Ex Parte Stickler

Board of Patent Appeals and Interferences

Jan 26, 2009

10155240 (B.P.A.I. Jan. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PATRICK STICKLER
____________

Appeal 2008-1897
Application 10/155,240
Technology Center 2400
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Decided: January 26, 2009
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Before JEAN R. HOMERE, 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 AFFIRM IN PART.
Appeal 2008-1897
Application 10/155,240

INVENTION
The invention on appeal is directed generally to identifying and
locating resources on a distributed network, where the resources are
particularly (although not exclusively) in the form of data streams (Spec. 1).

ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows:
1. A resource locating system for receiving a query from a client
process, the system comprising a plurality of resource location servers
connected to said network, each said server including a query resolution
application operable to parse a query to extract a resource name and
corresponding management path, a register containing a set of predefined
management paths of differing scope and a table binding addresses to
resource names of some at least of said management paths, said register
further including an address being associated with another one of said
predefined management paths, the resolution application being further
operable to provide said process with an address corresponding to one of a
resource name and a predefined management path.

PRIOR ART
The Examiner relies upon the following references as evidence in support of
the rejections:
Chow US 6,751,646 B1 Jun. 15, 2004
Terek US 6,804,700 B1 Oct. 12, 2004

OMG “Naming Service Specification”, Ver. 1.0, April 2000 (incorporated
by reference as part of the CORBA specification in the Chow patent at col.
1, l. 26) (“NSS” hereinafter).
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THE REJECTIONS
Claims 1-4, 6, 7, 9, 10, 12, 15-17, 19, and 20 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Chow.
Claims 5, 8, 11, 13, 14, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Chow and Terek.

APPELLANT’S CONTENTIONS
Appellant contends that the anticipation rejection of claims 1-4, 6, 7,
9, 10, 12, 15-17, 19, and 20 is improper because in the Advisory Action
mailed June 23, 2006 (after the Final Rejection of Feb. 27, 2006) the
Examiner has admitted to using personal knowledge to fill in the gaps
between that shown in the teachings of the Chow reference and that claimed
by Appellant (App. Br. 10). In the Reply Brief, Appellant further contends
that the Examiner has improperly relied on personal knowledge (Reply Br.
3).
Appellant notes that each server of independent claim 1 includes a
query resolution application, a register and a table. Appellant contends that
Chow fails to teach or suggest a register containing a set of predefined
management paths of differing scope, and a table binding addresses to
resource names of some at least of said management paths (App. Br. 9, ¶2).
Appellant acknowledges that NSS discloses a federated naming graph
(Figure 1-1), that arguably could be interpreted as a table or as a register
(Id.). However, Appellant contends that the federated naming graph shown
in Figure 1-1 cannot be interpreted as both (Id.).
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In the Reply Brief, Appellant states that the Examiner (Ans. 9)
considers the disclosure of NSS to be a register that contains a table (Reply
Br. 3). However, Appellant notes that “the Examiner has not explained how,
if NSS discloses a register containing a table, the register contains a set of
predefined management paths of differing scope and the table binds
addresses to resource names of some at least of said management paths as
provided in independent claim 1. To the contrary, there is no apparent
distinction between any table or register provided by NSS, much less that
any register and table disclosed have the corresponding features of
independent claim 1.” (Reply Br. 3). Appellant also contends that the
Examiner’s rejection of claim 1 fails to demonstrate that the prior art
discloses a register that includes an address being associated with another
one of said predefined management paths (App. Br. 9).
Appellant asserts that independent claims 7 and 10 contain similar
recitations to those of independent claim 1 with respect to the binding of
addresses to resource names and the functions of the resolution application
in each of the resource location servers (App. Br. 9, ¶4). Additionally,
Appellant submits that independent claim 15 contains similar recitations to
that of independent claim 1 with respect to the binding of addresses to
resource names (Id.). Therefore, Appellant concludes that independent
claims 7, 10, and 15 are patentable for the same corresponding reasons given
above for independent claim 1.

EXAMINER’S RESPONSE
Regarding Appellant's argument (page 10, first paragraph), that the
Examiner's admitted use of personal knowledge is improper, the Examiner
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states that he/she has not relied on personal knowledge (Ans. 11, ¶1). The
Examiner states that the limitations of the claims are found expressly or
inherently in Chow and the NSS that was incorporated by reference in Chow
as part of CORBA (Id.).
Regarding claim 1, the Examiner points to Chow’s CORBA
“COSNaming” module as teaching the claimed “query resolution
application.” (Ans. 8-9). The Examiner points to the incorporated NSS
reference and its teaching on page 2-2 of “Naming context” which the
Examiner finds is an interface to the “register” containing a table to a set of
bindings to objects references (i.e., addresses) and “resource” names (Ans. 9,
§2).

