Ex Parte Boulia

Board of Patent Appeals and Interferences

Mar 25, 2008

09619178 (B.P.A.I. Mar. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DONALD J. BOULIA
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Appeal 2007-2305
Application 09/619,1781
Technology Center 2100
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Decided: March 25, 2008
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Before ANITA PELLMAN GROSS, ALLEN R. MACDONALD, and
MARC S. HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1-31. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellant’s invention relates to method, system, and computer
program product for sending Transmission Control Protocol (TCP) messages

1 Application filed July 19, 2000. The real party in interest is International
Business Machines Corporation.
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through a network using the HyperText Transfer Protocol (HTTP) and
HTTP-based systems (Specification 1).
Claim 1 is exemplary:
1. A computer program product for sending Transmission Control
Protocol (TCP) messages through HyperText Transfer Protocol
(HTTP) systems, the computer program product embodied on one or
more computer-readable media and comprising:
computer-readable program code means for establishing a send
channel from a first component on a client side of a network, through
one or more HTTP-based systems, to a second component on a remote
side of the network;
computer-readable program code means for establishing a
receive channel from the first component, through the one or more
HTTP-based systems, to the second component, wherein the receive
channel is distinct from the send channel;
computer-readable program code means for establishing a first
TCP connection from a client on the client side to the first component;
computer-readable program code means for establishing a
second TCP connection from the second component to a target server
on the remote side;
computer-readable code means for transmitting client-initiated
TCP requests from the client to the target server by packaging the
client-initiated TCP requests into HTTP messages which are
transmitted on the send channel; and
computer-readable program code means for transmitting server-
initiated TCP requests from the target server to the client by
packaging the server-initiated TCP requests into HTTP messages
which are transmitted on the receive channel.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Erickson US 6,412,009 B1 Jun. 25, 2002
Inala US 6,442,590 B1 Aug. 27, 2002
Fielding, R. et al. (Fielding) “Hyper Text Transfer Protocol Specification
1.1” RFC 2068 (1997), http://ftp.ics.uci.edu/pub/ietf/http/rfc2068.txt.
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Claims 1-4, 8, 10-13, 17, 19-22, 26, 28, 29, and 31 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Erickson in view of
Inala.
Claims 5, 9, 14, 18, 23, 27, and 30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Erickson in view of Inala and Fielding.2
Appellant contends that the Examiner erred in his rejections because,
in Appellant’s view, Erickson teaches away from the claimed invention by
establishing a single connection for all data transmissions (Br. 13). The
Examiner contends the claims are properly rejected because Inala teaches a
receive channel distinct from a send channel, and in the Examiner’s opinion
modifying Erickson in view of Inala would have resulted in a simpler and
more cost-effective system (Ans. 5).
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this decision. Arguments that Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The principal issue in the appeal before us is whether Erickson
teaches away from Appellant’s claimed invention including distinct send and
receive channels such that the person having ordinary skill in the art would

2 The rejection of claims 6, 7, 15, 16, 24, and 25 was withdrawn in the
Examiner’s Answer at pages 21-22.
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not have been motivated to combine Erickson and Inala to arrive at the
instant invention.

