Ex Parte Doyle et al

Patent Trial and Appeal Board

Dec 6, 2013

11751124 (P.T.A.B. Dec. 6, 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.
11/751,124 05/21/2007 Ronald P. Doyle RSW920020029US2 (045) 1430
46320 7590 12/09/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
LY, CHEYNE D
ART UNIT PAPER NUMBER
2168
MAIL DATE DELIVERY MODE
12/09/2013 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 RONALD P. DOYLE, YONGCHENG LI, and
DINESH CHANDRA VERMA1
____________

Appeal 2011-003291
Application 11/751,124
Technology Center 2100
____________

Before BRIAN J. MCNAMARA, MICHAEL J. FITZPATRICK, and
JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

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

1 International Business Machines Corporation is the real party-in-interest.
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INVENTION
Appellants’ invention relates to adaptive data replication and caching
systems “configured to enforce service terms at the network edge.” See
generally Spec., Abstract. Claim 1 is illustrative and reproduced below with
disputed limitations emphasized:
1. An adaptive data replication and caching system
configured to enforce service terms at the network edge, said
system comprising:

a data caching system configured to cache application
data in a data store and to satisfy queries for application data
from said cache;

a data replication system configured to replicate
application data separate from said cached application data in
said data store and to satisfy queries for application data against
said replicated application data; and,

a configurator for configuring portions of said data store
for exclusive use by said data caching system and said data
replication system based upon the service terms.

The Examiner relies on the following as evidence of unpatentability:
Ben-Shaul
McCabe
Chen
US 2002/0010798 A1
US 2002/0016827 A1
US 6,925,499 B1
Jan. 24, 2002
Feb. 7, 2002
Aug. 2, 2005

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THE REJECTIONS
1. The Examiner rejected claims 1-5 provisionally as unpatentable under
the judicially-created doctrine of obviousness-type double patenting.
Ans. 4-5.2
2. The Examiner rejected claims 1-6 under 35 U.S.C. § 101 as directed
to non-statutory subject matter. Id. at 5-6.
3. The Examiner rejected claims 1 and 4-6 under 35 U.S.C. § 102(e) as
anticipated by Chen. Id. at 6-11.
4. The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Chen and Ben-Shaul. Id. at 11-12.
5. The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Chen and McCabe. Id. at 12.

THE DOUBLE PATENTING REJECTION
The Examiner provisionally rejected claims 1-5 on the ground of the
judicially-created doctrine of obviousness-type double patenting in view of
Appellants’ co-pending, U.S. Patent Application No. 11/750,720.3 Ans. 4-5.
Because the claims of both applications may be subject to further
amendments, this provisional, obviousness-type double patenting rejection is
not yet ripe for the Board’s review. Therefore, we do not reach the

2 Throughout this opinion, we refer to (1) the Appeal Brief (App. Br.) filed
July 6, 2010; (2) the Examiner’s Answer (Ans.) mailed September 24, 2010;
and (3) the Reply Brief (Reply Br.) filed November 24, 2010.
3 See MPEP 804.I.B.1. (“If a ‘provisional’ nonstatutory obviousness-type
double patenting (ODP) rejection is the only rejection remaining in the
earlier filed of the two pending applications, while the later-filed application
is rejectable on other grounds, the examiner should withdraw that rejection
and permit the earlier-filed application to issue as a patent without a terminal
disclaimer.”).
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Examiner’s provisional double patenting rejection to claims 1-5.

