Ex Parte Saxena

Board of Patent Appeals and Interferences

Jan 15, 2009

09640478 (B.P.A.I. Jan. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AVINASH C. SAXENA
____________

Appeal 2008-2742
Application 09/640,478
Technology Center 2400
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Decided: January 15, 2009
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Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
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Application 09/640,478

INVENTION
The invention on appeal is directed generally to the field of data
processing. More particularly, Appellants’ invention is directed to a method
and system for uniform resource locator transformation (Spec. 1).

ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows:
1. A method for communicating data comprising:

establishing at a cache server a first uniform resource
identifier and a header portion associated with a first content
item;

caching a second content item corresponding to the first
content item, the second content item identified by a second
uniform resource identifier, the second uniform resource
identifier comprising the first uniform resource identifier and
information from the header portion;

receiving a first request at the cache server, the first
request requesting the first content item, the first request
comprising the first uniform resource identifier and the header
portion;

comparing the first uniform resource identifier and the
header portion to transform criteria to identify a specific
transform associated with the first uniform resource identifier
and the header portion, the specific transform defining an action
to perform on the first uniform resource identifier and the
header portion;

generating a second request based on the specific
transform, the header portion, and the first uniform resource
identifier, the second request being associated with the second
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content item, the second request generated by performing the
action associated with the specific transform on the header
portion and the first uniform resource identifier to yield the
second uniform resource identifier; and

retrieving the second content item based on the second
uniform resource identifier of the second request.

PRIOR ART
The Examiner relies upon the following references as evidence in
support of the rejection:
Stewart US 6,389,460 B1 May 14, 2002
Periyannan US 6,587,928 B1 July 1, 2003

THE REJECTION
1. Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Stewart and Periyannan.

APPELLANT’S CONTENTIONS
Appellant notes that the Examiner admits that the Stewart reference
fails to disclose an ability to compare the first uniform resource identifier
and the header portion to transform criteria to identify a specific transform
associated with the first uniform resource identifier and the header portion.
(App. Br. 9-10; see also Ans. 5). Appellant contends that the secondary
Periyannan reference also fails to teach or suggest these claimed features
(App. Br. 10). In particular, Appellant contends that the portion of
Periyannan relied on by the Examiner does not teach a comparison used to
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identify a specific transform but instead merely teaches a determination as to
whether a request is for a cacheable or non-cacheable object (App. Br. 10;
see also Periyannan, col. 4, ll. 59-64). According to Appellant, if the request
in Periyannan is for a cacheable object, the request is merely passed to the
cache. If the request is for a non-cacheable object, the request is merely
passed to the content server (App. Br. 10).
Regarding the Examiner’s proffered combination of Stewart and
Periyannan, Appellant further contends that the Examiner has failed to
provide an objective reason that would have prompted a person of ordinary
skill in the art to combine the teachings of the Stewart and Periyannan
references (App. Br. 7). In particular, Appellant contends that the Examiner
has relied on impermissible hindsight reconstruction in combining the
Stewart and Periyannan references. (App. Br. 8).

EXAMINER’S RESPONSE
In the “Response to Arguments” section of the Answer (pp. 7-11), the
Examiner does not directly address Appellant’s contention that the
combination of Stewart or Periyannan does not teach or suggest comparing
the first uniform resource identifier and the header portion to transform
criteria to identify a specific transform associated with the first uniform
resource identifier and the header portion (see independent claims 1 and 11).
Regarding the issue of hindsight, the Examiner maintains that modifying the
teachings of Stewart with the teachings of Periyannan would have improved
Stewart’s cache performance (Ans. 9).

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ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:

ISSUE 1
Has Appellant shown error in the Examiner's finding that the
combination of Stewart and Periyannan teaches and/or suggests comparing
the first uniform resource identifier and the header portion to transform
criteria to identify a specific transform associated with the first uniform
resource identifier (as required by the language of independent claim 1 and
the equivalent language of independent claim 11)?

ISSUE 2
Has Appellant shown that the Examiner erred by relying on hindsight
in combining the cited Stewart and Periyannan references?

PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v.
Teleflex, Inc., 127 S. Ct. 1727, 1742 (2007). To be nonobvious, an
improvement must be “more than the predictable use of prior art elements
according to their established functions.” Id. at 1740. Appellants have the
burden on appeal to the Board to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006). Therefore,
we look to Appellant’s Briefs to show error in the proffered prima facie
case.
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FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by a preponderance of the evidence:

THE PRIMARY STEWART REFERENCE
1. Stewart teaches a method of storing an image that includes the
following operations: “receiving URL and associated HTTP Request
and HTTP Response information; parsing the HTTP Request
information and the HTTP Response information to obtain cookies
and authorizations contained therein; merging the cookies if related
cookies are contained in the HTTP Request and the HTTP Response;
forming an image identification string by combining the URL, the
merged cookies and the authorizations; hashing the image
identification string to produce a hash directory; replacing
unpermitted characters in the image identification string with
predetermined replacements; dividing the image identification string
to form a directory path having a series of individual directories;
forming the individual directories of the directory path in the image
storage device to the extent not already present; and storing at least
one file in a resulting directory identified by the directory path.” (Col.
4, l. 54 through col. 5, ll. 4).

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THE SECONDARY PERIYANNAN REFERENCE
2. Periyannan teaches that “[r]equests are identified as being for a
cacheable object or a non-cacheable object according to information
included in a Uniform Resource Locator (URL) associated with the
object.” (Abstract).
3. Periyannan teaches that “[a] router may be . . . configured to
recognize a request as being for a cacheable object or a non-cacheable
object according to a port on which the request is received and
redirect it to a cache as appropriate.” (Abstract).
4. Periyannan teaches that “[i]n a network configuration such as that
shown in FIG. 1 . . . when the router 12 receives a request from a
client (step 20), a check is made to determine whether the request is
for a cacheable or non-cacheable object (step 22).” (Col. 4, ll. 57-61).
5. Periyannan teaches that “[i]f the request is for a cacheable object, the
request is passed to cache 16 (step 24) as before.” (Col. 4, ll. 61-62).
6. Periyannan teaches that “where the request is for a non-cacheable
object, it is passed directly to the origin content server 18 step 26).”
(Col. 4, ll. 63-64)
7. Periyannan teaches that “the determination as to whether the request is
for a cacheable or non-cacheable object (step 22) is made depending
upon the port number on which the request is made.” (Col. 5, ll. 5-8).
8. Periyannan teaches modifying a URL by appending a port number to
the URL such that the port designation directs the client request to the
desire port. (Col. 5, ll. 26-33).
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9. Periyannan teaches that “most conventional routers can easily and
very quickly make redirection decision based on port numbers.” (Col.
4, ll. 65-67).
10. Periyannan teaches that “[i]t is much more time consuming to make
redirection decisions based on (a) free form test that has to be parsed
out of some other field (e.g., a path field) in a URL or from
information encoded in the header or payload of a data packet.” (Col.
4, l. 67 through col. 5, l. 4).
11. Periyannan teaches that web pages with embedded objects have
modified URLs associated with those objects that include port
designations that indicate the objects should be cached. (Col. 5, ll.
41-46).

