Ex Parte Patel

Patent Trial and Appeal Board

Mar 5, 2014

11951551 (P.T.A.B. Mar. 5, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PARITOSH D. PATEL
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Appeal 2011-012245
Application 11/951,551
Technology Center 2100
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Before ANTON W. FETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-012245
Application 11/951,551

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

THE CLAIMED INVENTION
Appellant’s claimed invention relates to a method of “improving
remote desktop performance and reducing network bandwidth requirements
by transporting to a local computer globally unique identifiers (GUIDs)
assigned to resource files rendered on a remote computer, rather than the
resource files themselves” (Spec., para. [0001]).
Claim 1, reproduced below with added bracketed notations, is
illustrative of the subject matter on appeal:
1. A method of improving remote desktop performance,
which method comprises:
[a] rendering, on a remote computer, a resource
associated with a resource file tagged with a globally unique
identifier (GUID);
[b] sending said GUID to a local computer;
[c] determining if said local computer has stored in
local storage a copy of the resource file tagged with said GUID;
[d] in response to determining that said local computer
has said resource file stored in said local storage, rendering
locally stored resource on said local computer; and

1 Our decision will refer to Appellant’s Appeal Brief (“Br.,” filed
February 28, 2011) and the Examiner’s Answer (“Ans.,” mailed May 12,
2011).
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[e] in response to determining that said local computer
does not have said resource file stored in said local storage,
requesting said resource file from said remote computer.

THE REJECTIONS
The following rejections are before us for review:
Claims 1-4, 9-12 and 17 are rejected under 35 U.S.C. § 102(b) as
anticipated by Sakaguchi (US 2005/0027718 A1, pub. Feb. 3, 2005).
Claims 5-8 and 13-16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sakaguchi and Ball (US 2006/0265661 A1, pub. Nov. 23,
2006).