ISSUES
Based upon our review of the record, we consider the threshold issue
of whether the Examiner has improperly relied on personal knowledge (in
formulating the anticipation rejection) to be moot because the Examiner has
stated in the Answer that the limitations of the claims are found expressly or
inherently in the Chow reference and the NSS (CORBA) reference that was
incorporated by reference in Chow as part of CORBA (see Ans. 11, ¶1).
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 Chow
disclosure (including the teachings of the incorporated NSS reference)
discloses “a register containing a set of predefined management paths of
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differing scope, and a table binding addresses to resource names of some at
least of said management paths” where the register further includes an
address being “associated with another one of said predefined management
paths” (see independent claims 1 and 7)?

ISSUE 2
Has Appellant shown error in the Examiner's anticipation rejection of
broader independent claims 10 and 15 by specifically pointing out how the
language of the claims patentably distinguishes them from the Chow and
NSS references?
PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted). To
anticipate, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001); Scripps
Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576
(Fed. Cir. 1991). “Absence from the reference of any claimed element
negates anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d
1565, 1571 (Fed. Cir. 1986).

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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 CHOW REFERENCE
1. Chow discloses under the “Description of Relevant Art” that “[i]n
general, the implementation of a name service often includes the
implementation of a data structure such as a table (or hash table) to
hold bindings between names and object references and, in some
cases, properties.” (Col. 1, ll. 51-54).
2. Chow discloses under the “Description of Relevant Art” that “[a]
typical implementation of a name service includes a "main" table.
Although the main table may take on a variety of different
configurations, the main table is typically a look-up table, or a list,
which associates names in a name column of the main table with
references in a reference column of the main table. References in the
reference column identify, or reference, objects which are associated
with names.” (Col. 2, ll. 5-12).
3. Chow discloses that “[a] context operation (such as new context or
bind context), as will be appreciated by those skilled in the art, may be
used to create a data structure, e.g., a table, associated with a name
service.” (Col. 11, ll. 12-15).

THE CORBA NAMING SERVICE SPECIFICATION REFERENCE (NSS)
4. NSS teaches that a naming graph allows complex names to reference
an object (p. 1-1, last paragraph).
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5. NSS teaches that given a context in a naming graph, a sequence of
names can reference an object (pp. 1-1, 1-2).
6. NSS teaches that the sequence of names (called a compound name)
defines a path in the naming graph to navigate the resolution process
(p. 1-2).
7. NSS teaches that a name binding is always defined relative to a
naming context where the naming context is an object that contains a
set of name bindings in which each name is unique (p. 1-1).
8. NSS teaches that the nodes of the directed graph (see Fig. 1-1) are
contexts (p. 1-1).

