Ex Parte Marton et alDownload PDFPatent Trial and Appeal BoardApr 14, 201411668089 (P.T.A.B. Apr. 14, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GABOR MARTON and JYRKI AKKANEN ____________________ Appeal 2011-012103 Application 11/668,089 Technology Center 2400 ____________________ Before: JOHN C. KERINS, CHARLES N. GREENHUT, and MICHAEL L. HOELTER, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012103 Application 11/668,089 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 35. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to systems, methods, apparatuses, and computer program products for providing step-ahead computing. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: receiving an indication of a current state of a client; monitoring resource availability of a server; determining a set of pre-computed actions based on at least one possible future state of the client and based on the resource availability of the server; and communicating the pre-computed actions to the client from the server prior to receiving client selection of an action. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Barrett US 5,727,129 March 10, 1998 Aaker US 5,758,087 May 26, 1998 O’Brien US 6,055,569 April 25, 2000 Krissell US 7,287,086 B2 October 23, 2007 Harrop US 7,203,746 B1 April 10, 2007 REJECTION Claims 1-35 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Aaker in view of Barrett in view of O’Brien in view of Krissell in view of Harrop. Appeal 2011-012103 Application 11/668,089 3 OPINION The Examiner determined claims 1-35 were obvious over Aaker, Barrett, O’Brien, Krissell, and Harrop. Ans. 3. The Examiner states that, in combination, Aaker, Barrett, O’Brien, and Krissell do not disclose determining a set of pre-computed actions based on the resource availability of the server. Ans. 6. The Examiner relies upon Harrop to teach this limitation stating “Harrop teaches a system where a user is prompted to take some specific action based upon resources availability.” Id. at 6, citing Harrop, col. 3, ll. 57-66. As Appellants point out, Harrop does not relate to resource management in server/client communications. App Br. 19. There appears to be no relation, and the Examiner has not identified a relation, between the resources disclosed in Harrop and those disclosed in the other relied upon references. It appears the Examiner has used improper hindsight, selecting a discrete element disclosed in Harrop (the monitoring of resources) and placing it in the combination of Aaker, Barrett, O’Brien, and Krissell. It is improper to base a conclusion of obviousness upon facts gleaned only through hindsight. To draw on hindsight knowledge of Appellants’ disclosure, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability. Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)). Even if it is permissible to combine the resource management of Harrop with the relied upon references, the combination would not arrive at the claimed subject matter. App. Br. 21. Harrop teaches a system, which prompts the user to take or initiate “some specific action,” presumably in Appeal 2011-012103 Application 11/668,089 4 response to the determination that the system is going to run out of resources. Harrop, col. 3, ll. 58-67. The Examiner does not explain, and it is not apparent, how this act, in combination with the other applied references, results in a method that includes “determining a set of pre- computed actions . . . based on the resource availability of the server,” as required by the claims. Thus, even if the determination of resource availability, as in Harrop, is incorporated into the teachings of Aaker, Barrett, O’Brien, and Krissell, such a modification would not yield the subject matter of the claim. Id. at 21. All words in a claim must be considered in judging the obviousness of the claimed subject matter. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). The Examiner has not established that the proposed combination of Harrop with Aaker, Barrett, O’Brien, and Krissell yields the subject matter of claim 1. Accordingly, we must reverse the Examiner’s rejection of claim 1 and those claims depending therefrom. Independent claims 7, 13, 19, 24, 29, and 35 contain similar limitations and are rejected under the same grounds. Ans. 14. The rejection of these claims and those depending therefrom is reversed for the reasons set forth above. DECISION The Examiner’s rejection of claims 1-35 is reversed. REVERSED Appeal 2011-012103 Application 11/668,089 5 hh Copy with citationCopy as parenthetical citation