Ex Parte Cuomo et al

Patent Trial and Appeal Board

Mar 20, 2015

11675142 (P.T.A.B. Mar. 20, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GENNARO A. CUOMO, THOMAS R. GISSEL, STEPHEN
REES, and TIMOTHY J. VINCENT
____________

Appeal 2012-011905
Application 11/675,142
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J.
HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

STATEMENT OF THE CASE
Appellants’ claimed invention “relates to a method, system and
computer program product for identifying caching opportunities. (Spec. 1).
Independent claim 1, reproduced below, is representative of the claimed
invention on appeal:
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1. A method for identifying caching opportunities, the
method comprising the steps of:

[a] a computer determining a ratio of reads to updates
for data accessed from a data source and comparing the
ratio to a predetermined threshold; and

[b] responsive to the ratio exceeding the predetermined
threshold, the computer initiating caching for the data.
(Lettering and emphasis added regarding contested limitations)
REJECTIONS
A. Claims 1–3, 8–11, 15, and 16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combined teachings and suggestions of
Lubbers (U.S. Patent Pub. No. 2008/0005480 A1) and Chen et al.
(Update-Based Cache Access and Replacement in Wireless Data
Access, IEEE Transactions on Mobile Computing, Vol. 5, No. 12,
December 2006), hereinafter “Chen”. (Ans. 5).
B. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of
Lubbers, Chen, and Arakawa (U.S. Patent Pub. No. 2003/0204597
A1). (Ans. 8).
C. Claims 5 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of
Lubbers, Chen, and Couch (U.S. Patent No, 6,604,096 B1). (Ans. 9).
D. Claims 6, 7, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings and suggestions of
Lubbers, Chen, Couch, and Thomas (U.S. Patent Pub. No.
2006/0179084 A1). (Ans. 10).
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E. Claims 12–14 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Lubbers, Chen, and Thomas.
(Ans. 12).

ANALYSIS
1

We consider all of Appellants’ arguments and evidence presented.

We disagree with Appellants’ arguments with respect to all claims, and we
incorporate herein and adopt as our own: (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken and (2)
the reasons and rebuttals set forth in the Examiner’s Answer in response to
Appellants’ arguments. We incorporate such findings, reasons, and rebuttals
herein by reference unless otherwise noted. However, we highlight and
address specific findings and arguments for emphasis as follows:
Rejection A under § 103 – Claim 1
Claim 1 recites, in pertinent part:
[a] a computer determining a ratio of reads to updates for data
accessed from a data source and comparing the ratio to a
predetermined threshold; and

[b] responsive to the ratio exceeding the predetermined
threshold, the computer initiating caching for the data.

Regarding the contested ratio limitation [a], Appellants focus on
Lubbers and urge that the stream count and time parameters described in

1
Appellants filed a Notice of Appeal on January 19, 2012. The date of
filing the Notice of Appeal determines which set of rules applies to an ex
parte appeal. If a Notice of Appeal is filed prior to January 23, 2012, then
the 2004 version of the Board Rules last published in the 2011 edition of
Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1) applies to the
appeal. See also MPEP 1220, Rev. 8, July 2010.
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Lubbers (¶ 7) do not teach the claimed ratio. (App. Br. 10–11). Appellants
further aver that Lubbers’ “‘ratio’ is not with respect to actual data that is
being accessed, as claimed.” (App. Br. 12). However, we find the
secondary Chen reference (§ 4.1, p. 1738) teaches or suggests the claimed
“determining a ratio of reads to updates for data accessed from a data
source,” as recited in limitation [a]:
4.1 Least Access-to-Update Ratio (LA2U)
When an accessed object satisfies the replacement policy, it will
be cached. The larger the access rate of the object is, the more
frequently the object will be accessed. On the other hand, the
cached object then becomes invalid. If the access rates of all
objects are the same, similarly to the LFU, a replacement policy
can be proposed to cache the least frequently updated objects.
Therefore, access and update rates are two opposite factors. It
would be best if a replacement policy caches the more-
frequently-accessed but less-frequently-updated objects. This
can be done by designing a replacement policy using a
measurement which is proportional to the access rate but
inverse-proportional to the update rate. The simplest form
gives the least access-to update ratio replacement policy.
The proposed least access-to-update ratio replacement
policy (LA2U) chooses the object with the least access-to-
update ratio not to be cached among the cached objects and the
object being accessed.

