Appeal 2007-0789
Application 09/810,063
service. Accordingly, given that Odlyzko discloses other computers
communicating with users’ computers as well as FTP as a high priority service for
users’ computers, Odlyzko suggests the claimed limitation of a user computer
receiving a response packet with the high priority header from the second
computer in response to sending the packet with the high priority header to the
second computer.
Lastly, Appellants argue that Odlyzko does not disclose the fifth step of the
claimed method. (FF 28). The fifth step simply describes calculating a usage
amount according to the amount of time the user uses the high priority service. (FF
6 and 8). There is no dispute that Odlyzko teaches this. (FF 30 and 31). Appellants
argue that Odlyzko teaches away from making that type of calculation of usage
amount because it prefers to do statistical sampling. (FF 33). This is not a
persuasive argument because a reference does not teach away from a conclusion of
obviousness simply because it shows the claimed alternative to be inferior.3 Here
Appellants agree that Odlyzko in fact teaches the alternative claimed. Given that
3 Cf. In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994):
Gurley's position appears to be that a reference that “teaches away”
can not serve to create a prima facie case of obviousness. We agree that this
is a useful general rule. However, such a rule can not be adopted in the
abstract, for it may not be applicable in all factual circumstances. Although a
reference that teaches away is a significant factor to be considered in
determining unobviousness, the nature of the teaching is highly relevant, and
must be weighed in substance. A known or obvious composition does not
become patentable simply because it has been described as somewhat
inferior to some other product for the same use.
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