ANALYSIS
Independent claim 1
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 102(b) because Sakaguchi fails
to disclose any of limitations (a), (b), and (e), as recited in claim 1
(Br. 6-10). Instead, we agree with the Examiner that Sakaguchi teaches each
of these features (Ans. 4-6).
Sakaguchi discloses a distributed storage system in which files are
stored in a plurality of storage devices and shared through a network
(see, e.g., Sakaguchi, para. [0002]). Each storage device includes a disk for
storing files, identified uniquely by a GUID (see, e.g., Sakaguchi, paras.
[0030] and [0031]), and a GUID management database, which stores
information relating the GUIDs of files to the device IDs of the storage
devices where the original files are stored (see, e.g., Sakaguchi,
paras. [0012] and [0030]). Sakaguchi describes that an NIS server assigns
GUIDs to the storage devices in block increments, responsive to requests
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from the storage devices (see, e.g., Sakaguchi, paras. [0038] and [0045])
Thus, when a new file is created, if the storage device has no available
GUIDs, it makes a request to the NIS server for allocation of a GUID block.
The NIS server accepts the request; allocates an unused block of GUIDs to
the requesting storage device; and notifies the storage device of the
allocation. The NIS server also broadcasts information of the GUID
allocation to all of the storage devices, which information is recorded in their
respective GUID management databases (see, e.g., Sakaguchi, paras.
[[0048], [0049], [0053], and [0058]). The GUID given to the new file also is
broadcast to the storage devices, and recorded in the GUID management
databases (see Sakaguchi, para. [0058]).
A client machine is connected to each of the storage devices, and uses
the storage device as a local storage (see, e.g., Sakaguchi, para. [0034]).
Sakaguchi describes that when a client machine requests access to a file,
e.g., by sending a READ request, the local storage device determines
whether the file is stored on the local disk. If so, the file is retrieved and
transmitted to the client machine. Otherwise, the storage device searches the
GUID management database (based on the GUID of the requested file) to
identify the “reference storage device” where the original file is stored. The
storage device then forwards the READ request to the reference storage
device; reads the requested file by remote access; and transmits the file to
the client machine (see, e.g., Sakaguchi, paras. [0070], [0074], and [0079]).
Addressing each of limitations (a), (b), and (e) in turn, Appellant first
argues that Sakaguchi fails to disclose element (a) because “Sakaguchi does
not disclose where any resource at a remote computer is assigned a GUID at
that remote computer. Rather Sakaguchi requires that a storage device
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request a GUID from a remote NIS Server” (Br. 8). Stated differently,
Appellant maintains that “Sakaguchi, in contrast [to Appellant’s claimed
invention], only discloses assigning a GUID to a file at a local storage
responsive to a local storage requesting the GUID from a NIS server, and
therefore, Sakaguchi clearly does not anticipate rendering a GUID to a
resource on a remote computer” (Id.).
Appellant’s argument is not persuasive because it is not
commensurate with the scope of the claim. There is nothing in claim 1 that
requires that any resource at a remote computer must be assigned a GUI at
that remote computer.
During examination, the PTO gives claims their “broadest reasonable
interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000). Limitations appearing in the Specification but not
recited in the claim are not read into the claim. E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
Here, the Examiner cited Figures 1-7 and 10-14 and
paragraphs [0012], [0024], [0030], [0037], [0046], and [0047] of Sakaguchi
as disclosing element (a), as recited in claim 1 (Ans. 4-5). In this regard, the
Examiner opined that “broadcasting is equivalent to rendering” (Ans. 5).
We have carefully reviewed the cited paragraphs, on which the
Examiner relies, and we conclude that the Examiner’s findings are
reasonable and supported. Sakaguchi describes that the NIS server
broadcasts GUID blocks and associated storage device ID numbers to the
storage devices, and, thus, meets the language of limitation (a), under a
broad, but reasonable, interpretation.
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Appellant next argues, regarding element (b), that paragraph [0079] of
Sakaguchi, on which the Examiner relies, and Sakaguchi, as a whole, “are
completely devoid of any teaching or suggestion of . . . ‘sending said GUID
to a local computer’” and that “[t]he section relied upon by the Examiner
only discloses sending a file based on a GUID search” (Br. 9). Appellant’s
argument is not persuasive.
Sakaguchi clearly discloses in paragraph [0079] that when a READ
request for a file is made by the client machine, i.e., the local computer, the
storage device determines if the local disk has the file and, if not, the storage
device searches the reference storage device of the file “from the GUID of
the demanded file.” It is at least inherent in this description that the READ
request received from the client machine includes the GUID of the
demanded file.
Finally, Appellant argues that the rejection of claim 1 should be
reversed because paragraphs [0012] and [0079] of Sakaguchi, cited by the
Examiner, and Sakaguchi as a whole, are “completely devoid of any
teaching or suggestion of a local computer requesting a resource file from a
remote computer in response to determining that the local computer does not
have the resource file in local storage” (Br 10), i.e., element (e), “in response
to determining that said local computer does not have said resource file
stored in said local storage, requesting said resource file from said remote
computer,” as recited in claim 1. Pointing to paragraph [0020] of the
Specification for support, Appellant asserts that “Appellant’s claimed
invention [i.e., as recited in element (e) of claim 1] requests the resource file
from the remote computer” whereas Sakaguchi discloses that “the file is
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accessed/read by the local storage device at the remote storage device” (id.).
Appellant, thus, argues that:
Since requesting a resource is clearly not equivalent to a
reading/accessing a resource, Sakaguchi also fails to teach or
suggest Appellants’ “in response to determining that said local
computer does not have said resource file stored in said local
storage, requesting said resource file from said remote
computer.” Sakaguchi therefore does not teach or suggest
Appellants’ claimed invention.

