Ex Parte Johnson

Board of Patent Appeals and Interferences

Jan 9, 2009

10121271 (B.P.A.I. Jan. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PETER J. JOHNSON
____________________

Appeal 2008-2732
Application 10/121,271
Technology Center 2100
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Decided: January 9, 2009
____________________

Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellant appeals from the Examiner’s final rejection of claims 1-19
under 35 U.S.C. § 134 (2002). We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

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A. INVENTION
According to Appellant, the invention relates to transaction processing
between computers in a distributed computing environment (Spec. 1, ll. 7-9).

B. ILLUSTRATIVE CLAIMS
Claims 1 and 10 are exemplary and are reproduced below:
1. A method of pre-processing a transaction within an application
program in a distributed data processing system comprising:

a network;

a first computer system, a second computer system, each of said first
computer system and said second computer system comprising a processor,
memory for storing said transaction and an operating system for executing
said application program; and

means for establishing a communication channel between said first
computer system and said second computer system over said network, said
method comprising the steps of:

sending, by said first computer system, a transaction;

receiving, by said second computer system, said transaction;

determining, by said second computer system, if said transaction is
current;

in response to a successful determining step, forwarding said
transaction for processing, by said second computer system;

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in response to an unsuccessful determining step, sending, by said
second computer system, means for updating said transaction to an updated
transaction;

receiving, by said first computer system, said means for updating, and
applying, by said first computer system, said means for updating to said
transaction.

10. A distributed data processing system for pre-processing a
transaction within an application program comprising:

a network;

a first computer system, a second computer system, each of said first
computer system and said second computer system comprising a processor,
memory for storing said transaction and an operating system for executing
said application program; and

means for establishing a communication channel between said first
computer system and said second computer system over said network, said
distributed data processing system further comprising:

means for sending, by said first computer system, a transaction;

means for receiving, by said second computer system, said
transaction;

means for determining, by said second computer system, if said
transaction is current;

means, responsive to successful determining, for forwarding said
transaction for processing, by said second computer system;

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means, responsive to unsuccessful determining, for sending, by said
second computer system, means for updating said transaction to an updated
transaction;

means for receiving, by said first computer system, said means for
updating, and means for applying, by said first computer system, said means
for updating to said transaction.

C. PRIOR ART
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
R. Fielding et al., Hypertext Transfer Protocol – HTTP/1.1, Network
Working Group RFC 2616 (June 1999), available at
http://www.ietf.org/rfc/rfc2616.txt (hereinafter “NWG”).

D. REJECTION
Claims 1-19 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by NWG.

E. SUMMARY OF DECISION
We REVERSE and enter a new ground of rejection regarding claims
1-9 as permitted by 37 C.F.R. § 41.50(b).

II. ISSUE
The primary issue before us is whether Appellant has shown that the
Examiner erred in finding that claims 1-19 are anticipated by NWG. In
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particular, the issue turns on whether NWG discloses a “means, responsive
to unsuccessful determining, for sending, by said second computer system,
means for updating said transaction to an updated transaction” and a “means
for receiving, by said first computer system, said means for updating, and a
means for applying, by said first computer system, said means for updating
to said transaction” (claim 10).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Network Working Group (NWG)
1. NWG discloses using HTTP as a generic protocol for communication
between user agents and proxies/gateways to other Internet systems
(Sec. 1.1, at 7).
2. A “client” is a program that establishes connections for the purpose of
sending requests (Sec. 1.3, at 8).
3. A “proxy” is an intermediary program which acts as both a server and
a client for the purpose of making requests on behalf of other clients,
wherein a “non-transparent proxy” is a proxy that modifies the request
or response in order to provide some added service to the user agent
(Sec. 1.3, at 9).
4. A client sends a request to the server followed by a MIME-like
message containing request modifiers, and the server responds with a
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status line, wherein a proxy may be used as a forwarding agent
receiving requests, rewriting all or part of the message, and
forwarding the reformatted request toward the server identified (Sec.
1.4, at 11).
5. Proxy and gateway applications need to be careful when forwarding
messages in protocol versions different from that of the application,
wherein, if a higher version request is received, the proxy/gateway
MUST either downgrade the request version, or respond with an error,
or switch to tunnel behavior (Sec. 3.1, at 17).
6. A “bad request” is when the request could not be understood by the
server due to malformed syntax, wherein the client SHOULD NOT
repeat the request without modifications (Sec. 10.4.1, at 64).

