Ex Parte Hamilton et al

Patent Trial and Appeal Board

Dec 20, 2018

11608859 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/608,859 12/11/2006 Rick A. Hamilton II
73109 7590 12/25/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BOC920060077US1_8134-0047 1091
EXAMINER
MURRAY, DANIEL C
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
12/25/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICK A. HAMIL TON II, NEIL A. KATZ,
BRIANM. O'CONNELL, andKEITHR. WALKER
Appeal2017-002357
Application 11/608,859
Technology Center 2400
Before JOHN A. EV ANS, STACEY G. WHITE, and DANIEL J. GALLIGAN,
Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the Examiner's
final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 The Appeal Brief identifies IBM Corporation as the real party in interest. App.
Br. 1.
2 Our Decision refers to Appellants' Appeal Brief filed on April 1, 2016 ("App.
Br."); Appellants' Reply Brief filed on December 5, 2016 ("Reply Br.");
Examiner's Answer mailed October 6, 2016 ("Ans."); and original Specification
filed December 11, 2006 ("Spec.").
Appeal2017-002357
Application 11/608,859
STATEMENT OF THE CASE
Claims on Appeal
Claims 1, 14, and 20 are independent. Independent claim 1, reproduced
below, is illustrative of the subject matter in appeal.
1. A method of caching data at an edge server within a
communication network comprising:
predicting a future location of a user;
selecting the edge server within the communication network
according to the future location;
selecting data to be sent to the edge server; and
sending the selected data to the selected edge server.
Shimura
Vargas-Hurlston
Ranganathan
Hayashi
Hamalainen
References
US 2001/0003194 Al
US 2004/0017310 Al
US 2004/0192342 Al
US 2007 /0255831 Al
US 7,929,494 Bl
Examiner's Rejections
June 7, 2001
Jan.29,2004
Sept. 30, 2004
Nov. 1, 2007
Apr. 19, 2011
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 3--4.
Claims 7, 8, and 17 stand rejected under 35 U.S.C. § 112, second paragraph
as being indefinite. Id. at 2.
Claims 1, 4---6, 10, 14--17, and 20 stand rejected under 35 U.S.C. § I02(b) as
anticipated by Ranganathan. Id. at 6-9.
Claims 2, 3, 8, and 9 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Ranganath and Hayashi. Id. at 10-15.
Claim 7 stands rejected under 35 U.S.C. § I03(a) as being unpatentable over
Ranganath and Shimura. Id. at 15-16.
2
Appeal2017-002357
Application 11/608,859
Claims 11, 12, and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ranganath and Vargas-Hurlston. Id. at 16-20.
Claims 13 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ranganath and Hamalainen. Id. at 21-23.
ANALYSIS
35 USC§ 101
(Claims 1-20)
In Alice, the Supreme Court set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and abstract
ideas from those that claim patent-eligible applications of those concepts." Alice
Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77 (2012)). The first
step in the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. If so, the second step is to consider the
elements of the claims "individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a patent-
eligible application." Id. (quoting Mayo, 566 U.S. at 79, 78). In other words, the
second step is to "search for an 'inventive concept' - i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the [ineligible concept] itself."'
Id. (alteration in original) (quoting Mayo, 566 U.S. at 72-73).
In rejecting claims 1-20 as being directed to patent-ineligible subject matter,
the Examiner found that the claims "are directed to the abstract idea of 'selecting a
delivery point ( e.g. server) for information based on a predicted location (i.e.
prestaging resources)' ((iii) an idea of itself)." Final Act. 3. Appellants argue the
claims are not directed to an abstract idea (App. Br. 15-18), and we agree.
3
Appeal2017-002357
Application 11/608,859
The Examiner explained that the claims "describe a desired function or
outcome, without providing any limiting detail that confines the claim[ s] to a
particular solution to an identified problem. The purely functional nature of the
claims confirm that it is directed to an abstract idea, not to a concrete embodiment
of that idea." Ans. 30. Independent claims 1 and 14, however, are directed,
respectively, to a method of and a system for "caching data at an edge server
within a communication network." Independent claim 20 is directed to "[a]
computer program product" having "a hardware implemented computer-readable
storage device having computer-usable program code stored thereon that pushes
data to an edge server within a communication network." Each of these claims
recites limitations defining how the caching or storing of data is performed. We do
not agree with the Examiner's determination that such subject matter is directed to
an abstract idea.
