Ex Parte Leymann et al

Board of Patent Appeals and Interferences

Feb 2, 2009

10042799 (B.P.A.I. Feb. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte FRANK LAYMANN and DIETER ROLLER

Appeal 2008-1050
Application 10/042,799
Technology Center 2100
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Decided: February 3, 2009
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Before: HOWARD B. BLANKENSHIP, ALLEN R. MACDONALD,
and THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

I. STATEMENT OF THE CASE
Appellants have filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) (hereinafter “Request”) on November 24, 2008, for
reconsideration of our Decision mailed September 24, 2008 (hereinafter
“Decision”).
The Decision affirmed the Examiner’s rejection of claims 1-14 under
35 U.S.C. § 103(a) as being unpatentable over Holmberg, Rizvi and Helmer.
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We have reconsidered our Decision of September 24, 2008, in light of
Appellants’ comments in the Request for Rehearing, and we find no errors
therein. We decline to change our prior Decision for the reasons discussed
infra.

II. ISSUES
Appellants contend that, in our finding that the Examiner did not err
in finding claims 1-14 obvious over the teachings of Homberg, Rizvi and
Helmer, we have “either misapprehended and/or overlooked certain
arguments presented by Appellants” (Request 2). In particular, Appellants
contend that:
1. “designation as a new ground is necessary” because “Appellants
have not had a fair opportunity to react to the assertion that Helmer discloses
the entire limitation [of the sending step]” (Request 6);
2. “Helmer fails to yield even a single instance of the word
‘database,’” and “[a]s such, Helmer does not teach the limitation of ‘while
the first one of the two application servers fails to access the database’”
(Request 7);
3. “Helmer is silent as to the entity performing the routing of the user
request to the remote server” (Request 8), but mentions the routing
technique described in U.S. Patent Application No. 09/021,091, thus,
Helmer much teach “the use of a redirector 16 [of 09/021,091], which is
separate from an application server, that provides the routing” (Request 9);
and
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4. we have “essentially ignored the Examiner’s asserted motivation”
(Request 14) and that we have “not properly articulated the findings
necessary to establish obviousness” (Request 16).
The issue we address on this Request is whether Appellants have
shown that our finding of claims 1-14 obvious over the teachings of
Homberg, Rizvi and Helmer was in error. In particular, the issue turns on
1) whether designation as a new ground is necessary; 2) whether Helmer,
when combined with Homberg and Rizvi, teaches or suggests “sending a
request of the application client for the first application server from the first
application server to the second application server while the first one of the
two application servers fails to access the database” (Claim 1); and
3) whether it would have been obvious to combine the teachings of
Homberg, Rizvi and Helmer.

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Helmer
1. Helmer is directed to geographic data replication, wherein temporary
data for a remote server is replicated to a local server. If a server fails,
such as the local server, the remote server begins processing user
requests based on the temporary data it received from the local server
(col. 2, ll. 2-16). That is, if the local server fails, the user request is
routed to the remote server, wherein the remote server processes the
request with the benefit of the previously generated temporary data
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(col. 2, ll. 52-55). Any routing technique may be used to route the
user requests processed by the failed data center to the other data
center (col. 7, ll. 35-40; fig. 1).

IV. PRINCIPLES OF LAW
All of the disclosures in a reference must be evaluated for what they
fairly teach one of ordinary skill in the art. The use of patents as references
is not limited to what the patentees describe as their own inventions or to the
problems with which they are concerned. They are part of the literature of
the art, relevant for all they contain. In re Lemelson, 397 F.2d 1006, 1009
(CCPA 1968) (citing In re Boe, 355 F.2d 961, 965 (CCPA 1966).
A United States patent speaks for all it discloses as of its filing date,
even when used in combination with other references. In re Zenitz, 333 F.2d
924, 926 (CCPA, 1964) (internal citations omitted).
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) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

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Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

The Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” and
discussed circumstances in which a patent might be determined to be
obvious. KSR, 127 S. Ct. at 1739 (citing Graham v. John Deere Co., 383
U.S. 1, 12 (1966)). The Court noted that “[c]ommon sense teaches . . . that
familiar items may have obvious uses beyond their primary purposes, and in
many cases a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.” Id. at 1742. “A person of
ordinary skill is also a person of ordinary creativity, not an automaton.” Id.
The Federal Circuit recently recognized that “[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (citing KSR, 127 S. Ct. at 1739). The Federal
Circuit relied in part on the fact that Leapfrog had presented no evidence that
the inclusion of a reader in the combined device was “uniquely challenging
or difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” Id. at 1162 (citing KSR, 127 S. Ct. at 1741).
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In the absence of separate arguments with respect to claims subject to
the same rejection, those claims stand or fall with the claim for which an
argument was made. See In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991).
See also 37 C.F.R. § 41.37(c)(1)(vii)(2004).

