Ex Parte Holder

Board of Patent Appeals and Interferences

Jun 20, 2011

10138453 (B.P.A.I. Jun. 20, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HELEN A. HOLDER
____________

Appeal 2009-006441
Application 10/138,453
Technology Center 2400
______________

Before ROBERT E. NAPPI, MARC S. HOFF, and CARL W.
WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) of the Final Rejection of
claims 1-20. See Appeal Brief 3. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002). We affirm.

Exemplary Claim
1. A method of distributing information to at least one client,
comprising:
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receiving an information request at a gateway from at least one client,
wherein the gateway includes both wired and wireless capability and
wherein the gateway is capable of local processing;

determining whether the information is available locally by evaluating
a set of remote information previously received and maintained locally
within the gateway, wherein the set of remote information previously
received is maintained for a predetermined period of time;

transferring the information to the at least one client if the selected
information is available locally; and

redirecting the request to a server if the information is not available
locally.

Rejections on Appeal
Claims 1-7, 11-17, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over (U.S. Patent Number 6,509,913 B2) to Martin Jr. et
al. (“Martin”) and U.S. Patent Number (6,917,960 B1) to Decasper et al.
(“Decasper”).
Claims 8-10, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Martin, Decasper and (U.S. Patent 2004/0113810
A1) to Mason, Jr. et al. (“Mason”).

Appellant’s Contentions
1. Appellant contends that the combination of Martin and Decasper fail
to suggest “wherein the set of remote information previously
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received is maintained for a predetermined period of time.”
(Appeal Brief 9-10).
2. Appellant contends that the Examiner’s proposed combination of
Martin and Decasper is based on hindsight reasoning and is improper.

PRINCIPLES OF LAW
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006), In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
Examiner can satisfy this test by showing some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.
KSR Int’l. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441
F.3d at 988).

ISSUES
Did the Examiner err in rejecting claims 1-7, 11-17, and 20 over
Martin and Decasper?
Did the Examiner err in rejecting claims 8-10, 18, and 19 over Martin,
Decasper and Mason?

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
The Appellant argues that the combination of Martin and Decasper
fails to suggest or teach all of the independent claim limitations specifically
“wherein the set of remote information previously received is
maintained for a predetermined period of time.” (Appeal Brief 9).
Appellant further argues while certain requests for content on the network is
made and searching of precache memory occurs, Decasper is silent
regarding how long the contents are maintained in the precache memory.
(Id.). Appellant’s arguments are not commensurate with the scope of the
claims. We agree with the Examiner that the claim limitation
“predetermined period of time” does not specify a length of time, only that
the period of time is predetermined. (Answer 12). Therefore, we do not find
the Appellant’s argument that Decasper does not disclose a “predetermined
period of time” to be persuasive.
Appellant also argues that the Examiner’s proposed combination of
references is based upon hindsight reasoning and therefore should be
considered to be improper. (Id.). The Examiner explicitly articulated a
reason with some rational basis for combining Martin with Decasper to yield
a method to process requests without always retrieving the same contents
from remote servers and therefore reduce bandwidth usage and network
congestion in regards to storing content locally. (Answer 3-4 and 10-11).
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Ultimately, combining Martin’s method of retrieving an information
request at a gateway with Decasper’s teaching of preaching contents yields
no more than the predictable result of having a method as claimed. See KSR,
550 U.S. at 416-17. Further, Appellant has not demonstrated that combining
Martin with Decasper would somehow render Martin inoperable for its
intended purpose. See Appeal Brief 5-9. Despite Appellant’s contentions to
the contrary, we find that the Examiner has not relied on impermissible
hindsight, but rather has provided a rational basis for supporting the
obviousness conclusion. See KSR, 550 U.S. at 418. Therefore, we will
sustain the Examiner’s rejection of claims 1-7, 11-17, and 20.
We will also sustain the Examiner’s rejection of claims 8-10, 18, and
19 rejected over the combination of Martin, Decasper, and Mason for the
same reasons we stated above since the Appellant’s arguments are based
upon the combination of Martin and Decasper, which we have already
addressed.

DECISION
The Examiner’s rejections of claims 1-20 are affirmed.

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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

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