International Business Machines Corporation

Patent Trials and Appeals Board

Aug 3, 2021

2020002618 (P.T.A.B. Aug. 3, 2021)

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.
15/398,449 01/04/2017 Matthias Falkenberg DE920120029US2_8150-0736 1090
112978 7590 08/03/2021
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
HLAING, SOE MIN
ART UNIT PAPER NUMBER
2451
NOTIFICATION DATE DELIVERY MODE
08/03/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHIAS FALKENBERG, ANDREAS NAUERZ,
SASCHA SAMBALE, and SVEN OLE STUEVEN

Appeal 2020-002618
Application 15/398,449
Technology Center 2400

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

PER CURIAM

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–40. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” references the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as “International Business
Machines Corporation.” Appeal Br. 1.
Appeal 2020-002618
Application 15/398,449

2
STATEMENT OF THE CASE
Appellant’s Invention
The present invention relates to “work-load management in a
client-server infrastructure [and] includes setting [of] request information.”
Spec. ¶ 6. Claim 21, reproduced below, is illustrative of argued subject
matter.
21. A computer-implemented method, comprising:
receiving, from a client and by a server, a first request and
accompanying request information identifying the first request
as a first type of request;
including, based upon the first type of request indicating a
higher priority, the first request in a standard request processing
queue;
receiving, by the server, a second request and accompanying
request information identifying the second request as a second
type of request;
determining that a server workload of the server exceeds a
predetermined first threshold value; and
excluding, based upon the second type of request indicating a
lower priority and only upon the determining, the second
request from the standard request processing queue.
Appeal Br. 23.
Rejections
Claims 21, 26, 28, 29, 34, and 36 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Cuomo (US 2003/0009505 A1; Jan. 9,
2003) and Revanuru (US 2005/0273456 A1; Dec. 8, 2005). Final Act. 5–17.
Claims 22, 30, and 37 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cuomo, Revanuru, and Zhou
(US 2013/0198620 A1; Aug. 1, 2013). Final Act. 17–20.
Appeal 2020-002618
Application 15/398,449

3
Claims 23, 24, 25, 31, 32, 33, 38, and 39 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Cuomo, Revanuru, and Miller
(US 2010/0318667 A1; Dec. 16, 2010). Final Act. 20–29.
Claims 27, 35, and 40 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cuomo, Revanuru, and Poole
(US 2012/0215741 A1; Aug. 23, 2012). Final Act. 30–33.
OPINION
Appellant addresses claims 21–25 and 27–40 collectively.
Appeal Br. 19–20. Only claim 26 is separately argued. Id. at 17–18.
For the below reasons, we are unpersuaded of error in the rejections of
claims 21 and 26. We therefore sustain the Examiner’s decision to reject
claims 21–40.
Claims 21–25 and 27–40
We address the arguments for claims 21–25 and 27–40 with reference
to claim 21, which is rejected as obvious over Cuomo and Revanuru.
Appellant contends the Examiner’s proposed combination of Cuomo’s
and Revanuru’s teachings is erred because Cuomo and Revanuru address the
same problem via different solutions, the combination replaces Cuomo’s
solution with Revanuru’s solution, and it defies common sense to substitute
one solution for another. Appeal Br. 10–14. In showing that Cuomo and
Revanuru address the same problem via different solutions, Appellant
correctly describes Cuomo as responding to a server backlog by designating
each incoming client request as a high, medium, or low priority based on its
type, queuing the request in a respective queue (high, medium, or low), and
processing queued requests by priority (high, then medium, then low).
Id. at 8–9; see also Cuomo ¶¶ 36–37. Further, Appellant correctly describes
Appeal 2020-002618
Application 15/398,449

4
Revanuru as responding to a server backlog by designating each incoming
client request as a high or low priority based on its destination, queuing
high-priority requests, and rejecting low-priority requests. Id. at 9; see also
Revanuru ¶ 11. We are unpersuaded of Examiner error for each of two
reasons.
First, although we agree with Appellant’s descriptions of the
references, we disagree with Appellant’s contentions regarding the
Cuomo-Revanuru combination. Specifically, we do not view the
combination as replacing Cuomo’s above features with Revanuru’s above
features—i.e., as modifying Cuomo’s device by replacing the
different-priority queues with a single queue that excludes low-priority
requests in response to a high server workload. See Appeal Br. 8–9. We
view the combination as additively combining these solutions. See Final
Act. 8 (“modify the method of Cuomo to include the feature for . .
. excluding”). That is, in response to a server backlog, the combination
designates each incoming request a priority (e.g., high, medium, or low),
then (1) rejects requests having a below-threshold priority (low priority), and
then (2) queues the above-threshold requests (high priority and medium
priority) to a respective queue (high priority or medium priority). Id. at 8–9.
The combination is a “predictable use of prior art elements according
to their established functions” because the addition of Revanuru’s above
feature (1) constitutes a “mere application of a known technique to a piece of
prior art ready for the improvement” (KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 401 (2007)). Further, “[t]he two [features (1) and (2)] in combination
[do] no more than they would in separate, sequential operation” by
eliminating some requests (1) and delaying others (2). Id. at 417.
Appeal 2020-002618
Application 15/398,449

