Ex Parte Brown et al

Patent Trial and Appeal Board

May 31, 2013

11213001 (P.T.A.B. May. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KYLE GENE BROWN and STACY RENEE JOINES
____________

Appeal 2010-011395
Application 11/213,0111
Technology Center 2100
____________

Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 11, and 20-37, which are all the claims remaining in
the application. Claims 2-10 and 12-19 were cancelled during prosecution.
(App. Br. 5.) We have jurisdiction under 35 U.S.C. § 6(b).

1 Application filed on August 26, 2005. The Real Party in Interest is
International Business Machines Corporation. (App. Br. 2.)
Appeal 2010-011395
Application 11/213,001

2
We affirm.
Invention
Appellants’ invention “relates generally to an improved data
processing system and, in particular, to a computer implemented method, an
apparatus, and a computer usable program product for optimizing
performance in a data processing system.” Still more particularly,
Appellants’ invention “provides a method, system, and computer program
product for enhancing performance by controlling startup request flooding
by incrementally growing a Web container.” (Spec. 1, ¶ [0001].)2
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A computer implemented method for controlling startup
request flooding, the method comprising:
responsive to starting an application server instance,
initiating a web container thread pool manager and setting a
web container thread pool at a size;
incrementing, via the web container thread pool manager,
the size of the web container thread pool each time an event
occurs to allow for increasing amounts of traffic until a
maximum size is reached for the web container thread pool; and
terminating the web container thread pool manager upon
the maximum size for the web container thread pool being
reached.

2 We refer to Appellants’ Specification (“Spec.”); Reply Brief (“Reply Br.”)
filed June 23, 2010; and Appeal Brief (“App. Br.”) filed Feb. 10, 2010. We
also refer to the Examiner’s Answer (“Ans.”) mailed Apr. 28, 2010.
Appeal 2010-011395
Application 11/213,001

3
Rejections on Appeal
1. The Examiner rejects claims 1, 11, 20-22, 26, 28-31, 35, and 37
under 35 U.S.C. § 103(a) as being unpatentable over Belkin (U.S. Patent No.
6,542,920 B1, issued Apr. 1, 2003), Langen (U.S. Pat. Appl. Pub. No.
2005/0262507 A1, published Nov. 24, 2005 (filed May 19, 2005)) and
Bhogi (U.S. Pat. Appl. Pub. No. 2004/0088413 A1, published May 6,
2004(filed Nov. 4, 2002)).
2. The Examiner rejects claims 23-25, 27, 32-34, and 36 under 35
U.S.C. § 103(a) as being unpatentable over Belkin, Langen, Bhogi and
Klianev (U.S. Pat. Appl. Pub. No. 2005/0149908 A1, published Jul. 7, 2005
(filed Oct. 1, 2003)).
Grouping of Claims
Based on Appellants’ arguments in the Briefs, we will decide the
appeal on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2012).

ISSUES
1. Under § 103, did the Examiner err in finding that the
combination of Belkin, Langen, and Bhogi collectively, would have taught
or suggested “terminating the web container thread pool manager upon the
maximum size for the web container thread pool being reached” (emphasis
added), as recited in independent claim 1 and the commensurate limitation
recited in independent claims 11 and 20?
2. Under § 103, did the Examiner err in finding that the
combination of Belkin, Langen, and Bhogi collectively, would have taught
or suggested “responsive to starting an application server instance,
Appeal 2010-011395
Application 11/213,001

4
initiating a web container thread pool manager” (emphasis added), within
the meaning of representative claim 1?
3. Under § 103, did the Examiner err in combining Belkin,
Langen, and Bhogi?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action mailed on August 11, 2009 as our own, except as to those findings
that we expressly overturn or set aside in the analysis as follows.

ANALYSIS
Claims 1, 11, and 20
Terminating the Web Container Thread Pool Manager
Appellants contend, inter alia, that Belkin, Langen, and Bhogi fail to
teach or suggest “terminating the web container thread pool manager upon
the maximum size for the web container thread pool being reached” as
recited in claim 1. (App. Br. 19-20.) More specifically, Appellants contend
that the Examiner’s reliance on Bhogi is in clear error. (App. Br. 21.)
Appellants contend that the cited portions of Bhogi process requests to
adjust the maximum size of the pool 100, and there is no teaching within the
cited portions of Bhogi, of the pool being at the maximum size or of
terminating the resource pool manager 120 in association with processing
such a request. (Id.) Appellants maintain that Bhogi states that “the
resource manager 120 ‘delays’ implementation of a request to adjust the
maximum number of resources within the pool 100.” (Id.) (emphasis
added.)
Appeal 2010-011395
Application 11/213,001

