Ex Parte Bergkvist et al

Patent Trial and Appeal BoardFeb 22, 2019

15037263 (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/037,263 05/17/2016 102721 7590 02/26/2019 Murphy, Bilak & Homiller/Ericsson 1255 Crescent Green Suite 200 Cary, NC 27518 FIRST NAMED INVENTOR Adam Bergkvist UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 1009-1890 / P4887 l US 1 1559 EXAMINER LAI, MICHAEL C ART UNIT PAPER NUMBER 2457 NOTIFICATION DATE DELIVERY MODE 02/26/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): official@mbhiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ADAM BERGKVIST, STEP AN HAKANSSON, CHRISTER HOLMBERG, and DANIEL LINDSTROM 1 Appeal2019-000182 Application 15/037,263 Technology Center 2400 Before ALLEN R. MACDONALD, MICHAEL J. STRAUSS, and DAVID J. CUTITTA II, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellants, the real party in interest is Telefonaktiebolaget LM Ericsson (publ). See Appeal Br. 2. Appeal2019-000182 Application 15/037,263 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 35-38, 43--47, 52-55, 57---60, and 62---64. Claims 1-34 are canceled. The rejections of claims 39--42, 48-51, 56, and 61 are withdrawn. Ans. 9. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 2 THE INVENTION The claims are directed to cache pre-fetch prediction performed by a server. Spec., Abstract. Claim 35, reproduced below with a disputed limitation emphasized in italics, is representative of the claimed subject matter: 3 5. A method performed by a server for handling cached content resources, the method comprising: receiving a download request from a client device in a downloading session, identifying at least one content resource deemed to be potentially needed later in the downloading session, and sending a cache map to the client device in a response to the received download request, the cache map comprising a pre-fetch indication indicating that the identified at least one content resource should be pre-fetched by the client device from a cache containing the identified at least one content resource. 2 We refer to the Specification, filed May 17, 2016 ("Spec."); the Final Office Action, mailed September 27, 2017 ("Final Act."); the Appeal Brief, filed April 23, 2018 ("Appeal Br."); the Examiner's Answer, mailed August 6, 2018 ("Ans.") and the Reply Brief, filed October 10, 2018 ("Reply Br."). 2 Appeal2019-000182 Application 15/037,263 REFERENCE The following prior art is relied upon by the Examiner in rejecting the claims on appeal: Mogul US 2003/0126232 Al July 3, 2003 REJECTION The Examiner rejects claim 35-38, 43--47, 52-55, 57---60, and 62-64 under 35 U.S.C. Â§ I02(a)(l) as being anticipated by Mogul. Final Act. 3-6; see Ans. 9 (withdrawing the rejections of claims 39--42, 48-51, 56, and 61). ANALYSIS Appellants' contention is unpersuasive of reversible Examiner error. We adopt as our own ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 2-7) and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief (Ans. 3-9) and concur with the conclusions reached by the Examiner. We highlight the following for emphasis. The Examiner finds the disputed limitation is disclosed by Mogul's data prefetching system wherein, in response to the request for a file by a client computer, a server provides both file and a pre-fetch recommendation of other files for possible prefetching. Final Act. 3 ( citing Mogul Fig. 1, cache 134; Fig 2; ,r 10; ,r 35, 11. 3-16). The Examiner further concludes the claim language reciting a content resource should be pre-fetched renders the recited cache-map pre-fetch indication optional. Advisory Action, mailed December 19, 2017, p. 2. 3 Appeal2019-000182 Application 15/037,263 Appellants contend the rejection of the independent claims is improper because Mogul's pre-fetch hints are directed to files stored on Mogul's server, not those stored in cache 134. Appeal Br. 5---6. Appellants further argue Mogul's cache 134 stores files that have already been pre- fetched, not files that should be pre-fetched. Id. at 6-7. Therefore, according to Appellants, Mogul's pre-fetch hints directed to files stored on a server fail to disclose a content resource that should be pre-fetched by the client device from a cache containing the identified at least one content resource as required by claim 35. Id. at 5-7. Appellants also take exception to the Examiner's claim interpretation, arguing, in context, the term should means the recited action is recommended, not that the action of sending the indication (i.e., recommendation) is optional. Id. at 8. The Examiner responds, finding Mogul discloses a proxy server is also called a cache server. Ans. 5 ( citing Mogul ,r 3). Thus, according to the Examiner, "Mogul clearly suggests that the client device prefetches from a cache containing the identified at least one content resource." Id. Appellants reply, emphasizing Mogul's cache 134 does not function as required by and, therefore fails to disclose, the disputed limitation. Reply Br. 2-5. Appellants argue