NON-STATUTORY SUBJECT MATTER REJECTION
Appellants argue that claims 1-6 are directed to statutory subject
matter because the claims recite systems that are “configured to” cache or to
replicate data. App. Br. 5. Appellants argue that “[s]oftware alone (i.e.,
software per se) is incapable of doing anything because it is disconnected
from hardware.” Id. at 5-6. Thus, Appellants argue that software per se
cannot be “configured” and that claims 1-6 must describe hardware. Id. at 7.
The Examiner contends that a “system configured to” perform a
function does not necessarily describe hardware. Ans. 14. Moreover, the
Examiner contends that Appellants fail to demonstrate that a data caching
system, a data replication system, and a configurator are defined as hardware
in the Specification or to identify where claim 1 specifically recites
hardware. Id.
In construing the claims, we apply the broadest reasonable meaning of
the words in their ordinary usage, as those words would be understood by
one of ordinary skill in the art, taking into account any definitions supplied
by Appellants’ Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). We note that claims 1-6 are drawn to “systems,” but that Appellants
do not recite any limitations of these claims that must be implemented in
hardware. The Specification states, however, that “[t]he present invention
can be realized in hardware, software, or a combination of hardware and
software.” Spec. 19:3-4 (emphasis added). “A typical combination of
hardware and software could be a general purpose computer system with a
computer program that, when [] loaded and executed, controls the computer
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system such that it carries out the methods described herein.” Id. at 19:10-
12 (emphasis added). Thus, we are persuaded that, despite the use of the
term “system” and the phrase “configured to” in the claims, the claims
encompass software per se. “A claim that covers both statutory and non-
statutory embodiments (under the broadest reasonable interpretation of the
claim when read in light of the specification and in view of one skilled in the
art) embraces subject matter that is not eligible for patent protection and
therefore is directed to non-statutory subject matter.” MPEP § 2106.01; cf.
In re Lintner, 458 F.2d 1013,1015 (CCPA 1972) (citation omitted) (“Claims
which are broad enough to read on obvious subject matter are unpatentable
even though they also read on nonobvious subject matter.”). We do not
import material from the Specification here, but are simply construing the
claim broadly, yet reasonably, in light of the Specification. “It is the
applicants’ burden to precisely define the invention, not the [U.S. Patent and
Trademark Office’s (USPTO’s)].” Morris, 127 F.3d at 1056 (citation
omitted).
In sum, we agree with the Examiner that claims 1-6 are not directed to
statutory subject matter because the claims cover a system that may be
implemented fully in software. Accordingly, we sustain the Examiner’s
rejection of claims 1-6 under 35 U.S.C. § 101.

ANTICIPATION REJECTION OVER CHEN
Regarding claim 1 and 4-6, the Examiner finds that Chen discloses
each and every element of the recited invention. Ans. 6-11. With respect to
claim 1, Appellants argue that the Examiner fails to identify what portions of
Chen disclose the “data caching system” and the “data replication system.”
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App. Br. 10-11. Further, Appellants argue that the Examiner fails to
demonstrate that Chen must disclose a “configurator” or that Chen discloses
that Chen’s data store must include both cached and replicated data. Id. at
12-13. In addition, Appellants argue that the Examiner improperly contends
that Chen’s edge servers disclose the “database proxy,” as recited in claim 4,
the “database client library,” as recited in claim 5, and “at least one service
term selected from the group consisting of a quality of service (QOS) term
and a term of a service level agreement (SLA),” as recited in claim 6. Id. at
19-21.
ISSUES
Has the Examiner erred by finding that Chen discloses:
(1) “a data caching system,” “a data replication system,” and “a
configurator,” as recited in claim 1?;
(2) “a database proxy,” as recited in claim 4?;
(3) “a database client library,” as recited in claim 5?; and
(4) “at least one service term selected from the group consisting of a
quality of service (QOS) term and a term of a service level agreement
(SLA),” as recited in claim 6?
ANALYSIS
1. Claim 1
Based on the record before us, we find no error in the Examiner’s
rejection of illustrative claim 1, which calls for, in pertinent part,
a data caching system configured to cache application
data in a data store . . .;
a data replication system configured to replicate
application data separate from said cached application data in
said data store . . .; and,
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a configurator for configuring portions of said data store
for exclusive use by said data caching system and said data
replication system . . . .

(Emphases added.) Initially, Appellants argue that the Examiner fails to
identify with specificity the portions of Chen that disclose each of the “data
caching system” and the “data replication system.” App. Br. 10-11; Reply
Br. 5-8.4 We disagree.
The Examiner demonstrates that, if Chen’s server clusters 120 and
125 are separated geographically and that if data stored on one of servers
100a-c of server cluster 120 is not available on one of servers 100d-f of
server cluster 125, Chen discloses systems for caching or replicating that
data on servers of the other cluster, e.g., disk 105i, or on one of edge servers
140a-c. Ans. 6-8 (citing Chen, col. 6, ll. 12-48). As with Appellants’
systems, software may accomplish the tasks of caching and replicating data,
storing it at appropriate locations, and retrieving the data in response to
requests. See Chen, col. 10, ll. 30-62. Thus, we are persuaded that the
Examiner demonstrates that Chen discloses each of the “data caching
system” and the “data replication system,” as recited in claim 1.

