Ex Parte 5778178 et al

Patent Trial and Appeal Board

Jun 27, 2014

90010346 (P.T.A.B. Jun. 27, 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.
90/010,346 11/21/2008 5778178 WEBX001RE 2861
7590 06/30/2014
Lakshmi Arunachalam
222 Stanford Avenue
Menlo Park, CA 94025
EXAMINER
CABRERA, ZOILA E
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/30/2014 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 WEBXCHANGE INCORPORATED,
Patent Owner and Appellant
____________________

Appeal 2013-004304
Reexamination Control 90/010,346
Patent 5,778,178
Technology Center 3900
____________________

Before HOWARD B. BLANKENSHIP, STEPHEN C. SIU, and
DENISE M. POTHIER, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
This proceeding arose out of separate third party requests by Michelle
O’Brien of O’Brien Jones, PLLC, for ex parte reexaminations of U.S. Patent
No. 5,778,178 (“the ’178 patent”) to Lakshmi Arunachalam, entitled Method and
Apparatus for Enabling Real-Time Bi-Directional Transactions on a Network
issued July 7, 1998 and assigned to WebXchange, Incorporated.
Appellant appeals under 35 U.S.C. §§ 134(b) and 306 from the decision in
the Final Rejection rejecting claims 1-7 and 9-16 of the ’178 patent. App. Br. 4.
Claims 8 and 17-143 have been canceled by an entered After-Final Amendment.
Id.; May 25, 2011 Advisory Action, Box 6.
Appellant indicates related court proceedings involving the ’178 patent. See
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

2
App. Br. 2-4, 71-72 (Section IX). Appellant also indicates two related
reexamination proceedings, Reexamination Control Nos. 95/001,129 and
90/010,417, for U.S. Patent Nos. 7,340,506 and 6,212,556, respectively. App.
Br. 3. Reexamination Control No. 90/010,417 is being appealed to the Board.
Oral arguments for Reexamination Control No. 95/001,129 were heard by the
Board on October 30, 2013.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm the rejections of claims 9-15 and reverse the rejections of claims
1-7 and 16.
As for claim 16, we present a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
Independent claims 1 and 9 on appeal reads as follows:
1. An object router on a World Wide Web, said object router
comprising:
means for associating an object identity with information entries and
attributes, wherein the object identity represents a networked object;
means for storing said information entries and said attributes in a virtual
information store; and
means for assigning a unique network address to said object identity.

9. A method for enabling object routing on a World Wide Web, said
method for enabling object routing comprising the steps of:
associating an object identity with information entries and attributes,
wherein the object identity represents a networked object;
storing said information entries and said attributes in a virtual
information store; and
assigning a unique network address to said object identity.

App. Br., Claims App’x, App. Br. 67-68.

Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

3
A. Prior Art Relied Upon
The Examiner relies on the following as evidence of unpatentability:
Keith McCloghrie & Marshall T. Rose, Management Information Base for
Network Management of TCP/IP-based internets: MIB-II (Network Working
Group Request for Comments: 1213) 1-70
1
(1991), available at
http://tools.ietf.org/html/rfc1213 (“RFC 1213”).

Liam Relihan et al., Untangling the World-Wide Web 1994 SIGDOC ’94 Proc. of
the 12th Annual Int’l Conf. on Sys. Documentation 17-24 (1994) (“Relihan”).

B. The Rejections
The Examiner maintains the following rejections:
Reference(s) Basis Claims
RAN
RFC 1213 § 102(b)
1-5, 7, 9-13,
15, and 16
Ans. 5-17
RFC 1213 and Relihan 103 1-7 and 9-16 Ans. 5-19

II. ISSUES ON APPEAL
Based on the arguments presented, Appellant raises the following issues:
(1) Whether the Examiner erred in rejecting claim 1 based on RFC 1213 or
RFC 1213 and Relihan?
(2) Whether the Examiner erred in rejecting claim 9 by finding that RFC
1213 discloses, or RFC 1213 and Relihan teach, its recited steps as broadly
recited?

1
For consistency with the Requester’s and the Examiner’s mapping, the citations
in this decision will refer to pages one through seventy, which correspond
sequentially to the embedded and bracketed page numbering within RFC 1213.
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

4
(3) Whether the Examiner erred in rejecting claims 14 and 15 by finding that
RFC 1213 discloses, or RFC 1213 and Relihan teach, the step of using the unique
network address to identify and route the object identity on the World Wide Web
or Internet?
(4) Whether the Examiner erred in rejecting claim 16 by finding that RFC
1213 discloses, teaches, or suggests using the unique network address to perform
Operations, Administration, Maintenance, & Provisioning (OAM&P) functions?

III. ANALYSIS
Unless discussed below, we adopt the Examiner’s findings in the Examiner’s
Answer as our own.
A. Claim Construction
Appellant argues the Examiner’s construction of the recited “object identity”
and “networked object” in independent claims 1 and 9 is unreasonably broad.
App. Br. 25. Appellant asserts that it has explicitly defined these terms in the
disclosure and prosecution history such that the recited terms distinguish over the
prior art. App. Br. 25-32. Additionally, Appellant argues that the Examiner did
not determine whether the preamble was a limitation and did not construe the
“means for” limitations under 35 U.S.C. § 112, sixth paragraph. App. Br. 32-33.
During examination of a patent application, a claim is given its broadest
reasonable construction “in light of the specification as it would be interpreted by
one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004) (internal citations and quotations omitted). We presume that
claim terms have their ordinary and customary meaning. See In re Translogic
Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (internal quotations omitted).
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