We further find the secondary Chen reference (p. 1738) teaches or
suggests the claimed “comparing the ratio to a predetermined threshold” as
recited in limitation [a]:
The replacement policy compares the ratios among all the
objects cached at the client with the accessed object. If the
object with the least access-to-update ratio is not the access
object, it will be evicted and replaced with the object requested;
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otherwise, the accessed object will not be cached and there will
be no change in the cache.
(Emphasis added).
The Examiner points to Chen both in the statement of rejection (Ans.
6) and in the response to arguments (Ans. 14). By focusing on Lubbers,
Appellants have failed to address the Examiner’s specific findings,
which are based on the combined teachings and suggestions of Lubbers and
Chen. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Regarding Appellants’ additional contention that Lubbers’ “threshold
parameter adjustment does not describe determining characteristics of ‘data’
being accessed in order to determine whether to initiate caching for such
same ‘data’, as claimed” (App. Br. 12), we agree with the Examiner’s
broader claim interpretation:
Under the broadest reasonable interpretation "data" is plural [in]
nature. With this understanding, it is clear that the claim merely
requires data "accessed from a data source" and subsequently
caching the data. Lubbers clearly teaches this as accessing data
from a data source (Fig. 1 item 100, paragraph 20), and
subsequently caching the data — data moves from storage
device 100 to cache memory (paragraph 34).
(Ans. 14–15).
Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted). We also agree with the Examiner’s additional
findings regarding Chen regarding the argued same data (Ans. 15):
[E]ven assuming arguendo that Lubbers does not cache the
"same" data and the claim requires such a feature; it is
submitted this is taught by Chen because Chen clearly discloses
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that caching is associated with the data item for which the read-
to-update ratio is calculated (see Chen section 4 - caching "an
object"). Therefore the combination of Lubbers and Chen
teaches caching "same data".
Even assuming, arguendo, the Examiner’s proffered combination may
not initiate caching for the same data within the meaning of claim 1 (as
repeatedly urged by Appellants), we nevertheless find initiating caching for
the same data would have been a predictable result well within the
knowledge of an artisan, and therefore, would have been obvious over the
cited combination of Lubbers and Chen.
Appellants further contend the Examiner has improperly combined the
references:
Still further with respect to Claim 1, it is urged that a person of
ordinary skill in the art would not have been motivated to
modify the teachings of Lubber with those of Chen since such
modification would eviscerate the very foundation of the
Lubbers invention. Specifically, Lubbers is keen on providing a
system that caches/retains non-requested speculative data in an
effort to accommodate future requests for such data (Lubbers
paragraph [0001], lines 3-5, paragraph [0035]). If Lubbers
where modified in accordance with Chen to use data
characteristics pertaining to data that is already being accessed
and processed, then this desire to accommodate future requests
for non-requested data would no longer exist since the
specialized processing would be with respect to currently-
accessed data per such a modification - and such future-request
accommodation is the fundamental premise that Lubbers seeks
to provide.
(App. Br. 13) (emphasis added).
However, our reviewing court guides the artisan is not compelled to
blindly follow the teaching of one prior art reference over the other without
the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip
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Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). In support of the proffered
combinability of the cited references, the Examiner points to Lubbers (¶ 73):
[Appellants’] suggestion ignores Lubber's explicit disclosure
that caching is adjusted using [hit] ratios or other performance
measures (paragraph 73). Thus incorporating the read-to-update
ratio taught by Chen would not eviscerate Lubbers in any way
as suggested by applicant. Instead, this is merely the
combination of an element (i.e. a ratio) that Lubbers itself
specifically contemplates using for the purpose of cache
management.
(Ans. 16).
The Supreme Court guides the obviousness “analysis need not seek
out precise teachings directed to the specific 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.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007).
Here, we are not persuaded the Examiner’s proffered combination of
Lubbers and Chen would have been uniquely challenging or difficult for one
of ordinary skill in the art, or represents an unobvious step over the prior art.
See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418).
On this record, we are not persuaded of error regarding the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness regarding representative claim 1. Accordingly, we sustain
rejection A of representative claim 1.
Although Appellants additionally present arguments for claims 8 and
9 and grouped claims 10 and 11, we have reviewed the record and are not
persuaded the Examiner erred. See Ans. 16–18. Thus, regarding
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independent claim 8, we agree with the Examiner that “[t]he purpose of a
threshold as taught by Lubbers (paragraph 73), is to make a decision. Not
caching when the threshold point is not reached is the natural conclusion to
the teaching of caching when the point is reached.” (Ans. 16–17). See KSR,
550 U.S. at 418. Regarding the registering of instructions contested in claim
9, we find the preponderance of evidence (Lubbers, ¶¶ 36, 41, and 78)
supports the Examiner’s findings (Ans. 17):
Lubbers discloses accesses are "registered" by recording recent
and current accesses (paragraphs 36, 41). This leads to
"notification" responsive to a ratio exceeding the threshold
because the system initiates caching when threshold is reached
(paragraph 78). It is submitted the ordinary definition of
"register" is to record in a list. Thus by recording accesses,
Lubbers teaches or suggests "registering" as recited by the
claim. Furthermore, by caching, the system of Lubbers
performs "notification" of the threshold being exceeded because
the action of caching is a notification that is in response to the
threshold being exceeded.
Likewise, we agree with and adopt the Examiner’s responsive
arguments regarding the contested claim 10 limitation of the “notification
responsive to the ratio for the data accessed from the data source exceeding
the predetermined threshold.” The Examiner finds the action of performing
a “data pull” (Lubbers, ¶ 78; see also ¶¶ 55, 73–74) would have taught or
suggested the contested notification. (Ans. 17–18). Although Appellants
urge “speculative prefetching is initiated without regarding to program
instruction configuration” (Reply Br. 6), Appellants fail to cite to a specific
portion of the Lubbers reference in support.
Because Appellants do not present separate arguments for claims 2, 3,
15, and 16, and for the reasons discussed above, we find the preponderance
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of evidence supports the Examiner’s rejection A of claims 1–3, 8–11, 15,
and 16. Accordingly, we sustain rejection A of these claims.
Although Appellants raise additional arguments (App. Br. 16–18)
urging the patentability of the dependent claims rejected under rejections B–
D, we find the Examiner has rebutted each of those arguments in the Answer
by a preponderance of the evidence. See Ans. 17–21. Therefore, we adopt
the Examiner’s findings and underlying reasoning, which we incorporate
herein by reference.
Regarding remaining rejection E of dependent claims 12–14 and 20,
Appellants contend the Examiner’s rejection of these claims is in error for
the same reasons previously discussed. (App. Br. 20–21). Because we are
not persuaded the Examiner erred regarding rejections A–D, we are not
persuaded of error regarding rejection E. Consequently, we have found no
reversible error in the Examiner’s rejections A–E of all claims on appeal.
2