ANALYSIS
ISSUE 1
We decide the question of whether Appellant has shown the Examiner
erred in finding that the Chow reference (including the teachings of the
incorporated NSS reference) discloses “a register containing a set of
predefined management paths of differing scope, and a table binding
addresses to resource names of some at least of said management paths”
where the register further includes an address being “associated with another
one of said predefined management paths” (see independent claims 1 and 7).
We begin our analysis by noting that Appellant acknowledges that
NSS discloses a federated naming graph (Figure 1-1) that arguably could be
interpreted as a table or as a register, but not as both (App. Br. 9, ¶2). Since
Chow discloses a table which associates (binds) names with references
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(object addresses) (FF 1-3), we focus our attention on the federated naming
graph (1-2) of NSS that Appellant admits could be interpreted as a register
(App. Br. 9, ¶2).
We note that the express language of both independent claims 1 and 7
requires that the register must contain “a set of predefined management
paths of differing scope” and the register must further include an address
being “associated with another one of said predefined management paths.”
In particular, we note that the Examiner asserts that the limitation of
the register further including an address being associated with another one of
said predefined management paths is satisfied by the existence of more than
one binding in the table (i.e., the internal table for “NamingContext,” each
binding being composed of a unique object reference and a unique path)
(Ans. 4; see also NSS, p. 2-2).
Specifically, the Examiner points to the naming graph shown in
Figure 1-1 on page 1-2 of NSS as supporting this teaching (Ans. 4). The
Examiner further explains that page 2-2 of NSS discloses that the
“NamingContext” interface is an interface to the register containing a table
to a set of bindings to object references (i.e., “addresses”) with names (i.e.,
resource names of some at least of said management paths) (Ans. 4).
After considering the evidence before us, we find the Examiner has
blurred the mapping of the claimed table and register to particular
corresponding elements in the Chow and NSS references by stating that the
NSS reference discloses a “register containing a table” (Ans. 4). We agree
with Appellant that the NSS naming graph (Figure 1-1) might be broadly
considered as a table or a register, but not as both. Thus, we agree with
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Appellant that “the Examiner has not explained how, if NSS discloses a
register containing a table, the register contains a set of predefined
management paths of differing scope and the table binds addresses to
resource names of some at least of said management paths as provided in
independent claim 1.” (Reply Br. 3).
In the alternative, if we consider Chow as teaching a table that binds
addresses to resource names (FF 3), and the NSS naming graph (Figure 1-1)
as a register, we find the Examiner has not clearly established how the
limitation of the register further including an address being “associated with
another one of said predefined management paths” is shown in the NSS
naming graph (Figure 1-1). We find that to affirm the Examiner on this
point would require speculation on our part. While the Examiner states that
all the limitations of the claims are found expressly or inherently in the
Chow and NSS references (Ans. 11, ¶1), we note that our reviewing court
has clearly stated that “[i]nherency … may not be established
by probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745, (Fed. Cir. 1999) (internal citations omitted).
Therefore, based upon our review of the record before us, we find the
weight of the evidence supports the Appellant’s position. Because we find
that Appellant has met the burden of showing error in the Examiner’s prima
facie case of anticipation, we reverse the Examiner’s rejection of
independent claims 1 and 7 as being anticipated by Chow. Because claims 5
and 8 depend from claims 1 and 7 respectively, we also reverse the
Examiners rejection of claims 5 and 8 as being unpatentable over the
combination of Chow and Terek.
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ISSUE 2
We decide the question of whether Appellant has shown error in the
Examiner's anticipation rejection of broader independent claims 10 and 15
by specifically pointing out how the language of the claims patentably
distinguishes them from the Chow and NSS references.
Independent Claim 10
Appellant asserts that independent claim 10 contains similar
recitations to those of independent claim 1 with respect to the binding of
addresses to resource names and the functions of the resolution application
in each of the resource location servers (App. Br. 9, ¶4). Therefore,
Appellant concludes that independent claim 10 is patentable for the same
reasons previously discussed for independent claim 1 (Id.).
However, we note that Appellant’s argument with respect to
independent claim 10 merely recites the language of the claim (i.e., binding
an address to a resource name), followed by the assertion that the functions
of the resolution application in each of the resource location servers are not
disclosed in the Chow reference (App. Br. 9, ¶4). Regarding the argued
limitation of binding an address to a resource name, we note that a statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim. See 37 C.F.R. §
41.37(c)(1)(vii). Moreover, the argued limitation of a resolution application
in each of the resource location servers is not recited in claim 10. Thus, we
find that Appellant has failed to rebut the Examiner’s rejection of
independent claim 10 with any meaningful analysis that demonstrates error
in the Examiner’s prima facie case.

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Independent Claim 15
Appellant submits that independent claim 15 contains similar
recitations to that of independent claim 1 with respect to the binding of
addresses to resource names (App. Br. 9, ¶4). Therefore, Appellant
concludes that independent claim 15 is patentable for the same reasons
previously discussed for independent claim 1 (Id.).
However, the argued limitation of binding an address to a resource
name is not recited in claim 15. We note that claim 15 is the broadest claim
before us and is generally directed to features that are not recited in
independent claim 1. Therefore, Appellant has failed to specifically point
out how the language of claim 15 patentably distinguishes it from the
references. It is our view that Appellant has failed to rebut the Examiner’s
rejection of independent claim 15 with any meaningful analysis that
demonstrates error in the Examiner’s prima facie case.
On this record, we find that Appellant has failed to present a
persuasive case that broader independent claims 10 and 15 are patentable
over the Chow reference.1 Therefore, we sustain the Examiner’s rejection of
claims 10 and 15 as being anticipated by Chow for the same reasons set
forth by the Examiner in the Answer.

1 We note that a general allegation that the claims define a patentable
invention without specifically pointing out how the language of the claims
patentably distinguishes them from the references does not comply with the
requirements of MPEP § 1.111(b).

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Appellant has not separately argued the Examiner’s rejection of
dependent claims 11-14 and 16-20 that depend from independent claims 10
and 15, respectively. Therefore, Appellant has waived any arguments
directed to the separate patentability of these claims. See In re Young, 927
F.2d 588, 590 (Fed. Cir. 1991). See also 37 C.F.R. § 41.37(c)(1)(vii).

CONCLUSION OF LAW
Appellant has established that the Examiner erred in rejecting claims
1-4, 6, 7, and 9 under 35 U.S.C. § 102(e) as being anticipated by Chow.
Appellant has established that the Examiner erred in rejecting claims 5
and 8 under 35 U.S.C. § 103(a) as being obvious over the combination of
Chow and Terek.
Appellant has not established that the Examiner erred in rejecting
claims 10, 12, 15-17, 19, and 20 under 35 U.S.C. § 102(e) as being
anticipated by Chow.
Appellant has not established that the Examiner erred in rejecting
claims 11, 13, 14, and 18 under 35 U.S.C. § 103(a) as being obvious over the
combination of Chow and Terek.
Therefore, claims 10-20 are not patentable.

DECISION
We reverse the Examiner’s decision rejecting claims 1-9.
We affirm the Examiner’s decision rejecting claims 10-20.

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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-IN-PART

pgc

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