5
However, a patentee may rebut this presumption by acting as her own
lexicographer, providing a definition of the term in the specification with
“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475,
1480 (Fed. Cir. 1994).
When a claim uses “means for” language, there is a presumption that the
claim invokes 35 U.S.C. § 112, ¶ 6. See Biomedino L.L.C. v. Waters Techs. Corp.,
490 F.3d 946, 950 (Fed. Cir. 2007). As such, means-plus-function limitations shall
be construed to cover the corresponding structure described in the specification and
its equivalents. In re Donaldson Co., Inc., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en
banc).
1. Means-Plus-Function Recitations of Claim 1
Although acknowledging the delay in raising the statutory requirements
under 35 U.S.C. §112, sixth paragraph and in identifying the structures
corresponding to the recites means-plus-function limitations, Appellant argues for
the first time after the Final Office action that each “means for” recitation in
claim 1 invokes 35 U.S.C. § 112, sixth paragraph and that the Examiner ignores
the function and structure of the “means.” App. Br. 32-33. Appellant refers to the
Evidence Appendix IX.5 of the Appeal Brief for the corresponding functions and
structures. App. Br. 33.
Although interpreting the corresponding structure and its equivalents
differently, there is no dispute as to whether claim 1 invokes 35 U.S.C. § 112, sixth
paragraph. See App. Br. 33, Evidence App’x IX.5, pp. 1-3, 7, and 8; Ans. 30-50.
We therefore disagree with Appellant that the Examiner has ignored these
limitations. See Ans. 30-41. Accordingly, the critical question is what are the
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

6
structures in the ’178 patent corresponding to the recited means-plus-function
limitations of claim 1.
Claim 1 recites three functions performed by an object router: associating an
object identity with information entries and attributes, storing the information
entries and attributes in a virtual information store, and assigning a unique network
address to the object identity. App. Br. 67, Claims App’x. We must determine the
corresponding structure in the disclosure that performs these three recited
functions. See Donaldson, 16 F.3d at 1195. For computer-implemented,
means-plus-function limitations reciting a function that cannot be performed by a
general purpose computer without special programming, the disclosed structure
must include the algorithm for performing the claimed function. Noah Sys., Inc. v.
Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012) (citing Aristocrat Techs. Austl.
Pty Ltd v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008)).
i. means for associating an object identity with information entries and
attributes

Appellant states the corresponding structure for the “means for associating
an object identity with information entries and attributes” is the point-of-service
(POSvc) application (e.g., 510 in Fig. 5B). App. Br. 33, Evidence App’x. IX.5, p.
2. While disagreeing that the POSvc application performs this function, the
Examiner agrees that some software executes this function. Ans. 34. Notably,
neither an application nor software is a sufficient corresponding structure to satisfy
the requirements related to invoking 35 U.S.C. § 112, sixth paragraph. See Noah,
675 F.3d at 1312.
In either case, the recited function of “associating an object identity with
information entries and attributes” is implemented by an application or software
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

7
and thus is a computer-implemented, means-plus-function limitation. “Simply
disclosing software, however, ‘without providing some detail about the means to
accomplish the function[,] is not enough.’” See Finisar Corp. v. DirecTV Grp.,
Inc., 523 F.3d 1323, 1340-41; see also Function Media, L.L.C. v. Google, Inc., 708
F.3d 1310, 1318 (Fed. Cir. 2013) (quoting Noah, 675 F.3d at 1312)). “[T]he patent
must disclose, at least to the satisfaction of one of ordinary skill in the art, enough
of an algorithm to provide the necessary structure under § 112, ¶ 6 . . . . [A]
patentee [may] express that algorithm in any understandable terms including as a
mathematical formula, in prose, or as a flow chart, or in any other manner that
provides sufficient structure.” Finisar, 523 F.3d at 1340 (citation omitted).
We disagree with Appellant that a POSvc application is sufficient
corresponding structure for performing the recited “associating” function. The
Examiner indicates the ’178 patent does not describe or show the POSvc
application 510 (1) as being part of the object router as required by claim 1 or (2)
performing the function of associating an object identity with information entries
and attributes as recited. See Ans. 31-34 (quoting the ’178 patent 6:11-14). As
explained by the Examiner, Figure 5B of the ’178 patent shows object router 525
and VAN switch 520 separate from the POSvc application 510. Ans. 31. The
separately described object router and VAN switch are described as performing
object routing using the TransWeb Management Protocol and distributed
on-line service information bases (DOLSIBs). The’178 patent 7:58-61, 7:66-8:7;
Fig. 5B. The Examiner further explains that exchange 501 – not the object router
525 – comprises the POSvc application 510. Ans. 31-32; the ’178 patent 7:58-61,
7:66-8:7; Fig. 5B.
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

8
Appellants further discusses Figure 5D and contends that the POSvc
application associates attributes (“Name” and “Password”) and information entries,
which are values of the attributes (e.g., the values inserted in the black spaces
following the Name Attribute and the Password Attribute). App. Br. 33, Evidence
App’x. IX.5, p. 2. Again, for the above-stated reasons, we do not agree that the
POSvc application is the corresponding structure for an object router performing
the function of “associating an object identity with information entries and
attributes[.]”
Additionally, although there may be an association between “Name” and
“Password” and the value inserted in the corresponding spaces following each of
“Name” and “Password” shown in Figure 5D, the ’178 patent does not describe
“Name” and “Password” in Figure 5D as attributes, the values inserted in the blank
spaces that follow as information entries, or an object router uses these elements to
make the association. The ’178 patent 6:66-7:17; Fig. 5D; see also Ans. 33.
Importantly, even assuming that Figure 5D does show information entries and
attributes, Appellant has failed to demonstrate the disclosure describes or contains
an algorithm or sufficient detail related to how the association between the “object
identity” and “information entries and the attributes” is accomplished.
The ’178 patent also discusses a processor 202 used to process instructions.
The’178 patent 4:25-32; Fig. 2. However, when 35 U.S.C. § 112, sixth paragraph
is invoked, the corresponding structure for performing a recited computer-
implemented function of cannot be “the general purpose computer, but rather the
special purpose computer programmed to perform the disclosed algorithm.” WMS
Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999).
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

9
Lastly, Appellant contends that the prosecution history limits the meaning of
the “associating” means-plus-function recitation. App. Br., Evidence App’x. IX.5,
pp. 2-3 (citing Evidence App’x IX.4, pp. 3). We disagree. Ans. 33-34. First, the
history discusses the POSvc application, which as stated above, is not the
corresponding structure that performs the “associating” function. App. Br.,
Evidence App’x. IX.4, pp. 6-7. Also, the history does not discuss a specific
algorithm or process used to perform the function of associating an object identity
with information entries and attributes.
ii. means for storing said information entries and attributes in a virtual
information store