4 In the Reply Brief, Appellants argue that the Examiner presented a new
basis for the anticipation rejection of claim 1 that amounts to a new ground
of rejection. Reply Br. 7. Records from the USPTO’s PATENT
APPLICATION LOCATING AND MONITORING electronic database
contain no evidence that Appellants filed a petition under 37 C.F.R. § 1.181
to challenge the Examiner’s untimely introduction of the new grounds of
rejection. Accordingly, we treat any potential challenge as waived (see
MPEP § 1207.03(IV)), and we will address fully the merits of the
Examiner’s rejection.
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Appellants also argue that the Examiner improperly contends that the
“configurator,” as recited in claim 1, is inherent from Chen’s description of
the first two elements. App. Br. 12-13; see Ans. 8-9. In particular,
Appellants argue that, although Chen may disclose the caching or replicating
of data on edge servers 140a-c, Chen does not disclose that both cached and
replicated data are stored on the same data store. App. Br. 15-16.
Consequently, Appellants argue that, because Chen does not teach storing
both types of data together on a single data store, Chen cannot disclose
inherently the “configurator,” as recited in claim 1. Id. at 18; Reply Br. 8-
10. We disagree.
The Specification states that, “[i]n one aspect of the present invention
wherein only a limited amount of storage space is partitioned between the
data replication system 230 and the data caching system 220, initially, all of
the local data store 240 can be devoted for use by the data caching system
220.” Spec. 12:9-12 (emphasis added). Further, the Specification explains
that the partition between the cached and replicated data in the data store
may be adjusted periodically “to provide for an appropriate amount of
storage” for each system. Id. at 12:12-17. Thus, we determine that claim 1
does not require that both types of data must be stored on the data store.
Appellants further argue that the configurator, as recited in claim 1,
configures the portions of the data store “based upon the service terms.”
Appellants argue that the Examiner is silent on how Chen teaches this
recitation of claim 1. App. Br. 13-14. The Specification describes that, “[i]n
a policy based service differentiation model, the computing devices can offer
many levels of service where different requests for different content or
services which originate from different requesters receive different levels of
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treatment depending upon administratively defined policies[, e.g., ‘service
terms’].” Spec. 2:14-17. The Specification provides only two examples of
such “service terms”: first, a service level agreement (SLA) specifying a
guaranteed level of responsiveness associated with particular content or
services irrespective of the requestor and, second, quality of service (QoS)
terms specifying a level of application and content responsiveness minimally
owed to particular requestors. Id. at 2:17-21. Because Chen describes that
its caching and replicating are intended to carry and maintain a reasonable
quality of service, the Examiner finds that Chen teaches determining the
portions of the data store “based upon the service terms.” Ans. 17-18. We
agree. For the foregoing reasons, we are persuaded that Chen discloses
inherently the “configurator,” as recited in claim 1.
2. Claims 4 and 5
Claim 4 recites that “a database proxy” receives queries for
application data and forwards the queries to at least one of the “data caching
system” and the “data replication system.” Similarly, claim 5 recites that “a
database client library” receives queries for application data and forwards
the queries to at least one of the “data caching system” and the “data
replication system.” The Examiner contends that Chen’s edge servers
disclose the “database proxy,” as recited in claim 4, and the “database client
library,” as recited in claim 5. Ans. 9-10. Nevertheless, referring to Figure
1 of the Specification, these elements of claims 4 and 5 are “database server
middleware,” e.g., elements between the local database system 120 and the
client 130. See Spec. 10:13-21. This is not a function performed by the
edge server. App. Br. 19-21.
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With respect to claim 4, the Examiner contends that “there is no
reason that the edge servers 140 could not be part of the ‘adaptive data
replication and caching system’ and serve as a ‘database proxy . . . receiving
said queries . . . [and] forwarding said queries.’ Even if the server were not
the ‘proxy,’ it would have an interface to receive and forward queries that
would be a ‘proxy.’” Ans. 18. The Examiner makes similar contentions
regarding claim 5. Id. This, however, is not the standard for demonstrating
anticipation. Further, it is not for Appellants to prove that Chen does not
anticipate claims 4 and 5. The burden of demonstrating anticipation rests
with the Examiner, and the Examiner has not demonstrated anticipation of
these claims.
3. Claim 6
Claim 6 recites that “the service terms comprise at least one service
term selected from the group consisting of a quality of service (QOS) term
and a term of a service level agreement (SLA).” According to the
Specification, “quality of service (QoS) terms specify a level of application
and content responsiveness minimally owed to particular requestors.” Spec.
2:19-21 (emphasis added); see also Spec. 18:7-9 (“the configurator 430
can determine how best to maximize the number of cache ‘hits’ per unit of
cache storage in order to meet the respective QoS terms 480 . . .”). Chen
explains that
If a server computer systems 100a, 100b, . . . , 100f has
data 160 that is requested by many of the client systems 150a,
150b, 150c, the network traffic to the server computer system
100a may [be too] great for either the global network 155 or the
cluster network 110 to carry and maintain a reasonable quality
of service. Quality of service in this context means that the
original data 160 is transferred repetitively relatively quickly
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. . . .
Chen, col. 6, ll. 23-29 (emphasis added); see Ans. 10-11. Thus, the
Examiner contends that Chen teaches the additional element of claim 6.
Ans. 18-19.
Appellants argue that the Examiner “ignores that the claimed
limitations are not individual elements isolated from one another.” App. Br.
22. Thus, Appellants argue that the Examiner fails to demonstrate that the
elements of claim 6 are service terms on which the configurator bases the
configuration of the portions of the data store. Id. For the reasons set forth
above, we construe the term “service terms” broadly as including, but not
limited to, the only two examples of such terms provided in the
Specification. Further, we note that claim 6 is written in Markush form, and
“the entire element is disclosed by the prior art if one alternative in the
Markush group is in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc.,
582 F.3d 1288, 1298 (Fed. Cir. 2009) (citations omitted). Thus, we are
persuaded that Chen teaches the additional element recited in claim 6.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and dependent claim 6, and we
sustain the anticipation rejection of those claims. Appellants, however, have
persuaded us of error in the rejection of dependent claims 4 and 5, and we do
not sustain the anticipation rejection of those claims.

