Ex Parte Butt et al

Board of Patent Appeals and Interferences

Jul 11, 2007

09951711 (B.P.A.I. Jul. 11, 2007)

The opinion in support of the decision being entered today is
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALAN B. BUTT, DAVID A. EATOUGH, and TONY SARRA
____________

Appeal 2007-0727
Application 09/951,711
Technology Center 2100
____________

Decided: July 11, 2007
____________

Before JAMES D. THOMAS, KENNETH W. HAIRSTON,
and HOWARD B. BLANKENSHIP, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal involves claims 1, 3-9, 11-17, 19-25, and 27-32. We have
jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
As best representative of the disclosed and claimed invention,
independent claim 1 is reproduced below:

Appeal 2007-0727
Application 09/951,711

1. An apparatus comprising:
a local application proxy (LAP) arrangement to provide a
machine-to-network proxy interface and proxy services for local
applications resident on an electronic machine wherein the LAP arrangement
further comprises an automatic network awareness arrangement to
automatically gain network awareness of a network which becomes
connected thereto, a gained network awareness being used to effect
provision of proxy services.

The following references are relied on by the Examiner:
Kralowetz US 5,657,452 Aug. 12, 1997
Schloss US 5,878,233 Mar. 2, 1999
Puranik US 6,003,090 Dec. 14, 1999
Wookey US 6,023,507 Feb. 8, 2000

Claims 1, 6-9, 14-17, 22-25, and 30-32 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Kralowetz. Claims 3-5, 11-13, 19-21, and
27-29 stand rejected under 35 U.S.C. § 103(a). As evidence of obviousness,
the Examiner combines Kralowetz with Puranik for claims 3, 11, 19, and 27.
Kralowetz is combined with Wookey for claims 4, 12, 20, and 28.
Kralowetz is combined with Schloss for claims 5, 13, 21, and 29.
Rather than repeat the positions of the Appellants and the Examiner,
reference is made to the Brief and Reply Brief for the Appellants’ positions,
and to the Answer for the Examiner’s positions.

OPINION
We affirm.

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Application 09/951,711

Of independent claims 1, 9, 17, and 25 included within the rejection
under 35 U.S.C. § 102(b), Appellants only present arguments to these
independent claims collectively, and present no separate arguments to the
remaining dependent claims encompassed by this rejection.
We initially note that claims 1, 9, 17, and 25 contain several
limitations directed to acts intended to occur in the future. Claim 1 recites “a
local application proxy . . . to provide a . . . proxy interface”, “an automatic
network awareness arrangement to automatically gain network awareness”,
“a network which becomes connected thereto”, and “network awareness
being used to effect provision” (emphasis added). These “provide”, “gain”,
“become connected” and “used to effect” steps are merely passively recited
and need not actually occur for the claim to be anticipated. Nonetheless,
even if these steps were positively recited, Kralowetz discloses each of them
and anticipates claims 1, 9, 17, and 25, as discussed below.
In support of the rejection under 35 U.S.C. § 102(b), the Examiner
points to the Abstract, col. 4, lines 9-67; col. 6, lines 25-49 and Figs 2-3.
Appellants’ characterization of col. 4, lines 9-67, appearing at page 8 of the
Brief, actually discusses subject matter disclosed in column 9 of Kralowetz,
so these arguments are not persuasive with respect to the Examiner’s
reliance on col. 4, lines 9-67.
Appellants’ remaining argument at page 7 of the Brief characterizes
col. 6, lines 25-49 of Kralowetz as describing the proxy engine’s “ability to
facilitate communication between the local endpoint application and the
network endpoint application” and goes on to argue that this section does not
disclose or suggest “an ability to automatically gain network awareness of a
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Application 09/951,711

