12172637 (P.T.A.B. Nov. 20, 2014)

Ex Parte Bose et al

Patent Trial and Appeal BoardNov 20, 2014

12172637 (P.T.A.B. Nov. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/172,637 07/14/2008 Abhijit Bose YOR920070687US1 5338 48062 7590 11/20/2014 RYAN, MASON & LEWIS, LLP 1175 Post Road East 2nd Floor Westport, CT 06880 EXAMINER ROSEN, ELIZABETH H ART UNIT PAPER NUMBER 2615 MAIL DATE DELIVERY MODE 11/20/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ABHIJIT BOSE, HANI T. JAMJOOM, ASHEQ KHAN, DEBANJAN SAHA, and ZON-YIN SHAE __________ Appeal 2012-003016 Application 12/172,6371 Technology Center 2600 ____________ Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W. FETTING, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Abhijit Bose, et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 1 The Appellants identify International Business Machines Corporation as the real party in interest. App. Br. 1. Appeal 2012-003016 Application 12/172,637 2 SUMMARY OF DECISION We REVERSE. 2 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method for routing requests for service, said method comprising the steps of: obtaining a plurality of requests for service, each of said requests specifying a description of work, at least one constraint, and at least one objective function; routing a given one of said requests to a corresponding first target resource, according to a routing table, in a manner to satisfy said at least one constraint and said at least one objective function; tracking whether said first target resource accepts a given request, rejects said given request, or passes on said given request to a second resource; determining a new routing path that provides an optimized result in comparison to a known routing path, wherein said result is based on said objective function and said new routing path is based on said tracking step; and updating said routing table to include said new routing path, wherein said determining step is performed by a hardware device. 2 Our decision will make reference to the Appellants’ Appeal Brief (“Appeal. Br.,” filed Sep. 28, 2011) and Reply Brief (“Reply Br.,” filed Nov. 28, 2011), and the Examiner’s Answer (“Ans.,” mailed Nov. 3, 2011). Appeal 2012-003016 Application 12/172,637 3 THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Faber Gonzalez Gonen Hudgeon US 2002/0010608 A1 US 2002/0019786 A1 US 2006/0136310 A1 US 2006/0212359 A1 Jan. 24, 2002 Feb. 14, 2002 Jun. 22, 2006 Sep. 21, 2006 The following rejections are before us for review: 1. Claims 1-4, 7-10, and 14-25 are rejected under 35 U.S.C. §103(a) as being unpatentable over Gonzalez and Gonen. 2. Claims 5 and 6 are rejected under 35 U.S.C. §103(a) as being unpatentable over Gonzalez, Gonen, and Hudgeon. 3. Claims 11-13 are rejected under 35 U.S.C. §103(a) as being unpatentable over Gonzalez, Gonen, and Faber. ISSUES Did the Examiner err in rejecting claims 1-4, 7-10, and 14-25 under 35 U.S.C. §103(a) as being unpatentable over Gonzalez and Gonen? Did the Examiner err in rejecting claims 5 and 6 under 35 U.S.C. §103(a) as being unpatentable over Gonzalez, Gonen, and Hudgeon? Did the Examiner err in rejecting claims 11-13 under 35 U.S.C. §103(a) as being unpatentable over Gonzalez, Gonen, and Faber? FINDINGS OF FACT We rely on the Examiner’s factual findings stated in the Answer. Additional findings of fact may appear in the Analysis below. Appeal 2012-003016 Application 12/172,637 4 ANALYSIS The rejection of claims 1-4, 7-10, and 14-25 under 35 U.S.C. §103(a) as being unpatentable over Gonzalez and Gonen. The Examiner’s position is that Gonzalez discloses all the claim limitations except “tracking whether said first target resource accepts a given request, rejects said given request, or passes on said given request to a second resource” (claim 1) for which Gonen is relied upon. Ans. 5-8. The Examiner found that “[i]t would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to incorporate Gonen's method of the service providers accepting or rejecting a service request with Gonzalez's online selection of service providers.” Ans. 8. The Appellants argue that Gonzalez does not disclose determining a new routing path that provides an optimized result in comparison to a known routing path, wherein said result is based on said objective function and said new routing path is based on said tracking step; and updating said routing table to include said new routing path. Claim 1. This limitation also appears