Ex Parte Sanders et al

Patent Trial and Appeal Board

Mar 22, 2017

10973146 (P.T.A.B. Mar. 22, 2017)

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.
10/973,146 10/26/2004 Jeffery A. Sanders 062891.1399 3173
86846 7590 03/24/2017
Baker Botts L.L.P./Cisco Systems
2001 Ross Avenue
SUITE 700
Dallas, TX 75201
EXAMINER
CHOU, ALAN S
ART UNIT PAPER NUMBER
2451
NOTIFICATION DATE DELIVERY MODE
03/24/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTOmaill @bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFERY A. SANDERS, MICHAEL H. McCLUNG,
HENRY CHEN, and ANDREW J. FRANCKE
Appeal 2015-001843
Application 10/973,146
Technology Center 2400
Before ERIC S. FRAHM, JUSTIN BUSCH, and
ALEX S. YAP, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1—6, 8—13, 15—20, and 22—30 under 35 U.S.C. § 103(a). Final Act.
2—18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter a new ground of rejection.
Appeal 2015-001843
Application 10/973,146
CLAIMED SUBJECT MATTER
Claims 1, 8, 15, 22, and 28—30 are independent claims. The claims
relate generally to “[providing a proxy server feature includes initiating the
proxy server feature at an endpoint of a number of endpoints.” Abstract.
Claim 1 is representative and reproduced below, with the disputed
limitations italicized:
1. A method for providing a proxy server feature,
comprising:
initiating a proxy server feature at a first endpoint of a
plurality of endpoints, wherein initiating the proxy server feature
at the first endpoint of the plurality of endpoints further
comprises:
accessing feature logic using a service framework at
the first endpoint, the feature logic stored on the first
endpoint operating as the proxy server, the feature logic
defining the proxy server feature and an event handler that
indicates a response to an event; and
initiating the proxy server feature by executing the
feature logic stored on the first endpoint',
receiving registration information corresponding to the
plurality of endpoints, the registration information corresponding
to an endpoint comprising an address for the endpoint;
storing the registration information in a routing table at the
first endpoint;
locating a callee endpoint of the plurality of endpoints
using the routing table in order to establish a session with the
callee endpoint;
intercepting an endpoint state process of the session at a
feature interaction point; and
determining a next state of the endpoint state process
according to a feature finite state machine corresponding to the
feature interaction point;
determining whether the event occurs; and
if the event occurs, accessing a web page stored on the first
endpoint to determine whether the web page includes the event
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handler for the event and responding to the event according to
instructions within the event handler stored on the first endpoint.
REJECTIONS
Claims 1,3,6, 8, 10, 13, 15, 17, 20, 22, 24, 27, 28, and 29 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over MeLampy (US
2002/0169887 Al; Nov. 14, 2002), O’Neill (US 2006/0047742 Al; Mar. 2,
2006), Squire (US Pat. No. 7,139,838 Bl; Nov. 21, 2006), and Martin
(US 2002/0085696 Al; July 4, 2002). Final Act. 2-7.
Claims 2, 9, 16, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over MeLampy, O’Neill, Squire, Martin, and Newberg
(US 2004/0131060 Al; July 8, 2004). Final Act. 7-8.
Claims 4, 11, 18, and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over MeLampy, O’Neill, Squire, Martin, and Beck (US
2006/0067323 Al; Mar. 30, 2006). Final Act. 9-10.
Claims 5, 12, 19, and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over MeLampy, O’Neill, Squire, Martin, and Tran (US
Pat. No. 6,667,968 Bl; Dec. 23, 2003). Final Act. 10.
Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over MeLampy, O’Neill, Newberg, Tran, Beck, Squire, and
Martin. Final Act. 11—18.
