Ex Parte Harvey et al

Board of Patent Appeals and Interferences

Sep 10, 2012

11134070 (B.P.A.I. Sep. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RICHARD H. HARVEY, DAMON N.
GROENVELD, and RONALD W. RAMSAY
____________________

Appeal 2010-005929
Application 11/134,070
Technology Center 2100
____________________

Before ERIC S. FRAHM, KALYAN K. DESHPANDE, and RAMA G.
ELLURU, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005929
Application 11/134,070

2
STATEMENT OF CASE1
The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 25-47, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We REVERSE.

The Appellants invented a method and apparatus for handling director
operations. Specification 1:10-11.
An understanding of the invention can be derived from a reading of
exemplary claim 25, which is reproduced below [bracketed matter and some
paragraphing added]:
25. A method for handling a query in a directory system,
comprising:
[1] determining availability of an alternate evaluator
operable to process directory operations, the alternate evaluator
having a first storage device comprising a cache preloaded with
one or more directory entries selected from a directory server
having a second storage device, the alternate evaluator being
configured to evaluate the query based on the one or more
directory entries preloaded in the first storage device without
accessing the directory server;
[2] determining one or more first parameters associated with
the query;
[3] determining one or more second parameters associated
with the alternate evaluator;
[4] determining if at least one of the first parameters
associated with the query is supported by at least one of the
second parameters associated with the alternate evaluator; and

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed October 7, 2009) and Reply Brief (“Reply Br.,” filed February 5,
2010), and the Examiner’s Answer (“Ans.,” mailed December 8, 2009), and
Final Rejection (“Final Rej.,” mailed May 1, 2009).
Appeal 2010-005929
Application 11/134,070

3
[5] forwarding the query to the alternate evaluator for
processing if at least one of the first parameters associated with
the query is supported by at least one of the second parameters
associated with the alternate evaluator.

REFERENCES
The Examiner relies on the following prior art:
Sanchez-Frank
Amer-Yahia
Adya
Tenazas
US 5,394,522
US 6,980,985 B1
US 7,062,490 B2
US 2005/0234894 A1
Feb. 28, 1995
Dec. 27, 2005
Jun. 13, 2006
Oct. 20, 2005

REJECTIONS
Claims 25-28, 30, 32-35, 37, 39-44, and 46 stand rejected under 35
U.S.C. §103(a) as being unpatentable over Amer-Yahia and Adya.
Claims 29, 36, and 45 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Amer-Yahia, Adya, and Tenazas.
Claims 31, 38, and 47 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Amer-Yahia, Adya, and Sanchez-Frank.

ISSUE
The issue of whether the Examiner erred in rejecting claims 25-47
turns on whether the combination of Amer-Yahia and Adya teaches or
suggests “determining availability of an alternate evaluator operable to
process directory operations,” as recited in limitation [1] of claim 25 and as
similarly recited in independent claims 32, 39, and 41.
Appeal 2010-005929
Application 11/134,070

4

ANALYSIS
Claims 25-28, 30, 32-35, 37, 39-44, and 46 rejected under 35 U.S.C.
§103(a) as being unpatentable over Amer-Yahia and Adya
The Appellants contend that the combination of Amer-Yahia and
Adya fails to teach or suggest “determining availability of an alternate
evaluator operable to process directory operations,” as recited in limitation
[1] of claim 25 and as similarly recited in independent claims 32, 39, and 41.
App. Br. 14-15 and Reply Br. 3. We agree with the Appellants. The
Examiner found that Amer-Yahia describes determining which servers need
to be contacted in order to fulfill a request. Ans. 20-21 (citing Amer-Yahia
5:14-15). However, this is not the same as “determining availability of an
alternate evaluator.” The Examiner does not set forth any further evidence
or rationale to support the finding that as to illustrate how determining the
availability of a server encompasses “determining which servers are needed
to complete a request.”
As such, we do not sustain the rejection of independent claims 25, 32,
39, and 41 and dependent claims 26, 28, 30, 33, 35, 37, 40, 42, 44, and 46.
Since this issue is dispositive as to the rejections against these claims, we
need not reach the remaining arguments presented by the Appellants.

Claims 29, 36, and 45 rejected under 35 U.S.C. §103(a) as being
unpatentable over Amer-Yahia, Adya, and Tenazas
Dependent claims 29, 36, and 45 incorporate the limitation
“determining availability of an alternate evaluator operable to process
directory operations” from independent claims 25, 32, 39, and 41. We found
Appeal 2010-005929
Application 11/134,070

5
that the Examiner erred in finding that the combination of Amer-Yahia and
Adya teaches or suggests this limitation supra, and therefore, we find that
the Examiner erred in finding that the cited prior art teaches or suggests this
limitation in these dependent claims for the same reasons. As such, we do
not sustain the Examiner’s rejection of claims 29, 36, and 45.

Claims 31, 38, and 47 rejected under 35 U.S.C. §103(a) as being
unpatentable over Amer-Yahia, Adya, and Sanchez-Frank
Dependent claims 31, 38, and 47 incorporate the limitation
“determining availability of an alternate evaluator operable to process
directory operations” from independent claims 25, 32, 39, and 41. We found
that the Examiner erred in finding that the combination of Amer-Yahia and
Adya teaches or suggests this limitation supra, and therefore, we find that
the Examiner erred in finding that the cited prior art teaches or suggests this
limitation here for the same reasons. As such, we do not sustain the
Examiner’s rejection of claims 31, 38, and 47.

CONCLUSIONS
The Examiner erred in rejecting claims 25-28, 30, 32-35, 37, 39-44, and
46 under 35 U.S.C. §103(a) as being unpatentable over Amer-Yahia and
Adya.
The Examiner erred in rejecting claims 29, 36, and 45 under 35 U.S.C.
§103(a) as being unpatentable over Amer-Yahia, Adya, and Tenazas.
The Examiner erred in rejecting claims 31, 38, and 47 under 35 U.S.C.
§103(a) as being unpatentable over Amer-Yahia, Adya, and Sanchez-Frank.
Appeal 2010-005929
Application 11/134,070

6

DECISION
The Examiner’s rejection of claims 25-47 under 35 U.S.C. § 103(a) is
REVERSED.

REVERSED

tj