Ex Parte Gopinath et al

Board of Patent Appeals and Interferences

Nov 22, 2010

10405760 (B.P.A.I. Nov. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PRAMOD GOPINATH, DARPAN DINKER, MAHESH
KANNAN, and SUVEEN R. NADIPALLI
____________________

Appeal 2009-004710
Application 10/405,7601
Technology Center 2100
____________________

Before HOWARD B. BLANKENSHIP, JAY P. LUCAS, and THU A.
DANG, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed April 2, 2003. The real party in interest is Sun
Microsystems, Inc.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-004710
Application 10/405,760
STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 33 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Appellants’ invention relates to a distributed data system that updates
only sub-elements of a data object. In the words of Appellants:
A system may include a client and a
distributed data manager coupled to the client.
The distributed data manager may include a data
store storing a data object that includes several
sub-elements. The client is configured to update a
portion of the data object by sending a message to
the distributed data manager. The message
specifies one of the sub-elements of the data object
to be updated and includes a new value of that sub-
element but does not include a new value of the
entire data object. The distributed data manager is
configured to perform updates to the data object in
the data store dependent on which of the sub-
elements of the data object are specified by the
client.
(Abstract, Spec. 36).
The following illustrates the claims on appeal:
Claim 1:
1. A distributed data system, comprising:

a client; and

a distributed data manager coupled to the client,
wherein the distributed data manager
includes a plurality of data-type-specific
data managers and a data store configured to
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store a data object that includes a plurality of
sub-elements;

wherein the client is configured to update a portion
of the data object by sending a message to
the distributed data manager, wherein the
message specifies one of the plurality of
sub-elements of the data object to be
updated and includes a new value of the one
of the plurality of sub-elements but does not
include a new value of the entire data object;

wherein the distributed data manager is configured
to select one of the plurality of data-type-
specific data managers to handle the
message dependent on a data-type of the one
of the plurality of sub-elements; and

wherein the selected one of the plurality of data-
type-specific data managers is configured to
perform updates to the data object in the
data store dependent on which of the
plurality of sub-elements of the data object
is specified by the client.

Claim 30:
30. A tangible, computer accessible medium
storing program instructions computer executable
to implement a distributed data system client
configured to:

subdivide a data object stored by a distributed data
system into a plurality of sub-elements;

encode information identifying one of the plurality
of sub-elements of the data object and a new
value of the one of the plurality of sub-
elements in a message requesting an update
to the data object, wherein the message does
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not include a new value of the entire data
object;

send the message requesting the update to the data
object to the distributed data system.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Garg US 2004/0162885 A1 Aug. 19, 2004
(filed Feb. 18, 2003)
Jin US 6,748,554 B2 Jun. 08, 2004
(filed Nov. 13, 2001)
Diamond US 6,591,295 B1 Jul. 08, 2003
(filed Nov. 05, 1999)

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claim 30 stands rejected under 35 U.S.C. § 102(e) for being
anticipated by Garg.
R2: Claims 1 to 7, 15 to 21, 29 and 33 stand rejected under 35
U.S.C. § 103(a) for being obvious over Garg in view of Jin.
R3: Claims 8 to 14, 22 to 28, 31 and 32 stand rejected under
35 U.S.C. § 103(a) for being obvious over Garg in view of Jin and further in
view of Diamond.
[R0]: There also appears in the Final Rejection of 6/22/07, and in
Appellants’ brief, (Brief 11, top), mention of a rejection of claims 29 to 32
under 35 U.S.C. § 101.

We will review the rejections ([R0] to R3) in the order argued and as
grouped in the Briefs. We have only considered those arguments that
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Appellants actually raised in the Briefs. Arguments Appellants could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 101, 35 U.S.C. § 102(e) and
35 U.S.C. § 103(a). The statutory subject matter is related to the issue of
signals; the art issues specifically turn on whether Garg and Jin teach such
elements as the claimed client configuration subdividing a data object, and
the claimed data-type-specific data managers.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a system and method for updating a data object
stored in a computer system, said data object including sub-elements.
(Spec. 4, ¶ [0009]). A client communicates to a distributed data manager,
which affects updates to the data object by updating only a sub-element
needing changes, not the whole data object (Id.). The distributed data
manager may include several data-type-specific data managers that
update different ones of the sub-elements (¶ [0010]).
2. The Garg reference teaches updating only a chunk of a data object, and
not the whole data object (¶¶ [0003], [0004], [0054]).
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3. The Jin reference teaches server software where a plurality of application
managers is functionally distinguished by the data type of the data sub-
element being the subject of a query (Col. 6, ll. 30 to 41).
4. The Diamond reference teaches a Web URL as the front end for database
queries. (See Abstract).

