Ex Parte Desai et al

Patent Trial and Appeal Board

Aug 13, 2014

11944566 (P.T.A.B. Aug. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte VIKRAM A. DESAI and SAI G. RATHNAM
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Appeal 2012-002197
Application 11/944,5661
Technology Center 2400
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Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 The real party in interest, identified by Appellants, is International
Business Machines Corporation. App. Br. 2.
2 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
August 8, 2011) and Reply Brief (“Reply Br.,” filed November 3, 2011), and
the Examiner’s Answer (“Ans.,” mailed September 12, 2011).
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THE CLAIMED INVENTION
Appellants’ claimed invention “relates to the field of request-response
processing in web based computing system, and more particularly to
queuing asynchronously produced responses for delivery to a hypertext
transfer protocol (HTTP) client in a request-response computing system”
(Spec. ¶ 1).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method, within a client computer device, for
asynchronous response handling in a web based request-
response computing system, the method comprising:
inserting an address of an intermediate response server in
a request by the client computer device;
transmitting the request to a target processing server
separate from the intermediate response server; and,
polling the intermediate response server for a response to
the request instead of polling the target processing server for a
response to the request.

THE REJECTIONS
The following rejections are before us for review:
Claims 11–14 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1, 2, 4–9, 11, 12, and 14 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Toga (US 5,987,504, iss. Nov. 16, 1999) and Owhadi
(US 2004/0153712 A1, pub. Aug. 5, 2004).
Claims 3, 10, and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Toga, Owhadi, Brown (US 2003/0061387 A1,
pub. Mar. 27, 2003), and Ramaswamy (US 2005/0038874 A1, pub. Feb. 17,
2005).
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ANALYSIS
Non-Statutory Subject Matter
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claims 11–14 under 35 U.S.C. § 101 (App. Br. 5–7 and 2–
7).
Independent claim 11 recites a computer program product comprising
“a computer usable storage medium having stored thereon computer usable
program code for asynchronous response handling in a request-response
computing system . . . .” The Specification describes that “a computer-
usable or computer readable medium can be any apparatus that can contain,
store, communicate, propagate, or transport the program for use by or in
connection with the instruction execution system, apparatus, or device”
(Spec. ¶ 23). Given its broadest reasonable interpretation in light of the
Specification, the phrase “computer usable storage medium,” thus, includes
transitory signals, which are non-statutory subject matter. See In re Nuijten,
500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (holding that “transitory
embodiments are not directed to statutory subject matter”).
Appellants argue that “the claims are drawn to a ‘computer readable
storage medium,’ not just a ‘computer readable medium,’” and that “a
‘storage medium’ is not a transitory[,] but a tangible medium that stores
data, and thus is statutory subject matter” (App. Br. 6). This Board
previously considered this issue in Ex parte Mewherter, 107 USPQ2d 1857
(PTAB 2013). Faced with substantially similar arguments, the Board
concluded in Mewherter that, given its ordinary and customary meaning, the
term “computer readable storage medium” is broad enough to encompass
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transitory media, id. at 1860, and that a person of ordinary skill in the art
would understand the term to include signals per se. Id. at 1862.
Accordingly, we sustain the Examiner’s rejection of claims 11–14
under 35 U.S.C. § 101.
Obviousness
Independent claims 1, 5, and 11, and dependent 2, 4, 6–9, 12, and 14
Appellants argue independent claims 1, 5, and 11 together (App.
Br. 8). We select claim 1 as representative. Claims 5 and 11, thus, stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a) because neither Toga nor
Owhadi discloses or suggests “inserting an address of an intermediate
response server in a request by the client computer device,” as recited in
claim 1 (App. Br. 7–11 and Reply Br. 7–8). Instead, we agree with the
Examiner that Toga discloses the argued feature (Ans. 7 and 16, citing Toga,
col. 1, l. 66 – col. 2, l. 1; col. 4, ll. 2–4 and 60–67; and col. 6, ll. 8–16).
Toga discloses a method and apparatus for delivering data over a
network, and describes at column 1, line 66 through column 2, line 1, cited
by the Examiner, that a client creates a request message designating a
desired data file and a storage address. A server is coupled to the client, and
is adapted to receive the request message and forward the data file to a
storage device for storage at the location identified by the storage address
(Toga, col. 2, ll. 4–9). Alternatively, the server may forward the requested
data file to a designated e-mail address (Toga, col. 4, ll. 2–4). Referring to
the embodiment shown in Figure 2, Toga describes that “[i]n this
embodiment, the storage address identifies a storage location 71, 72, 73, etc.
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in a storage device 70 such as a server furnished by an Internet Service
Provider (ISP) for example” (Toga, col. 4, ll. 60–67).
Appellants argue that the Examiner has misconstrued the term
“intermediate response server,” as merely a “storage device” (App. Br. 10–
11). However, Toga explicitly discloses that the storage device may be a
server, i.e., “a server furnished by an Internet Service Provider (ISP) for
example” (Toga, col. 4, ll. 60–63). The storage device also is “intermediate”
in that it receives and holds the response to the client’s request, and is
separate from the server (i.e., server 50 in Toga, Figure 2) that produces the
response (see Ans. 16, citing Toga, Fig. 2 and col. 4, ll. 2–4 and ll. 60–67).
Referring to column 4, lines 58–67 of Toga, and more particularly to
column 4, lines 58–59, Appellants argue that “in Toga the storage location is
at client 40 or client 60 and thus is not an ‘intermediate’ response server in
the sense of the Appellants’ claimed invention” (Reply Br. 8). Appellants,
thus, maintain that “since the storage location is at the client, it is clear that
the storage location is dedicated to the particular client” whereas in the
claimed invention, the intermediate response server serves multiple clients
(id.).
Appellants’ argument is not persuasive at least because it is not
responsive to the rejection as articulated by the Examiner.3 The Examiner
does not contend that a storage location at client 40 or client 60 is an
intermediate response server, as called for in claim 1. Instead, the Examiner

