Ex Parte Desai

Patent Trial and Appeal Board

Jun 27, 2013

10426824 (P.T.A.B. Jun. 27, 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.
10/426,824 04/29/2003 Arun K. Desai 50277-2202 5878
42425 7590 06/28/2013
HICKMAN PALERMO TRUONG BECKER BINGHAM WONG/ORACLE
1 Almaden Boulevard
Floor 12
SAN JOSE, CA 95113
EXAMINER
BILGRAMI, ASGHAR H
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
06/28/2013 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 ARUN K. DESAI
____________

Appeal 2010-010500
Application 10/426,824
Technology Center 2400
____________

Before DENISE M. POTHIER, JENNIFER L. McKEOWN, and
DANIEL N. FISHMAN, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the Examiner’s rejection
of claims 1, 8, 12-27, 34, and 36-63. Claims 2-7, 9-11, 28-33, and 35 have
been canceled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Appellant’s invention is directed to an apparatus and method of
communicating between an application and a server including, on a client
side, establishing a connection pool to the server. See Abstract.
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Application 10/426,824

2
Claim 1 is illustrative and is reproduced below, with key disputed
limitations emphasized:
1. A method of communicating between an application
executing on a computer system and a server, comprising:
on a client side, a client-side application establishing a
connection pool to the server,
wherein the connection pool includes a set of
physical connections from the connection pool to the
server,
wherein the server is a database server, and
wherein the client-side application is a database
application; and
in response to a request issued by a client-side entity to
communicate with the server, the client-side application using
one physical connection in the connection pool to service said
request, wherein the connection was established with said
server prior to said request.

THE REJECTIONS
1

The Examiner rejected claims 1, 8, 12-27, 34, and 36-63 under 35
U.S.C. § 102(e) as anticipated by Bhogi (US 2004/00884l3 A1; issued May
6, 2004). Ans. 3-8.
The Examiner rejected claims 1, 8, 12-27, 34, and 36-63 under 35
U.S.C. § 102(e) as anticipated by Van Watermulen (US 6,604,046 B1;
issued Aug. 5, 2003). Ans. 3-8.

THE ANTICIPATION REJECTION BASED ON BHOGI
Appellant contends that Bhogi does not qualify as prior art since
Appellant evidenced a date of invention before Bhogi’s effective filing date.

1
The rejection of claims 51 and 52 under 35 U.S.C. 112, second paragraph
has been withdrawn and therefore is not before us on appeal. See Ans. 35.
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Application 10/426,824

3
App. Br. 5-11. In particular, Appellant contends that the submitted
declaration and supporting exhibits sufficiently establish that the claimed
invention was actually reduced to practice before Bhogi’s filing date.
App. Br. 9-10; Reply Br. 2-4. On the other hand, the Examiner finds that the
declaration and exhibits submitted are insufficient. Ans. 20-27.

ISSUE
Has Appellant presented sufficient evidence to establish actually
reducing the claimed invention to practice prior to November 4, 2002 (the
effective filing date of Bhogi)?

FINDINGS OF FACT
1. The filing date of the present application is April 29, 2003.
2. Bhogi was filed November 4, 2002.
3. The Appeal Brief’s Evidence Appendix includes an inventor
Declaration under 37 C.F.R. § 1.131 (hereinafter, “Desai Declaration”) and
four Exhibits. App. Br. Ev. App’x.
4. The Desai Declaration identifies Exhibit 1 as Web Invention
Disclosure Form and Exhibit 2 as “Multithreaded Applications,” Pro*C/C++
Precompiler Programmer’s Guide, Release 9.2 (hereinafter, “Precompiler
Programmer’s Guide”). Desai Declaration at ¶ 4. Exhibits 3 and 4 are
excerpts of Exhibit 2. See App. Br. 27; Reply Br. 4 and Ans. 20.
5. The publication date of the Precompiler Programmer’s Guide is
March 2002. See Exhibit 3.
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Application 10/426,824

4
6. The Desai Declaration includes claim charts for independent
claims 1 and 24 providing a correlation between the claim limitations and
the supporting exhibits. See Desai Declaration at ¶ 4.
7. The Desai Declaration identifies that an implementation of the
claimed invention was incorporated into the 9iR2 Oracle
TM
database system
product and was released as a working product prior to the effective filing
date of Bhogi. See Desai Declaration at ¶ 3.

ANALYSIS
Based on this record, we find that Bhogi does not qualify as prior art.
Namely, we are persuaded that the submitted declaration and evidence is
sufficient, in character and weight, to establish that the Appellant actually
reduced to practice the claimed invention prior to the effective filing date of
Bhogi.
In order to establish actual reduction to practice, Appellant must show
that the invention existed and worked for its intended purpose. In re Asahi
America, Inc., 68 F.3d 442, 445 (Fed. Cir. 1995) (citations omitted); see also
MPEP § 715.07(III).
Here, the Examiner finds that the Appellant submitted evidence does
not adequately disclose the claimed invention. In particular, the Examiner
states that:
The evidence presented by the applicant in exhibit 4 merely
talks [to] the use of connection Pool in a multithreaded
environment whereas on the contrary the claimed limitation
states: "in response to a request issued by a client-side entity to
communicate with the server, a client side application using one
physical connection in the connection pool to service said
request, wherein the connection was established with said
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Application 10/426,824

5
server prior to said request". Therefore the evidence submitted
is insufficient and does not correlate to the claim functionality
as claimed and is thus insufficient to establish "conception" and
"reduction to practice" of the invention prior to the effective
date of Bhogi.

