Ex Parte Cheng et al

Board of Patent Appeals and Interferences

May 16, 2012

10322101 (B.P.A.I. May. 16, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/322,101 12/17/2002 Michael Cheng GB920020031US1 4816
50170 7590 05/16/2012
IBM CORP. (WIP)
c/o WALDER INTELLECTUAL PROPERTY LAW, P.C.
17330 PRESTON ROAD
SUITE 100B
DALLAS, TX 75252
EXAMINER
PATEL, DHAIRYA A
ART UNIT PAPER NUMBER
2451
MAIL DATE DELIVERY MODE
05/16/2012 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 MICHAEL CHENG, STEPHEN JAMES COCKS,
ROBERT HOWARD HIGH JR., and IAN ROBINSON
____________________

Appeal 2009-013017
Application 10/322,101
Technology Center 2400
____________________

Before KRISTEN L. DROESCH, KALYAN K. DESHPANDE, and DAVID
M. KOHUT, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE1
The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-33, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

The Appellants invented the handling of time out and communication
failures in Client/Server requests. Specification 1:4-7.
An understanding of the invention can be derived from a reading of
exemplary claims 1 and 10, which are reproduced below [bracketed matter
and some paragraphing added]:
1. A method for handling client/server requests by a client
process, the method comprising:
[1] intercepting a request from a client application, said
request relating to a target service which provides an operation;
[2] adding a client type identifier, indicating a client type for
said client process, to data to be flowed with said request;
[3] intercepting a response to said request, said response
including a behavior characteristic parameter, associated with
said client type identifier, for said operation, said behavior
characteristic parameter indicating whether or not multiple
invocations of said operation will yield the same result; and
[4] obtaining said behavior characteristic parameter from
said response.

10. A method for handling a client/server request by a server process,
the method comprising:
[1] intercepting a request, from a client process, for a target service
to perform an operation;

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jan. 7, 2009) and the Examiner’s Answer (“Ans.,” mailed Mar. 3,
2009).
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[2] obtaining a client type identifier indicating a client type for said
client process from said request;
[3] receiving a request from said target service to obtain
information which enables said target service to behave according to a
behavior characteristic parameter for said operation and associated
with said client type identifier, said behavior characteristic parameter
indicating whether or not multiple invocations of said operation will
yield a same result; and
[4] returning said information to said target service.

REFERENCES
The Examiner relies on the following prior art:
Overton US 7,103,640 B1 Sep. 5, 2006

REJECTION2,3
Claims 1-33 stand rejected under 35 U.S.C. §102(e) as being
anticipated by Overton.

ISSUE
The issue of whether the Examiner erred in rejecting claims 1-33
under 35 U.S.C. § 102(e) as being anticipated by Overton turns on whether
Overton describes a “behavior characteristic parameter indicating whether or
not multiple invocations of said operation will yield the same result,” recited
by independent claims 1, 6, 10, 12, 17, 21, 23, 28, and 32.

2 The previously asserted rejection of claims 1, 6, 8-13, 15-17, 19-23, 25-27,
and 30-33 under 35 U.S.C. 112, first paragraph, as failing to comply with the
written description requirement has been withdrawn. Ans. 10.
3 The previously asserted rejection of claims 3, 4, 5, 30, and 31 under 35
U.S.C. 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the Appellants regard
as the invention has been withdrawn. Ans. 10.
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ANALYSIS
Claims 1, 6, 12, 17, 23, and 28
The Appellants first contend that Overton fails to describe that a
response to a behavior characteristic parameter that is associated with a
client type identifier that was sent in the original request, where the behavior
characteristic indicates whether or not multiple invocations of said operation
will yield the same result, as required by limitation [3] of claim 1 and as
recited by independent claims 6, 10, 12, 17, 21, 23, 28, and 32. App. Br. 14-
19. The Appellants’ argument turns on the metes and bounds of the claim
limitation and, as such, we must first turn our attention to claim construction.
Claim construction is an issue of law we review de novo. Cordis
Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009).
Claim 1 requires, in part, a response to a request where the response includes
a behavior characteristic parameter, associated with the client type identifier
for said operation. The behavior characteristic parameter further indicates
whether or not multiple invocations of said operations will yield the same
result. However, the behavior characteristic parameter is nothing more than
a value included in the response and does not affect the functionality of the
claimed method of handling requests with responses. That is, the method is
not affected, altered, or changed based on the value of the parameter. As
such, the behavior characteristic parameter is nothing more than
nonfunctional descriptive material. Nonfunctional descriptive material
cannot render nonobvious an invention that would have otherwise been
obvious. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack,
703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not
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functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability).
Therefore, limitation [3] of claim 1 is construed to require a response
to a request that includes a parameter. Independent claims 6, 12, 17, 23, and
28 require the same nonfunctional descriptive material and therefore are
similarly construed to only require a response to a request that includes a
parameter. Independent claims 10, 21, and 32 each recite the additional
limitation that requires the “target service to behave according to a behavior
characteristic parameter” that distinguish their analysis from that of claims 1,
6, 12, 17, 23, and 28. This distinction and the analysis of claims 10, 21, and
32 are discussed in detail infra.
As found by the Examiner, Overton describes a network distributed
tracking protocol (NDTP), that includes (1) identification strings for
specifying the identity of an entity in the distributed data collection, and (2)
location strings for specifying network locations for data associated with an
entity. Overton 2:15-19 and Ans. 11-13. Requests are sent by a client and a
corresponding response is retuned by a server. Overton 6:33-34. Each
request includes a request identifier and the response returns this request
identifier. Overton 6:40-42. The response modifies the identifier to add a
location, delete a location, get all locations, or provide a redirect instruction.
Overton 6:46-53 and Ans. 11-13. That is, the response adds or modifies a
parameter based on the request. As such, Overton describes limitation [3] of
claim 1 and as it is similarly recited in independent claims 6, 12, 17, 23, and
28.