ANALYSIS
Claims 1, 4—6), 8, 11—IS, 15, 18—20, 22, and 25—30
The Examiner finds the combination of MeLampy, O’Neill, Squire,
and Martin teaches or suggests each limitation of each of the independent
claims, except claim 30. Final Act. 2—6. Independent claim 30 includes
similar limitations to those in the other independent claims, and the
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Examiner relies on the same disclosures from MeLampy, O’Neill, Squire,
and Martin as teaching or suggesting the similar limitations in claim 30. Id.
at 11—18. The Examiner finds MeLampy teaches that an endpoint may also
be a proxy server. Id. at 2; Ans. 4. With respect to the disputed limitations,
the Examiner finds Martin teaches storing the feature logic at the first
endpoint. Final Act. 5—6 (citing Martin || 89, 99, 300, 307); Ans. 4—5
(citing Martin || 300, 307). Specifically, the Examiner finds paragraphs 98
and 99 of Martin disclose “TSP storing runtime data store,” paragraph 300
of Martin discloses a “feature logic object can be cached at application level
or endpoint level,” and paragraph 307 of Martin discloses “TSP feature logic
can be dynamically distributed across external operations and entities such
as an endpoint.” Final Act. 5—6. In the Answer, the Examiner also states
that paragraph 307 of Martin discloses “feature logic can be stored
externally across the networks” and that an ordinarily skilled artisan would
have found it obvious “to use a SIP endpoint as disclosed by MeLampy and
store feature logic at the application level distributed . . . across the network
in each SIP endpoint as taught by Martin to obtain the invention as specified
in the claims.” Ans. 4—5 (citing Martin | 307).
Appellants argue the Examiner’s proposed combination of the
teachings from MeLampy, O’Neill, Squire, and Martin constitutes
“impermissible hindsight reconstruction of Appellants’ claims, using
Appellants’ claims as a blueprint.” App. Br. 15—16. Appellants contend the
“mere fact that four references must be combined to disclose a single step
disclosed in Appellants’ claims provides evidence that the overall
combination of claim elements claimed by Appellants would not have been
obvious” and the “piecemeal rejection of Appellants’ claims fail to give
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credence to each element of Appellants’ claims and to the overall
combination of features recited.” Id. at 16. Reliance on a large number of
references in a rejection does not, without more, weigh against the
obviousness of the claimed invention. In re Gorman, 933 F.2d 982, 986—87
(Fed. Cir. 1991). Appellants have not identified any specific elements for
which the rejection “fail[s] to give credence,” and the Examiner provided a
rationale for the combination of the specific teachings cited. Therefore, we
find unpersuasive Appellants’ argument that the proposed combination
constitutes impermissible hindsight.
Appellants contend Martin does not teach or suggest the limitations
for which the Examiner relies upon Martin. App. Br. 14—15; Reply Br. 3^4.
Specifically, Appellants assert Martin discloses locally storing frequently
requested data, not feature logic, via application level caching of data
structures and objects. App. Br. 15 (citing Martin 1300); Reply Br. 3^4
(citing Martin || 298, 300, 307). Appellants argue “neither the local
caching of the objects and data structures nor the storage across multiple
processors is analogous to storing the feature logic recited in Appellants’
claims.” Reply Br. 3.
Upon reviewing paragraphs 270 through 316, which are directed to
“Application Software Redundancy,” Martin 1270, we agree with
Appellants. The portion of Martin relied upon by the Examiner for teaching
or suggesting storing feature logic at a first endpoint is directed to
application software redundancy by using “context objects to capture and
maintain the state of application services.” Id. 270, 271. Martin’s
infrastructure uses tasks, which are associated with a context, to encapsulate
processing. Id. 1273. Martin explains that the “task-processing model”
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helps “reduce contention across highly dynamic objects [that] are expected
to frequently dynamically change state and context” by having a single task
support each object. Id. 1297. Martin uses a shared storage to house the
context objects and provides “data access mechanisms and processes” to
access target objects on the shared storage when the object is not in local
memory. Id. ^fl[ 298, 299. It is the caching, access, and distribution of these
objects that is described in paragraphs 300 through 308 of Martin.
However, we agree with the Examiner that the proposed combination
of MeLampy and Martin would have suggested to a person of ordinary skill
in the art that the feature logic would be stored at the first endpoint.