2
In the event of further prosecution, we direct the Examiner’s attention to
claims 15–20, which recite a “computer program product . . . comprising a
computer-readable tangible storage device.” (Emphasis added). Under our
jurisprudence, the scope of the recited “computer-readable tangible storage
device” appears to encompass transitory media such as signals or carrier
waves. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013)
(precedential) (holding recited machine-readable storage medium ineligible
under § 101 since it encompasses transitory media). Here, the recited
"computer-readable tangible storage device" is not claimed as non-
transitory, and the originally-filed Specification does not expressly and
unambiguously disclaim transitory forms, such as signals, via a definition or
disclaimer. See Spec. 20, last three lines: “Preferably, the medium can
include an electronic, magnetic, optical, electromagnetic, infrared, or
semiconductor system (or apparatus or device) or a propagation medium.”
Therefore, the "computer-readable tangible storage device" of claims 15–20
is not limited to non-transitory forms, and appears ineligible under § 101.
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CONCLUSION
On this record, by the preponderance of the evidence, Appellants have
not advanced substantive arguments or provided additional evidence which
persuades us of reversible error.
3
Therefore, we sustain the Examiner’s
rejections A–E of all claims on appeal.

DECISION
We affirm the Examiner’s decision rejecting claims 1–20 under § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

rwk

3
See Evidence Appendix: “This appeal brief presents no additional
evidence.” (App. Br. 28).