IV. PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
“A claim is indefinite if, when read in light of the specification, it
does not reasonably apprise those skilled in the art of the scope of the
invention.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
1342 (Fed. Cir. 2003).
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The function of claims is (1) to point out what the invention is in such
a way as to distinguish it from the prior art; and (2) to define the scope of
protection afforded by the patent. In re Vamco Machine & Tool, Inc., 752
F.2d 1564, 1577 n.5 (Fed. Cir. 1985). “The legal standard for definiteness is
whether a claim reasonably apprises those of skill in the art of its scope.” In
re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). The inquiry is merely
to determine whether the claims do, in fact, set out and circumscribe a
particular area with a reasonable degree of precision and particularity. In re
Moore, 439 F.2d 1232, 1235 (CCPA 1971).
When the claims become so ambiguous that one of ordinary skill in
the art cannot determine their scope absent speculation, such claims are
invalid for indefiniteness. IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430
F.3d 1377, 1384 (Fed. Cir. 2005) and S3 Inc. v. NVIDIA Corp., 259 F.3d
1364, 1372 (Fed. Cir. 2001) (citing In re Steele, 305 F.2d 859, 862-63
(CCPA 1962).
The analysis of a claim rejection based on prior art should not be
performed where it is necessary to engage in speculation as to the meaning
of claim terms and assumptions as to the scope of a claim. See In re Steele,
305 F.2d at 862.

V. ANALYSIS
Claims 1-9
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35 U.S.C. § 102(b)
As for claims 1-9, Appellant contends that “NWG fails to teach
sending a means for updating a transaction from a second computer” (App.
Br. 8), and that “this [updating] step is not responsive to a determination, by
the second computer, that a transaction received from the first computer is
not current” (App. Br. 9). We reverse the outstanding rejection of claims 1-
9 under 35 U.S.C. § 103(a), pro forma, because we conclude that at least
independent claim 1 is indefinite under 35 U.S.C. § 112, second paragraph,
as detailed under new grounds of rejection infra. That is, claims 1-9 on
appeal must be reasonably understood without resorting to speculation to
thereby prevent the rejections of the claims over prior art from being based
on speculation and assumptions as to the scope of the claims. See In re
Steele, 305 F.2d at 862. Presently, the claims on appeal do not adequately
reflect what the disclosed invention is. We are therefore declining from
utilizing speculation and conjecture in an attempt to ascertain the scope of
the claims.

35 U.S.C. §112, Second Paragraph
New Ground of Rejection
We find that independent claim 1 on appeal as a whole is so abstract
in its recitation that it is deemed indefinite. That is, we cannot determine the
metes and bounds of claim 1 as required to ascertain the scope of the claim.
In particular, we are unclear as to what is the subject matter being claimed.
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That is, claim 1 is directed to a method within a system comprising certain
components that performs a method comprising certain steps.
Therefore, we find it unclear whether the language of claim 1 is
directed to a computer-implemented system or a method of using that
system. Our reviewing court has determined that a claim directed to a
system and a method for using that system is indefinite. See IPXL Holdings,
430 F.3d at 1384. See also S3 Inc., 259 F.3d at 1372 (“When the claims
become so ambiguous that one of ordinary skill in the art cannot determine
their scope absent speculation, such claims are invalid for indefiniteness.”)
(citing In re Steele, 305 F.2d at 862-63).
Here, we conclude that claim 1 does not reasonably apprise those
skilled in the art of its scope. On the one hand, Appellant presents a first
portion of the claim directed to a computer-implemented system. On the
other hand, the second portion of the claim is directed to a method for using
that system.
Because we conclude that there are significant ambiguities with
respect to independent claim 1 and each of claims 2-9 depending therefrom,
we enter a new ground of rejection under 35 U.S.C. § 112, second
paragraph, against claims 1-9 on appeal, pursuant to our authority under 37
C.F.R. § 41.50(b).

