Ex Parte Zoch et al

Patent Trial and Appeal Board

May 30, 2014

11760223 (P.T.A.B. May. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DANIEL ZOCH, HENRIK SATERDAG,
and RENZO COLLE
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Appeal 2011-011278
Application 11/760,223
Technology Center 2100
____________

Before CARLA M. KRIVAK, CAROLYN D. THOMAS, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 9-16 and 18-28. Claims 1-8 and 17 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appeal 2011-011278
Application 11/760,223

2
REFERENCES and REJECTIONS
The Examiner rejected claims 9-12, 16, 18, 19, 22, 25, and 28 under
35 U.S.C. § 103(a) based upon the teachings of Kim (US 6,360,226 B1,
Mar. 19, 2002) and Hawkins (US 6,536,035 B1, Mar. 18, 2003).
The Examiner rejected claim 13 under 35 U.S.C. § 103(a) based upon
the teachings of Kim, Hawkins, and Daynes (US 6,182,186 B1, Jan. 30,
2001).
The Examiner rejected claims 14, 15, 20, 21, 23, 24, 26, and 27 under
35 U.S.C. § 103(a) based upon the teachings of Kim, Hawkins, Daynes, and
Schreiber (US 6,745,189 B2, Jun. 1, 2004).

ANALYSIS
Appellants contend the Examiner erred in finding the combination of
Kim and Hawkins discloses Appellants’ claimed limitation of “a load group
defined such that all of the objects assigned to the load group are loaded
together in response to receiving a request to load any of the objects
assigned to the load group” (Ans. 3-5). This limitation is found in each of
the independent claims. Particularly, Appellants assert, modifying Kim’s
system in light of Hawkins teaching of “jar archiving” would render Kim’s
system unsatisfactory for its intended purpose (App. Br. 14). That is, Kim
describes a system preventing objects from being loaded multiple times and
modifying Kim in light of Hawkins would allow all objects to be loaded,
even if the object has already been loaded, lowering the efficiency of the
system (App. Br. 12-14; Reply Br. 3). We agree.
The Examiner maintains Hawkins discloses archive files comprise a
load group (Ans. 9). However, the Examiner does not address how “a
Appeal 2011-011278
Application 11/760,223

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request to load an archive file discloses the recited ‘request to load any of
the objects assigned to the load group’” as claimed (Reply Br. 2; App. Br
13).
Appellants also assert modifying Kim with Hawkins would render
Kim’s system unsatisfactory for its intended purpose because Kim
“generates ‘spanning trees,’ which are used to prevent loading objects more
than a single time” (App. Br. 12-13). Thus, if Kim were modified by
Hawkins, additional objects not meant to be loaded would be loaded,
lowering the efficiency of Kim (Reply Br. 3; App. Br. 12). The Examiner
again does not address Appellants’ contentions and does not provide
motivation to combine Kim and Hawkins (Ans. 10).
Thus, for the above reasons, we do not sustain the Examiner’s
rejection of independent claims 9, 16, 18, 19, 22, 25, and 28, or claims 10-
15, 20, 21, 23, 24, 26, and 27, dependent therefrom.1

DECISION
The Examiner’s decision rejecting claims 9-16 and 18-28 is reversed.

REVERSED

msc

1 In the event of further prosecution, we leave it to the Examiner to
determine if an indefiniteness rejection under 35 U.S.C. §112, second
paragraph, is appropriate for claims 18 and 25. See IPXL Holdings, L.L.C. v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (noting that when a
claim recites both a system and a method for using that system, it is unclear
whether infringement occurs when (1) one creates a system that allows a
user to perform the recited method, or (2) the recited method actually
occurs).