ANALYSIS
ISSUE 1
We decide the question of whether Appellant has shown the Examiner
erred in finding that the combination of Stewart and Periyannan teaches
and/or suggests comparing the first uniform resource identifier and the
header portion to transform criteria to identify a specific transform
associated with the first uniform resource identifier (as required by the
language of independent claim 1 and the equivalent language of independent
claim 11).
In the Answer, the Examiner explains that “the transform criteria [in
Periyannan] is whether the requested object is cacheable or non-cacheable
based on the URL and header information of the request.” (Ans. 5).
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We have considered how the Examiner has construed the meaning of
the claimed “transform criteria” that identifies a specific transform (see
independent claims 1 and 11). However, if we adopt the Examiner’s
aforementioned reading of “transform criteria” (as applied to Periyannan),
we find the Examiner’s construction to be inconsistent with the usage of
“transform” as that term is applied in the remainder of the claim. Claim
terms are not interpreted in a vacuum, devoid of the context of the claim as a
whole. See Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369,
1374 (Fed. Cir. 1999) (“proper claim construction ... demands interpretation
of the entire claim in context, not a single element in isolation.”); ACTV, Inc.
v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“While certain
terms may be at the center of the claim construction debate, the context of
the surrounding words of the claim also must be considered....”).
Here, as pointed out by Appellant, Periyannan teaches that the
determination as to whether the request is for a cacheable or non-cacheable
object is made depending upon the port number on which the request is
made, where the port number is contained within the URL itself (FF 7-8). In
particular, we note that Periyannan’s Web pages already have modified
URLs (that include a port number designating whether the object should be
cached) (FF-11). Therefore, we find that Periyannan’s URLs are not
compared with transform criteria where (to be consistent with the remainder
of the claim) the transform criteria identifies a specific transform that
defines an action to perform on the first uniform resource identifier portion
where a second request is generated based on the specific transform.
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For at least the aforementioned reasons, it is our reasoned conclusion
that the teachings of Stewart and Periyannan do not fit together so as to
fairly teach or suggest Appellant’s claimed invention. Moreover, we find
the weight of the evidence generally supports Appellant’s contention that the
Examiner has taken disparate bits and pieces of subject matter from the
Stewart and Periyannan references and combined these elements in an
attempt to reconstruct Appellant’s claimed invention.
Accordingly, Appellant has shown the Examiner erred in finding that
the combination of Stewart and Periyannan teaches and/or suggests
comparing the first uniform resource identifier and the header portion to
transform criteria to identify a specific transform associated with the first
uniform resource identifier (as required by the language of independent
claim 1 and the equivalent language of independent claim 11).

ISSUE 2
We now decide the question of whether Appellant has shown that the
Examiner erred by relying on hindsight in combining the cited Stewart and
Periyannan references. Although we need not reach this issue to decide this
appeal, we nevertheless address the question of hindsight for the sake of
completeness.
The U.S. Supreme Court has reaffirmed that “[a] factfinder should be
aware, of course, of the distortion caused by hindsight bias and must be
cautious of argument reliant upon ex post reasoning.” KSR, 127 S. Ct. at
1742. See also Graham v. John Deere Co., 383 U.S. 1, 36 (1966).
Nevertheless, in KSR the Supreme Court also qualified the issue of hindsight
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by stating that “[r]igid preventative rules that deny factfinders recourse to
common sense, however, are neither necessary under our case law nor
consistent with it.” KSR, 127 S. Ct. at 1742-43.
Here, we agree that a person of ordinary skill in the art at the time of
the invention would not have reasonably combined the Stewart and
Periyannan references in the manner suggested by the Examiner for
essentially the same reasons argued by Appellant in the Briefs.
As pointed out by Appellant, the primary Stewart reference is directed
to storing an image according to an image identification string, while the
secondary Periyannan reference is directed to a scheme for storing cacheable
and non-cacheable objects according to a port number added to a uniform
resource locator. (App. Br. 7, ¶2). The Examiner admits that “Stewart is
silent to the idea of what steps [should] be performed when it would not be
advantageous for the system to attempt to cache information received from a
user request.” (Ans. 10.) The Examiner observes that Periyannan teaches a
caching system that deals with the issue of what steps to perform on a client
request where it is not advantageous to perform caching of all of the
information. (Id.). Thus, the Examiner proffers that Periyannan’s teaching
would have provided an improvement to Stewart's system by “avoid[ing]
wasting operations [by] caching web results that are not in the system's best
interest to perform web proxy services on.” (Id.).
Based upon our review of the evidence before us, we agree with the
Examiner that “Stewart is silent to the idea of what steps [should] be
performed when it would not be advantageous for the system to attempt to
cache information received from a user request.” (Ans. 10). Therefore, we
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find there is no problem or deficiency in the teachings of Stewart that would
have reasonably led an artisan familiar with Stewart to look to Periyannan’s
teachings of recognizing a request as being for a cacheable object or a non-
cacheable object according to a port on which the request is received (FF 3).
We have fully considered the Examiner’s arguments (see Ans. 8-10).
However, we are unconvinced that an artisan possessing common sense
would have combined the Stewart and Periyannan references in the manner
suggested by the Examiner without having the benefit of the claimed subject
matter.

CONCLUSION OF LAW
Appellant has established that the Examiner erred in rejecting claims
1-20 under 35 U.S.C. § 103(a) as being obvious over the combination of
Stewart and Periyannan.

DECISION
We reverse the Examiner’s decision rejecting claims 1-20.

REVERSED

pgc

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