Ex Parte Rozen

Board of Patent Appeals and Interferences

Jan 5, 2009

09757745 (B.P.A.I. Jan. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOHN ROZEN
____________

Appeal 2008-3265
Application 09/757,745
Technology Center 2100
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Decided: January 5, 2009
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Before LANCE LEONARD BARRY, ST. JOHN COURTENAY, III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-3, 5, 6, 8, and 10-14. Claims
4, 7, and 9 have been cancelled. The Appellant appeals therefrom under 35
U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). An oral
hearing for this appeal was conducted on December 11, 2008.

INVENTION
The invention at issue on appeal "causes a [client's] browser to
connect to the closest available content server without having to know in
advance the address of that content server." (Spec. 8.) More specifically,
the invention groups servers that share content and relies on the cooperation
of the routers between the client and the servers to resolve which server is
the closest available one. (Id.)

ILLUSTRATIVE CLAIM
6. A content delivery system comprising:
an autonomous system including a first content server and a
second content server having content in common with said
first content server;
an origin server separate from the autonomous system for
providing an address to a client in response to a request for
content, the address identifying said autonomous system;
a first router for relaying messages to said first content server;
and
a second router for relaying messages to said second content
server.

PRIOR ART
Hasebe 6,212,570 Apr. 3, 2001

W. Richard Stevens et al, TCP/IP Illustrated, Volume I: The Protocols
138-39 (Addison-Wesley Pub. Co.1994)

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REJECTIONS
Claims 1-3, 6, and 10-13 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Hasebe.

Claims 5, 8, and 14 stand rejected under 35 U.S.C. § 103(a) as
obvious over Hasebe and Stevens.

ISSUE
"Rather than reiterate the positions of the parties in toto, we focus on
an issue therebetween." Ex parte Kuruoglu, No. 2007-0666, 2007 WL
2745820, at *2 (BPAI 2007). The Examiner finds that "Hasebe teaches . . .
an origin server (network exchange device 20) . . . ." (Answer 12.) The
Appellant argues that "[a]s described in Hasebe, the NED's 20 and 40 are
essentially routers. They cannot carry out the functions characteristic of an
origin server." (Reply Br. 4.) Therefore, the issue before us is whether the
Appellant has shown error in the Examiner's finding that Hasebe's network
exchange device 20 constitutes an origin server.

LAW
"Claims must be read in view of the specification, of which they are a
part." Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.
1995) (en banc).

"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability." In
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Application 09/757,745

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re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "[A]nticipation of a claim
under § 102 can be found only if the prior art reference discloses every
element of the claim . . . ." In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986)
(citing Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick
Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). "[A]bsence from the reference
of any claimed element negates anticipation." Kloster Speedsteel AB v.
Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986).

FINDINGS OF FACT ("FFS")
1. The Appellant discloses that "[t]o retrieve a web-page, a user
typically provides, to a web-browser running on that user's computer, a URL
(uniform resource locator) identifying an origin server that contains the
desired web-page." (Spec. 1.) "After having learned the I[nternet]
P[rotocol] address for the origin server, the web-browser sends that origin
server a message requesting the desired web-page. In response, the origin
server sends the desired web-page to the web-browser." (Id.)

2. Hasebe discloses an "information distribution device selection
system for selecting one information distribution device on an inter-
connected communication networks formed by a plurality of communication
networks, which provides an [sic] information in response to a request from
a user terminal device . . . ." (Col. 3, ll. 63– 67.)

3. Figure 7 of Hasebe shows communication network exchange
device 20 and communication network exchange devices 40A-C.

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4. "The communication network exchange device 40 is essentially an
element for controlling a route at a time of transmitting the information . .
. ." (Hasebe, Col. 7, ll. 58-60.) "The communication network exchange
device 40 . . . has a function for constantly exchanging routing information
with the other communication network exchange devices 40 and controlling
a route between the user terminal device 10 and the information distribution
device 60." (Hasebe, Col. 8, ll. 23-30 (emphasis added)).

5. Persons of ordinary skill in the art would have known that routers
maintain tables showing routes.

ANALYSIS
The independent claims on appeal recite in pertinent part "an origin
server." The Appellant's Specification explains that an origin server may
contain a desired web-page and that it sends the desired web-page to a web-
browser upon request. (FF 1.) Reading the independent claims in view of
the Specification, we agree with the Appellant that these claims require a
"server that maintains web pages for delivery upon request" (Reply Br. 4)
and that is "capable of returning a requested web page if it were appropriate
to do so" (id.).

"Hasebe does not discuss the devices 20A-C in detail" (Supp. Appeal
Br.1 10) including whether the devices 20A-C maintain web pages for

1 We rely on and refer to the Supplemental Appeal Brief in lieu of the
original Appeal Brief, because the latter was defective. We have not
considered the original in deciding this appeal.
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delivery upon request or are capable of returning a requested web page.
Furthermore, the Examiner does not allege, let alone meet his burden of
showing, that the communication network exchange device 20 (or the
communication network exchange devices 40A-C) maintains web pages for
delivery upon request or is capable of returning a requested web page.

For its part, the communication network exchange device 40 is
essentially an element for controlling a route at a time of transmitting
information. (FF 4.) Consequently, we agree with the Appellant that the
communication network exchange devices 40A-C "are essentially routers."
(Reply Br. 3.)

We also agree with the Appellant's following conclusions.
"[Because] Hasebe uses the term "network exchange device" to
refer to both network exchange devices 20 communicating with
user terminal 10 and network exchange devices 40 commun-
icating with the information distribution devices 60, it is
reasonable to infer that the network exchange devices 20 and 40
carry out identical functions. Thus, it is difficult to avoid the
inference that the network exchange device 20 . . . is
structurally and functionally identical to the network exchange
devices 40 . . . .
(Id.) Because the communication network exchange device 40 is essentially
a router, and the network exchange device 20 is structurally and functionally
identical to the network exchange devices 40, the communication network
exchange device 20 is also essentially a router.

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The Examiner explains that "[d]evice 20A shows a table identifying
the route for content server 60A (IP address 192.0.0.1) . . . ." (Answer 17.)
Routers maintain tables showing routes. (FF 5.) Such an explanation
supports the finding that the communication network exchange device 20 is
essentially a router. The Examiner does not allege, let alone show, that
Hasebe’s routers maintain web pages for delivery upon request, or are
capable of returning a requested web page.

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellant has shown error in the Examiner's finding that Hasebe's network
exchange device 20 constitutes an origin server. The absence of an origin
server negates anticipation. The Examiner does not allege, let alone show,
that the addition of Stevens cures the aforementioned deficiency of Hasebe.

ORDER
We reverse the rejections of claims 1-3, 5, 6, 8, and 10-14.

REVERSED

msc

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