3 Moreover, Appellants’ argument is not commensurate with the scope of
claim 1. Appellants do not identify any language in claim 1 that requires the
intermediate response server to serve multiple clients; nor, for that matter, do
we find any such language.
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compares the claimed “intermediate response server” to storage device 70,
which Toga describes “as a server furnished by an Internet Service Provider
(ISP) for example” that stores the requested file for retrieval by client 40
and/or client 60, i.e., by multiple clients (Toga, col 4, ll. 60–67).
We also are not persuaded of error on the part of the Examiner by
Appellants’ argument that the combination of Toga and Owhadi does not
disclose or suggest “polling the intermediate response server . . . instead
of . . . the target processing server for a response to the request,” as recited in
claim 1 (App. Br. 11–12; see also Reply Br. 8–9). Appellants do not
contend that polling is a new technique (see Reply Br. 9). Nor do
Appellants dispute that Owhadi discloses a client repeatedly polling a server,
i.e., a support provider, for a response to a query. Instead, Appellants argue
that the “inventive concept of the Appellants’ claimed invention is not just
any polling, but rather polling the intermediate response server for a
response to the request instead of polling the target processing server for a
response to the request” (Reply Br. 9). Appellants also maintain that “since
in Toga the storage location is at the client and dedicated to the particular
client, there is no need to poll the storage location because the client receives
the response to its storage directly” (id.). That argument is not persuasive
because, as described above, it is not responsive to the Examiner’s rejection.
The Examiner concluded that it would have been obvious to a person
of ordinary skill in the art at the time of Appellants’ invention to have used
the polling technique of Owhadi in the data delivery system of Toga “to
provide a mechanism for a user to check to see if his requested data has been
placed on the intermediate response server yet, particularly in situations
(such as during a time when activity on a network is at a peak) in which the
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transfer of this data may be delayed” (Ans. 7). We find that the Examiner
has provided articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. See KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 418 (2007). Absent specific, technical arguments as to
why the motivation is insufficient or that the improvement described by the
Examiner is more than the predictable use of prior art elements according to
their established functions, we find Appellants’ contrary arguments
unpersuasive.
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). For the same reasons, we also sustain the
Examiner’s rejection of independent claims 5 and 11, which fall with
claim 1, and the rejection of dependent claims 2, 4, 6–9, 12, and 14, which
are not argued separately.4
Dependent claims 3, 10, and 13
Appellants do not present any arguments for the separate patentability
of dependent claims 3, 10 and 13. Instead, Appellants state:
For the convenience of the Honorable Board, claim 3 stands or
falls together with independent claim 1; claim 10 stands or falls
together with independent claim 5; and claim 13 stands or falls
together with independent claim 11.

(App. Br. 12). We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting independent claims 1, 5, and 11 under 35 U.S.C.

4 Appellants indicate, for the convenience of the Board, “claims 2 and 4
stand or fall together with independent claim 1; claims 6–9 stand or fall
together with independent claim 5; and claims 12 and 14 stand or fall
together with independent claim 11” (App. Br. 7).
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§ 103(a). Therefore, we sustain the Examiner’s rejection of claims 3, 10,
and 13 under 35 U.S.C. § 103(a) for the same reasons.

DECISION
The Examiner’s rejection of claims 11–14 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejections of claims 1–14 under 35 U.S.C. § 103(a)
are affirmed.
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
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