Mogul's proxy servers are disclosed as an alternative to pre-fetching. Reply Br. 6. According to Appellants, "there is no suggestion that Mogul's pre-fetching techniques should be combined with the proxy server described in Mogul's background, and there is no suggestion of how such a combination could be accomplished." Id. at 5-6. Appellants further direct attention to the Examiner's finding that Mogul's caching using a proxy server suggests a client device pre-fetches from a 4 Appeal2019-000182 Application 15/037,263 cache, arguing there is no such suggestion and that, even if otherwise, such a suggestion "is simply not enough to support the pending rejections under 35 U.S.C. Â§ 102." Id. at 7. Finally, Appellants emphasize the use of the term "should" in context does not render the disputed limitation optional. Id. at 8. Appellants' contentions are unpersuasive of Examiner error. Appellants' argument that Mogul's cache 134 fails to disclose the disputed limitation does not address the Examiner's finding that Mogul's servers that store files subject to being pre-fetched based on hints or recommendations contained as links or tags 156 are "candidates for prefetching by the client computer." Ans. 3--4 (citing Mogul ,r 35). Thus, Mogul discloses sending a cache map (Mogul's links or tags 156) to the client device (Mogul's client computer system 100) in a response to the received download request, the cache map comprising a pre-fetch indication (Mogul's pre-fetch hints 152) indicating that the identified at least one content resource (Mogul's file identified by a URL or network address listed in the pre-fetch hints) should be pre-fetched by the client device from a cache ( the server identified by the URL or network address) containing the identified at least one content resource. In particular, Appellants' fail to provide sufficient evidence or reasoned argument to persuade us that Mogul's servers, such as the server identified by the URL or network address, fail to disclose the recited cache. See, e.g., Mogul ,r 35. We conclude such an interpretation is reasonable and consistent with Appellants' disclosure that " [a] cache is ... a storage for content resources." Spec. p. 2, 11. 13-14. We are further unpersuaded by Appellants' argument that Mogul fails to suggest pre-fetching from a cache because, as discussed above, under a 5 Appeal2019-000182 Application 15/037,263 broad but reasonable interpretation, the claimed cache is disclosed by Mogul's servers identified by Mogul's URLs and network addresses. Although we agree with Appellants that the Examiner's use of the term "suggests" (Ans. 5) implies a level of disclosure that is potentially inadequate to support the requirement of 35 U.S.C. Â§ I02(a)(l). Reply Br. 6-7. However, because we find Mogul discloses the disputed limitation, we consider the Examiner's use of the term to be, at most, harmless error. We are also unpersuaded of Examiner error by Appellants' further arguments. In particular, although Mogul discloses caching performed by a proxy server, we disagree such storage is an alternative to Mogul's system which is directed to "the performance enhancement of prefetching in a network environment and particularly to energy-efficient prefetching of files in a network environment", not to supplanting proxy servers. See Mogul ,r 1. Furthermore, Mogul's disclosure of storing files on a server and retrieval of pre-fetch recommended files using a URL or network address would have been understood by one of skill in the art to include files stored on a server. Because, consistent with Appellants' Specification, a server is storage for content resources, Mogul's servers disclose the recited cache. Finally, because we agree Mogul discloses the disputed limitation, we do not decide whether the disputed limitation or any portion thereof is rendered optional by use of the term "should." For the reasons discussed above, we sustain the rejection of independent claim 3 5 and, for the same reasons, the rejection of independent 6 Appeal2019-000182 Application 15/037,263 claims 44, 53, 58, 63, and 64 and dependent claims 38, 47, 54, 55, 57, 59, 60, and 62 which are not argued separately with particularity. 3 Appellants' arguments addressing the rejection of dependent claims 36, 37, 43, 45, 46, and 52 (Appeal Br. 11, 12) are also unpersuasive. As the Examiner finds, and we agree, Mogul discloses pre-fetch prediction operations are performed by a server (Ans. 8-9 (citing Mogul Figs. 6-9; ,r,r 17, 36, 41, 62-80)). See discussion supra. Accordingly, we further sustain the rejection of those dependent claims. DECISION We affirm the Examiner's decision to reject claims 35-38, 43--47, 52- 55, 57---60, and 62---64 under 35 U.S.C. Â§ 102(a)(l). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). See 37 C.F.R. Â§ 4I.50(f). AFFIRMED 3 Merely restating with respect to a second claim an argument, previously presented with respect to a first claim, is not an argument for separate patentability of the two claims. 7