Ex Parte Brewer et al

Board of Patent Appeals and Interferences

Mar 20, 2007

09521827 (B.P.A.I. Mar. 20, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TONY M. BREWER and GREGORY S. PALMER
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Appeal 2006-3220
Application 09/521,827
Technology Center 2100
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Decided: March 20, 2007
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Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP,
and ALLEN R. MACDONALD, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's
final rejection of claims 1-24, which are all of the claims pending in this
application.

We REVERSE.
Appeal 2006-3220
Application 09/521,827

BACKGROUND
Appellants’ invention relates to data transmission over a network and in
particular to efficiently monitor such data transmission over an unreliable
network. An understanding of the invention can be derived from a reading
of exemplary claim 1, which is reproduced below.
1. A method for executing a data operative transaction in a
network having a source site and a destination site, the method
comprising the steps of:
transmitting an initial transaction request message from
said source site to said destination site;
receiving said transaction request message at said
destination site;
generating a data entry related to the progress of said
data operative transaction in a destination database; and
preserving said association of said data entry with said
data operative transaction in said destination database so long
as said data operative transaction is active in said network.
PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
Jalili US 5,423,042 Jun. 06, 1995
Lee US 5,774,479 Jun. 30, 1998
Rosborough US 5,838,920 Nov. 17, 1998
Forman US 6,178,449 Jan. 23, 2001
(Filed Nov. 26, 1997)
Chlan US 6,385,642 May 07, 2002
(Filed Apr. 19, 1999)
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Appeal 2006-3220
Application 09/521,827

REJECTIONS
Claims 1, 2, 4, 14-16, and 20-24 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Rosborough. Claims 3 and 7-9 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Rosborough as applied to
claims 1, 2, and 4 above, and further in view of Chlan. Claims 5, 6, and 19
are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Rosborough as applied to claims 1 and 14 above, and further in view of Lee.
Claims 10-12 are rejected under 35 U.S.C. § 103(a) as being unpatentable
over Rosborough as applied to claims 1, 2, and 4 above, and further in view
of Jalili. Claims 13, 17, and 18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rosborough as applied to claims 1, 14, and 16
above, and further in view of Forman.
Rather than reiterate the conflicting viewpoints advanced by the
Examiner and the Appellants regarding the above-noted rejections, we make
reference to the Examiner's Answer (mailed Apr. 5, 2006) for the reasoning
in support of the rejections, and to Appellants’ Brief (filed Jan. 30, 2006)
and Reply Brief (filed Jun. 5, 2006) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellants’ Specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellants and the
Examiner. As a consequence of our review, we make the determinations
that follow.
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Appeal 2006-3220
Application 09/521,827

We limit our discussion to rejection under 35 U.S.C. § 102 since this
addresses all of the independent claims, and we find the Examiner’s
rejection thereof deficient.
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention. RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). In other
words, there must be no difference between the claimed invention and the
reference disclosure, as viewed by a person of ordinary skill in the field of
the invention. Scripps Clinic & Research Foundation v. Genentech, Inc.,
927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
The Examiner, in our view, contorts the teachings of Rosborough as
follows:
Claim 1 (P. 5) is drawn to a network having a source site and a
destination site. The examiner interprets the term "site" to encompass an
area of one or more computer devices, including numerous computer
elements separated either logically or physically. In other words, the
examiner considers the source site to be the client computer, and
considers the destination site to be the server computer, recording
device, and monitoring computer, wherein the server computer receives
the transaction request message from the client, performs the transaction,
and transmits a response to the request message, while the recording
device acts as part of the server system for the purposes of monitoring.
As for issues regarding the proximity, i.e. direct connection between
the recorder and server devices, the purpose is to show how both may
thus be combined into a logical entity, and therefore fulfill the definition
of belonging to a single site. The purpose is also to show that one of
ordinary skill in the art would find it obvious to combine them into a
single physical entity, as they currently act as a single logical entity.
(Answer 9).
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Appeal 2006-3220
Application 09/521,827

While the Examiner’s position/interpretation may have merit in some
different interpretations, we do not find that the Examiner is being
reasonable in the instant application of the prior art to interpret the
remainder of the system of Rosborough including intermediary equipment as
part of a destination site with respect to present examination. With the
Examiner’s interpretation of the teachings of Rosborough, the intermediary
and the server computer would receive the service packets communicated
between the source and destination nodes as identified by Rosborough.
Rosborough discloses that the monitoring and recording are done “non-
intrusively/non-invasively” in the abstract. Furtheremore, as disclosed in
Figure 2 of Rosborough, the recording devices and monitoring computer are
distributed amongst the plurality of server computers, which then makes the
Examiner’s interpretation even more unreasonable, in our view, since the
plural destination nodes would not all have the recording and monitoring
computer associated with them as defined by the Examiner.
Here, we cannot agree with the Examiner’s characterization of the
teachings of Rosborough under anticipation. Therefore, the Examiner has
not shown that Rosborough teaches all of the claimed limitations, and we
will not sustain the rejection of independent claims 1, 14, 20, and 24 and
dependent claims 2, 4, 15, 16, 21-23.
With respect to the Examiner’s rejections under 35 U.S.C. § 103, the
Examiner has not identified how the teachings of Chlan, Lee, Jalili and
Forman remedy the above noted deficiency in Rosborough with respect to
dependent claims 3, 5-13, and 17-19. Therefore, the Examiner has not
shown that the combined teachings would have taught or suggested all of the
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Appeal 2006-3220
Application 09/521,827

claimed limitations, and we will not sustain the rejection of these dependent
claims.
CONCLUSION
To summarize, we have reversed all of the rejections under 35 U.S.C.
§§ 102 and 103.
REVERSED

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