PRINCIPLES OF LAW

Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.

“It is common sense that familiar items may have obvious uses
beyond their primary purposes, and a person of ordinary skill often will be
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able to fit the teachings of multiple patents together like pieces of a puzzle.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007).

“A court must ask whether the improvement is more than the
predictable use of prior-art elements according to their established
functions.” Id. at 401.

ANALYSIS

Arguments with respect to the rejection
of claim 29 to 32
under 35 U.S.C. § 101[R0]

The Examiner has rejected the noted claims for being directed to non-
statutory subject matter, not being limited to tangible embodiments. The
specification refers to all types of media, including signals (Spec. 26, ¶
[0082]). With no further limitation, we agree that the claims to the media
would extend to non-statutory subject matter.
A claim for computer instructions embodied only in a signal is not
considered by this office to be statutory under 35 U.S.C. § 101. This policy
has been confirmed by the Court of Appeals for the Federal Circuit in In re
Nuijten. “A transitory, propagating signal like Nuijten’s is not a ‘process,
machine, manufacture, or composition of matter.’ Those four categories
define the explicit scope and reach of subject matter patentable under 35
U.S.C. § 101; thus, such a signal cannot be patentable subject matter.” In re
Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).
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There is clearly an issue concerning the propriety of the entry of an
amendment adding the word “tangible” to the claims in this application,
potentially due to a lack of support for same in the specification (Ans. 16,
middle). However, even if the word “tangible” were properly entered, the
holding of Nuijten and this Office’s policy is to require that the claim be
limited to “non-transitory” media, not “tangible”.
We thus find that the claims before us, either with or without the
“tangible” wording, extend to non-statutory subject matter. This rejection
will be affirmed.

Arguments with respect to the rejection
of claim 30
under 35 U.S.C. § 102(e) [R1]

The Examiner has rejected claim 30 for being anticipated by Garg.
Garg teaches a distributed computer system in which data objects in a cache
are updated (¶ [0004]). The data objects are divided into chunks, optimized
for transmission over the network (¶ [0031]).
Appellants argue that the client in Garg is not configured to subdivide
a data object stored by a distributed data system into a plurality of sub-
elements (App. Br. 11, bottom). We have considered Garg in detail,
including the specific references indicated by the Examiner (Ans. 17, 18).
After due deliberation, we find the rejection to be not supported by the
reference. The Garg reference clearly expresses the data objects to be
divided into chunks (¶¶ [0003], [0031], [0049]), but we find no teaching that
the subdivision is done by a client. Garg is simply not clear on that point.
We thus find error in the Examiner’s rejection under 35 U.S.C. § 102(e).

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Arguments with respect to the rejection
of claims 1 to 7, 15 to 21, 29 and 33
under 35 U.S.C. § 103(a)[R2]