V. ANALYSIS
No new ground is necessary
To address the issue of whether designation as a new ground is
necessary because “Appellants have not had a fair opportunity to react” to
our finding that Helmer discloses the “entire” sending step (Request 6), we
must determine whether or not Appellants have had the fair opportunity to
evaluate all of the disclosures of Helmer and the Examiner’s rejection using
Helmer. That is, all of the disclosures in a reference must be evaluated for
what they fairly teach one of ordinary skill in the art. See In re Lemelson,
397 F.2d at 1009. A United States patent speaks for all it discloses as of its
filing date, even when used in combination with other references. See In re
Zenitz, 333 F.2d at 926.
During prosecution, the Examiner found that the claims are
unpatentable over the combined teachings of Homberg, Rizvi and Helmer.
Contrary to Appellants’ assertion that “[c]ompletely absent from the
Examiner’s analysis with regard to Helmer is any mention of Helmer being
used to teach the claimed ‘while the first one of the two application servers
fails to access the database” (Request 4), the Examiner finds that Helmer
discloses or at the least suggests such features. In particular, regarding the
“while the first application fails to access the database” limitation, the
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Examiner finds “Appellant has argued that Holmberg and Rizvi fail to
disclose this feature, which the examiner has previously conceded. This
limitation is taught by Helmer” (Ans. 8).
The Appellants have had a fair opportunity since the Examiner’s
rejection to review the entire reference of Helmer to evaluate the reference
for all that it teaches or suggests, and the Examiner’s arguments set forth in
the Answer. Our finding does not add any new reference to the combined
teachings Homberg, Rizvi and Helmer, or any new application of Helmer for
such limitation. Thus, we do not agree that our finding of Helmer, in view
of combined with Homberg and Rizvi, teaches or suggests the claimed
sending step requires designation as a new ground.
Accordingly, Appellants’ Request does not persuade us to modify our
Decision to designate the rejection of claims 1-14 affirmed therein as a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b). Therefore, we find
Appellants’ arguments unavailing.

Helmer, when combined with Homberg and Rizvi, teaches or at the least
suggests the “sending” step

To address the issue of whether Appellants have shown that our
finding of Helmer, when combined with Homberg and Rizvi, teaches or
suggests “sending a request of the application client for the first application
server from the first application server to the second application server while
the first one of the two application servers fails to access the database”
(Claim 1) is in error, we give the claim its broadest reasonable interpretation.
See In re Bigio, 381 F.3d 1320, 1324 (Fed, Cir. 2004). Our analysis will not
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read limitations into the claim from the specification. See In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir. 1993). Furthermore, our analysis will be
based on the combined teachings of the applied references. See In re Merck
& Co., Inc., 800 F.2d at 1097. We thus restate our position as set forth on
pages 6-8 of our Decision.
Although Appellants contend that “Helmer fails to yield even a single
instance of the word ‘database’” (Request 7), the rejection is based on the
combined teachings of Homberg, Rizvi and Helmer, and nonobviousness
cannot be shown by attacking the references individually.
As the Examiner finds, Homberg teaches “a database (26) which may
be accessible by the two application servers (20, 21)” (Ans. 4). In fact, as
Appellants admit, “there are many teachings, in a multitude of references, of
operations that occur while an application server fails to access a database”
(Reply Br. 4). As we set forth in our Decision, we find that an artisan would
have understood “that such routing of the user request when the local server
fails of Helmer occurs in various situations including while the local server
fails to access the database” (Decision 8). Thus, we find that the subject
matter as a whole would have been obvious to the artisan.
Although Appellants also contend that “Helmer is silent as to the
entity performing the routing of the user request to the remote server”
(Request 8), such argument is not commensurate with the claimed invention.
Claim 1 does not recite any entity performing the routing of the user request,
and we will not read such limitations into the claim. Claim 1 merely recites
“sending a request of the application client for the first application server
from the first application server to the second application server.”
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Helmer discloses that, when a local server fails, the user requests
processed by the failed data center are routed to the remote server (using any
routing technique), and the remote server begins processing user requests
based on the temporary data it received from the local server (FF 1). As we
set forth in our Decision, we find that Helmer teaches, or at the least,
strongly suggests, that the request is sent from the failed local server (that
processed the request) to the remote server. An artisan would have
understood it to be obvious to select the local server as the server from
which to send the request that it processed, to the remote server, because the
remote server regularly receives data from the local server.
Although Appellants argue that Helmer must teach “the use of a
redirector 16 [of 09/021,091], which is separate from an application server,
that provides the routing” (Request 9), such contention is without basis. As
the Appellants admit, Helmer discloses that the user requests are routed
“using any routing technique” (Request 8). Thus, the routing technique used
by Helmer cannot be limited to such technique as Appellants contend. In
fact, Appellants’ claim 1 does not even recite that the routing is done using
any particular technique.
Further, even if Appellants’ claim 1 recites a particular routing
technique and Helmer teaches that only such technique described by
09/021,091 may be used, the use of Helmer will not be limited to what the
Helmer patentees describe as their own inventions, since the teachings of
Helmer are part of the literature of the art, relevant for all they contain. See
In re Lemelson, 397 F.2d at 1009.
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Thus, we do not agree that there is error in our finding of Helmer,
when combined with Homberg and Rizvi, teaches or suggests “sending a
request of the application client for the first application server from the first
application server to the second application server while the first one of the
two application servers fails to access the database” (Claim 1). Therefore,
we find Appellants’ arguments unavailing.