Id.
As described above, in proceedings before the PTO, claims in an
application are to be given their broadest reasonable interpretation consistent
with the Specification. Hyatt, 211 F.3d at 1372. Here, we agree with the
Examiner that element (e) of claim 1, when construed as broadly as
reasonable, covers the arrangement disclosed in Sakaguchi where, if the
local storage device does not have the requested file, the storage device
identifies the reference storage device containing the original file; reads the
requested file by remote access; and transmits the file to the client machine
(see, e.g., Sakaguchi, paras. [0012] and [0079]).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 102(b).
Dependent claim 4
Claim 4 depends from claim 1, and recites that the method further
comprises:
performing a special rendering of a GUID-tagged
resource file on said remote computer; and
sending instructions to said local computer to perform
said special rendering on a file in local storage on said local
computer tagged with said GUID.

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Appellant argues that the Examiner erred in rejecting claim 4 as
anticipated by Sakaguchi because paragraph [0086], on which the Examiner
relies, does not teach the “special rendering” feature of claim 4 (Br. 11-12).
Pointing to paragraph [0021] of the Specification, Appellant asserts that
Appellant’s claimed “special rendering” is not equivalent to a write process,
as disclosed in Sakaguchi, and “is a specific type of rendering used to render
a resource file (such as rendering a color image in black and white, as
supported within paragraph [0021] of Appellants’ specification)” (Br. 12).
There is a heavy presumption that claim terms take on their “plain,
ordinary, and accustomed meaning to one of ordinary skill in the relevant
art.” Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143, 1148 (Fed.
Cir. 2003). A patent applicant may overcome that presumption by acting as
his or her own lexicographer so as to assign a special definition to each
claim term, but such a definition must be “clearly set forth” and “explicit.”
Id.
Here, although Appellant provides an example of a “special
rendering,” we can find no clear and explicit definition of “special
rendering” in the Specification, nor does Appellant point to any such
definition. The term “rendering” is generally understood to mean “a
depiction or interpretation.” See The American Heritage® Dictionary of the
English Language (2009), accessed at http://www.thefreedictionary.com/
rendering (last visited on Feb. 28, 2014). In our view, the WRITE process
disclosed in Sakaguchi is a “special rendering,” under a broad, but
reasonable interpretation.
Therefore, we will sustain the Examiner’s rejection of claim 4 under
35 U.S.C. § 102(b).
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Independent claim 10
Appellant’s arguments with respect to claim 10 are substantially
identical to Appellant’s arguments with respect to claim 1 (Br. 12-16).
Those arguments were unpersuasive with respect to claim 1, and are equally
unpersuasive with respect to claim 10. Therefore, we will sustain the
Examiner’s rejection of claim 10 under 35 U.S.C. § 102(b) for the same
reasons as set forth above with respect to claim 1.
Dependent claim 12
Appellant’s arguments with respect to claim 12 are substantially
identical to Appellant’s arguments with respect to claim 4. We found those
arguments unpersuasive with respect to claim 4, and we find them equally
unpersuasive with respect to claim 12. Therefore, we will sustain the
Examiner’s rejection of claim 12 under 35 U.S.C. § 102(b) for the same
reasons as set forth above with respect to claim 4.
Dependent claims 2, 3, 5-9, 11, and 13-17
Appellant does not present arguments for the separate patentability of
any of dependent claims 2, 3, 5-9, 11, and 13-17, except to assert that each
of these claims is allowable based on its dependence on one of claims 1, 4,
10, and 12 (see Br. 11, 12, 16, 18, and 19). We are not persuaded for the
reasons set forth above that the Examiner erred in rejecting claims 1, 4, 10,
and 12 under 35 U.S.C. § 102(b).
Therefore, we will sustain the rejection of claims 2, 3, 9, 11, and 17
under 35 U.S.C. § 102(b) and the rejection of claims 5-8 and 13-16 under
35 U.S.C. § 103(a).

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DECISION
The Examiner’s rejection of claims 1-4, 9-12 and 17 under 35 U.S.C.
§ 102(b) is affirmed.
The Examiner’s rejection of claims 5-8 and 13-16 under 35 U.S.C.
§ 103(a) 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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