Ex Parte Dodrill et al

Board of Patent Appeals and Interferences

Apr 15, 2010

09605848 (B.P.A.I. Apr. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LEWIS DEAN DODRILL, DAVID WILLIAM GEEN,
GEETHA RAVISHANKAR, SATISH JOSHI, RYAN ALAN DANNER,
SUSAN HARROW BARBAN, STEVEN J. MARTIN,
and SWAMINATHAN RAVISHANKAR
____________

Appeal 2009-002905
Application 09/605,848
Technology Center 2400
____________

Decided: April 16, 2010
____________

Before JOHN A. JEFFERY, LANCE LEONARD BARRY, and CAROLYN
D. THOMAS, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-002905
Application 09/605,848

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STATEMENT OF THE CASE
The Patent Examiner rejected claims 1, 3, 5-18, 20, 22-28, 30-39, and
41. The Appellants appeals therefrom under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).

INVENTION
The Appellants describe the invention at issue on appeal as follows.
[T]he present invention provides a method for inter-process
communication between non-persistent application instances.
The method includes establishing a first non-persistent
application instance serving a first party and establishing a
second non-persistent application instance serving a second
party. An HTML [i.e., HyperText Markup Language] page is
generated, in the first application instance, having instructions
for a persistent browser instance, having received the HTML
page, to initiate a new application session for the second party.
(Spec. 4-5.)

ILLUSTRATIVE CLAIM
12. A method for inter-process communication between non-
persistent application instances, the method comprising:
establishing a first non-persistent application instance
serving a first party;
establishing a second non-persistent application instance
serving a second party; and
generating an HTML page, originating in the first
application instance, having instructions for a persistent
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browser instance in use by the second party, having received
the HTML page, to interrupt a present application session
having been generated by the second application instance on
behalf of the second party and initiate a new application session
for the second party.

PRIOR ART
Cave US 5,958,014 Sep. 28, 1999
Jindal US 6,327,622 B1 Dec. 4, 2001
Maurille US 6,484,196 B1 Nov. 19, 2002

REJECTIONS
Claims 1, 3, 5-7, 9, 12-14, 17, 18, 20, 22-24, 27, 28, 30, 32-34, 36, 39,
and 41 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Maurille and Jindal.

Claims 8, 10, 15, 16, 25, 26, 35, and 37 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Maurille, Jindal, and Official Notice.

Claims 11 and 38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maurille, Jindal, and Cave.

Appeal 2009-002905
Application 09/605,848

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ISSUE
The Examiner admits that "Maurille fails to specifically disclose that
the application session of the second party is established by another
application instance distinct from the first application instance." (Answer 5.)
He finds that "Jindal teaches using multiple instances of an application
spread across a plurality of servers in order to balance the load of client
requests (at least Col 2, Lines 41-57)" (id.), however, and concludes that "it
would have been obvious to one of ordinary skill in the art at the time the
invention was made to use multiple instances of the server application to
serve sessions from different clients . . . ." (Id.) The Appellants make the
following argument.
Even if Maurille were modified by employing the
teachings of Jindal, the modification would not result in the
claimed subject matter, since the combination does not teach or
suggest the HTML page originating in the first application
instance, requesting interruption of a present application session
of the second party, established by another application instance
distinct from the first application instance as claimed.
(App. Br. 6.) Therefore, the issue before us is whether the Appellants have
shown error in the Examiner's finding that teachings from Maurille and
Jindal would have suggested establishing a first non-persistent application
instance serving a first party; establishing a second non-persistent
application instance serving a second party; and generating an HTML page
to interrupt a present application session having been generated by the
second application instance on behalf of the second party and initiate a new
application session for the second party.

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Application 09/605,848

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LAW
"A rejection based on section 103 clearly must rest on a factual basis. .
. ." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). "The Patent Office
has the initial duty of supplying the factual basis for its rejection. It may not
. . . resort to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in its factual basis." Id. "It is impermissible to use the
claimed invention as an instruction manual or 'template' to piece together the
teachings of the prior art so that the claimed invention is rendered obvious."
In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933
F.2d 982, 987 (Fed. Cir. 1991)).

FINDINGS OF FACT ("FFS")
1. Maurille's invention "provides integrated combinations of threaded
instant messages, open display bulletin boards, private bulletin boards,
threaded e-mail, explicit acknowledgment of messages, and conferencing,
whisper and talk modes." (Abstract, ll. 1-5.) The Examiner admits,
however, that the reference "discloses only a single server application 114
(application instance)." (Answer 13.)

2. Jindal describes "a system and methods . . . for balancing client
(e.g., user) requests among multiple instances of an application (e.g.,
application program or replicated service) in accordance with a selected
policy. In this embodiment, each instance of the load-balanced application
executes on a separate computer server." (Col. 2, ll. 41-46.)

Appeal 2009-002905
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ANALYSIS
The Examiner admits that the Maurille discloses only a single
application instance. (FF 1.) Consequently, we agree with the Appellants
that the single instance "controls all messaging sessions of all users via a
database 108 (see Maurille column 6, lines 44-57)." (Appeal Br. 6.) Jindal
describes multiple instances of an application, each instance of which
executes on a separate computer server. (FF 2.)

We also agree with the Appellants that "if Maurille was combined
with Jindal to include multiple instances of the Maurille's server
application 114, there would merely be another server application 114 and
associated database 180. The first and second instances would be distinct
and would have no interrupt relation with respect to each other (such as the
interruption of the session of the second party as claimed)." (Appeal Br. 6.)
Instead, "any interruption would occur within the same instance and
between sessions . . . ." (Id. at 8.)

The Examiner does not allege, let alone show, that the addition of
Official notice or Cave cures the aforementioned deficiency of Maurille and
Jindal.

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellants have shown error in the Examiner's finding that teachings from
Maurille and Jindal would have suggested establishing a first non-persistent
application instance serving a first party; establishing a second non-
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persistent application instance serving a second party; and generating an
HTML page to interrupt a present application session having been generated
by the second application instance on behalf of the second party and initiate
a new application session for the second party.

DECISION
We reverse the rejections of claims 1, 3, 5-18, 20, 22-28, 30-39, and
41.

REVERSED

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