Ex Parte Angeles

Board of Patent Appeals and Interferences

Mar 18, 2009

10013827 (B.P.A.I. Mar. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PATRICK ANGELES
____________________

Appeal 2007-3567
Application 10/013,8271
Technology Center 2400
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Decided:2 March 18, 2009
____________________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
CAROLYN D. THOMAS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 Filed on Dec. 11, 2001. The real party in interest is Acquire, Inc.
2 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
In a paper filed June 02, 2008, Appellant requests a rehearing under
37 C.F.R. § 41.52 from the Opinion of the Board of Patent Appeals and
Interferences (hereinafter Board) dated March 31, 2008. In the
Opinion, we affirmed the Examiner’s rejection of claims 31 through 64.
Appellant identifies that the Board erred, thereby misapprehending or
overlooking the separate arguments presented for the various claim
groupings in the Brief. Specifically, at page 1 of the Request, Appellant
respectfully requests a rehearing on the record to address the absence of a
substantive analysis regarding claims 47-62, 63, and 64 in the Board
Decision.
We have carefully considered Appellant’s remarks.3 We have
also reviewed the Opinion in light of Appellant’s request, and we have
found no error in the analysis or logic set forth therein with respect to
independent claims 47 and 64. Therefore, we have made no change to
the Opinion with respect to claims 47 and 64.
However, we have found that Appellant has identified an error in our
treatment of independent claim 63, which we grouped as standing of
falling with independent claim 31. We have found Appellant’s
argument to be persuasive of error in the Examiner’s initial showing
of obviousness. Upon further consideration, we agree with Appellant
that independent claim 63 recites “means plus function” limitations,
which require interpretation in light of the corresponding structure,
acts, and materials as disclosed in Appellants’ Specification. Since

3 Request for Rehearing at pages 1-2.
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Appellant has provided the requisite correspondence in the Summary
of the Claimed Invention, the Examiner should have taken the
opportunity in the Answer to particularly clarify how the proffered
combination teaches or suggests identified structures. From our
review of the Examiner’s stated rejection in the Answer, we agree
with Appellant that the Examiner failed to address the claim, as
properly interpreted. Therefore the Examiner has failed to set forth a
prima facie case of obviousness with respect to independent claim 63.
Thus, we have hereby modified our prior Opinion with respect to the
claim 63 for the reasons that follow.
Appellant contends that the Board overlooked or misapprehended
Appellant’s arguments by not addressing all the points of contention raised
during appeal. Particularly, Appellant states the following:
Most respectfully, the method claims differ from the apparatus
claims, such that analysis of one is not the same as the analysis for
claims 47, 63, and 64. Unlike the method claims, claim 47 requires a
proxy agent configured..., and claims 63 and 64 require particular
means for.

The art does not show these claimed elements, as explained in
the Brief pp 30-35. Attention is respectfully drawn to Appellant's
Figure 1, where distinct proxy agents are illustrated, and to the
accompanying text in the specification where these are discussed. The
claimed proxy agent is disclosed as structurally distinct in its
configuring and unlike the structure in the cited art. While Appellant
realizes that one cannot import limitations from the specification into
the claims, as to claim 47 and especially as regards the "means for" in
claims 63-64, the particularly claimed apparatus are claimed and have
not been shown as obvious in the art.

(Req. Reh’g 2.)
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PRINCIPLES OF LAW
A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See 37
C.F.R. § 41.37(c)(1)(vii).
A general allegation that the claims define a patentable invention
without specifically pointing out how the language of the claims patentably
distinguishes them from the references does not constitute a persuasive
response. See 37 C.F.R. § 1.111(b).