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellant, he has invented a method, system, and
computer program product for sending Transmission Control Protocol (TCP)
messages through a network using the HyperText Transfer Protocol (HTTP)
and HTTP-based systems (Specification 1).
2. A send channel is established from a first component on a client
side of a network connection, through one or more HTTP-based systems, to
a second component on a remote side of a network connection (Specification
5). Client-initiated TCP requests are transmitted on the send channel (id.).
3. A receive channel, distinct from the send channel, is established
from the first component, through the one or more HTTP-based systems, to
the second component (Specification 5). Server-initiated TCP requests are
transmitted on the receive channel (id.).
Erickson
4. Erickson teaches supporting a legacy communications protocol
(Telnet) by providing a persistent HTTP tunnel for a persistent virtual
session (col. 2, ll. 41-43).
5. Erickson teaches that because only one connection is needed
during the communication flow, the present invention provides performance
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comparable to workstations connected through a LAN to a host system
(shown in Fig. 1) and responses that are less variable than response times of
prior art methods using translated HTML statements (col. 7, ll. 57-61).
Inala
6. Inala teaches a method and apparatus that enables real-time chat
capability that is URL-sensitive in real time such that individuals visiting a
URL may be detected and offered an opportunity to engage in chat with
other individuals visiting the same URL (col. 3, ll. 49-53).
7. In a preferred embodiment two HTTP connections are opened
to server 17. One connection is for sending data and one is for receiving
data (col. 8, ll. 30-32).
Fielding
8. Fielding teaches Internet standards for the HTTP/1.1 protocol
(Abstract).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The Examiner can satisfy
this burden by showing some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness. KSR Int’l. v.
Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)). Only if this initial burden is met does the burden of
coming forward with evidence or argument shift to the Appellant. Piasecki,
745 F.2d at 1472. Thus, the Examiner must not only assure that the requisite
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findings are made, based on evidence of record, but must also explain the
reasoning by which the findings are deemed to support the Examiner’s
conclusion.
The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1124 (Fed. Cir. 2000).
Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006). Where
the teachings of two or more prior art references conflict, the Examiner must
weigh the power of each reference to suggest solutions to one of ordinary
skill in the art, considering the degree to which one reference might
accurately discredit another. In re Young, 927 F.2d 588, 591 (Fed. Cir.
1991). If the proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, then there is no
suggestion or motivation to make the proposed modification. In re Gordon,
733 F.2d 900, 902 (Fed. Cir. 1984). Further, our reviewing court has held
that “[a] reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994); Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d 1085,
1090 (Fed. Cir. 1995).
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ANALYSIS
Appellant argues, inter alia, that the Examiner erred in rejecting
independent claims 1, 10, 19, 28, and 31 as being obvious over Erickson in
view of Inala, because Erickson teaches away from Appellant’s limitations
of distinct send and receive channels for the transmission of TCP requests.
Appellant alleges that Erickson’s disclosure describes the use of a single
connection for transmitting messages between a Web client and Web server
(col. 3, ll. 4-23), which Erickson characterizes as advantageous (FF 5). As a
result, Appellant concludes, the person having ordinary skill in the art would
not have been motivated to introduce multiple connections into Erickson’s
disclosed teachings (Br. 14).
The Examiner, in continuing to reject the claims as obvious over
Erickson in view of Inala, admits that Erickson “does not explicitly teach the
receive channel is distinct from the send channel” (Ans. 5), but argues that it
would have been obvious to modify Erickson to include the distinct send and
receive connections of Inala in order to “improve the efficiency of
transmission in term of cost (i.e., less hardware and cost associated therewith
may be required to support one-way communication, as contrasted with two-
way communication) and simplicity (i.e., one-way communication is often
easier to establish than two-way communication) required for the
connections” (Ans. 5). The Examiner argues that the common classification
of Erickson and Inala within the USPTO is further evidence in favor of
making the combination (Ans. 19).
We disagree with the Examiner. Erickson teaches that “[b]ecause only
one connection is needed during the communication flow, the present
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invention provides performance comparable to workstations connected
through a LAN to a host system (shown in Fig. 1) and responses that are less
variable than response times of prior art methods using translated HTML
statements” (FF 5, emphasis added).
The Examiner presents no rebuttal to Appellant’s position that
Erickson teaches away from establishing two distinct communication
channels, stating only that Inala is relied upon to teach two channels and that
Appellant may not show nonobviousness by attacking the references
individually (Ans. 17-18).
With respect to the Examiner’s statement regarding the motivation to
modify Erickson to include two distinct channels as suggested by Inala, it is
at best questionable that establishing two channels rather than one would be
more cost-efficient; it seems more likely that, as Appellant argues, such a
configuration would be more expensive, rather than less (Reply Br. 4). The
greater simplicity of one-way communication alleged by the Examiner (Ans.
5) is similarly speculative and unsupported. Finally, we find the common
USPTO classification of Erickson and Inala insufficiently persuasive to
overcome Erickson’s explicit teaching of one connection rather than two.
Because of the advantages of a single connection expressed in
Erickson, we find that a person of ordinary skill in the art would have been
led in the direction of establishing a single connection, which is divergent
from the two-connection path taken by Appellant. See In re Gurley, supra.
Because the Examiner has made no direct rebuttal to Appellant’s argument
that Erickson teaches away from the claimed invention, and because we find
the Examiner’s statement of reasons to combine Erickson with Inala to be
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unpersuasive, we conclude that the person having ordinary skill in the art
would not have been motivated to combine the Erickson and Inala references
in the manner proposed by the Examiner. With respect to claims 5, 9, 14,
18, 23, 27, and 30, we have reviewed Fielding, and find that it does not
supply the motivation to modify Erickson which we consider to be lacking
from Inala. We conclude that the Examiner erred in rejecting the claims
under 35 U.S.C. § 103.
We therefore reverse the rejection of claims 1, 10, 19, 28, and 31, as
well as claims 2-5, 8, 9, 11-14, 17, 18, 20-23, 26, 27, 29, and 30 dependent
therefrom.
CONCLUSION OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-5, 8-14, 17-23, and 26-31. On the record before us,
claims 1-5, 8-14, 17-23, and 26-31 have not been shown to be unpatentable.

DECISION
The Examiner’s rejection of claims 1-5, 8-14, 17-23, and 26-31 is
reversed.

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REVERSED

eld

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