W.W. GRAINGER, INC.

Patent Trials and Appeals Board

Aug 26, 2020

2019000920 (P.T.A.B. Aug. 26, 2020)

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.
13/787,124 03/06/2013 Colin Sidi 31083.47US2 6527
34018 7590 08/26/2020
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
NGUYEN, ANH
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
08/26/2020 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):
chiipmail@gtlaw.com
clairt@gtlaw.com
jarosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte COLIN SIDI, STEPHEN S. HASKELL, ABHIJIT NAIK, and
DEEPAK RATHI
____________________

Appeal 2019-000920
Application 13/787,1241
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, JON M. JURGOVAN, and
KEVIN C. TROCK, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
On August 11, 2020, Appellant filed a Request for Rehearing under
37 C.F.R. § 41.52 following our Decision on Appeal mailed June 16, 2020.
In the Decision, we affirmed the Examiner’s rejection of claims 1–9 and 21–
23 under 35 U.S.C. § 103. We have jurisdiction under 35 U.S.C. § 6(b).
We have considered Appellant’s arguments in the Request for
Rehearing, but we are not persuaded any points were misapprehended or
overlooked by the Board in issuing the Decision. We have provided herein

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, the real party in interest is
W. W. Grainger, Inc. Appeal Br. 2.
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additional explanations, but we decline to change our Decision in view of
Appellant’s arguments.

ANALYSIS
Appellant requests rehearing for the following reasons: (1) the Office
allegedly did not meet its burden of showing that all claimed elements are
expressly or inherently described in the prior art (Req. Reh’g 2–5);
(2) the Board allegedly made new findings and adopted different reasoning
from the Examiner to create an undesignated new ground of rejection (id. at
1–2, 7–8) that (3) impermissibly distilled the claimed invention down to its
“gist” or “thrust” (id. at 2, 5–6) and (4) misapplied or misapprehended the
law of obviousness (id. at 2, 4–7). We address Appellant’s arguments below.
Burden Argument
The Examiner has the burden of establishing a prima facie case of
obviousness under Graham v. John Deere, 383 U.S. 1 (1966). In re Brandt,
886 F.3d 1171, 1175–76 (Fed. Cir. 2018); In re Bell, 991 F.2d 781, 783 (Fed.
Cir. 1993); In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993); In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992). A prima facie case of obviousness is
established when the teachings from the prior art itself would appear to have
suggested the claimed subject matter to a person of ordinary skill in the art.
In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976); In re Keller, 642 F.2d
413, 425 (CCPA 1981). Once a prima facie case is established, the burden
shifts to applicant to come forward with rebuttal evidence or argument to
overcome the prima facie case. Brandt, 886 F.3d at 1176; Bell, 991 F.2d at
783–784; Rijckaert, 9 F.3d at 1532; Oetiker, 977 F.2d at 1445.
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An examiner approaches the question of obviousness through
underlying factual determinations including: (1) the scope and content of the
prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of ordinary skill in the art; and (4) where present,
objective evidence of nonobviousness. Graham, 383 U.S. at 17–18; MPEP
§§ 2141–2145.
In the case before us, the Examiner met the requirements for a prima
facie case of obviousness.2 Final Act. 4–13. The Examiner considered the
scope and content of the prior art, and cited teachings of each reference in
correspondence with each claim limitation. Id. The Examiner identified
differences between the subject matter and prior art, explaining what each
reference did and did not teach or suggest in correspondence with the claim
limitations, identified where a missing limitation could be found in another
reference, and provided reasons why a person of ordinary skill in the art
would have considered it beneficial to combine the references with
reasonable expectation of success in arriving at the claimed invention. Id.
The prior art references themselves may be considered representative of the
level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (citing Litton Indus. Prods., Inc. v. Solid States Sys. Corp.,
755 F.2d 158 (Fed. Cir. 1985); Custom Accessories, Inc. v. Jeffrey-Allan
Indus., Inc., 807 F.2d 955, 963 (Fed. Cir. 1986)). Appellant provided no
objective evidence of nonobviousness. The Final Office Action was thus

2 An example of the thoroughness of the Examiner’s rejection is shown for
claim 1 where the Examiner cites Saghier 2:30–32, 2:56–57, 4:44–46, 4:66–
67, 5:6–14, 6:17–18, 6:31–34, 8:54–62; Peles ¶¶ 3, 10, 25, 32; and Williams
¶¶ 136, 147, Fig. 11. Final Act. 5–7; see also Ans. 3–7.

