Ex Parte Butler et al

Board of Patent Appeals and Interferences

May 22, 2012

11493006 (B.P.A.I. May. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK HENRY BUTLER, DAVID MURRAY
BANKS, and SCOTT ALAN STANLEY
____________________

Appeal 2010-003157
Application 11/493,006
Technology Center 2100
____________________

Before: MAHSHID D. SAADAT, ERIC S. FRAHM, and TREVOR M.
JEFFERSON, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
11 and 13. Claim 12 has been canceled. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm in part.
Introduction
The claims are directed to a method of retrieving data from a data
repository, and the software and apparatus relating thereto. Claims 1, 4 and
5 are reproduced below with the disputed limitations in italics, and are
illustrative of the claimed subject matter:
1. A method of retrieving data from a data repository,
comprising:
submitting an initial query;
receiving a page of results to the query, the page
containing a sub-set of the results to the initial query;
receiving an indication of the total number of results to
the initial query;
receiving an indication of the position of the page's
results within the total results to the query; and
receiving an indication of the range of the results for
which subsequent queries will return results consistent with the
initial query.

4. A method as claimed in claim 1, wherein the indication
of the range of results comprises an indication of a first and last
result within the total series of results corresponding to cache
content of a server.

5. A method of providing data from a data repository to a
client application, comprising:
receiving an initial query from a client application;
obtaining a first set of results from the data repository in
response to the initial query;
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if the total number of results of the first set is greater
than a predetermined number for provision as a single page:
storing a second set of results in memory, the
second set of results being greater in number than the
predetermined number and less than or equal to the total
number of results of the first set;
providing a page of results to the initial query to
the client application, the page containing the
predetermined number of the results;
providing an indication of the total number of
results to the initial query to the client application;
providing an indication of the position of the
page's results within the set of results; and
providing an indication of the range of the results
for which subsequent queries will return results
consistent with the initial query, the range of results
comprising the second set of results.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Pant
Bastawala
US 6,012,053
US 6,973,457 B1
Jan. 4, 2000
Dec. 6, 2005

Rejections
The Examiner made the following rejections, from which Appellants
seek our review:
Claim 1 - 4 stand rejected under 35 U.S.C §102(b) as being
anticipated by Pant. (Ans. 3).
Claims 5 -11 and 13 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Bastawala in view of Pant. (Ans. 5).

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Appellants’ Contentions
With respect to claims 1-4, 5-11 and 13, Appellants contend that Pant
fails to disclose the limitation of “receiving an indication of the range of the
results for which subsequent queries will return results consistent with the
initial query.” (App. Br. 10-11, 16-17). Appellants also argue that claim 4
is patentable because Pant does not disclose the limitation “the indication of
the range of results comprises an indication of a first and last result within
the total series of results corresponding to cache content of a server” (App.
Br. 12).
Regarding claims 5 and 13, Appellants contend that Bastawala “fails
to disclose . . . a determination of whether the total number of results of the
first set is greater than a predetermined number for provision as a single
page.” (App. Br. 15). Additionally, Appellants contend that because of this
missing limitation, Bastawala “cannot disclose any of the claimed features
that follow the . . . determining step.” (App. Br. 16). Thus, Appellants
conclude that Bastawala “fails to disclose that a second set of results are
stored in memory if the total number of results of the first set is greater than
a predetermined number for provision as a single page” and “to disclose that
a determination as to whether the total number of results is greater than the
predetermined number for provision as a single page is made in the first
place.” (App. Br. 16).
Appellants argue claims 1-3 as a group relying on claim 1 (App. Br.
9-11), and apply the same argument to claims 4, 5 and 13 (App. Br. 17).
Appellants argue separately for the patentability of claim 4. (App. Br. 12).
Finally, Appellants argue claims 5-11 and 13 together relying on the
arguments provided for claim 5. (App. Br. 12-18). We therefore decide this
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appeal based upon representative claims 1, 4 and 5. See 37 C.F.R.
§ 41.37(c)(1)(vii). Only those arguments actually made by Appellants in the
Appeal Brief and Reply Brief are considered. See id.
Issues
1. Does Pant disclose “receiving an indication of the range of the
results for which subsequent queries will return results consistent with the
initial query,” as required in claim 1?
2. Does Pant disclose that the “indication of the range of results”
corresponds to “an indication of a first and last result within the total series
of results corresponding to cache content of a server,” as required in claim
4?
3. Does Bastawala disclose the “determination of whether the total
number of results of the first set is greater than a predetermined number for
provision as a single page” and the related limitations that follow in claim 5?

