Ex Parte ATES

Board of Patent Appeals and Interferences

Feb 15, 2005

09401221 (B.P.A.I. Feb. 15, 2005)

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The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte GORKEM I. ATES
________________
Appeal No. 2004-1463
Application 09/401,221
________________
ON BRIEF
________________
Before JERRY SMITH, RUGGIERO and BARRY, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-6, which constitute all
the claims in the application.
The disclosed invention pertains to an Internet system
and to a method for using an Internet system.
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Application 09/401,221
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Representative claim 1 is reproduced as follows:
1. An Internet system, comprising:
a) a main server for storing information to be requested
over the Internet by a client so as to form a request
for information and having an IP address; and
b) at least one participant server having an IP address
and electrically communicating with said main server;
said at least one participant server not receiving the
request for information from the client, but rather
said main server receiving the request for information
over the Internet from the client and requesting over
the Internet that said at least one participant server
send the requested information over the Internet back
to the client, and if said at least one participant
server does not have the requested information, the
requested information is downloaded from said main
server to said at least one participant server, and
when said at least one participant server sends the
requested information over the Internet back to the
client, said at least one participant server assigns to
the requested information said IP address of said main
server and not said IP address of said at least one
participant server.
The examiner relies on the following references:
Brendel et al. (Brendel) 5,774,660 June 30, 1998
Leighton et al. (Leighton) 6,108,703 Aug. 22, 2000
(filed May 19, 1999)
Claims 1-6 stand rejected under 35 U.S.C. § 103(a). As
evidence of obviousness the examiner offers Brendel in view of
Leighton.
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Application 09/401,221
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Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the examiner has failed to provide a record which
supports the rejection. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
Appeal No. 2004-1463
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having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
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actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
by appellant [see 37 CFR § 41.37(c)(1)(vii)(2004)].
The examiner has indicated how he finds the claimed
invention to be obvious over the collective teachings of Brendel
and Leighton [answer, pages 3-11]. With respect to independent
claims 1 and 4, appellant essentially argues that 1) there is no
motivating suggestion that the teachings of Brendel can be
incorporated with the teachings of Leighton as suggested by the
examiner, and 2) that the applied prior art fails to teach that
the main server requests over the Internet that the participating
server send the requested information over the Internet to the
client. With regard to the latter point, appellant argues that a
WAN, as suggested by Brendel, is not equivalent to the Internet
[brief, pages 12-31]. With respect to the first argument, the
examiner responds that the motivation for combining the
references resides in their mutual desire to make Internet
communications more efficient. With respect to the second
argument, the examiner responds that a WAN and the Internet are
both types of communication mediums used [answer, pages 11-14].
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Appellant responds that the WAN taught by Brendel does not
suggest the Internet as claimed [reply brief].
We will not sustain the examiner’s rejection of
claims 1-6 because the examiner has failed to establish a prima
facie case of obviousness. Although we do not agree with
appellant’s argument regarding the recitation of the Internet in
the claimed invention, we do agree with appellant that the record
in this case does not support the combination of Brendel and
Leighton. With respect to the question of the use of the
Internet, appellant relies on the rule that a genus (WAN) cannot
reject a species (the Internet). The correct rule, however, is
that a genus does not necessarily reject a species. A genus may
not reject a species when the species (as claimed) may be an
unknown member of the genus. However, if the species is a known
member of the genus, then the species may be obvious over the
teaching of the genus. In this case, it is well known in this
art that the Internet is considered to be one form of a WAN.
Therefore, appellant’s argument that the WAN of Brendel would not
have suggested the claimed Internet is not persuasive.
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Application 09/401,221
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We do find, however, that the examiner’s basis for
combining the teachings of Leighton with the teachings of Brendel
is not supported on this record. Brendel teaches a web server
system in which the load on the system is balanced when a
plurality of participating servers are used. The load balancer
sends web requests to one of the participating servers which has
the requested web information. Thus, the selected participating
server in Brendel always has the requested information. The
claimed invention requires that the main server send the
requested information to the participating server when the
selected participating server does not have the requested
information. As noted above, since the selected participating
server in Brendel always has the requested information, there is
no reason for the main server to ever perform this function.
Despite this clear fact, however, the examiner proposes to modify
Brendel in the event that the requested information is not
present at the selected participating server. It is based on
this alleged happening that the examiner proposes to modify
Brendel with the teachings of Leighton. The examiner’s concern,
however, that Brendel needs to be modified to accommodate the
possibility that the selected participating server would not have
the requested information lacks merit because this condition
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cannot happen in Brendel. Therefore, the examiner’s analysis in
support of the combination of Brendel with Leighton is not based
on anything within the teachings of these references. The
examiner, therefore, is simply trying to reconstruct the claimed
invention in hindsight.
In summary, the examiner’s rejection of the claims on
appeal is not supported on the record before us. Therefore, the
decision of the examiner rejecting claims 1-6 is reversed.
REVERSED

JERRY SMITH )
Administrative Patent Judge )
)
)
)
JOSEPH F. RUGGIERO ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 2004-1463
Application 09/401,221
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JS/ki
Richard L. Miller
12 Parkside Drive
Dix Hills, NY 11746-4879