Ex Parte Enenkiel

Patent Trial and Appeal Board

Jan 6, 2014

11109725 (P.T.A.B. Jan. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/109,725 04/20/2005 Achim Enenkiel 07781.0226-00 1427
60668 7590 01/06/2014
SAP / FINNEGAN, HENDERSON LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
AHMED, MOHAMMED
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
01/06/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ACHIM ENENKIEL
________________

Appeal 2011-012511
Application 11/109,725
Technology Center 2400
________________

Before: EDWARD A. BROWN, MICHAEL L. HOELTER, and
LYNNE H. BROWNE, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 21, 22, 31-34, 36-42, 44, and 45. App. Br. 5. Claims 1-
20, 23-30, 35, and 43 have been canceled. See Amendment mailed Jun. 24,
2010. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “generally relates to the field of data
processing. More particularly, embodiments of the invention relate to
computer systems and methods with failure resistant data processing
techniques.” Spec. para. [001]. Independent claim 21 is illustrative of the
claims on appeal and is reproduced below:
21. A method of providing a failure resistant data processing
service for a plurality of client computer systems, the method
comprising:
sending, by one of the plurality of client computer
systems, a request for providing a data processing service to a
server computer system, the server computer system being
independent of the client computer system and utilizing a
default data processing component to process requests from the
plurality of client computer systems;
autonomously determining, by the one of the plurality of
client computer systems, a plurality of replacement web
services;
ranking, by the one of the plurality of client computer
systems, the plurality of replacement web services to determine
a highest ranked replacement web service, wherein the plurality
of replacement web services are ranked according to a selection
criterion;
selecting, by the one of the plurality of client computer
systems, the highest ranked replacement web service when the
server computer system is unavailable, wherein the server
computer system is unavailable if the one of the client computer
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systems does not receive a response from the server computer
system within a predetermined amount of time; and
re-sending, by the one of the plurality of client computer
systems, the request to the selected replacement web service
when the server computer system is unavailable, wherein the
selected replacement web service serves as a replacement for
the server computer system when the server computer system is
unavailable.

REFERENCES RELIED ON BY THE EXAMINER
Ahuja US 6,175,869 B1 Jan. 16, 2001
Moore US 2004/0122926 A1 Jun. 24, 2004
Miller US 2005/0198206 A1 Sep. 8, 2005

THE REJECTION ON APPEAL
Claims 21, 22, 31-34, 36-42, 44, and 45 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ahuja, Miller and Moore. Ans. 3.