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sufficient to notify Appellant of the reasons for the Examiner’s rejection,
together with such information and references as may be useful in judging
the propriety of continuing prosecution of the application. See 35 U.S.C.
§ 132; 37 C.F.R. § 1.104(a)(2).
Accordingly, the Examiner presented a prima facie case of
obviousness despite Appellant’s repeated assertions to the contrary. Req.
Reh’g 5–7; Reply Br. 2, 4–6, 9, 11; Appeal Br. 9, 11. The burden of coming
forward with evidence to rebut the Examiner’s case thus shifted to
Appellant. Instead of attempting to rebut the Examiner’s prima facie case of
obviousness, however, Appellant merely insists a prima facie case was never
made, and argues that certain underlined text is missing from the cited
references without explaining why this may be so. As we noted in our
Decision, merely quoting and emphasizing certain claim language and
asserting it is not described by a prior art reference is insufficient to
constitute an argument. See Dec. 4; 37 C.F.R. § 41.37(c)(1)(iv) (“The
arguments shall explain why the examiner erred as to each ground of
rejection contested by appellant.” (emphasis added)).
For example, Appellant argues Saghier does not expressly or
inherently describe the claimed “individual application response times
resulting from user interactions with each one of a plurality of applications
running on a network.” Req. Reh’g 3. Appellant argues the reason why
Saghier does not describe this limitation is “self-evident.” Id. This is
insufficient to constitute an argument.
Even assuming Appellant’s underlining and bolding of claim
limitations constitutes an argument, a request for rehearing is not an
opportunity to rehash or reargue points merely because Appellant does not
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agree with the result of the Board’s decision. The proper course for an
appellant dissatisfied with a Board decision is to seek judicial review. See
35 U.S.C. §§ 141, 145. We deny the Request for Rehearing for this reason.
Even if we could consider Appellant’s arguments, however, we would still
find them unpersuasive for reasons stated below.
New Findings Argument
Appellant argues we made new findings and adopted different reasons
from the Examiner’s to create an undesignated new ground of rejection.
Req. Reh’g 5. Specifically, Appellant asserts we made a new finding that
“Saghier at least suggests performance data may include individual
application response times for each of multiple applications” to support the
Examiner’s reliance on Saghier to teach or suggest the claim limitation
discussed above. Id. (citing Dec. 6) (emphasis Appellant’s). We disagree
that this statement amounts to a new finding or reasoning.
Appellant’s brief underlined two parts of the claim limitation:
“[1] individual application response times resulting from user interactions
[2] with each one of a plurality of applications running on a network.”
Appeal Br. 5. Our statement addressed the first underlined claim limitation
[1] and merely restated the Examiner’s finding with respect to that
limitation. Dec. 6; Final Act. 5–7. The second underlined limitation [2] had
been addressed previously in the Decision. Dec. 5. Accordingly, our
statement does not amount to new findings or different reasons creating an
undesignated new ground of rejection.
To show that our statement is not a new finding or reasoning, we look
to the Examiner’s rejection of claim 1 as an example. Final Act. 5–7. As the
Examiner noted, Saghier teaches that “[t]he system includes a computer
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operable to execute applications” and “to generate performance data on the
applications.” Ans. 4 (citing Saghier 2:52–56). Saghier also indicates that a
person of ordinary skill in the art would have understood that performance
data may include response time. Saghier 1:58–60 (“these computers are
always working to provide the response time as defined in contracted service
level agreements” (emphasis added)). Saghier even claims “executing
software to measure samples of performance of one or more applications in
a computer” (emphasis added). Saghier 13:12–13 (claim 31). The plain
meaning of these statements includes that response time is obtained for each
individual application. Peles also teaches use of application response time to
measure system performance in computer networks. Final Act. 6–7 (citing
Peles ¶¶ 3, 25). Thus, as the Examiner noted, both Saghier and Peles teach
the limitation of “individual application response times” notwithstanding
Appellant’s argument to the contrary.
Saghier further teaches response times in connection “with each one
of a plurality of applications running on a network.” Final Act. 5.
Specifically, as the Examiner noted, Saghier teaches “[t]he system includes a
computer operable to execute applications” and “[c]omputer 310 may be
any computing device that operates in a standalone mode or in a network.”
Id. (citing Saghier 6:16–17); Ans. 4 (citing Saghier 2:52–56) (emphases
added). Also, Saghier’s background describes what a person of ordinary
skill in the art would have known, that “[i]n today’s world, numerous
computers are dispersed throughout many networks covering a range of
applications and activities.” Saghier 1:56–58 (emphases added). Saghier
also teaches transactions on a computer can be initiated by a user. Id. at
4:57–60. Considering Saghier’s teachings together, we agree with the
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Examiner that a person of ordinary skill in the art would have understood
Saghier to teach or at least suggest the claim limitation of “individual
application response times resulting from user interactions with each one of
a plurality of applications running on a network” (emphases Appellant’s).
Gist Argument
Appellant argues we impermissibly distilled the claimed element into
its gist or thrust. Req. Reh’g. 2, 6. We disagree. As discussed above, our
statement that “Saghier at least suggests performance data may include
individual application response times for each of multiple applications” was
to address the first part of the claim limitation emphasized by Appellant
(“individual application response times”). Dec. 6. The second part
emphasized by Appellant (“with each one of a plurality of applications
running on a network”) had been addressed already on the previous page.
Dec. 5. We agree with the Examiner that the references teach or suggest the
entirety of the claim limitation, including the parts emphasized by Appellant.
See Dec. 4–6; Final Act. 5–7.
Misapplied or Misapprehended Law Argument
Appellant argues that the alleged new finding “evidences that the
Board misapprehended or misapplied the law.” Req. Reh’g 2. According to
Appellant, the burden of demonstrating a prima facie case requires the
Examiner to: “A) demonstrate that all of the claimed elements were
expressly or inherently described in the prior art; and B) demonstrate that
one skilled in the art could have combined such described elements by
known methods with no change in their respective functions with the
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combination yielding nothing more than predictable results.” Req. Reh’g 2.3
However, none of the cases that Appellant cites actually state the burden for
a prima facie case in this way. Id. In fact, none of these cases relate to
patent examination at all. Id.
The patent statute expressly requires consideration of differences
between the claimed invention and the prior art. 35 U.S.C. § 103; Graham,
383 U.S. at 17–18. Under Appellant’s understanding of a prima facie case
of obviousness, no differences would be possible because each claim
element would have to be expressly or inherently described in the prior art.
But cases like Brandt, supra, where the claimed range was close but did not
overlap the prior art, show that a claim element can differ from the prior art,
and yet still be found unpatentable as obvious. Appellant’s understanding of
a prima facie case of obviousness also does not take into account that the
general knowledge of a person of ordinary skill in the art can supply a
missing claim element. See Koninklijke Philips N.V. v. Google LLC, 948
F.3d 1330 (Fed. Cir. 2020).
In addition, combining elements according to known methods is not
the only way that teachings of different references can be combined. Other
ways include simple substitution of one known element for another; use of
known technique to improve similar devices in the same way; applying a

