17).
The Examiner finds that re-direction occurs when a client request, initially
directed to the load balancer, is re-directed by the load balancer to one of the
selected servers (Id.)

7 Appellants indicate that claims 2-4, 6-7, 9-10 stand or fall with claim 1.
See App. Br. 6.
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Determining Whether Re-direction is Required
Appellants also argue that the Admitted Prior Art does not teach re-
direction, and thus, cannot make a decision regarding re-direction (App. Br.
8). Appellants further argue that the load balancer 70 of Brendel does not
make a determination as to whether re-direction is required (App. Br. 9).
Further, Appellants argue that the load balancer “always” directs the request
to one of the servers 56, 51, 52, and at no time does the path of data change
from one path to another (App. Br. 8-9).
The Examiner finds that the Admitted Prior Art does not disclose the
DRM being configured to determine if data re-direction is required (Ans. 5).
However, the Examiner finds that Brendel discloses load balancing software
running on a server which (1) determines which server should service the
data, and (2) re-directs the request to that server (Id.). Further, the Examiner
finds that the server sends the requested data directly back to the client, and
bypasses the load balancing server (Id.).

ISSUE
The issue before us, then, is whether Appellants have shown that the
Examiner erred in finding the collective teachings of the Admitted Prior Art
and Brendel teach or suggest the limitations of the independent claims. The
issue turns on (1) whether the Admitted Prior Art and Brendel teach or
suggest “re-direction” of data, and if so; (2) whether Appellants’ Admitted
Prior Art and Brendel teach or suggest a DRM that determines whether or
not re-direction is needed; and (3) whether it would have been obvious to
combine the Admitted Prior Art with Brendel.
.
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ADDITIONAL FINDINGS OF FACT
5. The term “redirect” is defined as “to change the course
of.” WEBSTER’S THIRD NEW INTERNATIONAL
DICTIONARY 1043 (1971).
6. The Specification of the present application refers to Fig.
1 as Prior Art. Referring to Fig. 1, the Specification
discloses that (1) a service request 160 travels from a
client computing device 110 to a network server 130; (2)
the application server 130 can determine from the service
request 160 that personalized data stored in network
storage 150 will be required, and can issue a data request
170 to the network storage 150; (3) the network storage
150 can respond to the data request 170 by serving the
data 180 to the application server 130; and (4) the
application server 130 can then forward the data to the
client 110 (Spec. 2:21 - 3:9; Fig. 1).
7. Figure 2 of the present application depicts data 280
traveling directly from the network storage 250 to a client
point of contact (POC) 210, without first passing through
the application server 230. (Present Appl’n, Fig. 2).
8. Figure 8 of Brendel depicts a browser 10 that connects
through Internet 66 to load balancer 70 and sends a URL
request 102 to the load balancer (Brendel, col. 10, ll. 38-
46).
9. Brendel discloses that the “[l]oad balancer 70 does not
have to be a separate, dedicated router or PC, and is
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shown as a software application running on server 56”
(Brendel, col. 10, ll. 42-44).
10. The load balancer 70 in Fig. 8 is located on server 56 and
determines which server 56, 51, 52 should service the
request (Brendel, col. 10, ll. 44-46; Fig. 8). Each server
has a local disk 58, 60, 62 (Brendel, col. 10, ll. 54-55;
Fig. 8).
11. Figure 8 depicts the load balancer 70 transferring the
request from the load balancer 70 to server 52 over TCP
state migration 120 (Brendel, col. 10, ll. 46-49; Fig. 8).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Discussing the question
of obviousness of claimed subject matter involving a combination of known
elements, KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727 (2007), explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless
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its actual application is beyond his or her skill. Sakraida
v. AG Pro, Inc., 425 U.S. 273 (1976) and Anderson's-
Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57
(1969) are illustrative—a court must ask whether the
improvement is more than the predictable use of prior art
elements according to their established functions.

Id. at 1740. If the claimed subject matter cannot be fairly characterized as
involving 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 can be based on a showing that
“there was an apparent reason to combine the known elements in the fashion
claimed.” Id. at 1740-41. Such a showing requires:
“‘some articulated reasoning with some rational
underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not
seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court
can take account of the inferences and creative
steps that a person of ordinary skill in the art
would employ.”