Appellant states the corresponding structure for the “means for storing said
information entries and attributes in a virtual information store” is the Internet.
App. Br. 33 (citing App. IX.5); App. IX.5, p. 7-8. The Examiner finds that a
DOLSIB performs this function. Ans. 38.
Although the’178 patent describes the networked object is assigned an
Internet address (The’178 patent 8:9-12), we fail to see how the disclosure supports
the Internet performing the storing function. Rather, the’178 patent describes the
information entries and attributes are in the DOLSIB virtual information store.
The’178 patent 8:4-7. As such, the DOLSIB must perform some of the function
for storing the information within itself. See id. The ’178 patent describes
DOLSIBs as a virtual information store, which may be a simple table. See id.
2

Additionally, the ’178 patent discusses a processor 202 and memories 203 and 204

2
The ’178 patent further describes “data” being retrieved from data repository
using “TransWeb
TM
Management Protocol (TMP)” at step 816. The ’178 patent
6:60-61, 8:36-37; Fig. 8.
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

10
used to process instructions. The’178 patent 4:25-32; Fig. 2. Given the disclosure,
we find the corresponding structure to perform the function of storing the
information entries and attributes in a virtual information store includes a processor
along with DOLSIB and its equivalents.
iii. means for assigning a unique network address to said object identity
Appellant states the corresponding structure for the “means for assigning a
unique network address to said object identity” is a hierarchical tree structure.
App. Br. 33, Evidence App’x. IX.5, p. 8; Reply Br. 17-18. The Examiner finds
that software – not a tree structure – performs this function. Ans. 41. At page 8 of
the Evidence Appendix, Section IX.4, Appellant quotes from the’178 patent:
each networked object is assigned an Internet address. The Internet
address is assigned based on the IP [Internet Protocol] address of the
node at which the networked object resides . . . All networked
object[s] associated with Web server 104 will therefore be assigned an
Internet address based on the Web server 104’s IP address. These
networked objects thus “branch” from the node, creating a
hierarchical tree structure.

The ’178 patent 8:9-17; Fig. 6B. Figure 6B provides more detail, showing three
objects with the similar IP address with a different extension (e.g.,
123.123.123.123.1, 123.123.123.123.2, and 123.123.123.123.3). However, the
formed hierarchical tree does not assign the network addresses, but rather the tree
is the resulting data structure after using the assigning technique. We thus agree
with the Examiner that some software or code as well as a processor (e.g., 202)
perform the function of assigning the unique network address.
Although this portion of the algorithm relates to how IP or network
addresses are assigned, this passage states how each networked object – not the
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

11
object identity – is assigned a network address. Claim 1 also recites that “the
object identity represents a networked object.” Arguably, there is relationship
between the object identity and network object tying the object’s network address
to an object identity’s network address. However, we find insufficient detail in the
disclosure concerning this relationship and how any relationship results in the
object identity being assigned “a unique network address” as recited.
We therefore find that the ’178 patent sufficiently describes how the
function of “assigning a unique network address” to an object is accomplished, but
not how the unique network address is assigned to “an object identity” as recited.
Summary of the Means-Plus-Function Limitations
Appellant has argued that claims 1-7 invoke 35 U.S.C. § 112, sixth
paragraph. App. Br. 32-33. The Examiner has analyzed the three recited “means
for” limitations in claim 1 and has attempted to determine the corresponding
structure that performs the recited functions. Ans. 25-51. Although we appreciate
the Examiner’s attempts to determine the corresponding structure for the three
means-plus-function limitations, we cannot ignore that 35 U.S.C. § 112, sixth
paragraph does not absolve Appellant from complying with the remaining
paragraphs of 35 U.S.C. §112. See Donaldson, 16 F.3d at 1195.
The disclosure provides insufficient corresponding structure for performing
at least two of the recited functions – “associating an object identity with
information entries and attributes” and the “means for assigning a unique address
to said object identity.” See Ans. 26. The Examiner has highlighted some of these
problems. See Ans. 30-34. If this case was a patent application or a claim
amended during reexamination, we would enter a new ground of rejection under 37
C.F.R. § 41.50(b) on the basis of 35 U.S.C. §112, second paragraph, and not reach
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

12
the rejections under 35 U.S.C. §§ 102 and 103, because they would necessarily be
based on speculative assumptions as to the meaning and scope of the claims. See
In re Steele, 305 F.2d 859, 862-63 (CCPA 1962).
However, as noted in the record, rejections based on 35 U.S.C. § 112 are
beyond the scope of a reexamination proceeding for originally issued patent
claims. See Ans. 26. That is, 35 U.S.C. § 302 states “[a]ny person at any time may
file a request for reexamination by the Office of any claim of a patent on the basis
of any prior art cited under the provisions of section 301.” 35 U.S.C. § 302 (1999).
Thus, we are constrained from presenting a rejection under 35 U.S.C. § 112,
second paragraph for these claims. Yet, we reverse the rejections of independent
claim 1 and its dependent claims, because applying prior art to such claims would
be speculative.
2. Object Identity
Claim 9 recites “an object identity . . ., wherein the object identity represents
a networked object . . . .” Appellant asserts that it has acted as its own
lexicographer in defining the phrase, “object identity,” and that the prosecution
history must be considered when construing this term. App. Br. 22, 26-29; Reply
Br. 5-10. When properly construed, Appellant argues, “an object identity” is “an
individual data structure in a point-of-service (POSvc) Web application.” App.
Br. 28; Reply. Br. 10. Appellant further asserts that the recited “object identity”
bears no relationship with an object identifier. App. Br. 28. We disagree.
“Absent claim language carrying a narrow meaning, the PTO should only
limit the claim based on the specification or prosecution history when those
sources expressly disclaim the broader definition.” See In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). Other than what the object identity represents (i.e., a
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