5
Second, we disagree with Appellant’s contention that replacing a
problem’s solution with another solution is unobvious. This argument is,
essentially, a false contention that a reference’s mere description of a
problem’s solution amounts to teaching away from all other solutions. Even
deeming one of two solutions a “best” solution does not, alone, teach away
from the other solution. See DePuy Spine, Inc. v. Medtronic Sofamor
Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not
teach away . . . if it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed.”).
Appellant also contends: “Cuomo uses priority (based upon request
type) to select which one of multiple queues into which a request should be
placed. However, Revanuru uses the destination of the request (i.e., servlets
108, 110, 112) as the basis for either accepting or rejecting a request.”
Appeal Br. 14. We are unpersuaded of Examiner error because the
combination assigns a priority to each request based on its type and
Revanuru does not teach away from doing so by merely assigning a priority
to each request based on its destination. See DePuy, 567 F.3d at 1327
(parenthetical description at supra p. 5). Indeed, by describing the
destination-based assignment of priority as an expedient means of assigning
priorities to requests (Revanuru, abst.; ¶ 11), Revanuru suggests that its
rejecting of lower priority requests can be paired with other means of
assigning priorities to requests (i.e., albeit less expedient means). See Id.
Appellant also contends: “[T]he . . . combination would not . . .
improve upon the principle of operation of Cuomo. Rather, both the
principle of operation (i.e., using request type to select which queue to place
Appeal 2020-002618
Application 15/398,449

6
the request in) of Cuomo and the outcome of using that operation would be
completely changed.” Appeal Br. 14 (emphases omitted). We are
unpersuaded of Examiner error for each of two reasons.
First, the argument stands on Appellant’s misinterpretation of the
combination as replacing Cuomo’s priority-based queues (high, medium,
and low) with Revanuru’s priority-based excluding of requests (rejecting
low priority requests). As stated above, we view the combination as
additively combining Cuomo’s priority-based queues with Revanuru’s
priority-based excluding of requests. Supra 4.
Second, even as interpreted by Appellant, the combination would not
change the Cuomo invention’s principle of operation—which is responding
to a server backlog by designating each incoming client request a priority
and foregoing lower priority requests in favor of processing the higher
priority requests (see Cuomo, abst.; id., claim 1). The combination would
merely change the means of foregoing lower priority requests. See In re
Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“[T]he type of circuitry used
is the main difference between [the combination of prior art] . . . and [the
primary reference’s] invention[.] . . . [T]he principle of operation [for the
primary reference’s invention] is its high level ability to receive inputs into a
programmable crossbar array and processing the output to obtain an
arithmetic result. Similarly, [the combination of prior art] operates by . . .
receiv[ing] inputs into a programmable crossbar array and processing the
output to obtain an arithmetic result. . . . Thus, . . . the difference in the
circuitry . . . does not affect [an] overall principle of operation[.]”).
Appellant also contends: “Cuomo does not teach . . . a standard
request processing queue . . . —i.e., a normal queue to which a request is
Appeal 2020-002618
Application 15/398,449

7
sent. Instead, Cuomo describes sending the requests to specialized queues
(i.e., a low, medium, and high priority queues).” Appeal Br. 15–16.
In support, Appellant cites the Specification’s paragraph 43 as showing “a
proper claim construction of ‘standard request processing queue[]’ is a
queue that stores both high and low priority requests.” Reply Br. 8.
We are unpersuaded of Examiner error because, in view of our below
claim construction, Cuomo’s cited queues are each a “standard request
processing queue” as recited in claim 21.
We construe “standard” of claim 21’s “standard request processing
queue” limitation as confirming the exclusion step is not a special property
of the queue itself, but rather a decision occurring in response to the server’s
excessive workload. In other words, this construction confirms that the
queue is capable of storing either type of request, but is designated for the
first type (and not the second type) in response to the server’s excessive
workload. Further, this construction comports with the invention’s objective
to improve upon the background art’s invariable queuing of synchronous
and asynchronous requests (Spec. ¶¶ 2–5), the improvement of excluding
lower priority asynchronous requests during high server workloads (id. ¶¶ 6,
17–18), and the disclosed use of a queue controller to implement the
improvement (id. ¶ 43).
Cuomo teaches each of the cited queues as a “standard request
processing queue” by describing the cited system as a generic computing
platform (Cuomo ¶¶ 25–34) and describing the invention as “establishing”
and “associating” the queues (id. ¶ 35). Specifically, Cuomo describes the
invention as first “establishing a plurality of queues for storing prioritized
requests in accordance with the present invention.” Id. Cuomo also
Appeal 2020-002618
Application 15/398,449

