Ex Parte HolderDownload PDFBoard of Patent Appeals and InterferencesJun 20, 201110138453 (B.P.A.I. Jun. 20, 2011) Copy Citation 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: Appeal 2009-006441 Application 10/138,453 2 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 Appeal 2009-006441 Application 10/138,453 3 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? Appeal 2009-006441 Application 10/138,453 4 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). Appeal 2009-006441 Application 10/138,453 5 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. Appeal 2009-006441 Application 10/138,453 6 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 rwk Copy with citationCopy as parenthetical citation