Ex Parte Chinner et al

Board of Patent Appeals and Interferences

Sep 22, 2010

10620797 (B.P.A.I. Sep. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID CHINNER and MICHAEL ANTHONY GIGANTE
____________

Appeal 2009-005295
Application 10/620,797
Technology Center 2100
____________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and JAY P. LUCAS,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL1
The Appellants appeal under 35 U.S.C. § 134(a) from the Final
rejection of claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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.

Appeal 2009-005295
Application 10/620,797

2
I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a method and a device for
scheduling resource acquisition requests (Spec. 2).

The Illustrative Claim
Claim 1, an illustrative claim, reads as follows:
1. A method of processing resource acquisition requests,
comprising:
scheduling execution of the resource acquisition requests in
accordance with user configurable metering.

The References
The Examiner relies on the following references as evidence:
Nakaoka US 6,092,048 Jul. 18, 2000
Clayton US 6,971,101 B1 Nov. 29, 2005

The Rejection
The following rejections are before us for review:
Claims 1-28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Clayton in view of Nakaoka.
Appeal 2009-005295
Application 10/620,797

3
II. ISSUE
Has the Examiner erred in finding that the combination of Clayton and
Nakaoka teaches or fairly suggests “scheduling execution of the resource
acquisition requests in accordance with user configurable metering”, as
recited in independent claim 1?

III. PRINCIPLES OF LAW
Obviousness
“Obviousness is a question of law based on underlying findings of
fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying
factual inquiries are: (1) the scope and content of the prior art, (2) the
differences between the prior art and the claims at issue, (3) the level of
ordinary skill in the pertinent art, and (4) secondary considerations of
nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
(citation omitted).

IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
Nakaoka
1. Nakaoka discloses a task execution support system used by
multiple users:
Appeal 2009-005295
Application 10/620,797

4
A task management server includes a memory unit for
memorizing task information containing constituents indicated
by a task property of a supported task, an action entry
comprising a task, an event rule and a main task and subtask
structure, and each of a plurality of client machines includes a
task information display/operation unit which enables each user
to operate information during a task is executed. A task
execution support system supports the user such that the user
can execute a task while determining the contents of action and
the procedure of action in accordance with a progress of a task
without defining a series of action procedure from the start to
end of a task with all sorts of actions in the task listed-up as a
network type flow before a task to be supported is started.
(Abstract) (emphasis added).
2. Nakaoka further discloses a user interface for a user to enter
tasks to be executed using a key board or mouse (col. 8, ll. 37-65, Fig. 25).
V. ANALYSIS
The Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner sets forth a detailed explanation of a reasoned
conclusion of unpatentability in the Examiner’s Answer. Therefore, we look
to the Appellants’ Brief to show error in the proffered reasoned conclusion.
Id.
Appeal 2009-005295
Application 10/620,797

5
The Common Feature in Claims
Independent claim 1, recites, inter alia, “scheduling execution of the
resource acquisition requests in accordance with user configurable
metering.” Independent claims 11 and 20, contain similar limitations.
35 U.S.C. § 103(a) rejections
With respect to claim 1, the Appellants contend that neither Clayton
nor Nakaoka discloses disputed limitations, in particular, the abstract of
Nakaoka fails to teach or suggest “user configurable metering” (Reply Br.
6). The Appellants further contend that Nakaoka’s abstract “does not seem
to have anything to do with determining the number of requests of a given
priority that should be executed by the focus manager 206 in Clayton et al.,
or doing anything ‘in accordance with user configurable metering’” (App.
Br. 4).
The Examiner states that Nakaoka teaches the argued limitation in the
abstract of Nakaoka (Ans. 4). The Examiner also states that the Appellants
did not present the arguments that “appear to distinctly identify what the
prior art did not disclose, did not describe, or did not suggest.” (Id. 7) Thus,
“the Examiner has replied to all of Appellant’s [sic] arguments using his best
judgment.” (Id. 8)
We disagree with the Examiner’s arguments. We find that the
Examiner admitted that Clayton does not teach the limitation “in accordance
with user configurable metering” (Id. 3). We also find that the paragraph of
Appeal 2009-005295
Application 10/620,797

6
the Nakaoka reference relied upon by the Examiner only discusses if the
user can execute a task while determining the contents of action and the
procedure of action in accordance with a progress of a task without defining
a series of action procedure from the start to end of a task (FF 1). We also
find the Examiner states that, the abstract, Fig. 25 and corresponding
discussions in the Nakaoka reference would read on the claimed limitation,
“user configurable metering” (Ans. 3-4). However, the Examiner does not
explain how the merits of the teachings relate to the claim language such as
what is the metering or how the user configures the metering in the Nakaoka
reference. Thus, we would be required to speculate whether or what parts of
the teachings read on the claimed limitations. We will not speculate whether
the teachings read on the claimed limitations. We, therefore, find the
Examiner’s position is untenable.
Because we agree with at least one of the Appellants’ contentions, we
find that the Examiner has not made a requisite showing of obviousness as
required to teach or fairly suggest the invention as recited in claim 1 by the
combination of Clayton and Nakaoka. The rejection of the dependent claims
2-10 contains the same deficiency. The Appellants, thus, have demonstrated
error in the Examiner’s reasoned conclusion of obviousness for the subject
matter of claims 1-10.
The independent claims 11 and 20 contain the similar limitations to
those found in independent claim 1. The Appellants present similar
Appeal 2009-005295
Application 10/620,797

7
arguments as set forth with respect to independent claim 1 in response to the
rejections of independent claims 11 and 20 (App. Br. 3-5).
As we found above in our discussion with respect to independent
claim 1, we similarly find that the Appellants have demonstrated error in the
Examiner’s conclusion for obviousness of the subject matter of independent
claims 11 and 20. The rejection of dependent claims 12-19, and 21-28 also
contains the same deficiency. Hence, the Appellants’ argument persuades us
that the Examiner erred in rejecting claims 1-28.
We, therefore, cannot sustain the rejection of claims 1-28 under 35
U.S.C. § 103.

VI. CONCLUSION
We conclude that the Appellants have shown that the Examiner erred
in finding that the combination of Clayton and Nakaoka teaches or fairly
suggests “scheduling execution of the resource acquisition requests in
accordance with user configurable metering”, as recited in independent
claim 1.

VII. ORDER
We reverse the obviousness rejections of claims 1-28 under 35 U.S.C.
§ 103(a).
REVERSED

Appeal 2009-005295
Application 10/620,797

8

tkl

BAKER BOTTS L.L.P.
2001 ROSS AVENUE
SUITE 600
DALLAS, TX 75201-2980