Ex Parte Betts et al

Patent Trial and Appeal Board

Apr 29, 2013

11132708 (P.T.A.B. Apr. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHRISTOPHER BETTS and TONY ROGERS
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Appeal 2010-009018
Application 11/132,7081
Technology Center 2400
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Before JOSEPH F. RUGGIERO, MARC S. HOFF, and
CAROLYN D. THOMAS, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-6, 8-14, 17-20, and 22-33.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

1 The real party in interest is Computer Associates Think, Inc.
2 Claims 7, 15, 16, and 21 have been cancelled. Appellants’ statement that
claims “1-6, 8-20, and 22-33” are pending (App. Br. 5) appears to be
erroneous in view of the Grounds of Rejection to be Reviewed on Appeal
(App. Br. 10) and Appendix A (App. Br. 22-26).
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Appellants’ invention is a method and apparatus for web service
communication. The apparatus includes means for receiving a first
communication requesting a web service, the first communication including
a first address identifying the requested web service (Spec. 8). The apparatus
further includes means for locating a second address associated with the first
address, the second address being stored in a Universal Discovery,
Description and Integration (UDDI) repository (id.), and means for
providing a second communication to a requesting application, the second
communication including the second address (Spec. 7-8).
Claim 1 is exemplary of the claims on appeal:
1. An apparatus for web service communication, comprising:
a central processing unit implementing a proxy server adapted to
receive a first communication requesting a web service, the first
communication including a first address identifying the requested web
service;
a Universal Discovery, Description and Integration (UDDI) repository
for storing web service addresses accessible by the proxy server; and
wherein the proxy server locates a second address associated with the
first address, and sends a second communication including the second
address.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Brittenham US 2002/0178244 A1 Nov. 28, 2002
Zhao US 2003/0191802 A1 Oct. 9, 2003
Sorvari US 2004/0043758 A1 Mar. 4, 2004
Brown US 2005/0209984 A1 Sep. 22, 2005
Pruitt US 2007/0226294 A1 Sep. 27, 2007
(filed May 6, 2003)
Claims 1-6, 8, 9, 24, 25, and 27 stand rejected under 35 U.S.C. §
102(e) as being anticipated by Pruitt.
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Claims 10-14, 17-20, and 29-33 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Pruitt in view of Sorvari and Zhao.
Claims 22, 23, and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pruitt in view of Brown.
Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pruitt in view of Brittenham and Brown.
Claim 9 stands further rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed Nov. 11, 2009), the Reply Brief (“Reply Br.,” filed Feb.
23, 2010), and the Examiner’s Answer (“Ans.,” mailed Dec. 24, 2009) for
their respective details.

ISSUES
Appellants argue that Pruitt does not teach “a proxy server adapted to
receive a first communication requesting a web service, the first
communication including a first address identifying the requested web
service” (App. Br. 11). Appellants further contend that Sorvari and Zhao fail
to remedy this deficiency of Pruitt (App. Br. 15).
With respect to the § 101 rejection, the Examiner finds that the
claimed apparatus may be implemented in the form of a software application
and can be run on a server (Ans. 21), and is therefore non-statutory because
it does not require hardware structure (id.). Appellants contend that the
invention “may be implemented in the form of a software application
running on a computer system” (App. Br. 18 (citation omitted) (emphasis
omitted)).
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Appellants’ contentions present us with the following issues:
1. Does Pruitt teach a proxy server adapted to receive a first
communication requesting a web service, the first communication including
a first address identifying the requested web service?
2. Does claim 9 recite subject matter that is not patent-eligible under
35 U.S.C. § 101?

PRINCIPLE OF LAW
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
(quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)).

ANALYSIS
35 U.S.C. § 102 REJECTION OF CLAIMS 1-6, 8, 9, 24, 25, AND 27
The Examiner finds that Pruitt teaches a proxy server adapted to
receive a first communication request, the first communication including a
first address identifying the requested web service (Ans. 4). The Examiner
cites Pruitt’s ¶¶ [0051], [0075], and [0078] in support of this finding (id.). In
the Response to Argument, the Examiner states that Pruitt discloses “using a
client address (see par 0063) to identify the service location (requested web
service see par 0037)” (Ans. 15).
We do not agree with the Examiner’s findings. Paragraphs [0051] and
[0078] do not mention addresses. Paragraphs [0075] and [0037] disclose
only the sending of the client’s address. Paragraph [0063] discloses a client
requesting a “service location.” This request is disclosed to include “client
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data, such as client address, geography, location, priority, digital
identification, preferences, security clearance, policies, and client
characteristics” (¶ [0063]). Pruitt provides the example where “client 225
requests a book inventory service from UDDI server 405” (id.). While this
disclosure is sufficient to establish “a first communication request[] [for] a
web service,” it fails to teach the claimed “first address identifying the
requested web service” (claim 1 (emphasis added)).
We find that Pruitt does not teach all the limitations of independent
claims 1 and 9. We will not sustain the Examiner’s § 102 rejection of claims
1-6, 8, 9, 24, 25, and 27 as anticipated by Pruitt.
35 U.S.C. § 103 REJECTION OF CLAIMS 10-14, 17-20, AND 29-33
As explained supra in our analysis of the rejection of claim 1, we find
that Pruitt does not teach “receiving . . . [a] first communication including a
first address identifying the requested web service,” as recited in
independent claim 10. We agree with Appellants that Sorvari and Zhao fail
to remedy the deficiency of Pruitt.
Accordingly, the Examiner’s combination of references fails to teach
all the limitations of claims 10-14, 17-20, and 29-33. We will not sustain the
Examiner’s § 103 rejection.
35 U.S.C. § 103 REJECTIONS OF CLAIMS 22, 23, 26, AND 28
These claims depend from claim 1, the rejection of which we do not
sustain. We find that Brown and Brittenham do not remedy the deficiencies
of Pruitt. Accordingly, we will not sustain the § 103 rejections of claims 22,
23, 26, and 28, for the same reasons given with respect to the § 102 rejection
of claim 1, supra.
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35 U.S.C. § 101 REJECTION OF CLAIM 9
We do not agree with the Examiner’s conclusion that claim 9 recites
nonstatutory subject matter because Appellants disclose that the methods
and apparatus may be implemented in the form of software applications
(Ans. 3). We agree with Appellants that the Specification discloses that the
“apparatus and method of the present disclosure may be implemented in the
form of a software application running on a computer system” (App. Br. 18
(quoting Spec. 7)). While the Specification also discloses that the software
application may be stored on computer readable media (Spec. 7), it does not
disclose, contrary to the Examiner’s assertion, that it may be embodied as a
signal (Ans. 21).
We find that the Specification does not disclose a transitory,
propagating signal, and does not disclose a software per se embodiment. We
conclude that the Examiner erred in rejecting claim 9 under 35 U.S.C. § 101.
We will not sustain the rejection.

CONCLUSIONS
1. Pruitt does not teach a proxy server adapted to receive a first
communication requesting a web service, the first communication including
a first address identifying the requested web service.
2. Claim 9 does not recite subject matter that is not patent-eligible
under 35 U.S.C. § 101.

ORDER
The Examiner’s rejection of claims 1-6, 8-14, 17-20, and 22-33 is
reversed.
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REVERSED

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