5
The Examiner interpreted the claimed “terminating the web container
thread pool manager” as “suspending the web container thread pool manager
for the programmable interval.” (Ans. 11.) The Examiner based this
interpretation on Appellants’ disclosure namely, dependent claims 24 and
33, which recite “suspending the web container thread pool for the
programmable interval” (emphasis added). (Id.)3 Further, the Examiner
found that the Bhogi reference teaches “no connection is available at the
time the request is received and further, the connection pool is at its
maximum size.” (Ans. 12 (citing Bhogi, ¶ [0052]).) We agree with and
adopt the Examiner’s interpretation and findings.
Moreover, regarding Appellants’ argument concerning the claimed
“terminating the web container thread pool manager” (Reply Br. 2), we find
that the differences between the prior art and the presently claimed invention
would have been obvious to one of ordinary skill in the art.
Section 103(a) forbids issuance of a patent when “the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
This line of reasoning is applicable in the present case. The Examiner
has demonstrated through Bhogi that it is well known in the art at the time of
the present invention to end the connection when the connection pool is at its

3 Claims are given their broadest reasonable construction “in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004)(citations omitted).
Appeal 2010-011395
Application 11/213,001

6
maximum size, even if the connection is eventually reestablished. (Bhogi,
¶¶ [0040] and [0052].) Therefore, we find that the differences between the
prior art and Appellants’ invention – terminating the web pool manager
services, as opposed to “suspending the web container thread container pool
manager for the programmable interval – were well within the realm of one
skilled in the art at the time of the invention.”
Based on this record, we conclude that the Examiner did not err in
determining that the cited combination of references would have taught or
suggested the limitation at issue.
Responsive to Starting an Application Server
Appellants contend that the cited references fail to teach or suggest
“responsive to starting an application server instance, initiating a web
container thread pool manager” as recited in claim 1. (App. Br. 26.)
Appellants contend that the Examiner failed to allege that the disclosure of
the Bhogi reference discloses the limitation at issue, and as such, the
rejection is defective on its face. (Id.)
The Examiner determined that Belkin taught the limitation at issue.
(Ans. 4 (citing Belkin, col. 5, ll. 1-6).) We agree with and adopt the
Examiner’s findings.
We find that Appellants’ argument unavailing because the argument
does not address the Examiner’s findings. The Examiner relied on Belkin to
teach or suggest the limitation at issue. (Final Office Action 3; Ans. 4.)
Belkin teaches an “initialization mechanism 140 is invoked upon system
start-up to create all of the thread pools that will be used in the server [].”
Appeal 2010-011395
Application 11/213,001

7
(Belkin, col. 5, ll. 2-4.) Therefore, we find Appellants’ argument, which
amounts to a singular attack of the Bhogi reference, to be unavailing.4
Based on this record, we conclude that the Examiner did not err in
finding that the cited references, collectively, would have taught or
suggested “responsive to starting an application server instance, initiating a
web container thread pool manager and setting a web container thread pool
at a size,” as recited in claim 1(emphasis added).
Combinability
Combination Renders Bhogi Unsuitable for its Intended Purpose
Appellants contend that the purposed combination would render
Bhogi unsatisfactory for its intended purpose, and would change the
principle of operation of Bhogi. (App. Br. 27.) Specifically, Appellants
contend that modification of the resource pool manager 120 of Bhogi would
terminate upon the maximum size for the pool 100 being reached and would
destroy the functionality of Bhogi. (App. Br. 28.) Appellants also contend
that such a modification would change the principle of operation of the
resource pool managers. (Id.) We disagree.
Although Bhogi teaches that the respective resource pool managers
receive and store a request when the connection pool is at maximum size,
Bhogi also teaches that the connection is suspended or delayed when the
connection pool is at its maximum size. (Bhogi, ¶ [0040].) The Examiner

4 One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Keller,
642 F.2d 413, (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citation omitted).

Appeal 2010-011395
Application 11/213,001

8
relied on Bhogi to teach or suggest that when the connection pool is at its
maximum size, it was well-known at the time of Appellants’ invention to
close the connection for at least a period of time.
“What appellants overlook is that it is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983)
(citations omitted); see also In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”). The test for obviousness is not whether
the features of a reference may be bodily incorporated into the structure of
another reference but what the combined teachings of those references
would have suggested to one of ordinary skill in the art. In re Keller, 642
F.2d 413, 425 (CCPA 1981) (citations omitted). This reasoning is
applicable in the present case.
Teaching Away
Appellants content that Bhogi actually teaches away from Appellants’
claimed subject matter. According to Appellants, Bhogi makes it clear that
the resource pool managers operate after the maximum size of the pool is
reached, as evidenced at least by the fact that the respective resource pool
managers receive and store a request when the connection pool is at a
maximum size. (App. Br. 28-29.) We disagree.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006) (quotation omitted). See also In re Fulton, 391 F.3d 1195,
Appeal 2010-011395
Application 11/213,001