Id. at 1741 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

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ANALYSIS
Claims 1-4, 6, 7, 9, and 10
Re-direction
Appellants argue that to have re-direction of a course or direction,
there must be an initial course or direction (App. Br. 6). We agree with
Appellants’ definition. In support of this argument, Appellants refer to
Figure 1 of the Specification, where data 180 travels from a network storage
150 to an application server 130, and then data 190 travels from the
application server 130 to a client 110, to illustrate an initial course or
direction (FF 6). To illustrate re-direction, Appellants turn to Figure 2 and
assert that when a re-direction determination is made, data 280 is re-directed
directly to the client 210 from network storage 250 (FF 7).
Appellants argue that the initial course or direction appears in the
prior art, and is the course where data travels from the storage device to the
application server, and then from the application server to client. From our
understanding of the specification, re-direction (i.e., the new course) refers
to data that would normally travel from the application server 130 to the
network storage 150, which, instead, is routed directly from network storage
250 to the POC 210, without first passing through the application server 230
(Id.).
Brendel likewise discloses re-direction. It is important to note that
claim 1 recites "re-direction," but does not recite any limitations regarding
the beginning and end of the initial course or direction. Nor does the claim
further define the beginning and end of a "re-directed" course. In Brendel,
an initial course would involve data 120 traveling from server 56, which
includes local disk 58 to the client browser 10. See FF 10. A "re-directed"
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course would be the data 120 traveling from the server 52, which includes
local disk 62, to the client browser 10. See id. Thus, Brendel teaches re-
direction.
Determining Whether Re-direction is Required
We now turn to whether the collective teachings of the Admitted Prior
Art and Brendel teach or suggest a “DRM configured to determine if data re-
direction is required for a client data request,” as required by claim 1.
Brendel teaches a load balancer 70 that determines which server 56, 51, 52
should service the request (FF 10). Applicants argue that (1) the load
balancer 70 always directs the request to one of the servers 56, 51 52, and
(2) no determination is made (App. Br. 9; Reply Br. 9).
We agree that the load balancer 70 always directs the request 102 to
one of the servers. However, we disagree that no determination is made.
Claim 1 does not recite any basis for determining whether data re-direction
is required. It does not matter that the load balancer 70 always directs the
request to one of the servers 56, 51, 52. Even in this situation, a decision is
made when the load balancer directs the request to any one of the servers 56,
51, 52. Further, the load balancer 70 could assign the request to the server
on which it resides. See FF 10. In that case, the data re-direction would not
be required. But that, too, would be a determination.
Appellants also argue that there is no motivation to combine the
Admitted Prior Art with Brendel (App. Br. 19-20). Combining the teachings
of the Admitted Prior Art with Brendel would hardly be an improper
modification to the Admitted Prior Art as the load balancer 70 could reside
on the application server 230 of the Admitted Prior Art. Accordingly, the
load balancer 70 could distribute requests between the network storage
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device 250 and servers 56, 51, 52 that contain storage devices. Each server
of Brendel has a local disk 58, 60, 62 (FF 10), and is thus analogous to the
network storage device 250 of the Admitted Prior Art. Such a combination,
in our view, is tantamount to the predictable use of prior art elements
according to their established functions – an obvious improvement. See
KSR, 127 S. Ct. at 1740.
Therefore, for the foregoing reasons, Appellants have not persuaded
us of error in the Examiner’s obviousness rejection of representative claim 1
over the collective teachings of the Admitted Prior Art and Brendel.
Therefore, we will sustain the Examiner’s rejection of that claim, and claims
2-4, 6, 7, 9, and 10 which fall with claim 1.

OTHER REJECTIONS
We will also sustain the Examiner's obviousness rejections of (1)
claim 5 over the Admitted Prior Art, Brendel and Fitzgerald et al (Ans. 8);
(2) claims 8 and 11 over the Admitted Prior Art, Brendel and Benantar (Ans.
2, 9, 10); and (3) claims 12-15 over the Admitted Prior Art, Brendel, and
Brewer (Ans. 10-11). We find that the Examiner has established at least a
prima facie case of obviousness that Appellants have not persuasively
rebutted. Once the Examiner has satisfied the burden of presenting a prima
facie case of obviousness, the burden then shifts to Appellants to present
evidence and/or arguments that persuasively rebut the Examiner's prima
facie case. See In re Oetiker, 977 F.2d at 1445.
Appellants did not present any specific arguments pertaining to this
rejection or particularly point out errors in the Examiner’s reasoning to
persuasively rebut the Examiner's prima facie case of obviousness. See App.
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Br. 14-16. Since Appellants have not persuasively rebutted the Examiner’s
prima facie case of obviousness for claims 5, 8 and 11-15, the rejections of
these claims are therefore sustained.

THE REJECTION OVER THE ADMITTED PRIOR ART AND BREWER
Claims 1, 6, 9, and 12-15
We next consider the Examiner’s obviousness rejection of claims 1, 6,
9, and 12-15 over the Admitted Prior Art and Brewer (Ans. 10-13).
Appellants assert that the rejections of independent claims 6 and 9 and
dependent claims 12-15 stand or fall together with claim 1 (App. Br. 16).
Appellants argue the claims as a group (App. Br. 16-19). Accordingly, we
treat these rejected claims as a group, and select claim 1 as representative.
Regarding representative claim 1, Appellants argue (1) that Brewer
fails to teach a DTM that is separate from a DRM (App. Br. 17), and (2) that
there is no motivation to combine the Admitted Prior Art with Brewer (App.
Br. 19-20).
The Examiner admits that the Admitted Prior Art does not disclose (1)
the claimed DTM, and (2) the Admitted Prior Art does not disclose that the
DRM is configured to determine if data re-direction is required for a client
data request from a DRA (Ans. 12). The Examiner also finds that Brewer
discloses a storage manager, which is equivalent to the claimed DTM, that is
configured to respond to client requests and make determination as to
whether to re-direct a transaction based upon re-direction criteria (Ans. 21).