13
networked object), the claim language in claim 9 offers no meaning of what “an
object identity” is.
When considering the ’178 patent’s disclosure, we do not find a definition
for the term “object identity.” The ’178 patent states “[t]he networked object
identity identifies the information entries and attributes in the DOLSIB as
individual networked objects[.]” The ’178 patent 8:7-9. This statement indicates
what the object identity identifies. However, there is no clear or deliberate
definition located within these passages for an “object identity.” See id; see also
Ans. 22.
Moreover, we will not import into the phrase, “an object identity,” a
particular-described embodiment appearing in the disclosure, such as the discussed
Figure 5D (App. Br. 29; Reply Br. 8 and 9). See SuperGuide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Also, although not defining
“an object identity,” the ‘178 patent’s disclosure states “[e]ach object in the
DOLSIB has a name, a syntax and an encoding. The name is an administratively
assigned object ID specifying an object type.” The ‘178 patent 8:25-27; see also
Ans. 22, 69. Thus, contrary to Appellant’s assertion that there is no support for a
name being “an object identity,” this portion of the’178 patent describes a name
given to an object that specifies an object type as the identity (e.g., ID) for an
object.
Also, just like the Examiner concluded (Ans. 21-22, 67-68), we are not
persuaded that the prosecution history of the ‘178 patent demonstrates that
Appellant expressly disclaims a broader definition of “an object identity.” See
App. Br. 28-29; Reply Br. 7-8. The prosecution history discussed by Appellant
provides an example of a checking or savings account. See App. Br. 28-29
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

14
(stating, “according to the presently claimed invention . . ., for example, if a Web
merchant decides to offer a POSvc application that allows access to checking and
savings accounts, the object identities according to the claimed invention refer to
the individual checking and savings accounts . . . .”) (emphasis added and other
emphases omitted); see also App. Br., Evidence App’x. IX.4, pp. 6-7.
For the first time in the Reply Brief, Appellant disputes the Examiner’s
construction of “object identity” and points to claims 10 and 11, arguing the
Examiner’s construction is contradicted by these claims. Reply Br. 8-9. Such
arguments are untimely and waived. See Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative). Even so, claim 10 further limits “associating an object
identity with information entries and attributes” by stating the step further includes
“associating a name, a syntax and encoding for said object identity.” However,
this claim does not specify or map the name, syntax or encoding such that they
have a particular relationship with the object identity, information entries, or
attributes.
As such, Appellant has not rebutted the presumption that the claim terms are
given their plain and ordinary meaning. See Paulsen, 30 F.3d at 1480. Given
claim 9 its broadest reasonable construction, we find the plain and ordinary
meaning of “object identity” includes a characteristic by which an object is
recognized or known, including a name given to an object specifying an object
type or its identity (e.g., ID) for an object.
3. Networked Object
Claim 9 also recites, “the object identity represents a networked object.” No
further limitation about what the “networked object” is can be located in the claim.
Appellant urges that this phrase, “networked object” means “an individual data
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

15
structure (i.e., object identity) connecting between a POSvc Web application and a
back-end transactional application (i.e., networked).” App. Br. 30; Reply Br. 10.
We find Appellant’s asserted definition of the term “a networked object” to
be unsupported by the record. Like “an object identity,” the phrase, “networked
object” is not defined in the ’178 patent in a clear and deliberate manner, such that
Appellant has acted as its own lexicographer for this phrase. See Ans. 24, 70. The
’178 patent states:
The networked object identity identifies the information entries and
attributes in the DOLSIB as individual networked objects, and each
networked object is assigned an Internet address . . . For example, in FIG.
5A, network server 104 is a node on the Internet, with an IP address. All
networked object associated with network server 104 will therefore be
assigned an Internet address based on the network server 104's IP address . .
. The Internet address for each networked object in the tree essentially
establishes the individual object as an "IP-reachable'" or accessible node on
the Internet . . . [I]f object 610 is information about models of cars, then one
instance of that object would provide user 100 with information about a
specific model of the car . . . .

The ’178 patent 8:7-21, 29-34. Although this passage in the ’178 patent describes
networked objects having assigned Internet addresses, there is no clear definition
of “a networked object.” Nor does Figure 5D clearly identify a networked object.
App. Br. 31. Moreover, we will not import into the claims a particularly described
embodiment appearing in the disclosure.
Appellant repeats again that the disclosure and prosecution history narrows
the meaning, such that “a networked object” is required to provide real-time
bi-directional transactions and is functional over an OSI (Open Systems
Interconnection) Application layer. App. Br. 30. We disagree. While the ’178
patent states that the invention is implemented to function as a routing switch
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

16
within the application layer (App. Br. 31 (citing the’178 patent 4:51-53, 5:12-16)),
the ’178 patent makes no mention of a networked object. Also, upon reviewing
Appellant’s comments during the prosecution history, we see no clear, deliberate,
or precise manner of stating that the networked object must include such features.
See App. Br. 30, Evidence App’x IX.4, pp. 6-7. Thus, contrary to the assertions,
Appellant provides insufficient evidence from the prosecution history that it has
acted as its own lexicographer in defining “a networked object.”
We therefore construe the phrase, “networked object,” to have its plain and
ordinary meaning to include an object that operates within or transmitted over a
network. See Ans. 25.
4. Preamble
Appellant further argues that the Examiner did not determine whether the
preamble of claim 9 was a limitation or construe the limitation properly. App.
Br. 33-36. We disagree.
First, we note that “[t]here has never been a requirement for an examiner to
make an on-the-record claim construction of every term in every rejected claim . . .
As discussed above, all that is required of the office to meet its prima facie burden
of production is to set forth the statutory basis of the rejection and the reference or
references relied upon in a sufficiently articulate and informative manner as to
meet the notice requirement of [35 U.S.C.] § 132.” In re Jung, 637 F.3d 1356,
1363 (Fed. Cir. 2011). The Examiner has met this burden.
Second, the Examiner has construed the preamble and found that the
limitation “on the World Wide Web” is merely a statement of intended use.
Ans. 29. We agree. Notably, the body of claim 9 does not rely on the “enabling
object routing on a World Wide Web” limitation located in the preamble and does
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

17
not recite actively routing objects. We thus further conclude that the recitation “for
enabling object routing” also recites intended use. In such situations, the preamble
only recites the claimed invention’s purpose and is not limiting.
Additionally, the Examiner notes and we agree that neither the preamble nor
any other portion of claims, for that matter, recites object routing on a particular
OSI application layer. Ans. 29-30. Because these limitations are not found in
claim 9, we also will not import related discussion found in the disclosure into the
claims. See Superguide, 358 F.3d at 875.
Third, Appellant argues that the prosecution history limited the preamble of
claim 9. App. Br. 33-34 (citing Evidence App’x IX.4, p. 6). However, when
viewed in its entirety, the quoted statement in the Appeal Brief presented during
prosecution of the ’178 patent states more than the claims are patentable over
Davison, because the reference does not teach or suggest a method for enabling
object routing on a World Wide Web. App. Br., Evidence App’x IX.4, p. 6. The
statements made during prosecution additionally state Davison does not teach the
three recited steps. See id. As such, the prosecution history does not clearly rely
solely on the preamble of claim 9 to distinguish the claimed invention from the
prior art. See Catalina Marketing Int’l, Inc., v. Coolsavings.com Inc., 289 F.3d
801, 808 (Fed. Cir. 2002).
We now turn to Appellant’s arguments concerning RFC 1213.
B. Anticipation Based on RFC 1213
1. Independent Claim 9
Initially, we note that claim 9 does not invoke 35 U.S.C. § 112, sixth
paragraph. As such, the claim is not limited to the corresponding structure found
in the disclosure, and we find any such arguments presented for claim 9
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

