Ex Parte Rothschild

Patent Trial and Appeal BoardSep 26, 2013

11999570 (P.T.A.B. Sep. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LEIGH ROTHSCHILD ____________ Appeal 2011-005422 Application 11/999,570 Technology Center 2400 ____________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005422 Application 11/999,570 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims 1-11, 13-22, 24, and 25. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. INVENTION The invention is directed to a digital media communication protocol for transferring digital media files via a computer network (Spec. 1:6-10). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A digital media communication protocol, comprising: at least one media terminal disposed in an accessible relation to at least one interactive computer network, a wireless range structured to permit authorized access to said at least one interactive computer network, at least one media node disposable within said wireless range, wherein said at least one media node is detectable by said at least one media terminal, at least one digital media file initially disposed on at least one of said at least one media terminal or said at least one media node, said at least one media terminal being structured to detect said at least one media node disposed within said wireless range, a communication link structured to dispose said at least one media terminal and said at least one media node in a communicative relation with one another via said at least one interactive computer network, said communication link being initiated by said at least one media terminal, Appeal 2011-005422 Application 11/999,570 3 said at least one media node and said at least one media terminal being structured to transmit said at least one digital media file therebetween via said communication link, and said communication link is structured to bypass at least one media terminal security measure. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Rockwell Gustavsson US 2004/0128375 A1 US 2008/0120369 A1 July 1, 2004 May 22, 2008 (filed Nov. 16, 2006) REJECTION Claims 1-11, 13-22, 24, and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gustavsson and Rockwell. ANALYSIS The Examiner finds Gustavsson discloses all the limitations of independent claim 1 except “said communication link is structured to bypass at least one media terminal security measure” (see Ans. 3-4), and relies on Rockwell for disclosing this feature (id. at 13). Specifically, the Examiner finds “Rockwell teaches said communication link is structured to bypass at least one media terminal security measure (i.e., networked systems that also had wireless connections since this is a way that suppliers/service providers or another party could bypass their firewalls, section 167) in order to potentially access other resources on their network (section 167)” (id.). Appeal 2011-005422 Application 11/999,570 4 Therefore, the Examiner concludes, “it would have been obvious . . . to utilize the teaching of Rockwell in the system of Gustavsson in order to potentially access other resources on their network” (id.). Appellant contends “the Examiner has failed to present an articulated reasoning with some rational underpinning to support the Examiner’s conclusion of obviousness” (App. Br. 13) because “the Examiner’s secondary reference of Rockwell has stated that the proposed modification (i.e., bypassing the security measure) is not desired” (id. at 14). We agree with Appellant. The Examiner’s reason for combining Rockwell with Gustavsson is based on the fact Rockwell discloses the possibility of bypassing a network security measure such as a firewall (See Ans. 13; Rockwell, ¶[0167]). However, Rockwell does not suggest structuring a communication link to bypass a security measure as claimed, but rather raises bypassing a firewall as a possible problem with a wireless network: “users voiced concerns with networked systems that also had wireless connections since this is a way that suppliers/service providers or another party could bypass their firewalls and potentially access other resources on their network” (Rockwell, ¶ [0167]). In other words, Rockwell suggests the opposite of the claimed invention. The mere fact it is possible to bypass a firewall (see Ans. 14), absent “some articulated reasoning with some rational underpinning” to implement this feature in Gustavsson’s system, does not support the Examiner’s conclusion that it would have been obvious to modify Gustavsson in such a way as to meet the limitations of claim 1. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Moreover, the Examiner’s response that it would have been obvious to try Appeal 2011-005422 Application 11/999,570 5 the solution embodied in Appellant’s claim 1 based on the knowledge one could bypass a firewall (Ans. 14) is unavailing. As Appellant points out, the Examiner did not make the required factual findings to support this obviousness rationale (Reply Br. 9-12). We are therefore constrained by the record to find the Examiner erred in rejecting independent claim 1, independent claims 18, 22, and 25, which recite commensurate limitations, and dependent claims 2-11, 13-17, 19-21, and 24 for similar reasons. CONCLUSION The Examiner erred in rejecting claims 1-11, 13-22, 24, and 25 under 35 U.S.C. § 103(a). DECISION The Examiner’s decision rejecting claims 1-11, 13-22, 24, and 25 is reversed. REVERSED llw