Specifically, given the proposed combination involving moving the proxy
server features taught by Martin to an endpoint, as taught by MeLampy, the
background knowledge of an ordinarily skilled person would have provided
the necessary suggestion to move the feature logic to the first endpoint as
well, because that is the location from which the feature logic would be
accessed and executed. Additionally, there are a limited number of locations
that feature logic to be executed by network equipment may be stored; the
logic may be stored locally, or at a remote location to which the network
equipment has access. Minor differences between the prior art and a
claimed device may be a matter of design choice absent evidence to the
contrary. See In re Rice, 341 F.2d 309, 314 (CCPA 1965). Accordingly, a
person having ordinary skill in the art would have known that storing the
feature logic at the first endpoint, where the feature logic will be accessed
and executed was one of a limited number of design choices, and, thus,
storing the feature logic at the first endpoint would have been obvious.
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For the above reasons, we affirm the Examiner’s rejection of
independent claims 1, 8, 15, 22, 28, and 29, and designate the affirmance as
a new ground of rejection to the extent that we have modified or enhanced
the Examiner’s reasoning. Appellants make no further substantive
arguments with respect to claims 4—6, 11—13, 18—20, and 25—27, which
ultimately depend from one of claims 1, 8, 15, and 22; therefore, we also
affirm the Examiner’s rejections of those claims for the same reasons
discussed above. Appellants argue only that independent claim 30 is
patentable for the same reasons asserted with respect to independent claims
1therefore, we also affirm the Examiner’s rejection of claim 30 for the
same reasons discussed above.
Claims 3, 10, 17, and 24
The Examiner finds “MeLampy does not disclose expressly the
endpoint will receive registration information from each other directly.”
Final Act. 7. The Examiner finds the additional limitations recited in claims
3, 10, 17, and 24, which the Examiner paraphrases as “the exchange of
registration information between nodes within the network fabric,” are
taught by O’Neill’s disclosure of “service instance discovery.” Id. (citing
O’Neill 1121). The Examiner further explains that “service Instance
Discovery discovers] the endpoint instances registered to the service broker
1 Appellants argue that “Claim 30 recites similar limitations as Claims 1 and
7,” and “[t]he arguments as applied to Claims 1 and 7 are applicable to
Claim 30.” App. Br. 20. Claim 7, however, was previously canceled and is
not part of this appeal. Appellants made no specific arguments with respect
to the limitations allegedly similar between claims 7 and claim 30.
Therefore, we treat Appellants’ argument as asserting that claim 30 is
allowable for the same reasons argued with respect to claim 1.
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in the Fabric,” and “Fabric Connector “connects] and permit[s] the end
point to communicate directly to each other endpoint[] while bypassing the
Service Broker.” Ans. 6 (citing O’Neill H 118, 121). The Examiner finds
“O’Neill teaches expressly communication of endpoints to each other
directly, including exchanging registration information.'1'’ Id. (emphasis
added).
Appellants argue the Examiner erred in rejecting claims 3, 10, 17, and
24 because the proposed combination does not teach or suggest endpoints
receiving registration information from each other. App. Br. 17—18.
Specifically, Appellants assert the portion of O’Neill cited by the Examiner
relates to interactions between a Service Broker and the Persistent Registry.
Id. at 17 (citing O’Neill 1121); Reply Br. 5. Appellants contend “there is no
disclosure that the Service Broker receives registration information from the
plurality of endpoints” or “that the [Persistent] Registry is an endpoint.” Id.
at 18. Appellants further argue that, even if O’Neill discloses endpoints may
communicate with each other, O’Neill does not teach direct communications
of registration information between endpoints. Reply 5.
We agree with Appellants. The Examiner points to paragraphs 118
and 121 of O’Neill, which disclose certain features that “will permit [an] end
point to communicate directly with other end points while bypassing the
Service Broker.” O’Neill 1118. O’Neill further discloses, however, that
“[t]he purpose of this is to permit optimized ongoing conversations while
eliminating the need for the end point itself to manage bindings directly.”
