Ex Parte Thomas et al

Board of Patent Appeals and Interferences

Nov 15, 2010

10289259 (B.P.A.I. Nov. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID ANDREW THOMAS and BRIAN K. LYNN
____________

Appeal 2009-007102
Application 10/289,259
Technology Center 2400
____________

Before JOHN A. JEFFERY, DEBRA K. STEPHENS,
and JAMES R. HUGHES, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellants’ invention predicts connections in a computer network by
determining “predictive connection information” for a second connection
through a switch between a client and multiple servers. See generally Spec.
¶¶ 0013-14; Fig. 1. Claim 1 is illustrative:
1. A method for predicting connections in a computer network having
a switch between a client and a plurality of servers, said method comprising
the steps of:

in a first server of the plurality of servers, determining predictive
connection information for a second connection through the switch between
the client and a second server of the plurality of servers using at least
connection information associated with a first connection through the switch
between the client and the first server, wherein the first connection is
associated with the second connection; and

communicating the predictive connection information for the second
connection from the first server to the switch.

The Examiner relies on the following as evidence of unpatentability:
Wang US 6,826,613 B1 Nov. 30, 2004
(filed Mar. 15, 2000)

THE REJECTION
The Examiner rejected claims 1-25 under 35 U.S.C. § 102(e) as
anticipated by Wang. Ans. 3-6.2

2 Throughout this opinion, we refer to the Appeal Brief filed May 12, 2008
and the Examiner’s Answer mailed August 5, 2008.
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CONTENTIONS
Regarding representative claim 1, the Examiner finds that Wang
discloses every recited feature including a first device 130 (i.e., the “first
server”) connected to client 110 (i.e., a “first connection”) via switch 120.
Ans. 3-4, 7-8. This device is said to determine “predictive connection
information” associated with a handoff from the device 130 to a second
device 135 (i.e., a “second server”), thus establishing a second connection
between the client and the second device. Id. By reporting this handoff to
the switch, the first device is said to communicate the “predictive connection
information” to the switch as claimed. Ans. 4, 8-9.
Appellants argue that Wang’s handoff determination is not based on
connection information associated with a first connection through the
switch, but rather criteria associated with current first and second device
operations. Br. 11. According to Appellants, Wang fails to determine
predictive connection information for a second connection through the
switch based on this connection information, let alone communicate this
predictive connection information to the switch as claimed. Br. 11-12.
Regarding representative claim 4, Appellants argue that Wang fails to
determine the predictive connection information based on a previous
connection pattern. Br. 12-13. Appellants add that Wang likewise fails to
enable retrieving different resources from the first and second servers,
respectively, via their respective connections as recited in claims 24 and 25.
Br. 13. The issues before us, then, are as follows:

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ISSUES
Under § 102, has the Examiner erred by finding that Wang:
(1)(a) determines “predictive connection information” for a second
connection through a switch between a client and a second server using at
least connection information associated with a first connection through the
switch between the client and a first server, and (b) communicates the
predictive connection information from the first server to the switch as
recited in claim 1?
(2) determines the predictive connection information based on a
previous connection pattern as recited in claim 4?
(3) enables retrieving different resources from the first and second
servers, respectively, via their respective connections as recited in claims 24
and 25?

FINDINGS OF FACT (FF)
1. According to Appellants:
Anticipated connections a particular client is likely to use can
be predicated [sic] as a function of historical client/server
connections. For example, where the client user has a history
of activating the same embedded link each time a particular
web page is accessed, this information can be used to predict
connections through the switch and manage load among the
back-end servers accordingly.

Spec. ¶ 0013.
2. Step 105 of Figure 1 of Appellants’ application involves predicting
a sequence of connections. By monitoring previous dynamic system
behavior (e.g., monitoring user-selected URL links), information about links
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most likely to be chosen upon a subsequent connection to a website can be
used to bias certain traffic to a particular server. Spec. ¶ 0039; Fig. 1.
3. Predictive connection information can be determined based on (1)
a recorded history of client activity associated with a first connection; (2)
analyzing connection usage patterns of the first connection; (3) analyzing
usage/traffic logs; and (4) client information (e.g., cookies). Spec. ¶¶ 0055-
56.
4. Wang’s client 110 communicates with a first device 130 (e.g., a
server) via switch 120 that acts as a virtual IP host. Sessions can be handed
off from one device to another by (1) determining in the first device that a
handoff should occur; (2) identifying a second device (e.g., a server) to take
over the session; (3) sending handoff messages to—and receiving
acknowledgment from—a second device; (4) reporting the handoff to—and
receiving acknowledgment from—the switch. Wang, col. 3, ll. 33-45; col. 5,
l. 50 – col. 6, l. 38; Figs. 1A-1B.
5. The first device 130 identifies a second device to which to hand the
session. If the first device is a database server, the first device can refer to a
table to determine if another database server is better suited to respond to
data object requests or types of transactions. If the first device is a load
balancing device, load balancing measures include (1) traffic through the
switch; (2) reported workload; or (3) analysis of requested services. Wang,
col. 7, ll. 10-58; Fig. 3.
6. Handoff determinations are based on (1) the location of processed
data to determine if the first device is processing a sufficient amount of data;
(2) whether data returned from another device reaches a certain threshold;
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(3) the relative amount of data supplied by the first and other devices; or (4)
the absolute or relative workload of the first and other devices. Wang, col.
7, ll. 16-34; Fig. 3.
7. Handoff messages are communicated through the switch from the
first device to the second device. The first device also reports the handoff to
the switch. Wang, col. 7, ll. 59-63; Fig. 3 (steps 4-5).
8. The first device can send handoff preparation messages to other
devices and a selected handoff destination which acknowledge the handoff
preparation messages. Wang, col. 4, ll. 9-14.

