Ex Parte Cohen et al

Patent Trial and Appeal Board

May 28, 2014

11524051 (P.T.A.B. May. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/524,051 09/19/2006 Alexander J. Cohen SE1-0150-US 6559
80118 7590 05/28/2014
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
AMBAYE, SAMUEL
ART UNIT PAPER NUMBER
2433
MAIL DATE DELIVERY MODE
05/28/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEXANDER J. COHEN, EDWARD K.Y. JUNG,
ROYCE A. LEVIEN, ROBERT W. LORD and
WILLIAM HENRY MANGIONE-SMITH
___________

Appeal 2012-001822
Application 11/524,051
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, JEAN R. HOMERE and
CARL W. WHITEHEAD JR., Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-001822
Application 11/524,051

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STATEMENT OF THE CASE
Appellants are appealing the Examiner’s Final Rejection of claims 87-
97, 99-102, 104-112, 140 and 183-191 under 35 U.S.C. § 134(a). Appeal
Brief 5. We have jurisdiction under 35 U.S.C. § 6(b) (2012).
We affirm.

Introduction
The invention is directed to a network subsystem described for
associating a first mobile agent with a first security policy and associating a
second mobile agent with a second security policy. Abstract.

Representative Claim (Emphasis Added)
87. A network subsystem comprising:
circuitry for associating a first mobile agent with a first security
policy and a second mobile agent with a second security policy;
and
circuitry for evaluating a received message at least in response
to an indication of the first security policy and to an indication
of the second security policy.

Rejections on Appeal
Claims 87-97, 99-102, 104-107, 109-111, 140 and 183-191 stand
rejected under 35 U.S.C. §103(a) as being unpatentable over Gomi (US
Patent Number 6,754,691 B1; issued June 22, 2004) and Melchione (US
Patent Application Publication Number 2002/0091819; issued July 11,
2002). Answer 6-28.1

1 The Examiner’s listings of the rejected claims is incorrect (Answer 6),
Footnote continued on the next page.
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Claims 108 and 187 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Gomi, Melchione and Henry (US Patent Number
6,677,861 B1; issued January 13, 2004). Answer 28-31.
Claim 112 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Gomi, Melchione and Caceres (US Patent Application
Publication 2003/0014669 A1; published January 16, 2003). Answer 31-32.

ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed May 19, 2011), the Answer (mailed July
7, 2011) and the Reply Brief (filed October 6, 2011) for the respective
details. We have considered in this decision only those arguments
Appellants actually raised in the Briefs. Any other arguments Appellants
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
contentions. We concur with the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Answer in response to Appellants’ Appeal Brief
and adopt them as our own, except as to those findings that we expressly
overturn or set aside in the analysis as follows.

however the Examiner’s findings and analysis include the correct rejected
claims. Therefore we consider this harmless error.
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Application 11/524,051

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Appellants contend the USPTO has not explained how it reached the
Examiner’s mapping of claims with the cited prior art “under the framework
of the broadest reasonable interpretation consistent with the specification as
is the USPTO’s burden . . . .” Appeal Brief 43. Appellants point out that the
Examiner’s mapping does not address the “circuitry for evaluating a
received message . . . to an indication of the second security policy.” Id.
Appellants contend the USPTO has not provided evidence supporting it
assertion “That Gomi ‘Teaches’ Recitations of Independent Claim 43[87].”
Id. at 49. Appellants further contend “The USPTO Has Put Forth No
Evidence Supporting Its Characterization/Assertion That Melchione
‘Teaches’ Recitations of Independent Claim 87.” Id. at 60.
We find Appellants’ arguments, as a whole, do not address the merits
of the obviousness rejections proffered by the Examiner. Claim 87 recites
circuitry for associating mobile agents with first and second security policies
and circuitry for evaluating a received message in response to the first and
second security policy. “An intended use or purpose usually will not limit
the scope of the claim because such statements usually do no more than
define a context in which the invention operates.” Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir.
2003). Although “[s]uch statements often . . . appear in the claim’s
preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of
intended use or purpose can appear elsewhere in a claim. Id.
Appellants’ arguments that the Examiner did not explain the mapping
of the claims sufficiently are not persuasive because we found the
Examiner’s mapping to be sufficient enough to provide Appellants reasons
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for the rejection of their claims and allow them to respond and address the
merits of the rejections.2 See Answer 5-32.
Appellants’ arguments addressing Gomi and Melchione separately as
opposed to addressing the combination of the two are not persuasive to show
that the Examiner erred.3 See Appeal Brief 41-69.
Finally, Appellants argue the Examiner’s reason to combine Gomi and
Melchione are based on “mere conclusory statements without evidentiary
support.” Id. at 69-72. We do not find Appellants’ argument to be
persuasive because the Examiner articulated a rational reasoning to combine
the two references.4 Answer 7.

2 In In re Jung, 637 F.3d 1356 (Fed. Cir. 2011), the Federal Circuit held
that, during prosecution, an examiner is governed by 35 U.S.C. § 132, which
requires notification to an applicant of the reasons for a rejection with “such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” In re Jung, 637 F.3d at
1362 (quoting Chester v. Miller, 906 F.2d 1574, 1578 (1990)). However,
the court made clear that section 132 does not mandate that in order to make
a prima facie case, an examiner must make an on-the-record claim
construction of every term in every rejected claim or explain every possible
difference between the prior art and the claimed invention. Id. at 1363.
Instead, the statute only requires that “an applicant at least be informed of
the broad statutory basis for the rejection of his claims, so that he may
determine what the issues are on which he can or should produce evidence.”
Id.

3 In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show
nonobviousness by attacking references individually where, as here, the
rejections are based on combinations of references”).

4 “[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
Footnote continued on the next page.
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Therefore we sustain the Examiner’s obviousness rejection of
independent claim 87 for the reasons articulated above. Appellants argue
independent claims 140, 183 and 184 based upon the arguments set forth for
independent claim 87 and consequently we sustain the Examiner’s
obviousness rejection of claim 140, 183 and 184 for the same reasons
articulated above. See Appeal Brief 81-83. We also sustain the Examiner’s
obviousness rejection of dependent claims 88-91, 94-97, 99, 101, 102, 104-
112 and 185-191 for the same reasons as articulated above because they
were not argued separately. Appellants argue the Examiner failed to provide
an explanation of the mapping of Melchione to dependent claims 92, 93 and
100. Id. at 79-80. We do not find Appellants’ arguments persuasive for the
same reasons articulated above.

DECISION
The Examiner’s 35 U.S.C. §103 rejections of claims 87-97, 99-102,
104-112, 140 and 183-191 are affirmed.
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). See 37
C.F.R. § 41.50(f).

obviousness.” KSR Int’l., Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

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AFFIRMED

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