18
unpersuasive. App. Br. 41-42. We will construe the terms in claim 9 using the
broadest, reasonable construction.
Claim 9 recites “[a] method for enabling object routing on a World Wide
Web . . . .” Appellant contends that this preamble requires object routing and
incorporates the arguments from Section VII.C.4. App. Br. 33-36, 47, 55. We
disagree, at least because this limitation, as stated above, recites only an intended
use and does not require an active step of object routing. Thus, RFC 1213 need not
teach object routing.
Even so, contrary to Appellant’s assertions (see App. Br. 18-19, 22, 37-41;
Reply Br. 30), we find that RFC 1213 has the ability to route objects on a World
Wide Web. That is, the Examiner notes that RFC 1213 discusses a network
management framework for managing objects. Ans. 5-6 (citing RFC 1213,
Sections 1 and 2, p. 1). RFC 1213 further discusses an object has a name, syntax,
and encoding. RFC 1213, Section 4, p. 9; see Ans. 6-7. The name is an object
identifier that specifies an object type. Id. The encoding of an object type is how
the object type is represented using the object type’s syntax. Id. RFC 1213 further
states, “implicitly tied to the notion of the object type’s syntax and encoding is how
the object type is represented when being transmitted on the network.”
3
Id.
Thus, at least portions of the objects in RFC 1213 (e.g., the syntax and
encoding that are used to transmit the represented object type) are being
transmitted on a network. Additionally, Appellant quotes from a portion of RFC

3
As the Examiner indicates (Ans. 22-25), the language between RFC 1213 and
the’178 patent is quite similar. Compare RFC 1213, Section 4, p. 9 with the’178
patent 8:35-37 (both discussing encoding defines how the object is represented by
the object type syntax while being transmitted).
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

19
1155, Section 4.2, which is cited in RFC 1213 and which discusses a routing table
with object instances of an object type, demonstrating the ability to route objects.
App. Br. 18-19 n.2. Given that claim 9 does not specify what portions of the
object are being routed, we find that RFC 1213 discloses a method having the
ability to “enabl[e] object routing” as the preamble recites.
Appellant also specifically argues that RFC 1213 does not disclose
transmitting an object on the World Wide Web. App. Br. 37. Given that the
Examiner finds the language, “on the World Wide Web,” to be intended use
(Ans. 29), the Examiner did not address how RFC 1213 discloses actually routing
an object on the World Wide Web. We find this position reasonable. Nonetheless,
the Examiner presented an alternative obviousness rejection combining RFC 1213
with Relihan to address this limitation if given patentable weight. See Ans. 17.
For further details, we refer to the below discussion of the obviousness rejection.
Additionally, we agree with the Examiner that claim 9 fails to recite that
object routing is achieved on the OSI Application layer as argued. Ans. 29; see
also App. Br. 23 (citing the ‘178 patent 4:51-53, 5:12-16), 35-36 and Reply Br. 14.
Although the’178 patent discusses that the invention is implemented to function as
a routing switch within the application layer and the application layer routing
creates a channel for data flow (the’178 patent 4:51-53, 5:12-16), we will not
import such language into claim 9 when, as here, the language does not exist.
Appellant next argues that RFC 1213 fails to disclose the three recited steps
of claim 9. App. Br. 42. In arguing that RFC 1213 fails to disclose the recited
steps, Appellant incorporates claim 1’s explanation of purported errors referring to
Sections VII.H.3-5. App. Br. 42. Appellant further repeats the arguments
presented for claim 1. See App. Br. 47-61; Reply Br. 30-32.
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

20
Appellant specifically disputes that RFC 1213 fails to disclose “associating
an object identity with information entries and attributes, wherein the object
identity represents a networked object.” App. Br. 48-58. Appellant argues that the
Examiner construed the terms, “object identity” and “networked object”
improperly and refers to the arguments presented in Section.VII.C.1. App.
Br. 26-32, 47-48. For the above-stated reasons, we disagree. Appellant further
states the Examiner erred because the phrases, “object identity,” “information
entries,” “networked object,” “attributes,” and “associating,” or similar words, are
not found in RFC 1213. App. Br. 48-49. Yet, identity of terminology between
RFC 1213 and claimed limitation is not required. See In re Bond, 910 F.2d 831,
832 (Fed. Cir. 1990).
Appellant argues that RFC 1213 fails to disclose the coined terms “object
identity” and “networked object.” App. Br. 25-32. We are not persuaded and refer
to the above Claim Construction section for the broadest, reasonable construction
of these terms. There, we found that an object identity includes a characteristic by
which an object is recognized, including a name given to an object or its identity
(e.g., ID) for an object. Based on this interpretation, we agree that RFC 1213
discloses an object identifier, such as an object’s name. Ans. 8-9, 22-23 (citing
RFC 1213, Section 4, p. 9), 67. For example, the Examiner finds RFC 1213
discloses a particular object has the assigned name “system 3” or “system 4,” and
this name is an object identifier that specifies the object type. See Ans. 8 (citing
RFC 1213, p. 14). Additionally, these examples also include OBJECT-TYPEs
named sysUpTime and sysContact. See id. As further examples, RFC 1213
discusses object types named udpEntry and ipAddrEntry. Ans. 9-10, 17, 41 (citing
RFC 1213 p. 53); see also Ans. 5 (citing to Request, Ex. H, pp. 24-26 (citing RFC
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

