Ex parte REIFMAN et al.

Board of Patent Appeals and Interferences

Sep 18, 1998

08221370 (B.P.A.I. Sep. 18, 1998)

Application for patent filed March 31, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JEFFREY B. REIFMAN, KURT D. DELBENE, CHRIS E. TOBEY
and RENEE MARCEAU

_____________
Appeal No. 96-2040
Application No. 08/221,3701
______________
ON BRIEF
_______________
Before KRASS, MARTIN and LEE, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final
rejection of claims 18 through 20 and 72 through 102.
Appeal No. 96-2040
Application No. 08/221,370
2
The invention is directed to a system and method for
facsimile load balancing. More particularly, in a system
containing a plurality of facsimile machines, when the
workload of a first facsimile machine exceeds a predetermined
value, a stored data file from the first facsimile machine is
transferred to another facsimile machine for transmission to a
designated recipient by the other facsimile machine rather
than the first facsimile machine.
Representative independent claim 75 is reproduced as
follows:
75. A method in first and second facsimile machines for
facsimile communication, the first and second facsimile
machines being coupled together with the first facsimile
machine having a workload value corresponding to a plurality
of data files stored in the first facsimile machine awaiting
transmission to corresponding designated recipients, the
method comprising the steps of:
determining the workload for the first facsimile machine;
and if said determined workload value exceeds a threshold
value, transferring at least a first stored data file from the
first facsimile machine to the second facsimile machine.
The examiner relies on the following reference:
Mizutori et al. (Mizutori) 4,967,288 Oct. 30,
1990
Appeal No. 96-2040
Application No. 08/221,370
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Claims 18 through 20 and 72 through 102 stand rejected
under 35 U.S.C. 103 as unpatentable over Mizutori.
Reference is made to the brief and answer for the
respective positions of appellants and the examiner.
OPINION
We reverse.
In our view, while the instant independent claims appear
rather broad in nature, the examiner has simply not made out a
prima facie case of obviousness regarding the claimed subject
matter.
Each of the instant independent claims requires, at
least, the determination of a workload value for a first
facsimile machine, the determination of whether that workload
value exceeds a predetermined value and, if the workload value
does, indeed, exceed the predetermined value, then
transferring stored data files from the first facsimile
machine to another facsimile machine. Thus, there must be a
determination that the workload value exceeds a predetermined
value.
Appeal No. 96-2040
Application No. 08/221,370
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We find no such predetermined value taught or suggested
in Mizutori.
On the contrary, as pointed out by appellants, and not
seriously disputed by the examiner, Mizutori alleviates
imbalances in image data processing by storage and exchange
units, not facsimile machines, as such, and does so by
periodically calculating the quantity of image information per
communication line in each storage and exchange unit and
requiring transfer of files between storage and exchange units
to produce equal workloads between units regardless of any
predetermined number of files within any one storage and
exchange unit. From the discussion at column 5, lines 6-30 of
Mizutori, Mizutori appears to balance unequal workloads only
at preset times, rather than by comparing a workload value
with a predetermined value and transferring files only when
the predetermined value is exceeded, as in the instant claimed
invention. The claimed predetermined value ensures that
transfers of files between facsimile machines occurs only when
a facsimile machine is overloaded whereas Mizutori’s device
requires transfer of files in order to equalize workloads even
Appeal No. 96-2040
Application No. 08/221,370
5
where one of the storage and exchange units is not overloaded
and could easily handle its unequal workload, thus wasting
valuable processing time as compared with the instant claimed
system and method.
The examiner’s response [answer-page 4] is to contend
that “this difference is simply a difference in the criterion
used to define what workload is excessive.” We agree that
there is a difference based on a criterion used to define what
workload is excessive (Mizutori considers any imbalance to be
excessive while the instant claimed invention considers there
to be an excessive workload only when the workload value
exceeds a predetermined value) but that criterion may clearly
constitute a nonobvious, or patentable, difference. Thus,
even assuming the examiner is correct in the assessment that
there is a difference between the instant claimed invention
and that disclosed by Mizutori, i.e., “simply a difference in
the criterion,” an analysis under 35 U.S.C. 103 requires not
only that the examiner identify such a difference but also
that the examiner then explain why, after assessing the level
of those skilled in the art, the skilled artisan would have
found the claimed subject matter, as a whole, to have been
Appeal No. 96-2040
Application No. 08/221,370
6
obvious. Thus, while the examiner has indicated a difference,
the examiner has failed to present any rationale as to why the
instant claimed subject matter, as a whole, containing this
difference, would have been obvious, within the meaning of 35
U.S.C. 103. Accordingly, no prima facie case of obviousness
has been presented.
The examiner also states [answer-page 4] that it “is not
clear that Applicant’s [sic, applicants’] claimed
‘predetermined’ workload must be some fixed number of
bytes...rather than the result of an operation which computes
a threshold prior to the workload shift.” We disagree. The
meaning of “predetermined” would appear to require at least
some determination at a previous time, i.e., previous to any
operation. Further, since the claims call for a
“predetermined value,” it is clear that what is intended is a
number which has been determined previous to any operation.
Accordingly, contrary to the examiner’s position, the claimed
“predetermined value” is not a threshold value which is
computed as a result of some operation but rather a fixed
number determined beforehand. In the preferred embodiment,
for example, that number is 5.
Appeal No. 96-2040
Application No. 08/221,370
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We base our decision on the examiner’s rejection and
rationale therefor, as well as on appellants’ arguments
thereagainst. While we make no warranty, one way or the
other, that no proper rejection of the instant claims and/or
any individual claim might be made by applying the Mizutori
reference in some way different from that of the examiner, it
is clear to us, for the reasons supra, that the examiner has
simply failed to establish a case of prima facie obviousness.
Accordingly, the examiner’s decision rejecting claims 18
through 20 and 72 through 102 under 35 U.S.C. 103 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
Appeal No. 96-2040
Application No. 08/221,370
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)
) BOARD OF PATENT
JOHN C. MARTIN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMESON LEE )
Administrative Patent Judge )
jlb
Appeal No. 96-2040
Application No. 08/221,370
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