ANALYSIS
With respect to Pant, we have reviewed the Examiner’s rejection in
light of Appellants’ arguments that the Examiner has erred. We agree with
the Examiner’s conclusions regarding claims 1 and 5.
Claim 1
Appellants contend that Pant fails to anticipate the claims at issue
because it does not disclose “receiving an indication of the range of the
results for which subsequent queries will return results consistent with the
initial query.” (App. Br. 10-11, 16-17). The Examiner disagreed finding
that Appellants’ specification defined subsequent query as used in the claims
to include the range of results that could not fit in a display area such as a
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page or window. (Ans. 12; see Ans. 9-10 (discussing “subsequent inquiry”
as used in ¶60 of Appellants’ Specification)).
We agree with the Examiner. Pant discloses search query display
results that correspond to the claims where it displays a range of results and
shows an indication of the total range. (Ans. 4, 9). The Examiner correctly
found that “Pant teaches displaying of search result that include result's
range, current display range, total number of search result, and query
refinement menu.” (Ans. 9 (citing Pant Abstract, Figures 7-9, and col. 13, ll.
9-25)). Pant teaches providing a range of results, giving the total range
displayed and the total number of search results returned by the query. (Pant
Figs. 7-9, and col. 13, ll. 9-25).
Appellants’ arguments that Pant does not disclose the “range of the
results for which subsequent queries will return results consistent”
limitation, ignores that, in Pant, such a range corresponds to the total number
of search results. Stated differently, Pant discloses a case where the
subsequent query that returns consistent results is equivalent to the total
number of search results disclosed in Pant. Thus, Appellants’ argument that
Pant does not disclose “receiving an indication of the range of the results for
which subsequent queries will return results consistent with the initial
query” is unpersuasive.
We are also not persuaded by Appellants’ argument with respect to
claim 1 that Pant “fails to disclose that the number of results retrieved is
based upon the cache size.” (Reply Br. 6). Although Appellants’
Specification discloses a range of results relying on the cache content of a
server (Spec. ¶60), Appellants’ claim 1 is not so limited. Tellingly, the term
cache does not appear in the claim. Appellants’ argument that claim 1
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requires that the result retrieved be based on the cache size is not
commensurate with the scope of claim 1, and for that reason, does not
demonstrate error in the Examiner’s rejection of claim on that basis. See In
re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the
claims cannot be relied upon for patentability).
The broadest reasonable interpretation of claim 1 does not require
results that are based on the size of the cache. Thus, we find that the
disclosure in Pant where the total number of search results is shown (Pant
Fig. 7), meets the subsequent query limitation in claim 1 and sustain the
Examiner’s rejection on that basis for claim 1, as well as for claims 2 and 3
falling therewith.
Claim 4
With respect to dependent claim 4, however, we agree with
Appellants’ contentions. (App. Br. 12; Reply Br. 6-7). Unlike claim 1
discussed above, claim 4 expressly states that the “indication of the range of
results” corresponds “to cache content of a server.” We agree that the Pant
reference alone fails to disclose that the total number of search results as
found in Pant uses or discloses that this number is equivalent to the contents
of a cache server. Furthermore, the Examiner’s Answer fails to point out
any portion of Pant that supports the “cache content of a server” sufficient to
anticipate the limitations of dependent claim 4. (Ans. 10). Accordingly, we
do not sustain the Examiner’s rejection of claim 4 as anticipated by Pant.
Claim 5
Finally, with respect to Bastawala as applied to claim 5, we have
further reviewed the Examiner’s rejection in light of Appellants’ arguments
that the Examiner has erred in finding that Bastawala disclosed the
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determination limitation of claims 5. We agree with the Examiner’s findings
and conclusions regarding the teachings of Bastawala. (Ans. 12). In
particular, we agree with the Examiner’s finding that Bastawala teaches
limitations of displaying results based on the size of the cache and total
results returned from a query. (Ans. 11). Contrary to Appellants’
contentions that Bastawala “disclose[s] that a determination of whether a
total number of results of a first set is greater than a predetermined number
for provision as a single page is made” (Reply Br. 8 (emphasis added)), we
agree with the Examiner that the size of the limiting cache in Bastawala
operates as the predetermined number limitation in claim 5. (see Ans. 10, 11
(stating that “Bastawala teaches caching and displaying of result set is based
upon the size of the cache size and total result set.”)).
Appellants’ arguments that Bastawala merely discards results outside
of the predetermined number (Reply Br. 7) are based on reading Bastawala
too narrowly. Bastawala discloses that some or all of the result set may be
cached in client cache or server cache. (Bastawala col. 2, ll. 63-65). Thus,
we agree with and adopt the Examiner’s findings regarding Bastawala (Ans.
11-12) and sustain the Examiner’s rejection of claim 5 over Bastawala and
Pant, and of claims 6-11 and 13 falling therewith.

CONCLUSIONS
We conclude that the Examiner did not err in finding that Pant
discloses the “subsequent query” limitations of claim 1 and 4 and that
Bastawala in combination with Pant discloses the “determination”
limitations of claims 5. On the record before us, however, we conclude that
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the Examiner erred in finding that Pant discloses the “cache content of a
server” limitation of claim 4.

DECISION
For the above reasons, the Examiner’s decision rejecting claims 1 - 3
and 5 -11 and 13 is affirmed. The Examiner’s decision rejecting claim 4 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)(1)(iv) (2009).

AFFIRMED-IN-PART

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