ANALYSIS
Claims 1-3, 5-10, 12-21, and 23
We begin by construing the key disputed limitation of representative
claim 1 which calls for, in pertinent part, “predictive connection
information.” We note at the outset that this limitation merely describes the
informational content of data, and therefore constitutes non-functional
descriptive material as it does not further limit the claimed invention
functionally. Such non-functional descriptive material does not patentably
distinguish over prior art that otherwise renders the claims unpatentable.3
Nevertheless, the scope of the term “predictive connection
information” is quite broad—even when construed in light of the
Specification. Although Appellants describe various ways to determine
“predictive connection information” by, among other things, examining a

3 See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ex parte
Nehls, 88 USPQ2d 1883, 1887-89 (BPAI 2008) (precedential) (discussing
cases pertaining to non-functional descriptive material).
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user’s history of selecting particular links, or analyzing usage patterns (FF 1-
3), Appellants never actually squarely define the term “predictive connection
information” in the Specification—unlike other disclosed terms.4 That
Appellants use permissive and exemplary language in connection with their
proffered construction of “predictive connection information” in the Brief
only bolsters this conclusion.5
As such, we find no error in the Examiner’s position (Ans. 7-8) that
information associated with the session handoff in Wang constitutes
“predictive connection information” as claimed given the scope and breadth
of the term. First, we agree with the Examiner (Ans. 7) that the recited “first
connection” corresponds to the connection between the client and device
130 (i.e., a “first server”) via switch 120. See FF 4. And we agree with the
Examiner that Wang discloses a similar “second connection” between the
client and device 135 (a “second server”) via the switch. See id.
In Wang, device 130 (the “first server”) determines that a handoff
should occur to the device 135 (the “second server”) based on certain factors
(amount of processed data, relative workload of the devices, etc.). FF 4-6.
That is, by selecting the second server (and its associated connection) to
which to hand the session based on these factors, the first server would
determine “predictive connection information” for the connection associated
with this target second server (i.e., information associated with the handoff

4 Compare Spec. 7 (defining the terms “information packet” and “client”).
5 See Br. 10 (“[T]he claimed ‘predictive connection information’ may be
construed as a future connection anticipated to be made between the client
and a second server based upon, for instance, connection information
associated with a first connection through the switch between the client and
a first server.”) (emphases added).
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to the second server and its respective connection to the client via the
switch). See id. We reach this conclusion emphasizing that the first server’s
handoff determination is made in advance of the actual handoff to the
second server (and its associated connection to the client via the switch), and
is therefore “predictive” in that sense. See FF 4-8.
And this determination would, at least in part, use “connection
information” associated with the first server’s connection through the switch
as claimed, at least with respect to assessing the relative capabilities of these
connections to service the session. See id. Moreover, these server-based
connections are associated with each other, at least with respect to their
relative abilities to service the session, as well as their common connections
with the switch and client, respectively. Id. Lastly, we agree with the
Examiner (Ans. 8-9) that the first server’s reporting information pertaining
to the handoff to the switch (FF 4, 7) fully meets the first server’s
communicating the “predictive connection information” to the switch as
claimed. Appellants’ arguments to the contrary (Br. 11-12) are simply not
commensurate with the scope of the claim.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 2, 3, 5-10, 12-21, and 23 not separately
argued.

Claims 4, 11, and 22
We will not, however, sustain the Examiner’s rejection of
representative claim 4 which calls for determining the predictive connection
information based on a previous connection pattern. Although the first
device’s handoff determination in Wang is based on factors such as types of
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transactions, the relative amounts of data supplied from other devices, and
their relative workloads (FF 5-6), the Examiner has simply not shown that
the “predictive connection information” (i.e., information associated with the
handoff) is determined based on a previous connection pattern as recited in
claim 4 or connection usage patterns as recited in claims 11 and 22. While
Wang’s handoff criteria noted above relates to connections, we cannot say
that it is based on connection patterns—historical trends pertaining to
previous connections and their usage.
We are therefore constrained by the record before us to find that the
Examiner erred in rejecting claims 4, 11, and 22.

Claims 24 and 25
We likewise will not sustain the Examiner’s rejection of claims 24
and 25 which call for enabling retrieving different resources from the first
and second servers, respectively, via their respective connections. Apart
from merely quoting the claim language and citing a passage from Wang
pertaining to techniques for identifying a second device to which to pass the
handoff (Ans. 6; FF 5), the Examiner does not explain how or why the
subject matter of this passage—or any other passage in Wang—necessarily
discloses the recited feature.
If anything, Wang suggests just the opposite: namely, that the first and
second servers provide the same resources via their respective connections,
since one server hands the session to another to similarly serve the same
client for that particular session. See FF 4-6. This handoff suggests that
these devices perform similar functions and provide the same resources as
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Appellants indicate (Br. 13); otherwise, the client would not be adequately
served by the second server after the handoff commensurate with the service
provided by the first server before the handoff. See id.
On this record, the Examiner simply fails to show that these servers
necessarily enable retrieving different resources via their respective
connections—a crucial requirement for inherent anticipation.6 Nor will we
speculate in this regard in the first instance on appeal. That the Examiner
did not respond to Appellants’ arguments regarding claim 24 only further
undercuts the factual basis for the Examiner’s anticipation rejection of that
claim. See Ans. 6-10.
We are therefore persuaded that the Examiner erred in rejecting claim
24, and claim 25 which recites commensurate limitations.

CONCLUSION
Under § 102, the Examiner did not err in rejecting claims 1-3, 5-10,
12-21, and 23, but erred in rejecting claims 4, 11, 22, 24, and 25.

ORDER
The Examiner’s decision rejecting claims 1-25 is affirmed-in-part.

6 See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“Inherency . . .
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.”)
(citations omitted).
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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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