3 Appellant’s understanding of a prima facie case of obviousness may be
misinterpreting case law which states “[t]o support the conclusion that the
claimed [invention] is directed to obvious subject matter, either the
reference[] must expressly or impliedly suggest the claimed [invention] or
the examiner must present a convincing line of reasoning as to why the
artisan would have found the claimed invention to have been obvious in
light of the teachings of the references.” Ex parte Clapp, 227 USPQ 972,
973 (BPAI 1985) (emphasis added).
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known technique to a known device; obvious to try; known work in one field
prompting variations in another; and a teaching, suggestion or motivation to
combine prior art to arrive at the claimed invention. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 415–421 (2007); MPEP § 2143.
Thus, we decline to apply Appellant’s understanding of what is
required for a prima facie case of obviousness. Instead, we reviewed the
Examiner’s rejection under the principles previously stated herein and found
the Examiner’s rejection sufficient to establish a prima facie case of
obviousness.
Appellant takes issue with our statement “[i]n the obviousness
analysis, however, it is not necessary that the combined references
‘expressly describe’ the claimed invention, only that they teach or suggest
it.” Req. Reh’g 4 (citing Dec. 5 (citing Keller, 642 F.2d at 425 (CCPA
1981))). This is a correct statement of the law. As we stated earlier, a prima
facie case of obviousness is established when the teachings from the prior art
itself would appear to have suggested the claimed subject matter to a person
of ordinary skill in the art. Rinehart, 531 F.2d at 1051; Keller, 642 F.2d at
425. Appellant’s approach that the references must expressly or inherently
describe each claim element fails to consider the teachings of the references
in combination and as a whole for what they would suggest to a person of
ordinary skill in the art, as required in the obviousness analysis before the
Office. The Final Office Action meets Rinehart’s standard for a prima facie
case as the combined teachings of the references suggest the claimed subject
matter. Appellant’s arguments (to the extent they could be considered such)
fail to rebut the Examiner’s prima facie case of obviousness.
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Appellant argues that Keller involved combining elements expressly
described in references, and did not remove the burden placed on the
Examiner. Req. Reh’g 4–5. None of the references in Keller expressly or
inherently described Walsh’s digital timing to replace Keller’s or
Berkovits’s analog-timed cardiac pacers, yet the court found the claims
obvious over these combinations. In so doing, the court stated “the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art” (emphasis added). Keller, 642 F.2d at 425.

DECISION
In view of the foregoing discussion, we deny Appellant’s request to
make any changes in our Decision. Appellant has not identified any points
the Board has misapprehended or overlooked.
The request for rehearing is denied.
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § References Denied Granted
1, 2, 6,
21–23
103 Saghier, Peles,
Williams
1, 2, 6, 21–
23

7 103 Saghier, Peles,
Williams, Breslin
7
3–5, 8, 9 103 Saghier, Peles,
Williams, Jones
3–5, 8, 9
Overall
Outcome
1–9, 21–23

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Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1, 2, 6,
21–23
103 Saghier, Peles,
Williams
1, 2, 6, 21–
23

7 103 Saghier, Peles,
Williams, Breslin
7
3–5, 8, 9 103 Saghier, Peles,
Williams, Jones
3–5, 8, 9
Overall
Outcome
1–9, 21–23

DENIED