8
describes the invention as then “associating each queue with a different one
of the priorities.” Id. “As our precedents make clear, however, the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR,
550 U.S at 418. Therefore, in view of these teachings, an artisan would
understand that each queue’s priority designation (high, medium, or low) is
not a special property of the queue itself, but rather a decision by the system
(e.g., by software). Further, the artisan would thereby understand that each
queue is capable of queuing requests of all priority types (high, medium, and
low).
Claim 26
Claim 26 is separately argued (Appeal Br. 17–18), depends from
claim 21, and adds the following limitation: “the second request is included
within the standard request processing queue based upon the server
workload falling below the first threshold” (id. at 24). For the following
reasons, we are unpersuaded of error in the rejection of claim 26. We
therefore sustain the Examiner’s decision to reject claim 26.
Appellant contends claim 26 “contemplate[s] that the second request
is excluded and then included within the standard request processing queue
based upon the particular circumstances recited in the claims.”
Appeal Br. 18. Appellant further contends “[t]he Examiner’s cited teachings
from Revanuru . . . do not teach that a request is excluded and then included
within the priority queue.” Id. In support, Appellant also contends the
proffered claim interpretation “is possible because the operations are not
necessarily performed at the same time (i.e., contemporaneously)[;] the
Appeal 2020-002618
Application 15/398,449

9
claims contemplate different circumstances (i.e., the server workload
changing) that lead to both the including and excluding.” Reply Br. 9.
We are unpersuaded of Examiner error for each of two reasons.
First, Appellant fails to explain why claims 21 (base claim) and 26
require the argued sequence of excluding (claim 21) and then including
(claim 26) the second request. Appeal Br. 2–3 (the in toto summary of
claimed subject matter does not mention claim 26), 18 (the in toto
contentions as to claim scope, Appellant merely states the second request is
excluded and then included by the queue); Reply Br. 9 (the in toto
contentions as to claim scope, Appellant merely quotes claim language and
then states that both excluding and including “is possible because the
operations are not necessarily performed at the same time”). Appellant fails
to explain why the corresponding “based upon” recitations of claims 21 and
26 should not be understood as condition precedents whereby the excluding
and including are conditional limitations (respectively required if the server
workload exceeds or falls below the threshold), such that only one must be
performed. See Ex parte Schulhauser, Appeal No. 2013-007847,
2016 WL 6277792, at *5 (PTAB 2016) (precedential) (describing
conditional limitations). Nor does Appellant explain why claim 26’s
“wherein” and passive language should not be rather understood as
conveying only an intended result of claim 21’s positively recited
determining and excluding steps. See Minton v. Nat’l Ass’n of Sec. Dealers,
Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003) (“A whereby clause in a method
claim is not given weight when it simply expresses the intended result of a
process step positively recited[, e.g.,] . . . does not inform the mechanics of
how the [step] is executed[.]”). In view of the above, the argued claim scope
Appeal 2020-002618
Application 15/398,449

10
is neither self-evident nor supported by Appellant’s briefs. See SmithKline
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006)
(Issues must be, when asserted (e.g., in the opening brief), accompanied by
developed argumentation.); In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (“Attorney’s argument in a brief cannot take the place of evidence.”).
Second, even assuming (arguendo) the argued claim scope is correct,
Appellant fails to persuade us that the Cuomo-Revanuru combination does
not achieve the claimed invention. Specifically, Appellant fails to persuade
us that an ordinarily skilled artisan would not expect the combination to
successfully resend a rejected request (rejected per the modification of
Cuomo’s invention in view of Revanuru) to the server for processing. It
seems logical that, for example, a rejected webpage request would be resent
by the client device (automatically or per the user) and queued for
processing. Revanuru suggests as much by teaching: “To the user[,] this
[unserved request] appears as a page error[] or a frozen page. The user will
typically keep hitting the server with requests[.]” Revanuru ¶ 4. As
Revanuru thereby reflects, it would be predictable for a client device to
“keep hitting the server” (id.) with the same request until the request is
fulfilled (i.e., when the overload ceases) or at least resend the same request
when the server’s overload is determined (or just suspected) to have ceased.
KSR, 550 U.S. at 418 (“[A] court can take account of the inferences . . . [of]
a person of ordinary skill in the art[.]”). Further, Appellant has not defined a
“request,” much less supported a definition that distinguishes the claimed
“excluding . . . the second request” (claim 21) and the claimed “second
request is included” (claim 26) over the above sending/exclusion and
resending/inclusion of a same request.
Appeal 2020-002618
Application 15/398,449

11
CONCLUSION
For the foregoing reasons, we affirm the Examiner’s decision to reject
claims 21–40.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
21, 26, 28, 29,
34, 36 103(a)
Cuomo,
Revanuru
21, 26, 28,
29, 34, 36
22, 30, 37 103(a)
Cuomo,
Revanuru,
Zhou
22, 30, 37
23, 24, 25, 31,
32, 33, 38, 39 103(a)
Cuomo,
Revanuru,
Miller
23, 24, 25,
31, 32, 33,
38, 39

27, 35, 40 103(a)
Cuomo,
Revanuru,
Poole
27, 35, 40
Overall
Outcome 21–40

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this Appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED