International Business Machines Corporation

Patent Trials and Appeals Board

Aug 27, 2021

2020001824 (P.T.A.B. Aug. 27, 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.
15/153,935 05/13/2016 Rajkumar Karuppiah END920070149US3 2821
133758 7590 08/27/2021
Roberts Calderon Safran & Cole, P.C.
Intellectual Property Department
P.O. Box 10064
McLean, VA 22102-8064
EXAMINER
PEACH, POLINA G
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
08/27/2021 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):
Docketing@rcsc-ip.com
lgallaugher@rcsc-ip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RAJKUMAR KARUPPIAH
____________________

Appeal 2020-001824
Application 15/153,935
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, JEREMY J. CURCURI and
PHILLIP A. BENNETT, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, and 5–11. Appeal Br. 7. Claims 2
and 4 have been cancelled. Appeal Br. 30–31. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.

1 Appellant identifies the real party in interest is International Business
Machines Corporation. Appeal Br. 2.
Appeal 2020-001824
Application 15/153,935

2
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
1. A method for processing two or more data update files waiting to
be compressed at a primary server for transmission to a backup
server, the two or more data update files including data updates to
one or more data files stored at both the primary server and the
backup server, the backup server being coupled to the primary
server via a network, the method comprising:
[A.] the primary server selectively compressing the two or more
data update files waiting to be compressed at least partially
in parallel rather than sequentially only responsive to
determining both[:]
[i.] that the primary server has more than a predetermined
level of available processor power and
[ii.] that the network has more than a predetermined level
of available bandwidth;
[B.] the primary server sending to the backup server via the
network the two or more data update files which have been
compressed so the backup server can update the
corresponding one or more data files at the backup server.

REFERENCES2
The Examiner relies on the following references:
Name Reference Date
Fallon US 2004/0073746 A1 Apr. 15, 2004
Klassen US 2004/0196498 A1 Oct. 7, 2004

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
Appeal 2020-001824
Application 15/153,935

3
Iwatsu US 2006/0198518 A1 Sept. 7, 2006
Boldt US 2007/0096954 A1 May 3, 2007
Folkert US 7,734,602 B2 June 8, 2010

REJECTIONS
A.
The Examiner rejects claims 1, 3, and 11, under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Boldt and Folkert. Final
Act. 2–7.
The Examiner rejects claims 1, 3, and 11, under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Boldt and Fallon. Final
Act. 9–14.
The Examiner rejects claims 1, 3, and 11, under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Boldt and Klassen. Final
Act. 14.
We select claim 1 as the representative claim for these rejections. The
contentions discussed herein as to claim 1 are dispositive as to these
rejections. Therefore, except for our ultimate decision, we do not address the
merits of the § 103(a) rejections of claims 3 and 11 further herein.
B.
The Examiner rejects claims 5–10, under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Boldt, Fallon, and Iwatsu. Final
Act. 7–9.
The Examiner rejects claims 5–10, under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Boldt and Fallon. Final Act. 11–12.
Appeal 2020-001824
Application 15/153,935

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The Examiner rejects claims 5–10, under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Boldt, Klassen, and Iwatsu. Final
Act. 15.
The Examiner rejects claims 5–10, under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Boldt, Klassen, and Fallon. Final
Act. 15.
In the Reply Brief:
Appellant hereby waives any separate arguments to be made
with respect to the dependent claims 5–10. Thus, for the purposes
of this Appeal only, the patentability of claims 5–10 should stand
or fall with the patentability of the independent claims upon
which they depend.
Reply Br. 12 (emphasis added). Therefore, except for our ultimate decision,
we do not address the merits of the § 103(a) rejections of claims 5–10
further herein.
OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Appellant’s contentions we discuss
are dispositive as to the rejections on appeal. Therefore, Appellant’s other
contentions are not discussed in detail herein.
A.
As reproduced supra, part A of claim 1 requires (emphasis added):
[A.] the primary server selectively compressing the two or more data
update files waiting to be compressed at least partially in parallel
rather than sequentially only responsive to determining both[:]
Appeal 2020-001824
Application 15/153,935