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ISSUE
The issue before us, then, is whether Appellants have shown that the
Examiner erred in finding the collective teachings of Appellants’ Admitted
Prior Art and Brewer teach or suggest the limitations of representative claim
1. The issue turns on whether the Admitted Prior Art and Brewer teach or
suggest both a DRM disposed in a server and DTM disposed in a storage
device.

ADDITIONAL FINDINGS OF FACT
12. Figure 3 of Brewer depicts (1) client devices that request
reads and writes to storage, and (2) collective storage
devices represented by block 32 (Brewer, Fig. 3; col. 18,
ll. 25-28). The storage manager causes selected data and
transfer ready frames or packets to be relabeled and re-
directed so that they are sent basically between the
storage device and the client device (Brewer, col. 18, ll.
35-39).
13. Brewer’s storage device is capable of sending status
information. For example, Fig. 2C states that the storage
device sends good status frame to the storage manager.
(Brewer, Fig. 2C). Also, Fig. 4D represents that the
storage device sends done status to the storage manager
when the last data frame has been received and stored
with no errors (Brewer, Fig. 4D).
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14. In Brewer, the term "storage manager" is interchangeable
with the word "server." See Brewer, col. 2, ll. 27-38.

ANALYSIS
Representative claim 1 requires a DRM disposed on a server that both
processes and re-directs data. Brewer discloses a storage manager, located
on a server, that relabels and re-directs transfer ready frames or packets (FF
8). As the relabeling of packets can be considered "processing" of data,
Brewer thus teaches a DRM that both processes and re-directs data. Claim 1
requires that the DRM is disposed on a server. Brewer discloses that the
storage manager is also referred to as the server (FF 14).
Thus, we find that it would have been obvious to one of ordinary skill
in the art that the storage manager or server 20 of Brewer is analogous to the
DRM of claim 1, since Brewer’s storage manager 20 is disposed in a server
and both process data requests and re-direct data. Thus, we disagree with
the Examiner that it is the storage device of Brewer that is equivalent to the
claimed DRM. Rather, it is the storage manager that is equivalent to the
claimed DRM.
Representative claim 1 also requires a DTM (1) that is disposed in a
network storage that is configured to respond to requests for personalized
data received from a DRM, and (2) that directly forwards requested
personalized data to a requesting client through a data request agent (DRA)
in a client. Brewer specifically states that the storage manager causes
selected data and transfer ready frames or packets to be relabeled and re-
directed so that they are sent basically between the storage device and the
client device (FF 8). Clearly, the storage device is configured to respond to
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requests from the storage manager (i.e., the DRM of Brewer) and that the
data transfers directly between the storage device and the client.
Further, we find that it would have been obvious to one of ordinary
skill in the art that the client has a component analagous to the DRA, as
there would have to be some component of the client that makes the requests
for "reads" and "writes" of data. Additionally, we find that it would have
been obvious to one of ordinary skill in the art that the storage device has
some component that actually sends the "good" and "done" status updates to
the storage manager. While we disagree with the Examiner that Brewer's
storage manager is equivalent to the claimed DTM, we nonetheless find that
Brewer teaches or suggests a storage device that corresponds to the claimed
DTM.
We also find that one of ordinary skill in the art would have been
motivated to combine the teachings of the Admitted Prior Art with Brewer,
as both the Admitted Prior Art and Brewer disclose retrieval of data from
network storage based upon a client request (FF 2 and 8). Brewer discloses
retrieval system that involves bypassing the storage manager when servicing
the client's request with the aim of being more efficient (FF 8). Thus, it
would have been obvious to combine the teachings of Brewer to the
Admitted Prior Art, such that the network server 130, as shown in Fig. 1 of
the Admitted Prior Art, is bypassed and the data 180 is transmitted directly
from the network storage 150 directly to the client 110. Such a combination,
in our view, is tantamount to the predictable use of prior art elements
according to their established functions – an obvious improvement. See
KSR, 127 S. Ct. at 1740.
Appeal 2008-1361
Application 10/171,504

21
Therefore, for the foregoing reasons, Appellants have not persuaded
us of error in the Examiner’s rejection of representative claim 1 over the
collective teachings of the Admitted Prior Art and Brewer. Therefore, we
will sustain the Examiner’s rejection of that claim, and claims 6, 9, and 12-
15 which fall with claim 1.

CONCLUSIONS OF LAW
Appellants have shown that the Examiner erred in rejecting claims 12
and 13 under § 112. Appellants, however, have not shown that the
Examiner erred in rejecting claims 1-15 under § 103.
DECISION
We have not sustained the Examiner’s indefiniteness rejection of
claims 12 and 13. We have, however, sustained the Examiner's obviousness
rejections with respect to all claims on appeal. Therefore, the Examiner’s
decision rejecting claims 1-15 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

CAREY, RODRIGUEZ, GREENBERG & PAUL, L.L.P.
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 3020
BOCA RATON, FL 33487