21
1213, pp. 31)). Both of these, “udpEntry” and “idAddrEntry,” are names given a
particular type of object or are characteristic of an object.
Appellant also asserts that the numerical string in RFC 1213 cannot be the
recited “object identity.” App. Br. 50. However, the above examples presented by
the Examiner do not discuss a numerical string. As such, this argument is not
consistent with the rejection.
Appellant next argues that the concepts of the recited “information entries
and attributes” are not found in RFC 1213 and that there is no associating of an
object with any value. App. Br. 50-52, 54. Appellant also asserts that RFC 1213
would only associate the object with a single value and not both “information
entries and attributes.” App. Br. 50, 54-55. We disagree. These arguments appear
to relate to Appellant’s previous assertion that in RFC 1213, four clauses (i.e.,
SYNTAX, ACCESS, STATUS and DESCRIPTION) define the object but fail to
include information about the device or a value of an object. App. Br.14-16.
However, claim 9 does not restrict “an object identity” or the recited
“information entries and attributes” to information about a device or value of an
object. Appellant provides inadequate support for construing the term, “attributes”
as “characteristics of an object” (App. Br., Evidence App’x IX.5, p. 7), or the term,
“information entries” as “values of ‘attributes” (App. Br., Evidence App’x IX.5, p.
2-3, 7). The’178 patent does not define these terms. See generally the’178 patent.
Figure 5D and its accompanying disclosure also fails to label the “Name” or
“Password” as attributes and has no items identified as information entries.
The’178 patent 6:49-7:17; Fig. 5D. Appellant further argues that the “associating”
step requires the individual information entries be for the corresponding individual
attribute. See App. Br. 55. However, we see no such limitation in claim 9.
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

22
Like the ’178 patent discusses and as the Examiner notes (Ans. 22, 75), RFC
1213 states that an object has a name that specifies the object type, a syntax, and
encoding. Compare RFC 1213, Section 4, p. 9 with the’178 patent 8:26-27. RFC
1213 discloses an object identity, such as the name “udpEntry,” and that this
identity includes associated information entries and attributes (e.g., SYNTAX,
ACCESS, STATUS, DESCRIPTION, INDEX) with an object identity (e.g.,
udpEntry). See Ans. 9-10, 17, 41 (citing RFC 1213 p. 53).
Based on our above discussion, we find the Examiner’s position reasonable
and find that RFC 1213 discloses objects that have object identity with associated
information entries and attributes.
We further find that RFC 1213 discloses “a networked object,” given the
above-discussed broad, but reasonable interpretation. App. Br. 48, 52-54. To
reiterate, we determined that a “networked object” includes an object within or
transmitted over a network. As the Examiner explains (Ans. 5-6), RFC 1213
discloses network management framework for managing objects and discloses the
syntax and encoding are integral in how the object type is represented when being
transmitted on the network. See Ans. 5-6 (citing RFC 1213, Sections 2 and 4, pp.
2-3, 9). This discloses at least a portion of an object is within or transmitted over a
network. See Ans. 9, 24-25. Additionally, the Examiner discusses the udpEntry
OBJECT-TYPE demonstrates networked objects. See Ans. 9-10. Specifically,
RFC 1213 discusses the updEntry object identity represents a particular UDP
listener using an object in a TCP/IP network. See id.
Appellant also argues that the Examiner is confusing a UDP listener or
hardware, which is connected with the network, with an object. App. Br. 55-56.
Based on our claim construction and as discussed above, we disagree.
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

23
Appellant next argues that RFC 1213 fails to teach the step of “storing said
information entries and attributes in a virtual information store[.]” App. Br. 58-60.
Based on our above discussion, we find that RFC 1213 discloses storing object
information that includes an object identity, such as a name (e.g., system 7 or
udpEntry for example), and information entries and attributes, such as syntax,
access, status, description, and encoding, are stored within a virtual information
store (e.g., a Management Information Base or MIB). Ans. 10-12, 17, 38-40
(citing RFC 1213, pp. 9, 13-14), 79. RFC 1213 thus discloses storing the
information entries and attributes, as broadly as recited, in a virtual information
store.
Appellant further argues that RFC 1213 does not disclose, “assigning a
unique network address to said object identity.” App. Br. 60-61. We disagree.
The Examiner discusses in RFC 1213 the object identity, udpEntry, contains
information about a particular current UDP listener, including the UDP end-points
where the application accepts datagrams, and each listener through the named
udpEntry object type is assigned an address. Ans. 12, 41-42, 80 (citing RFC 1213,
p. 53). Specifically, the object type named udpEntry includes udpLocalAddress
within the INDEX and SYNTAX udpEntry has a SEQUENCE with an IpAddress.
We further note that there is a conflict between the written description and
the claims of the ’178 patent. That is, the ’178 patent discusses assigning an
address to an object – not an object identity. The’178 patent 8:12-21. Given this
difference between the claims and the written description, we construe this
limitation broadly, but reasonably.
Appellant argues that RFC 1213 fails to disclose the addresses of the object,
a process that uses the object identifier to locate an object, setting data associated
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

24
with an object, getting data associated with an object, or an object that contains
data. App. Br. 41. Appellant’s arguments are not commensurate with the scope of
claim 9. See App. Br. 38-39.
Lastly, Appellant further argues that RFC 1213 is irrelevant to the claimed
invention and are used for a different purpose than the ’178 patent. App. Br. 21-
22; Reply Br. 2. We are not persuaded. Analogous art arguments are irrelevant to
anticipation rejections. See Twin Disc, Inc. v. United States, 231 USPQ 417, 424
(Cl. Ct. 1986).
2. Claims 10-13
In the Appeal Brief, claims 10-13 are not separately argued. App. Br. 43,
61. For the first time in the Reply Brief, Appellant introduces a new argument
regarding claim 2, which includes similar limitations to claim 10. Reply Br. 19-20,
33 (referring to claims 2-7 for claims 10-16). Such an argument is untimely and
waived. See Borden, 93 USPQ2d at 1474.
Nonetheless, to the extent claim 2 and thus claim 10 is considered argued,
we refer back to our discussion in claim 9 concerning how the associating step
occurs. Specifically, we stated RFC 1213 discloses objects that have object
identifier (e.g., names, such as udpEntry) along with information entries and
attributes (e.g., SYNTAX, ACCESS, STATUS, and DESCRIPTION that includes
textual identification of contact person for managed node). See Ans. 13, 43-4674-
75 (citing RFC 1213, pp. 10, 12-14, 53). RFC 1213 further discusses that the
encoding of the object type is represented using the object type’s syntax and
encoding is how the object type is represented when being transmitted on the
network. RFC 1213, p. 9. Thus, RFC 1213 discloses associating a name, a syntax,
and encoding for the object identity as recited in claim 10.
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