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[i.] that the primary server has more than a predetermined level
of available processor power and
[ii.] that the network has more than a predetermined level of
available bandwidth;
B.
In rejecting claim 1, the Examiner finds that the features of part A are
taught in-part as follows:
[T]he primary server selectively compressing ([0048]
“compression algorithm may be statically or dynamically
selected”) the two or more data update files waiting to be
compressed faster ([0045], [0059]) . . . rather than effectively . . .
(F[igure]2B:226, 228, [0048], [0054])(see NOTE below) only
responsive to determining both that the primary server has more
than a predetermined level of available processor power and that
the network has more than a predetermined level of available
bandwidth (F2B:224, [0028]-[0029], [0031]; [0034], [0054],
[0056], Abstract – “compression algorithm (and any associated
para meter(s)) that is applied is selected based upon a variety of
factors, such as the length of the data segment, CPU speed, CPU
availability, and/or data throughput such as the network
bandwidth or network availability”); and.
Final Act. 3 (additional emphasis added).
C.
Appellant contends that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
Boldt does not teach or suggest selecting to compress files
in a particular manner responsive to determining that both
network availability and processor power are above
predetermined levels, which is a requirement of both claims 1
and 3.
Appeal Br. 10.
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Application 15/153,935

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[T]he portions of Boldt cited by the Examiner, at best,
associate the selection of the fast algorithm with network
bandwidth being above a predetermined level and do not make
any association between the selection of the fast algorithm and
processor power also being above a predetermined level, which
is required by claims 1 and 3.
As discussed above, there is simply no link in Boldt
between the selection of the fast algorithm and processor power
being above a predetermined level. And the Examiner has not
pointed to any portion of Boldt that is contrary (i.e., that
discusses using a more CPU-intensive algorithm when the
network bandwidth is greater than a threshold).
Appeal Br. 11.
See Boldt, para. 0029 (“In the case of transmission of data
across a network, if the network bandwidth is limited, more time
can be spent compressing data; if the network bandwidth is
plentiful, less valuable computer time can be spent compressing
the data.”). That is to say, in the context of Boldt, less CPU (not
more) is used in situations where network bandwidth is high.
Appeal Br. 12.
D.
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“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. We conclude the Examiner’s
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Application 15/153,935

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analysis fails to meet this standard because the rejection does not adequately
explain the Examiner’s findings of fact.
E.
We agree with Appellant that “Boldt does not teach or suggest
selecting to compress files in a particular manner responsive to determining
that both network availability and processor power are above predetermined
levels” (emphasis added), as called for in claim 1, part A. Rather, we find
that Boldt teaches looking at CPU power and network bandwidth to decide
compression, but only as tradeoffs. That is, if more network bandwidth is
available, then use less CPU power on compression. We conclude,
consistent with Appellant’s argument, that there is currently insufficient
articulated reasoning to support the Examiner’s finding that Boldt alone or in
combination with Folkert, Fallon, or Klassen teaches, suggests, or otherwise
renders obvious part A as required by claim 1.
Therefore, we conclude that there is insufficient articulated reasoning
to support the Examiner’s final conclusion that claim 1 would have been
obvious to one of ordinary skill in the art at the time of Appellant’s
invention.
CONCLUSION
The Appellant has demonstrated the Examiner erred in rejecting
claims 1, 3, and 5–11 as being unpatentable under 35 U.S.C. § 103(a).
The Examiner’s rejections of claims 1, 3, and 5–11 as being
unpatentable under 35 U.S.C. § 103(a) are reversed.
Appeal 2020-001824
Application 15/153,935

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 11 103(a) Boldt, Folkert 1, 3, 11
5–10 103(a) Boldt, Folkert, Iwatsu 5–10
1, 3, 5–11 103(a) Boldt, Fallon 1, 3, 5–11
1, 3, 11 103(a) Boldt, Klassen 1, 3, 11
5–10 103(a) Boldt, Klassen, Iwatsu 5–10
5–10 103(a) Boldt, Klassen, Fallon 5–10
Overall
Outcome

1, 3, 5–11

REVERSED