Therefore, we do not sustain the Examiner's rejection of claims 1-20 as
being directed to patent-ineligible subject matter.
35 US.C. § 112, Second Paragraph
(Claims 1-20)
Claims 7, 8, and 17 recite data that is "frequently accessed by the user" or
"recently accessed by the user." The Examiner concluded these claims are
indefinite because the terms "frequently" and "recently" are relative terms, they are
"not defined by the claim, the specification does not provide a standard for
ascertaining the requisite degree, and one of ordinary skill in the art would not be
reasonably apprised of the scope of the invention." Final Act. 2.
Appellants argue the terms "frequently" and "recently" describe the ways in
which data are selected "with reasonable precision"-"frequently" referring to "the
4
Appeal2017-002357
Application 11/608,859
number of instances over a period of time" and "recently" referring to "an instance
within a period of time." App. Br. 11, 14. Appellants argue that, although
one skilled in the art may choose a different value for the number of
instances over a period of time in order to find that the "data is
frequently accessed by the user," this does not change that one having
ordinary skill in the art would be reasonably apprised of what is meant
by "frequently."
App. Br. 11. According to Appellants, "[t]he Examiner confuses claim breadth
with indefiniteness." App. Br. 11.
We are not persuaded by Appellants' arguments. It is the breadth of
"frequently" and "recently," as these terms are used in the claims, that renders the
claims indefinite because these terms do not sufficiently define the limits of the
claims. Patent Owner acknowledges that "frequently" can refer to any amount of
frequency. App. Br. 11. Under such a boundless interpretation of "frequently,"
any data could qualify as "data that is frequently accessed by the user." Thus, the
use of "frequently" and "recently" does not apprise the ordinarily skilled artisan of
the scope of the claims.
Therefore, we sustain the Examiner's rejection of claims 7, 8, and 17 under
35 U.S.C. § 112, second paragraph as being indefinite.
35 us.c. § 102(b)
(Claims 1, 4-6, 10, 14-17, and 20)
Independent claims 1, 14, and 20 recite various limitations reciting "edge
server," including "select[ing] the edge server within the communication network
according to the future location." As Appellants note, the claims were amended to
recite "edge server" instead of "processing node." App. Br. 23. The Examiner
found Ranganathan's base station describes the claimed edge server. Final Act. 6
(citing Ranganathan, [57], ,r,r 20-22, 24). Appellants argue a person of ordinary
skill in the art would not consider Ranganathan's base stations as being edge
5
Appeal2017-002357
Application 11/608,859
servers. App. Br. 23. Appellants argue that, "[ w ]hile an edge server can be a
processing node, not all processing nodes are edge servers. For example, while a
base station can be a processing node, it is not necessarily, i.e., inherently, an edge
server." App. Br. 24. Appellants further argue that "[t]he claimed 'edge server' is
considerably more narrow than the previously claimed 'processing node."' App.
Br. 25. Appellants also contend that "the Examiner has not produced any evidence
that these base stations would be considered by those skilled in the art to be a
particular type of server (i.e., an edge server)." App. Br. 27.
We disagree with Appellants. In the Final Office Action, the Examiner
provided a detailed explanation for why Ranganathan's base stations describe edge
servers, first looking to Appellants' Specification for guidance on the interpretation
of "edge server" and then explaining the disclosure of Ranganathan. Final Act.
29--30. Appellants' Specification states: "In one arrangement, each of the
processing nodes 13 5-145 can be implemented as an 'edge server'. That is, each
of the processing nodes 135-145 can be located at distinct and different physical
location within the communication network 130." Spec. ,r 25. The Examiner
found:
Ranganathan clearly discloses a number of base stations which
each service their particular base station area (i.e. lie at the edge of the
network). The disclosed base stations also clearly serve segments of
streaming information to wireless mobile devices associated with the
base station/base station area. Therefore it is clear that Ranganathan' s
base stations can be reasonably interpreted as the claimed "edge
servers".
Final Act. 30. Appellants fail to persuasively address this explanation by the
Examiner. Rather, Appellants' arguments focus on the difference in
terminology-"edge server" versus "base station"-but, for anticipation, a prior art
"reference need not satisfy an ipsissimis verb is test," i.e., identity of terminology is
6
Appeal2017-002357
Application 11/608,859
not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). We agree with
the Examiner's finding that Ranganathan's "base stations also clearly serve
segments of streaming information to wireless mobile devices associated with the
base station/base station area" (Final Act. 30) because Ranganathan discloses that
"[a] segment of streaming information is that portion of a streaming information
request that is expected to be sent to, and be received by, a mobile wireless device
as the mobile wireless device is within a particular base station service area, e.g.,
cellular area." Ranganathan ,r 20. Thus, each of Ranganathan's base stations is
"located at distinct and different physical location within the communication
network 130," as Appellants' Specification describes an "edge server." Spec. ,r 25.
Therefore, we agree with the Examiner's finding that Ranganathan's base
stations describe the claimed "edge server[s]." Thus, we sustain the Examiner's
anticipation rejection of independent claims 1, 14, and 20, as well as the
anticipation rejection of dependent claims 4---6, 10, and 15-17, for which
Appellants offer no additional persuasive arguments for patentability.
35 US.C. § 103(a)
(Claim 9)
Claim 9 recites: "The method of claim 1, wherein the selected data is data
that was accessed by the user during a prior visit to the future location." In
concluding this subject matter would have been obvious, the Examiner relies on
Hayashi's disclosure of providing data to a user based on "vitality information,"
which includes information such as location of the mobile device, past behavior of
the mobile user, and weather. Final Act. 14--15 (citing Hayashi ,r,r 21, 26).
Appellants argue
the Examiner cited the teachings of "past behavior of the mobile user"
in Hayashi. However, these teachings do not correspond to the
claimed limitations. What Hayashi specifically meant by "past
7
Appeal2017-002357
Application 11/608,859
behavior of the mobile user" can only be based upon speculation since
Hayashi does not go into further detail.
App. Br. 28.
We are not persuaded of Examiner error. Hayashi discloses that "vitality
information" includes data such as "a location of the mobile device, weather
information where the member is located, ... past behavior of the mobile user
and/or another member of the social network, the mobile user's preferences."
Hayashi ,r 21. The Examiner concludes that
it would have been obvious to one of ordinary skill in the art that the
time the invention was made to incorporate making a selection based
on past behavior, as taught by, Hayashi into the system of
Ranganathan for the purpose of making context based requests/
selections (Hayashi; abstract), thereby allowing the system to
providing requests/results more relevant to the user.
Final Act. 15. Hayashi' s use of location information and "past behavior" of the
user teaches that the user's past behavior on its device at that location is used,
which at least suggests that data from a previous visit to that location is used.
Furthermore, Hayashi discloses that "vitality information" includes "weather
information where the member is located." Hayashi ,r 21. Downloading weather
information for a location each time a user is at that location means that the same
data (weather data for that location) is used each time the user is in that location,
thereby teaching, or at least suggesting, data that was accessed during a prior visit
to that location. We, therefore, are not persuaded the Examiner erred in
concluding the subject matter of claim 9 would have been obvious over the
combination of Ranganathan and Hayashi.
Thus, we sustain the Examiner's obviousness rejection of dependent claim 9.
8
Appeal2017-002357
Application 11/608,859
Remaining Rejections under 35 U.S.C. § 103(a)
(Dependent Claims 2, 3, 7, 8, 11-13, 18, and 19)
Appellants do not provide separate persuasive arguments as to the
obviousness rejections of dependent claims 2, 3, 7, 8, 11-13, 18, and 19. See App.
Br. 28-31. We, therefore, sustain these rejections.
DECISION
The rejection of claims 1-20 under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter is REVERSED.
The rejection of claims 7, 8, and 17 under 35 U.S.C. § 112, second
paragraph as being indefinite is AFFIRMED.
The rejection of claims 1, 4---6, 10, 14--17, and 20 under 35 U.S.C. § 102(b)
as anticipated by Ranganathan is AFFIRMED.
The rejection of claims 2, 3, 8, and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Ranganath and Hayashi is AFFIRMED.
The rejection of claim 7 under 35 U.S.C. § 103(a) as being unpatentable
over Ranganath and Shimura is AFFIRMED.
The rejection of claims 11, 12, and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Ranganath and Vargas-Hurlston is AFFIRMED.
The rejection of claims 13 and 19 under 35 U.S.C. § 103(a) as being
unpatentable over Ranganath and Hamalainen 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)(l)(iv).
AFFIRMED
9