25
3. Claim 15
Claim 15 recites “utilizing said unique network address to identify and route
said object identity on the Internet,” similar to claim 7. The Examiner maps the
named ipAddrEntry and ipAdEntAddr object types to this limitation, stating that
the object type describes the addressing information for one of the ipAddrTable
entity’s IP addresses and uses an IP address to identify and route the associated
object identity. See Ans. 48-49, 64-65 (citing RFC 1213, pp. 31, 53), 81.
When addressing claim 7, Appellant argues that RFC 1213 fails to disclose
using the address of the object identity on the Internet. App. Br. 43-44, 62-63;
Reply Br. 21-25. Appellant argues that ipAddrEntry is a pre-assigned IP address to
a physical device, which is not routed on the Internet. App. Br. 43-44. We are not
persuaded. Appellant provides insufficient evidence that ipAddrEntry is a
pre-assigned IP address for a physical device. Arguments do not take the place of
evidence in the record. Cf. In re Geisler, 116 F.3d 1465 (Fed. Cir. 1997).
Additionally, claim 15 does not recite an active step of identifying or routing
the object identity on the Internet. Rather, the claim recites using the network
address “to identify and route said object identity on the Internet.” Such
limitations are intended use or functional limitation, requiring only the ability to
perform such a function. As explained by the Examiner, RFC 1213 states the
object name or identity, ipAddrEntry, represents or describes “the addressing
information for one of this entity’s IP address.” RFC 1213, p. 31. The Examiner
states that “this entity” is the ipAddrTable entity. RFC 1213 states the entity’s
addressing information has an IP address and shows an IpAddress for
IpAddEntry’s SEQUENCE. See RFC 1213, p. 31. Given that the object identity,
ipAddrEntry, is assigned an Internet Protocol address, RFC 1213 discloses the
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

26
ability to use these network addresses to identify and route at least part of an object
identity on the Internet.
4. Claim 16
Claim 16 recites “utilizing said unique network address of said object
identity to perform Operations, Administration, Maintenance & Provisioning
(OAM&P) functions.” The ’178 patent discusses non-limiting OAM&P examples,
such as security management, fault management, configuration management,
performance management, and billing management. The ’178 patent 9:1-6. The
Examiner finds RFC 1213 discloses performing many functions, including
providing contact, administration, location, and service information regarding a
manage node using named object types, such as sysContact, sysName,
sysLocation, and sysServices. Ans. 16 (citing RFC 1213, pp. 1514-15, 27, 37).
Appellant asserts that the object types are a MIB variable or a device feature
and do not provide functions. App. Br. 63-64. Appellant also asserts that the MIB
variable has no unique network address. App. Br. 64.
Given that the record has not demonstrated the phrase, “OAM&P,” is
defined or has a particular meaning in the art at the time of the invention, we are
not limited by the functions discussed in the Specification. We agree with the
Examiner that some of the discussed named object types perform OAM&P
functions. We further disagree with Appellant that some of the named types fail to
have associated network addresses as previously discussed, such as udpEntry. See
RFC 1213, p. 53. Yet, the Examiner and Request do not discuss udpEntry as
performing an OAM&P function. See Ans. 16; Request, Ex. H, pp. 34-36. As to
the named types the Examiner has mapped to claim 16’s limitations (i.e.,
sysContact, sysName, sysLocation, sysServices, ipInAddrErrors, ipRouteAge), the
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

27
only one that describes using network addresses is ipInAddrErrors. See RFC 1213,
p. 27. This named object type contains a description discussing using IP addresses
in the headers of datagrams – not a network address for its object identity (i.e., the
name ipInAddrErrors). See id. Thus, this example does not show the ability to use
the object identity’s network address to perform OAM&P functions. Based on the
record, we are persuaded that the Examiner erred in the § 102 rejection of claim 16
based on RFC 1213.
However, the limitations in claim 16 find similarities to those in claim 15.
As noted above when addressing claim 15, RFC 1213 discloses using the object
identity’s unique network address (e.g., udpEntry’s associated IP address) to
perform the functions of identifying and routing the object identity on the Internet.
At a minimum, these functions are “operations” and “provisioning” functions, and
RFC 1213 shows the ability to perform these functions. As such, RFC 1213
demonstrates using the unique network address of an object identity to perform
some OAM&P functions. Given this line of reasoning was not presented in the
Request or proposed by the Examiner, we designate this rejection a new ground.
See Q.I. Press Controls, B.V. v. Lee, 2014 WL 2565995, at *8 (Fed. Cir. June 9,
2014).
C. Obviousness Rejection Based on RFC 1213 and Relihan
To the extent that RFC 1213 does not disclose the World Wide Web as
recited, the Examiner further rejects claims 9-16 under § 103 based on RFC 1213
and Relihan. Ans. 17-19. Relihan teaches transferring objects in a network,
including the World Wide Web, and the Examiner provides sufficient reasoning
with factual underpinnings to support the conclusion that combining the references
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

28
would have been obvious to one of ordinary skill in the art. Id. (citing Relihan 17,
21, 24).
Appellant incorporates the arguments of Section VII.E. App. Br. 62. Except
for claim 16, we are not persuaded and refer above for details. Appellant further
argues that RFC 1213 and Relihan do not render claim 9 obvious and that there is
no reason to combine these references. App. Br. 44-45, 62-63. We disagree.
While Appellant argues that Relihan fails to disclose transferring objects with
information entries and attributes, Appellant does not show that the combination of
Relihan and RFC 1213 also fails to disclose or suggest the disputed features.
Because the Examiner’s rejection is based on the combination of Relihan and RFC
1213 rather than on Relihan alone, Appellant’s attack on Relihan individually fails
to show nonobviousness. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
Also, as stated previously, claim 9 recites “an object identity with
information entries and attributes” – not an object. Given that the object identity,
ipAddrEntry, in RFC 1213 is assigned an Internet Protocol address, RFC 1213 at
least suggests that its network address is used for identifying and routing on the
Internet. See Ans. 17, 64-65. Moreover, Relihan teaches that the World Wide
Web is “an Internet-wide distributed hypertext system . . . .” Relihan 17. This
further suggests that it would have been obvious to one of ordinary skill in the art
to have combined the references, contrary to Appellant’s assertion. App. Br. 45,
62-63.
Specifically, for claim 14, Appellant argues “the Examiner agreed that
Relihan does not disclose any of the steps of claim 14, and cited Relihan solely for
having disclosed the World Wide Web. Therefore, Relihan admittedly does not
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