ANALYSIS
Claims 47 and 64
As set forth above, Appellant’s argument points out that the apparatus
of claim 47 differs from the method of claim 31 in that claim 47 requires a
proxy agent configured to perform the step of intercepting, as recited in
claim 31. Similarly, Appellant alleges that apparatuses of claims 63 and 64
differ from the method of claim 31 in that these claims are require a means
plus function analysis whereas claim 31 does not. In a nutshell, this
rehearing request is predicated upon the allegation that the original Opinion
failed to particularly address how the combination of Papierniak and Gobin
teaches or suggests the limitation of a proxy agent configured for
intercepting, recited in independent claims 47, 63 and 64, as previously
argued in the Appeal Brief.
Firstly, we note that nowhere in the Appeal Brief did Appellant even
attempt to specifically point out how the language in claims 47 and 64
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patentably distinguishes from the cited text of Papierniak and Gobin.
Appellant presents no arguments that compares and/or contrasts the claim
limitations with the teachings of the proffered combination. Rather,
Appellant’s discussion of independent claims 47 and 64 merely indicates
that they recite a proxy agent for intercepting HTTP transmissions, and
generally alleges that the proffered combination does not teach the recited
proxy agent. As our governing rule indicates, such gratuitous statements and
general allegations will not be considered as specific arguments for separate
patentability of the claims.
Secondly, despite Appellant’s failure to particularly distinguish claims
47 and 64 on the basis of their alleged recitation of the proxy agent, the
original Opinion specifically points out how the proffered combination
teaches that limitation. We particularly found the following:
Gobin teaches that upon receiving an HTTP request from a customer,
a proxy agent of a web service provider determines whether the
customer is authorized to access the requested service before said
customer can be allowed to access the requested service. (FF 4-5.)
Therefore, we find that the ordinarily skilled artisan would have
appreciated Gobin’s suggestion of using a proxy agent to intercept an
HTTP transmission such as the URL request initiated by Papierniak’s
customer to predictably result in a proxy agent that analyzes the
captured user information (e.g., IP address, ID, DNS) to determine
whether the user is authorized to access the requested service from
the web server. Further, this combination of teachings would have
predictably resulted in identifying the nature of the user’s activities on
the web server, as suggested by Papierniak.

(Op. 11.) (Emphasis added.)

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Gobin teaches a proxy agent that intercepts and analyzes the URL
request to determine the customer’s access rights in relation to the
web server. Additionally, Papierniak teaches examining the collected
data including the client’s IP address and login ID to determine the
nature of the client’s activity of the provider’s website. Therefore,
intercepting a URL request, examining it, and determining its nature
are prior art elements that are being used in a conventional e-
commerce monitoring system to perform their established functions to
predictably result in the claimed limitations in question.

(Op. 12.)

Therefore, contrary to Appellant’s arguments, the original Opinion did
address how the combination of Papierniak and Gobin teaches the proxy
agent recited in independent claim 47. Thus, Appellant’s argument that the
proffered combination does not teach the cited limitation (Req. Reh’g 2) is
unavailing. As set forth in the Opinion, we are satisfied that the proffered
combination teaches a proxy agent that analyzes the captured user
information (e.g., IP address, ID, DNS) to determine whether the user is
authorized to access the requested service from the web server. (Op. 11.)
Consequently, we maintain our position that Appellant has not shown that
the Examiner erred in concluding that the combined disclosures of
Papierniak and Gobin render claims 31 through 62 and 64 unpatentable
under 35 U.S.C. § 103(a).
Further, we note that independent claim 64 does not expressly recite
any limitations using “means for . . .” Therefore no treatment under 35
U.S.C. § 112, sixth paragraph is required. Additionally, we note that the
claim does not even recite a proxy agent. Therefore, Appellant’s arguments
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regarding claim 64 are not commensurate with the scope of the claim. They
are consequently not persuasive.
Claim 63
Regarding the rejection of claim 63, upon taking a fresh look at
the record before us, we find that the Examiner did not particularly
address the means plus function limitations recited in independent
claim 63, as required by 35 U.S.C. § 112, sixth paragraph. We
therefore agree with Appellant’s argument in the Brief that the
Examiner has failed to properly establish a requisite showing for
prima facie case of obviousness against claim 63. Therefore, we pro
forma reverse the Examiner’s decision rejecting claim 63 as being
unpatentable over the combination of Papierniak and Gobin.

CONCLUSION
In view of the foregoing discussion, we grant Appellant’s request for
rehearing. We deny Appellant’s request with respect to making any change
thereto with respect to claims 47 and 64. However, we have modified the
original Opinion by reversing the Examiner’s rejection of claim 63.
Therefore, our decision, dated March 31, 2008, is hereby modified to affirm
the rejection of claims 47-62 and 64 and reverse the rejection of claim 63.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

GRANTED
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PETER K. TRZYNA, ESQ.
P O BOX 7131
CHICAGO, IL 60680