Claims 2, 7, 13, 18, 24, and 29
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The Appellants contend that Overton fails to describe that the request
is a request to obtain a location of a target service. App. Br. 19-20. We
disagree with the Appellants. As discussed supra, the response includes a
location that is added or deleted from the request identifier. Overton 6:46-53
and Ans. 13-14.
The Appellants further contend that Overton teaches that the request is
for the location of data, not for a “target service” as claimed. App. Br. 20.
We disagree with the Appellants. The Examiner construed the term “target
service” to encompass a data/repository server, where the service is fetching
requested data, as described by Overton. Ans. 13-14. The Appellants have
failed to provide any rationale or evidence to illustrate why the Examiner’s
claim construction is either unreasonable or inconsistent with the
Specification. As such, we agree with the Examiner and accordingly adopt
the Examiner’s findings of fact and conclusions.

Claims 3, 8, 10, 14, 19, 21, 25, 30, and 32
As discussed supra, the Appellants contend that Overton fails to
describe a response or request from the target service that includes a
“behavior characteristic parameter indicating whether or not multiple
invocations of said operation will yield a same result,” as per claims 10, 21,
and 32. App. Br. 14-19. Here we agree with the Appellants. In claims 1, 6,
12, 17, 19, 23, and 28 we construe a “behavior characteristic parameter” to
be nothing more than nonfunctional descriptive material and therefore not
required by the claims. However, independent claims 10, 21, and 32 further
require the request “enables said target service to behave according to a
behavior characteristic parameter of said operation.” This limitation
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functionally relates the “behavior characteristic parameter” to the method of
handling requests. As such, this term is afforded patentable weight in claims
10, 21, and 32.
While Overton describes including a parameter in a response or
request from the target service, where the parameter is the request identifier
with a location (Overton 6:40-53 and Ans. 11-13), Overton fails to describe
a “behavior characteristic parameter indicating whether or not multiple
invocations of said operation will yield a same result” such that the request
“enables said target service to behave according to a behavior characteristic
parameter for said operation.” The Examiner argues that Overton describes
idempotent operations, where the multiple invocations of the add location
and delete location operations yield the same result. Ans. 11-13 and
Overton 6:54-63. However, Overton fails to describe a parameter in a
request or response that indicates whether an operation is idempotent. As
such, we will not sustain the rejection of claims 10, 21, and 32.
The Appellants also contend that the second request is processed in
accordance with a behavior characteristic parameter received in a response
to a first request, as per dependent claims 3, 8, 14, 19, 25, and 30. App. Br.
20-22 and 25-27. We agree with the Appellants. Again, independent claims
1, 6, 12, 17, 23, and 28 recite a “behavior characteristic parameter” as
nonfunctional descriptive material. However, claims 3, 8, 14, 19, 25, and 30
functionally relate the “behavior characteristic parameter” to the method of
handling requests by requiring the processing of a request according to the
behavior characteristic parameter. As discussed supra, Overton fails to
describe a behavior characteristic parameter. As such, we will not sustain
the rejection of claims 3, 8, 14, 19, 25, and 30. Since this issue is dispositive
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as to the rejections against these claims, we need not reach the remaining
arguments raised by the Appellants against these rejections.

Claims 4, 5, 9, 11, 15, 16, 20, 22, 26, 27, 31, and 33
Dependent claims 4, 5, 15, 16, 26, and 27 incorporate the limitations
of claims 3, 14, and 25 that we found that Overton fails to describe supra.
Since this issue is dispositive as to the rejections against these claims, we
need not reach the remaining arguments raised by the Appellants against
these rejections. As such, we do not sustain the rejection of claims 4, 5, 15,
16, 26, and 27.

CONCLUSION OF LAW
The Examiner did not err in rejecting claims 1, 2, 6, 7, 12, 13, 17, 18, 23,
24, 28, and 29 under 35 U.S.C. § 102(e) as being anticipated by Overton.
The Examiner erred in rejecting claims 3-5, 8-11, 14-16, 19-22, 25-27,
and 30-33 under 35 U.S.C. § 102(e) as being anticipated by Overton.

DECISION
To summarize, our decision is as follows.
 The rejection of claims 1, 2, 6, 7, 12, 13, 17, 18, 23, 24, 28, and 29
under 35 U.S.C. § 102(e) as being anticipated by Overton is sustained.
 The rejection of claims 3-5, 8-11, 14-16, 19-22, 25-27, and 30-33
under 35 U.S.C. § 102(e) as being anticipated by Overton is not
sustained.

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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) (2010).

AFFIRMED-IN-PART

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