network which becomes connected thereto, a gained network awareness
being used to effect provision of a proxy service” (emphasis in original).
Appellants’ assertion at page 7 of the Brief that “[i]t is clear that the
Kralowetz reference discloses the alleged ability to [facilitate
communication] when prompted to do so” suggests that Appellants’
argument relies primarily on the “automatically gain network awareness of a
network” (emphasis added) aspect of claim 1.
Attention is directed to col. 4, lines 21-28, cited by the Examiner at
pages 4 and 8 of the Answer, which recites “[a]ll of this is done in a manner
that is transparent to the user at the local endpoint application, . . . as it
occurs automatically” (emphasis added). Kralowetz goes on to disclose that
“the invention provides for ‘spoofing’ for quick determination and
implementation of PPP network control protocols . . . during the call
connection process” (emphasis added). We find that this section of
Kralowetz anticipates an ability to automatically (col. 4, lines 21-24) gain
awareness of a network which becomes connected thereto (determine
network control protocols) (col. 4, lines 24-28), a gained network awareness
being used to effect provision of a proxy service (determined protocols are
implemented over one or more channels) (col. 4, lines 24-28).
While we note that the cited portion of column 4 appears in the
background of the invention section, Kralowetz clearly indicates that this
section is “[i]n accordance with the present invention” at col. 4, line 9.
Kralowetz elaborates on the steps performed to determine the network
control protocols and using them to effect provision of a proxy service at
col. 7, line 31 to col. 10, line 55. Of particular interest are col. 8, lines
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Application 09/951,711

40-49, which describes determining which network control protocols are
needed and learning information that is necessary for successful proxy
operations, and col. 10, lines 4-7, which describes using the learned
information to bring up the network control protocols of the network
endpoint application with which the local endpoint wants to communicate.
All of this functionality is also supported by the problem-solution
scenario discussed at column 1, lines 34-65 of Kralowetz. Additionally,
Appellants’ remarks at page 2 of the Reply Brief do not obviate all noted,
compelling teachings in this reference.
Appellants have not presented any substantive arguments directed
separately to the patentability of dependent claims 6-8, 14-16, 22-24, and
30-32. In the absence of separate arguments with respect to the dependent
claims, those claims stand or fall with the representative independent claim.
See In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991). See also 37 C.F.R. § 41.37(c)(1)(vii). Therefore, we will sustain the
Examiner’s rejection of these claims as being anticipated by Kralowetz for
the same reasons discussed supra with respect to claims 1, 9, 17, and 25.
Appellants assert that claims 3-5, 11-13, 19-21, and 27-29 are
allowable as depending from allowable base claims “for at least the reasons
described above” with respect to claims 1, 9, 17, and 25 (pages 9-10 of the
Brief). As discussed above, we see no deficiencies with respect to
Kralowetz. We note that Appellants have not presented any substantive
arguments directed separately to the patentability of dependent claims 3-5,
11-13, 19-21, and 27-29, instead relying only on the alleged deficiencies of
Kralowetz. In the absence of separate arguments with respect to the
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dependent claims, those claims stand or fall with the representative
independent claim. See In re Young, 927 F.2d at 590, 18 USPQ2d at 1091
(Fed. Cir. 1991). Therefore, we will sustain the Examiner’s rejection of
claims 3, 11, 19, and 27 as being unpatentable over Kralowetz in view of
Puranik, claims 4, 12, 20, and 28 as being unpatentable over Kralowetz in
view of Wookey, and claims 5, 13, 21, and 29 as being unpatentable over
Kralowetz in view of Schloss for the same reasons discussed supra with
respect to independent claims 1, 9, 17 and 25.
In summary, we sustain the Examiner’s rejection of claims 1, 6-9,
14-17, 22-25 and 30-32 under 35 U.S.C. § 102(b). We also sustain the
Examiner’s rejections of claims 3-5, 11-13, 19-21 and 27-29 under
35 U.S.C. § 103(a). The rejections of these claims encompass all claims on
appeal, and all rejections are affirmed. Therefore, the decision of the
Examiner is affirmed.

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Application 09/951,711

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

pgc

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