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Claims 10-19
35 U.S.C. § 102(b)
NWG discloses communications between a client and a server via
proxies (FF 1), wherein a transaction such as a request is sent by the client
(FF 2), and the proxy receives the request before forwarding to the server for
processing (FF 3). In NWG, the client also sends a message containing
request modifiers (FF 4), wherein, if a request with a higher version than that
of the application is received, the proxy responds with an error (FF 5). If a
received request is a “bad request” that could not be understood by the
server, the client will not repeat the request without modifications (FF 6).
We find an artisan would have understood that the means for
determining the request version as taught by NWG to be a “means for
determining, by said second computer system, if said transaction is current”
(claim 10). Further, an artisan would have understood that the modification
by the client of a bad request to be “means for applying, by said first
computer system, said means for updating to said transaction” (claim 10).
However, Appellant contends that “NWG fails to teach sending a
means for updating a transaction from a second computer” (App. Br. 8), and
that “this [updating] step is not responsive to a determination, by the second
computer, that a transaction received from the first computer is not current”
(App. Br. 9). The Examiner finds that NWG discloses such teaching (Ans.
9-10 and 12-17). Accordingly, the issue we are addressing in this appeal is
whether NWG discloses (1) a “means, responsive to unsuccessful
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determining, for sending, by said second computer system, means for
updating said transaction to an updated transaction” and (2) a “means for
receiving, by said first computer system, said means for updating, and means
for applying, by said first computer system, said means for updating to said
transaction” (claim 10).
After reviewing the record on appeal, we agree with Appellant. While
NWG discloses the means for determining whether the transaction version is
current (FF 5), and a means for updating the transaction (FF 6), we find that
NWG does not disclose a means “for sending, by said second computer
system, a means for updating said transaction to an updated transaction,” or
a “means for receiving, by said first computer system, said means for
updating” to apply said means for updating. That is, although we agree with
the Examiner that NWG discloses determining whether the transaction
version is current, NWG does not send a “means for updating” from the
proxy back to the client. In particular, we agree with Appellant that,
although NWG discloses sending of an error message back to the client (FF
5), the error message is not a “means for updating” to be applied to the
transaction for updating.
Similarly, although we agree with the Examiner that NWG discloses
updating the transaction, the updating is not done by applying the received
“means for updating” sent from the proxy back to the client.
Therefore, we reverse the rejection of representative claim 10 and
claims 11-18 depending therefrom over NWG. Additionally, because
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independent claim 19 similarly recites a computer program product which
performs the steps of “in response to an unsuccessful determining step,
sending, by said second computer system, means for updating said
transaction to an updated transaction” and “receiving, by said first computer
system, said means for updating, and applying, by said first computer
system, said means for updating to said transaction,” we also reverse the
rejection of claim 19. We thus find that Appellant has shown the Examiner
erred in rejecting claims 10-19 under 35 U.S.C. § 102(b) for the reasons as
set forth above.

VI. CONCLUSION OF LAW
Appellant has shown that the Examiner erred in finding that claims
10-19 are anticipated by the teachings of NWG.

VII. DECISION
We reverse the Examiner's rejection of claims 10-19 under 35 U.S.C.
§ 102(b).
In a new ground of rejection, we reject claims 1-9 under 35 U.S.C. §
112, second paragraph, as being indefinite.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.”
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37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

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).

REVERSED -- 37 C.F.R. § 41.50(b)

msc

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