It Would Have Been Obvious to Combine the References
To address the issue of whether Appellants have shown there is error
in our finding that it would have been obvious to combine the teachings of
Homberg, Rizvi and Helmer, we must determine whether or not the
differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains. See KSR, 127 S. Ct. at 1734. As set
forth in our Decision, obviousness determination is not the result of a rigid
formula disassociated from the consideration of the facts of a case, and the
common sense of those skilled in the art demonstrates why some
combinations would have been obvious where others would not. See
Leapfrog, 485 F.3d at 1161. That is, the test for obviousness is rather what
the combined teachings of the references would have suggested to those of
ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981);
In re Young, 927 F.2d at 591.
Although the Appellants contend that our analysis is “completely
different than that presented by the Examiner,” the Appellants have had a
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fair opportunity to review the entire references to Homberg, Rizvi and
Helmer to evaluate the references for all that they teach and what the
references would have suggested to those of ordinary skill in the art. Our
finding does not add any new reference to the combined teachings.
Furthermore, the references are directed to server systems, where
combining the teachings to provide “a faster and more efficient backup
server” as found by the Examiner (Ans. 5) would require no more than
"ordinary skill and common sense" (KSR, 127 S. Ct. at 1742), as we set forth
in our Decision. Appellants have presented no evidence that adding the
teaching of sending a request is from a failed local server (that processed the
request) to the remote server, as taught or suggested by Helmer, "was
uniquely challenging or difficult for one of ordinary skill in the art," nor
have Appellants presented evidence that this "represented an unobvious step
over the prior art." See Leapfrog, 485 F.3d at 1162.
As set forth in our Decision, a person of ordinary skill will be able to
fit the teachings of Holmberg, Rizvi, and Helmer together like pieces of a
puzzle since the person of ordinary skill is also a person of ordinary
creativity, not an automaton. See KSR, 127 S. Ct. at 1742. The person of
ordinary skill and common sense would find it obvious to combine the
teachings to provide “a faster and more efficient backup server” as found by
the Examiner (Ans. 5). Appellants have not presented any evidence to
indicate why it would not have been obvious to combine the references.
Thus, we find that Appellants have not met the burden on appeal to
demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d at
985-86.
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Thus, we do not agree that our finding of obviousness to combine the
references is in error. Therefore, we find Appellants’ arguments unavailing.

Claims 7 and 11
Although Appellants contend that claims 7 and 11 fall separately from
independent claim 1 (Request 20), Appellants do not provide separate
arguments. Appellants merely contend that “[w]hereas claim 1 is directed to
a method, claim 7 is directed to a computer system” (App. Br. 9), which the
Examiner finds containing recitation that “occurs in the preamble” (Ans. 9)
In fact, Appellants admit that the limitation in claim 7 is “comparable to the
limitation found in claim 1” (App. Br. 8), and that claim 11 “similarly”
recite “receiving, by the second of the application servers, a request from the
first application server while the first application server fails to access the
database” (App. Br. 8-9).
As the Examiner finds, “[a] preamble is generally not accorded any
patentable weight where it merely recites the purpose of a process or the
intended use of a structure” (Ans. 9). Further, since Appellants do not
provide separate arguments regarding claims 7 and 11, and particularly
provide separate arguments as to why the Examiner has erred in finding
claims 7 and 11 obvious over the combined teachings of Homberg, Rizvi,
and Helmer, as set forth in the Examiner’s reasoning in the rejection of
claim 1, we find that claims 7 and 11 fall with claim 1. That is, in the
absence of separate arguments for claims 7 and 11 subject to the same
rejection as claim 1, claims 7 and 11 shall fall with the claim 1 for which an
argument was made. See In re Young, 927 F.2d at 590
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VI. CONCLUSION
We have carefully considered the arguments raised by Appellants in
the Request for Rehearing, but none of these arguments are persuasive that
our original Decision was in error. We are still of the view, that the
invention set forth in claims 1-14 is unpatentable over the applied prior art
based on the record before us in the original appeal. This Decision on
Appellants’ Request for Rehearing is deemed to incorporate our earlier
Decision (mailed September 24, 2008) by reference. See 37 C.F.R. §
41.52(a)(1).

VII. DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision of September 24, 2008, but we deny the request
with respect to making any changes therein.

REHEARING DENIED

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