The Examiner has rejected the noted claims for being obvious over
Garg in view of Jin. Appellants traverse this rejection for the following
reasons.
Appellants first contend that the cited prior art fails to teach or suggest
a plurality of data-type-specific data managers (App. Br. 14, bottom). They
state that the Examiner’s reliance on Garg, ¶¶ [0018], [0034], is mistaken
(App. Br. 15, top and bottom). While in the Answer the Examiner does refer
to Garg, ¶ [0053], the Examiner’s main response is that Jin explicitly teaches
a plurality of data-type-specific data managers as recited in the main
rejection (Ans. 6, bottom; Ans. 19, bottom). Referring to Jin, we see the
teaching of a server software program 62 controlling a number of application
managers, such as a catalog shopping application with a number of data-
type-specific agents 66; a second application manager dedicated to help
pages; and a third application manager dedicated to another supported
service of the Web server (Col. 6, ll. 30 to 41). These different application
managers are distinguished by the data type handled, and thus read on the
claims as indicated by the Examiner (Ans. 19, bottom; Ans. 20). We do not
find error in the application of this art as so expressed.
Appellants further argue that the references are not properly combined
(App. Br. 16, middle). We find both Garg and Jin to be teaching analogous
arts, retrieval of information from databases, and thus are fairly combined.
See KSR, cited above.
Claims 4 and 18. Appellants argue with respect to these claims that
Garg fails to teach a distributed data manager operating in a different
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process than the client (App. Br. 18, top). The Examiner clearly
demonstrates the different processes taught by Garg for a distributed data
manager (Ans. 22, bottom). We find the Appellants’ argument
unconvincing.
Claims 5 and 19. Appellants argue that the cited art does not teach
updating the data object in serialized form from the data store. (App. Br. 18,
bottom). The Examiner’s interpretation of the update as a data stream we
find to be not unreasonable (Ans. 23, top). We thus do not find error in the
rejection.
Claims 7 and 21; and claim 33. Appellants’ argument for these claims
is the same as for claim 1, namely no teaching of a data-type-specific data
manager (App. Br. 19). This has been discussed above, and no error in the
rejection has been found.

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Arguments with respect to the rejection
of claims 8 to 14, 22 to 28, 31 and 32
under 35 U.S.C. § 103(a) [R3]

The Examiner has rejected the noted claims for being obvious over
Garg and Jin further in view of Diamond. Appellants argue that the URL of
Diamond is inconsistent with the claimed distributed data manager and the
data-type-specific data managers (App. Br. 22, top). We find that the use of
a URL as the user interface is independent of the distributed data manager
role, and that the cited art is sufficient to teach claims 8, 10, 22 and 24.
Appellants’ argument is simply not convincing.
Claims 9 and 233. Appellants’ argue that the combination of
references do not teach a session identifier, as required by these claims
(App. Br. 23, middle) The Examiner points to Diamond, element 223.
However, that element is the agent_name, which establishes the connection
to a desired database, not a session identifier as required by the claims.
(Diamond, col. 5, l. 11). We thus find error in the rejection of these
dependent claims.
Claims 11 and 25. The Appellants argues that Diamond does not
teach that the URI is used to select which of the data sub-elements to access
(App. Br. 24, middle). The Examiner points out that Diamond is only cited
to teach the URL user interface and that Garg and Jin teach updating the
proper sub-element. We do not find error in that reasoning or the rejection.

3 9. The system of claim 8, wherein the URL includes a data manager
identifier, a session identifier, and a unique data key.
23. The method of claim 22, wherein the URL includes a data manager
identifier, a session identifier, and a unique data key.

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Claims 12 and 26. Appellants argue that Diamond does not teach the
URL identifying the sub-elements in a hierarchy (App. Br. 25, middle). We
find the same reasoning as indicated for claim 11 above applies and do not
find error in the rejection.
Claim 31. The same discussion as for claim 1 applies (App. Br. 26,
bottom).
Claim 32. Appellants argue that the references do not teach using a
separate message to indicate the selected sub-element of a data object and a
different message to indicate a whole data object needs updating (App. Br.
28, top). The Examiner argues (Ans. 28, middle) that Garg teaches updating
both the entire data object (as its “past” practice, ¶ [0006]) and updating a
portion of a data object (as its improvement, ¶ [0054]). Each of these
approaches is taught in response to a message. We agree with the Examiner
that it would not be un-obvious to use both techniques when circumstances
require partial and full updates of a data object.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not shown that the Examiner erred in rejecting claims 1 to
8, 10 to 22, and 24 to 33. Appellants have shown error in the rejection of
claims 9 and 23.

DECISION
We reverse the Examiner’s rejection R3 of claims 9 and 23. We
affirm the Examiner’s rejections [R0] to R3 of claims 1 to 8, 10 to 22 and 24
to 33.
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AFFIRMED-IN-PART

peb

MHKKG/Oracle (Sun)
P.O. BOX 398
AUSTIN, TX 78767

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