IBM wins reversal at PTAB in Parees case

Ex parte Parees

IBM argued "no rational underpinning"-->

The Examiner has not provided any rational
underpinning as to how the Examiner derived his motivation for
modifying Zoltan to include the above-cited missing claim
limitations. (...) While the Examiner
may consider many factors in finding a reason to combine, the
Examiner still must explain how the Examiner derived the
reasoning for modifying Zoltan to include the above-cited
missing claim limitations. M.P.E.P. §2143.(...) The Examiner's reasoning is insufficient to
establish a prima facie case of obviousness in rejecting claims
1-20.

AND specifically

what is the rational connection between performing
uncommitted read operations on the source table for each row
corresponding to each distinct value stored in the second table
(missing claim limitation) and saving space and increasing
efficiency (Examiner's reasoning)? Additionally, what is the
rational connection between updating and/or inserting of one or
more rows in a target table that correspond to each row in the
source table where an uncommitted read operation was
performed (missing claim limitations) and saving space and
increasing efficiency (Examiner's reasoning)?

Footnotes 1 and 2 of the PTAB decision:

1 The Examiner's articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Supreme Court stated that
“‘rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.”’ KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting Kahn, 441 F.3d
at 988).

2 In KSR, 550 U.S. at 421, the U.S. Supreme Court guides that “[a] factfinder
should be aware, of course, of the distortion caused by hindsight bias and
must be cautious of argument reliant upon ex post reasoning.” (citing
Graham v. John Deere Co., 383 U.S. 1, 36 (1966)).

IBM wins.