Ans. 26-27 (emphasis in original).

To the contrary, the cited portion of Exhibit 2 (which the Examiner
mistakenly refers to as “exhibit 4”) expressly describes these features. App.
Br. 9-11. For example, as Appellant points out, Case 1 describes that “[i]f a
physical connection is available (among the already opened connections), a
new request will be served by this connection." App. Br. 10 (citing Exhibit
2, p. 18 of 29). Appellant furthers outlines the correspondence between the
claimed features and the Exhibit 2 disclosure. See App. Br. 10-11.
The Examiner also finds that “Applicant has failed to provide any
evidence of testing which shows that the invention was complete and
worked for its intended purpose or any evidence which shows that the
claimed method was actually performed prior to the critical date of
November 4, 2002.” Ans. 26-27. We disagree.
Appellant, through the Desai Declaration, states that an
implementation of an embodiment of the claimed invention was tested and
worked for its intended purpose. Desai Declaration at ¶ 4. Notably, these
statements are supported by further factual statements and evidence. In
particular, Appellant identifies that the implementation of the claimed
invention was incorporated into the 9iR2 Oracle
TM
database system product
and was released as a working product prior to the effective filing date of
Bhogi. See Desai Declaration at ¶ 3 (emphasis added). While Appellant
does not provide a detailed description of the testing conducted on the
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Application 10/426,824

6
implementation of the invention, the statements that the implementation of
the claimed invention was incorporated into a commercially available
working product, in conjunction with the Precompiler Programmer’s Guide
including corresponding descriptions of the claimed limitations as identified
in the claim chart, demonstrate that the claimed invention actually existed
and worked for its intended purpose. See Exhibits 2 and 3.
We also disagree with the Examiner that this evidence is insufficient
to predate Bhogi because the Appellant fails to give a clear explanation of
the exhibits and fails to point out exactly what facts are established and
being relied upon. Here, Appellant identifies each supporting exhibit in the
Desai Declaration and provides a claim chart identifying where support for
each claim limitation for independent claims 1 and 24 can be found in
supporting Exhibits 1 and 2.
Therefore, based on the evidence before us, we find that Appellant
provided sufficient evidence, in character and weight, to establish that the
Appellant actually reduced to practice the claimed invention prior to the
effective filing date of Bhogi.
Accordingly, we do not sustain the anticipation rejection based on
Bhogi of claims 1, 8, 12-27, 34, and 36-63.

THE ANTICIPATION REJECTION BASED ON VAN WATERMULEN
The Examiner finds that Van Watermulen discloses every limitation
of claim 1. Appellant, however, argues that Van Watermulen fails to
disclose that a client-side application establishes a connection pool to the
server.
ISSUE
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Application 10/426,824

7
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Van Watermulen discloses a client-side application establishing a
connection pool to the server?

ANALYSIS
Based on this record, we find the Examiner erred in finding that Van
Watermulen discloses that a client-side application establishes a connection
pool to the server.
In Van Watermulen, clients, such as clients 112-118, connect to, and
therefore communicate with, a first in first out (FIFO)-based connection pool
132.1 within web server 130. Ans. 33-34 (citing Van Watermulen at Fig. 1
and col. 4, l. 61- col. 5, l. 8). Claim 1, however, requires that the client
application not only communicate with the connection pool, but establish the
connection pool to the server.
Here, Van Watermulen’s connection pool 132 is notably located
within the web server 130, not within clients 112, 114, and 116. Van
Watermulen at Fig. 1. As Appellant notes, a skilled artisan would reasonably
conclude that a connection pool that resides on a web server would be
established by the web server, not the clients of the web server. Reply. Br.
8. Moreover, as also noted by Appellant, Van Watermulen describes that the
connection pool may attempt to open new connections with the map server.
App. Br. 14-15 (citing Van Watermulen at col. 5, ll. 9-22). In other words,
Van Watermulen at least suggests that the connection pool, not the clients,
establish new connections.
Thus, while the Examiner correctly identifies that a plurality of clients
communicate with a connection pool within the server (Ans. 33), we are not
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Application 10/426,824

8
persuaded that Van Watermulen’s clients necessarily establish the
connection pool, as required by claim 1 under a § 102 rejection.
For the foregoing reasons, Appellant has persuaded us of error in the
rejection of: (1) independent claim 1; (2) independent claim 24 which recites
commensurate limitations; and (3) dependent claims 8, 12-23, 25-27, 34, and
36-63 for similar reasons.
2

CONCLUSION
Under § 102, the Examiner erred in rejecting claims 1, 8, 12-27, 34,
and 36-63.

ORDER
The Examiner’s decision rejecting claims 1, 8, 12-27, 34, and 36-63 is
reversed.

REVERSED

kis

2
If prosecution should continue, the Examiner should consider whether
claims 27, 34-49, and 57-63 recite “[a] storage device having stored thereon
one or more sequences of instructions” are statutory under § 101. See In re
Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007); see also CLS Bank Int’l v.
Alice Corp. Pty. Ltd., 2013 WL 1920941, at *1 (Fed. Cir. May 10, 2013)(en
banc). Note, Spec. ¶¶ 0076-77 (discussing that the “medium” can take many
forms, including a transmission media, such as acoustic or light waves).