in the other independent claims 14, 18, and 22. Therefore, the argument challenges the adequacy of the prima facie case of obviousness as to all the claims. As evidence that said claim limitations are disclosed in Gonzalez, the Examiner cites para. 47. See Ans. 7 and 17. Para. 47 is reproduced below: [0047] FIG. 3 schematically illustrates a variety of processes effected by gateway device 108. The various gateway processes 301 include process 302 of reconfiguring and updating details of given portals stored in a database of gateway device database 109. A further process 303 relates to reconfiguring and updating details of given service providers stored in a database of gateway device database 109. Appeal 2012-003016 Application 12/172,637 5 Process 304 relates to algorithms invoked in response to gateway device 108 receiving a customer order or an enquiry from a customer as to how much a given printing job will cost preferably in terms of printing costs and shipping costs. Process 305 relates to checking the status of a given service provider so that gateway device 108 is intermittently updated with respect to whether or not a given service provider is available to take on further work, whether or not the service provider has increased or reduced service provision recently, etc. The types of data stored in internet gateway device 108 are held in database 109 as illustrated in FIG. 1. According to the Examiner, this passage discloses that “[d]etails of a service provider are updated. Whenever a parameter related to a service provider is updated, there is a new routing path. The new routing path is optimized based on the service provider's availability. Every time a service provider's status changes, there is a new routing path.” Ans. 17. We have carefully reviewed para. 47. It is fair to find that the passage shows updating details of a service provider. But we do not see any disclosure of updating a routing path, let alone determining a new routing path that provides an optimized result in comparison to a known routing path, wherein said result is based on said objective function and said new routing path is based on said tracking step; and updating said routing table to include said new routing path, as claimed. The Examiner states that “[w]henever a parameter related to a service provider is updated, there is a new routing path. The new routing path is optimized based on the service provider's availability. Every time a service provider's status changes, there is a new routing path.” Ans. 17. However, no evidence has been presented showing that updating details of a service provider as Gonzalez fairly discloses necessarily yields a new routing path Appeal 2012-003016 Application 12/172,637 6 or a new routing path optimized based on the service provider's availability. Given only what Gonzalez discloses, one of ordinary skill in the art could not reach the claimed method whereby a new routing path is determined and the routing table is optimized absent hindsight reconstruction. “A rejection based on section 103 must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art.” In re GPAC. Inc, 57 F.3d 1573, 1582 (Fed. Cir. 1995). Because Gonzalez does not disclose the determining and updating steps as claimed, and there being no other evidence or apparent reasoning showing how one of ordinary skill in the art would be led to the claimed method as a whole, we find that a prima facie case of obviousness has not been made by a preponderance of the evidence in the first instance. Accordingly, the rejection is not sustained. The rejection of claims 5 and 6 under 35 U.S.C. §103(a) as being unpatentable over Gonzalez, Gonen, and Hudgeon. The rejection of claims 11-13 under 35 U.S.C. §103(a) as being unpatentable over Gonzalez, Gonen, and Faber. We reach the same conclusion as to the rejection of dependent claims 5, 6, and 11-13. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”). CONCLUSIONS The rejection of claims 1-4, 7-10, and 14-25 under 35 U.S.C. §103(a) as being unpatentable over Gonzalez and Gonen is not sustained. Appeal 2012-003016 Application 12/172,637 7 The rejection of claims 5 and 6 under 35 U.S.C. §103(a) as being unpatentable over Gonzalez, Gonen, and Hudgeon is not sustained. The rejection of claims 11-13 under 35 U.S.C. §103(a) as being unpatentable over Gonzalez, Gonen, and Faber is not sustained. DECISION The decision of the Examiner to reject claims 1-25 is reversed. REVERSED Ssc