Id. (emphasis added). Additionally, although O’Neill discloses a Service
Broker “interact [ing] with the Persistent Registry to find instances of that
Service Provider type within the Fabric,” id., we see no disclosure that the
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Persistent Registry resides on one of the plurality of endpoints. Therefore,
even to the extent O’Neill discloses communicating registration information
between a Service Broker at an endpoint and the Persistent Registry, the
Examiner has not explained sufficiently how the cited portions of O’Neill
teach or suggest “receiving at the first endpoint registration information
from a second endpoint of the plurality of endpoints” or “providing the
registration information to a third endpoint of the plurality of endpoints,” as
recited in claims 3, 10, and 17. Similarly, the Examiner has not explained
sufficiently how the cited portions of O’Neill teach or suggest each endpoint
providing “the proxy server feature by receiving registration information
from the first endpoint,” as recited in claim 24.
The Examiner finds MeLampy teaches that an endpoint may serve as
a proxy server and Martin teaches proxy server features. We note, however,
that the Examiner makes no finding regarding whether the combination
resulting from MeLampy and Martin would have taught or suggested to a
person having ordinary skill in the art that an endpoint acting as a proxy
server would receive registration information from another endpoint or that
the registration information would be provided to a third endpoint.
Accordingly, on this record and for the reasons discussed above, we are
constrained to reversing the Examiner’s rejection of claims 3, 10, and 17.
Claims 2, 9, 16, and 23
The Examiner finds “neither MeLampy nor O’Neill disclose expressly
the broadcasting and receiving registration information from the first
endpoint to one or more other endpoints of the plurality of endpoints.” Final
Act. 8. The Examiner finds Newberg discloses the “use of IP multicast in a
SIP network proxy system to receive registration information,” which the
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Examiner states teaches or suggests the additional limitations recited in
claims 2, 9, 16, and 23. Id. (citing Newberg || 34, 35). The Examiner
further explains that “Newberg teaches expressly the use of SAP as the
preferred broadcast protocol while using SIP,” “Newberg teaches the use of
SAP announcement to all the endpoints to control SIP sessions,” and “it
would have been obvious to a person of ordinary skill in the art to use the
SAP announcement techniques as taught by Newberg to send any type of
SIP messages, such as SIP Register.” Ans. 6.
Appellants argue the Examiner erred in rejecting claims 2, 9, 16, and
23 because Newberg discloses endpoints must send registration messages
using SIP prior to receiving SAP announcements. App. Br. 19; Reply Br. 6.
Appellants assert Newberg does not teach or suggest broadcasting
registration information to other endpoints. App. Br. 19. Specifically,
Appellants contend Newberg’s general disclosure that SAP is its preferred
broadcast protocol “does not include broadcasting registration information
from the first endpoint to a plurality of endpoints.” Reply Br. 6.
We agree with Appellants. Although the Examiner is correct that
Newberg discloses using SAP for broadcast messages, based on the record
before us, we are unable to find support for the Examiner’s statement that
“Newberg teaches the use of IP multicast in a SIP network proxy system to
receive registration information.” See Final Act. 8. On the contrary, as
pointed out by Appellants, Newberg explicitly states that endpoints register
with the system by sending SIP messages to a registration manager.
Newberg || 25 (explaining that entities communicate using either “a
transactional protocol or a broadcast protocol” and that “[t]he preferred
transactional protocol is SIP, and the preferred broadcast protocol is SAP”),
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34. Accordingly, the Examiner has not explained sufficiently how the cited
portions of Newberg teach or suggest “broadcasting registration information
from the first endpoint to one or more other endpoints of the plurality of
endpoints,” as recited in claims 2, 9, and 16, and similarly recited in claim
23. Accordingly, on this record and for the reasons discussed above, we
reverse the Examiner’s rejection of claims 2, 9, 16, and 23.
DECISION
We affirm the Examiner’s decision to reject claims 1, 4—6, 8, 11—13,
15, 18—20, 22, and 25—30 under 35 U.S.C. § 103(a), designating the rejection
as a new ground of rejection to the extent that we rely on additional or
different reasoning than the Examiner. We reverse the Examiner’s decision
to reject claims 2, 3, 9, 10, 16, 17, 23, and 24.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision, must
exercise one of the following two options with respect to the new
ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
37 C.F.R, $ 41.50(b)
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