9
1201 (Fed. Cir. 2004) (noting that merely disclosing more than one
alternative does not teach away from any of these alternatives if the
disclosure does not criticize, discredit, or otherwise discourage the
alternatives).
In the present case, we do not find, nor have Appellants established,
that Bhogi criticizes, discredits or discourages Appellants’ invention. As
discussed above, even though Bhogi teaches receiving and storing a request,
when the connection pool is at is maximum size, Bhogi also teaches
suspending (temporary termination) the web container thread container pool
manager for the programmable interval.
Based on this record we conclude Appellants have not shown that the
Examiner’s proposed combination of references teaches away from
Appellants’ invention.
Hindsight
Appellants contend inter alia:
The Patent Office has not articulated any reasoning as to why a
person of ordinary skill in the art would find the claims obvious
in view of the missing elements discussed above. Accordingly,
the Patent Office has engaged in impermissible hindsight
reconstruction and has used Appellant’s application to form the
rejections of the claims.
Based upon the gaps between the actual disclosure of the
Bhogi reference as cited in combination with the admitted gaps
of the Belkin and Langen references discussed above, the only
possible interpretation of the present rejections is that they were
arrived at through impermissible hindsight reconstruction. . . .
(App. Br. 29.) We disagree.
While we are fully aware that hindsight bias often plagues
determinations of obviousness, we are also mindful that the Supreme Court
Appeal 2010-011395
Application 11/213,001

10
has clearly stated that the “combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 401 (citation omitted).
This reasoning is applicable here. Thus, we find unavailing
Appellants’ contention that the Examiner has relied on impermissible
hindsight reconstruction. Given the breadth of Appellants’ claims, we are
not persuaded that combining the respective familiar elements of the cited
references in the manner proffered by the Examiner was “uniquely
challenging or difficult for one of ordinary skill in the art.” See Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418). Therefore, we find the Examiner’s proffered
combination of familiar prior art elements according to their established
functions would have conveyed a reasonable expectation of success to a
person of ordinary skill having common sense at the time of the invention.
For the reasons discussed supra, we sustain the Examiner’s § 103
rejection of representative claim 1 over the combination of Belkin, Langen,
and Bhogi. Independent claims 11 and 20, not argued separately, fall
therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
Claims 21, 22, 26, 28-31, 35, and 37
Based upon our review of the record before us, we find Appellants
have failed to present substantive arguments supported with specific factual
evidence of sufficient character and weight to persuade us of error regarding
the Examiner’s findings of fact and ultimate legal conclusion of
obviousness. Merely reiterating the language of the claim is insufficient.
This form of argument does not amount to a separate patentability argument
and is unpersuasive of error in the Examiner’s rejection. See Ex parte
Appeal 2010-011395
Application 11/213,001

11
Belinne, No. 2009-004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10,
2009) (informative); see also 37 C.F.R. § 41.37(c)(iv) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”). Appellants’ argument “do[es] not
. . . explain why the Examiner’s explicit fact finding is in error.” Belinne,
2009 WL 2477843 at *4. Mere attorney arguments and conclusory
statements that are unsupported by factual evidence are entitled to little
probative value. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see
also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Accordingly, we
sustain the Examiner’s rejection of claims 21, 22, 26, 28-31, 35, and 37 for
the reasons discussed supra.
Claims 23-25, 27, 32, 34, and 36
As noted above dependent claims 23-25, 27, 32, 34, and 36 stand
rejected under a separate combination of references. However, as discussed
supra, Appellants have not presented substantive arguments supported with
specific factual evidence of sufficient character and weight to persuade us of
error regarding the Examiner’s findings of fact and ultimate legal conclusion
of obviousness. Therefore, for essentially the same reasons discussed supra,
we affirm the Examiners’ rejection of claims 23-25, 27, 32, 34, and 36.
Reply Brief
While we have fully considered Appellants’ responses in the Reply
Brief, we decline to address any new arguments not originally presented in
the principal Brief (c.f. Reply Br. 4-5) and we deem these newly presented
arguments to be waived. See Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (“informative”) (absent a showing of good cause, the Board is
not required to address arguments in the Reply Brief that could have been
Appeal 2010-011395
Application 11/213,001

12
presented in the principal Brief). With respect to all claims before us on
appeal, arguments which Appellants could have made but chose not to make
have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). See also In re Watts, 354 F.3d 1362, 1368 (Fed. Cir.
2004).

CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1, 11, and 20-37 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1, 11 and 20-37 under
35 U.S.C. § 103(a).

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

llw