29
meet the limitations of claim 14.” App. Br. 63. Appellant further argues that
Relihan does not teach an “object identity,” a “networked object,” or “object
routing” in claim 9. App. Br. 63. As above, these arguments attack Relihan
individually, do not consider the rejection as a whole, and fail to show
nonobviousness.
Additionally, the Examiner relies on the proposed rejection in the Request.
Ans. 5. In the proposed rejection, both RFC 1213 and Relihan are relied upon to
teach the disputed limitation. Request, Ex. H 32. Here, Relihan teaches using the
World Wide Web within Internet systems, suggesting when combined with RFC
1213 that any object identity having an assigned network address will be used to
identify and route the identity on the World Wide Web. Id. When considering the
collective teachings of RFC 1213 and Relihan, we find that the rejection contains a
reason with some rational underpinning for combining the references that
predictably results in the claimed “utilizing said unique network address to identify
and route said object identity on the World Wide Web.” See Ans. 17-19, 64-65.
Regarding claim 16, the Examiner does not additionally rely on Relihan to
teach its limitation. Ans. 17. Above, we found that the portions of RFC 1213
relied upon by the Examiner do not disclose using the unique network address of
the object identity to perform OAM&P functions. The Examiner has not further
relied upon RFC 1213 or Relihan to teach or suggest performing these functions
and cure this deficiency. See id. Accordingly, for the same reasons, we will not
sustain the obviousness rejection of claim 16.
However, we newly reject claim 16 under § 103 based on RFC 1213 and
Relihan using the above analysis under this section addressing what would have
been obvious to an ordinarily skilled artisan based on teachings of Relihan and
Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

30
RFC 1213 and also the analysis under the anticipation section for claim 16
addressing how RFC 1213 teaches using a unique network address of the object
identity to perform OAM&P functions.
D. Dr. Markus W. Covert Declaration (“the Covert Declaration”)
Appellant argues that the Covert Declaration is undisputed. App. Br. 21.
We disagree. The Examiner has discussed issues with the declaration, finding the
Covert Declaration did not address the claim limitations. Ans. 19.
Appellant further contends that the Covert Declaration provides evidence
concerning what RFC 1213 is not and that Relihan is irrelevant. App. Br. 12, 15,
18, 24 (citing Covert Decl. ¶¶ 6-13). We are not persuaded. For example, the
Covert Declaration discusses many unclaimed features, including automating the
flow of Web transactions over an end-to-end channel, routing encapsulated data
structures atop the Internet and Web, a powerful platform for Web applications and
service-on-demand over the Web, cloud computing, and an intelligent service
network atop the Web. See the Covert Declaration ¶¶ 8-10, 14.
Additionally, we note that Dr. Covert has a background in bioengineering,
computational biology, and bioinformatics and not in object routing or MIBs. See
the Covert Declaration ¶¶ 2-4. Thus, the Covert Declaration does not establish Dr.
Covert has sufficient qualifications to discuss the technology covered by RFC 1213
and Relihan. See the Covert Declaration ¶¶ 7-9, 11-13, 15, 17. Moreover, Dr.
Covert has no legal qualifications, yet renders legal opinions concerning
obviousness. See the Covert Declaration ¶ 17.
Because the Covert Declaration is given little weight, the evidence taken as a
whole supports the Examiner’s conclusion of obviousness for claims 9-15.

Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

31
E. Due process Considerations
Appellant argues that using the broadest reasonable construction for the
claims is “unconscionable and deprives the Patent Owner of property and due
process[.]” App. Br. 64. We disagree. The courts have fully supported the
broadest reasonable construction for reexamination proceedings. See In re Trans
Texas Holding Corp., 498 F.3d 1290, 1298 (Fed. Cir. 201) (quoting from In re
Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)); see also In re Swanson, 540
F.3d 1368, 1377 (Fed. Cir. 2008) (quoting from In re Etter, 756 F.2d 852,856 (Fed.
Cir. 1985)) (indicating that the reexaminations are conducted according the
procedures established for initial examination).
Moreover, until a reexamination certificate issues canceling all claims,
Appellant (i.e., the Patent Owner) can enforce and has enforced its property right
in the ’178 patent within the courts. See, e.g., App. Br. 1-3.
Lastly, we do not find Patent Owner has been denied due process. Patent
Owner can and has participated in the reexamination proceeding and exercised its
right to appeal the Examiner’s decision to the Board.

IV. CONCLUSIONS
Under § 102, Appellant did not demonstrate that the Examiner erred in
determining that RFC 1213 anticipates claims 9-13 and 15 but erred in determining
RFC 1213 anticipates claims 1-5, 7, and 16.
Under § 103, Appellant did not demonstrate that the Examiner erred in
determining that RFC 1213 and Relihan render claims 9-15 obvious but erred in
determining RFC 1213 and Relihan render claims 1-7 and 16 obvious.

Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

32
We reach this conclusion for claims 1-7, because as noted above, applying
prior art to these claims would be speculative.
Claim 16 is newly rejected under 35 U.S.C. §§ 102 and 103.

V. TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b) for claim 16. This section provides that “[a] new ground of rejection…
shall not be considered final for judicial review.”
Section 41.50(b) also provides that 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 proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

Requests for extensions of time in this ex parte reexamination proceeding
are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

Appeal 2013-004304
Patent 5,778,178
Reexamination Control 90/010,346

33

FOR PATENT OWNER:

Lakshmi Anunachalam
WebXchange, Inc.
222 Stanford Avenue
Menlo Park, CA 94025

FOR THIRD PARTY REQUESTER:

O’Brien Jones PLLC
1951 Kidwell Drive
Suite 740
Tyson’s Corner, VA 22182