ANALYSIS
Appellant argues all the claims together in that Appellant presents
arguments only for independent method claim 21 (App. Br. 12-17), while
contending that the allowability of independent system claim 31 relies on
“reasons similar to those set forth above for claim 21.” App. Br. 17-18.
With respect to dependent claims 22, 32-34, 36-42, 44, and 45, Appellant
relies on “their dependence from independent claims 21 or 31.” App. Br. 18.
Accordingly, we select independent method claim 21 for review with claims
22, 31-34, 36-42, 44, and 45 standing or falling with claim 21. See 37
C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Ahuja primarily discloses the limitations of
claim 21, including the limitations of disclosing (1) a method of providing a
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failure resistant data processing service “for a plurality of client computer
systems”; (2) “the server computer system being independent of the client
computer system”; and (3) “selecting a different server if the first server
computer is unavailable.” Ans. 3-4 (citations omitted). However, the
Examiner acknowledges that Ahuja is silent as to certain claim limitations
and relies on the teachings of Miller and Moore for such teachings. Ans. 4-
5. More specifically, the Examiner relies on Miller for disclosing the step of
“autonomously” selecting another web service if the first web service is
unavailable and on Moore for disclosing the step of “ranking multiple web
services and selecting a highest ranked web service that is ranked according
to a selection criterion.” Ans. 4-5 (citations omitted). The Examiner
provides a reason to initially combine Ahuja with Miller and a separate
reason to combine the combination of Ahuja and Miller with Moore. Ans. 5.
Appellant does not dispute the Examiner’s findings with respect to
Ahuja so much as Appellant contends that the teachings of Miller are
contrary to those of Ahuja and are not combinable with Ahuja. App. Br. 13-
14. Appellant further contends that Miller fails to teach a system that
“autonomously” determines a replacement web service (App. Br. 14-15) and
that Moore fails to teach ranking (App. Br. 15-17).
Appellant contends that Ahuja and Miller are contrary to each other in
that Ahuja teaches a server system “independent” of the client system (as
claimed) whereas Miller’s server is “not independent.” App. Br. 13. It is
noted that Appellant addresses the components in Figure 4B of Miller (App.
Br. 13; see also Reply Br. 2), which the Examiner has interpreted to be “in a
system and not independent” (Ans. 8), as the basis of this contention without
addressing Miller’s alternate version shown in Figure 4A which the
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Examiner specifically identifies as having an independent client and server
(Ans. 9). Further, Appellant does not address the Examiner’s reliance on
Ahuja for teaching such independence. Ans. 3, 9, 10. “Nonobviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.” In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642
F.2d 413, 425 (C.C.P.A. 1981)). Accordingly, Appellant’s contention is not
persuasive.
Regarding Miller not “autonomously determining” a replacement web
service as claimed, Appellant initially repeats the above contention that
Miller does not teach an “independent” system as required by claim 21 and
as discussed supra. App. Br. 14-15. Appellant’s specific reference to
components (i.e., 432, 434, 436, 438, 442, and 444) that are only depicted
with respect to Miller’s Figure 4B embodiment (App. Br. 15) are not
persuasive for the reasons previously indicated. However, when addressing
Miller’s autonomic proxy 402 depicted in Figure 4A, Appellant contends
that this proxy does not teach “autonomously determining” the “one of the
plurality of client computer systems” as claimed. App. Br. 15; see also
Reply Br. 2. Appellant’s contention is misplaced because, as previously
indicated, the Examiner relies on Ahuja for disclosing “a plurality of client
computer systems” and also the step of “selecting a different server if the
first server computer is unavailable.” Ans. 3-4. Appellant does not dispute
this teaching by Ahuja nor does Appellant explain how Miller’s autonomic
proxy 402 would fail to “autonomously determin[e]” a replacement web
service as found by the Examiner. Ans. 4. Accordingly, Appellant’s
contention is not persuasive.
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Appellant also contends that “Moore does not teach ranking the
plurality of replacement web services by the client computer system” and
that such ranking is instead accomplished by a search engine. App. Br. 16;
see also Reply Br. 3, 4. Appellant also contends that Moore “teaches away”
from claim 21 because Moore specifically teaches that the “filtering and/or
ranking need not be actually performed by the client, but instead may be
performed by a server on behalf of the client.” App. Br. 16 (emphasis
added) referencing Moore, para. [0039]. In other words, in support of
Appellant’s ‘teaching away’ argument, Appellant identifies where Moore
specifically discloses that ranking “need not be actually performed by the
client” underscoring Moore’s teaching that ranking may “be actually
performed by the client” which, in turn, undermines Appellant’s contention
that Moore does not teach ranking “by the client computer system.” App.
Br. 16. In view of the above, Appellant’s contentions are not persuasive.
Appellant further contends that the Examiner fails to “provide a clear
explanation with rational underpinning” and attempts to support this
contention by presenting the example that Moore fails to disclose “ranking
by a client computer system ‘when the server computer system is
unavailable.’” App. Br. 17; see also Reply Br. 3-5. However, as indicated
supra, the Examiner relies on Ahuja for disclosing when a computer system
is unavailable, not Moore. Ans. 3-4. Appellant’s contention is not
persuasive.
Appellant also contends that “Moore provides a ranked list of web
service providers and not [a] ranked list of web services.” Reply Br. 4
(citation omitted). Even assuming this to be the case, Appellant does not
explain how Moore’s teaching of providing a ranked list of web providers
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that are selected (i.e., ranked) based on their ability to perform the requested
service fails to, in effect, provide a ranked list of web services. Appellant’s
contention is not persuasive.
Appellant further contends that in Moore, the ranking “is automatic”
and thus does not teach the step of “selecting” the highest ranked
replacement web service because “the selection process occurs regardless of
a specific condition.” Reply Br. 5. More specifically, Appellant contends
that because of such automatic ranking, Moore “actually teaches away” from
the claimed step of “selecting.” First, Appellant does not explain how a
teaching of automatic ranking fails to teach or otherwise disclose the
claimed “selecting” step. However, and more importantly (and even
assuming the above to be the case), we are instructed that a teaching away
requires a reference to actually criticize, discredit, or otherwise discourage
investigation into the claimed solution. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Here, Appellant does not indicate where such actual
criticism, discrediting or discouragement occurs with respect to this claimed
“selecting” step in Moore. Appellant’s contention is not persuasive.
Based on the record presented, Appellant does not persuade us of
Examiner error and accordingly, we sustain the Examiner’s rejection of
claims 21, 22, 31-34, 36-42, 44, and 45.

DECISION
The Examiner’s rejection of claims 21, 22, 31-34, 36-42, 44, and 45 is
affirmed.
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).
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AFFIRMED

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