OBVIOUSNESS REJECTION OVER CHEN AND BEN-SHAUL
Regarding claim 2, the Examiner finds that Chen discloses all of the
limitations of claim 1, from which claim 2 depends, but that Chen does not
teach a system further “comprising a set of operator hints for use by said
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configurator when configuring said portions of said data store.” Ans. 11
(quoting Claim 2 (emphasis added)). The Examiner finds, however, that
Ben-Shaul teaches the missing limitation of claim 2. Id. at 11-12.
Appellants disagree.
ISSUE
Has the Examiner erred in rejecting claim 2 by finding that Chen and
Ben-Shaul, collectively, teach or suggest a set of operator hints for use by
the configurator when configuring the portions of the data store?
ANALYSIS
With respect to claim 2, the Examiner finds that Ben-Shaul teaches
that “the resource is received by the edge server from the origin web server
and stored therein, wherein the resource is modified prior to being stored in
the edge server, according to attributes of the edge server, the user, and the
resource that are specified in the directives of the service policy.” Ans. 11
(quoting Ben-Shaul ¶ 0113 (emphasis added)). Thus, the Examiner contends
that Ben-Shaul’s “directives” teach Appellants’ “operator hints.” We
disagree.
As Appellants note, Ben-Shaul explains that the resource, e.g., the
data to be stored in the edge server, “is modified prior to being stored” and
that this modification is according to attributes that are specified in
directives. App. Br. 24. Claim 2, however, recites that the “operator hints
[are] for use by said configurator when configuring said portions of said
data store” (emphasis added). Thus, the claim language recites that the
portions of the data store, rather than the data to be stored in the data store,
are modified prior to the storage of the data. Therefore, we are persuaded
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that Ben-Shaul fails to teach the limitation, as recited in claim 2, which is
also missing from Chen.
Appellants have persuaded us of error in the rejection of dependent
claim 2, and we do not sustain the obviousness rejection of that claim.

OBVIOUSNESS REJECTION OVER CHEN AND MCCABE
Regarding claim 3, the Examiner finds that Chen discloses all of the
limitations of claim 1, from which claim 3 depends, but that Chen does not
teach a system further “comprising at least one log file to which said data
caching system and said data replication system can write entries, each one
of said entries comprising one of said requested queries and an indication
whether said one of said requested queries had been satisfied by one of said
data caching system and said data replication system, said configurator
basing said configuration of said data store upon access patterns indicated by
said entries in said at least one log file.” Ans. 12 (quoting Claim 3). The
Examiner finds, however, that McCabe teaches the missing limitation of
claim 3. Id. Appellants disagree, arguing only that Chen fails to disclose all
of the limitations of claim 1. App. Br. 24
For the reason set forth above, Appellants have not persuaded us of
error in the anticipation rejection by Chen of independent claim 1.
Therefore, we sustain the obviousness rejection of claim 3.

CONCLUSION
The Examiner’s provisional rejection of claims 1-5 under the
judicially-created doctrine of obviousness type double patenting is not yet
ripe for appeal. The Examiner did not err in rejecting claims 1-6 under
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§ 101; in rejecting claims 1 and 6 under § 102(e) as anticipated by Chen, and
in rejecting claim 3 under § 103(a) as unpatentable over Chen and McCabe.
The Examiner, however, erred in rejecting claims 4 and 5 under § 102(e) as
anticipated by Chen and in rejecting claim 2 under § 103(a) as unpatentable
over Chen and Ben-Shaul.

DECISION
The Examiner’s decision rejecting claims 1-6 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

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