Ex Parte Crow

Board of Patent Appeals and Interferences

Jun 12, 2008

09653486 (B.P.A.I. Jun. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JAMES J. CROW
__________

Appeal 2008-0593
Application 09/653,486
Technology Center 2100
__________

Decided: June 12, 2008
__________

Before JEAN R. HOMERE, JAY P. LUCAS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-20. Claims 21-33 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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THE INVENTION
The disclosed invention relates generally to the fields of digital
communications and computer maintenance. More particularly, Appellant’s
invention is directed to a system and method for configuring personal
computer systems for broadband communication (Spec. 1).
Independent claim 1 is illustrative:
1. A method of converting a personal computer for
communicating information on a broadband
communication network, said personal computer having
a user and a physical location, comprising:

determining whether said physical location falls
within a set of service boundaries for said broadband
communication network;

if said physical location falls within said service
boundaries, electronically offering said user access to
said broadband communication network;

receiving from said user an electronic order
accepting said offer;

remotely qualifying said personal computer for
said broadband communication network by determining
whether said personal computer meets predetermined
acceptance criteria for use of said broadband
communication network; and

fulfilling said order by initiating an automation
agent on said personal computer to interact with the user
and thereby configure a modem coupled to said personal
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computer for access to said broadband communication
network, and

automatically configuring an asset of said
broadband communication network to communicate
with said personal computer, wherein said automatically
configuring said asset is performed by an automation
server of said broadband communication network.

THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the rejections:
Wang US 6,636,505 B1 Oct. 21, 2003
(filed May 28, 1999)
Bahlmann US 6,684,242 B1 Jan. 27, 2004
(filed May 2, 2000)

THE REJECTIONS
Claims 1-3, 7, 9-13, and 17-20 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Wang.
Claims 4-6, 8, and 14-16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wang in view of Bahlmann.

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
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claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).

ISSUE(S)
We have determined that the following issues are dispositive in this
appeal:
(1) Whether Appellant has shown that the Examiner erred in
finding that Wang discloses “initiating an automation agent
on said personal computer to interact with the user and
thereby configure a modem coupled to said personal
computer for access to said broadband communication
network,” as claimed.
(see representative independent claim 1 and the equivalent language recited
in independent claim 11).

(2) Whether Appellant has shown that the Examiner erred in finding
that Wang discloses “automatically configuring an asset of said
broadband communication network to communicate with said
personal computer, wherein said automatically configuring said
asset is performed by an automation server of said broadband
communication network,” as claimed.
(see representative independent claim 1 and the equivalent language recited
in independent claim 11).

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(3) Whether Appellant has shown that the Examiner erred in
combining Wang with Bahlmann.
(see dependent claims 4 and 14).

Grouping of Claims
Appellant only includes claims 1, 4, 11, and 14 under the grounds of
rejection section at the top of page 4 of the principal Brief. However, under
the “CONCLUSION” heading on page 9 of the Brief, Appellant clearly
states: “[f]or the above reasons, Appellant respectfully submits that the
rejection of pending Claims 1-20 is unfounded.” Therefore, we consider
claims 1-20 as being before us on appeal.
Regarding the anticipation rejection, Appellant’s arguments are
primarily directed to independent claim 1. Appellant states that
“independent claim 11 is patentably distinguishable over the cited sections
of Wang for the same or similar reasons claim 1 is patentably
distinguishable over the cited sections of Wang.” (App. Br. 7, ¶3).
Appellant does not present separate arguments for any of dependent claims
2, 3, 7-10, 12, 13, and 17-20 that also stand rejected as being anticipated by
Wang. Pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii), we
select independent claim 1 as being representative of the group including
claims 1-3, 7, 9-13, and 17-20 that stand rejected as being anticipated by
Wang.
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Regarding the obviousness rejection of dependent claims 4-6, 8, and
14-16, Appellant only presents arguments directed to claims 4 and 14. Each
of claims 4 and 14 recite the limitation of “wherein said broadband
communication network is a cable network.” Therefore, we select claim 4
as the representative claim for the group including claims 4-6, 8, and 14-16
that stand rejected as being unpatentable over Wang in view of Bahlmann.
See 37 C.F.R. § 41.37(c)(1)(vii).
After considering the record before us, it is our view that Wang (or the
combination of Wang as modified by Bahlmann), discloses each limitation
argued by Appellant, as detailed in our analysis below. In light of KSR Int’l
Co. v. Teleflex, Inc. (and its progeny in the Federal Circuit), it is also our
view that the Examiner has properly combined Wang with Bahlmann, as
discussed infra.

ANALYSIS
Issue 1
We consider the question of whether Appellant has shown that
the Examiner erred in finding that Wang discloses the following
limitations:
initiating an automation agent on said personal computer to
interact with the user and thereby configure a modem coupled
to said personal computer for access to said broadband
communication network, and
(claim 1).

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The Examiner relies on Wang, column 5, line 20 through column 6,
line 65, as purportedly teaching the aforementioned limitations.
Appellant acknowledges that the cited section of Wang teaches user
interaction during the automatic provisioning of a modem (App. Br. 5, ¶3).
However, Appellant contends that “the cited section does not teach or fairly
suggest initiating an agent on said personal computer as required by claim 1,
let alone initiating an agent to interact with the user and thereby configure a
modem.” (Id.)

Claim Construction
During prosecution, “the PTO gives claims their ‘broadest reasonable
interpretation.’” In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting
In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). Regarding the claim
term “automation agent,” Appellant points to Figs. 1 and 2 and page 8, lines
13-15 (App. Br. 3, ¶1). For convenience, we reproduce those lines here:
The automation agent 4 within the subscriber computer 1 is
activated to perform this workflow process which represents a
series of tasks that have been tailored for the specific broadband
access network 8 and service offering desired.
(Spec. 8, ll. 13-15).
In light of the above support found in Appellant’s Specification, we
broadly but reasonably construe the claim term “automation agent” to
encompass a program or other software that acts on behalf of a user to
facilitate connection to a network.
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We find several such “automation agents” disclosed by Wang as
software programs represented by service icons that are selected by the user
to facilitate connection to a particular network, such as “AOL-premium,” as
clearly shown in Wang’s Figure 6. Wang further discloses the function of
the CPE 110 service selection application (i.e., agent), as follows:
FIG. 6 shows an example of a graphical interface for a CPE 110
service selection application. The user need only select the
services and the selection can be multiple, for example to have
concurrent connections to different ISPs and/or corporate
Intranet.
(Wang, col. 10, ll. 55-59).
In particular, we note that the term “CPE,” as disclosed by Wang,
represents “[a] subscriber’s customer premises equipment (CPE) 110
include[ing] a personal computer that has an internal ADSL modem.” (Col.
5, ll. 25-27). Because establishing a connection to an Internet Service
Provider (ISP) necessarily involves at least some level of configuration of
the internal ADSL modem, it is our view that Wang discloses “initiating an
automation agent on said personal computer to interact with the user and
thereby configure a modem coupled to said personal computer for access to
said broadband communication network,” as claimed (see representative
claim 1).
Issue 2
We consider the question of whether Appellant has shown that
the Examiner erred in finding that Wang discloses the following
limitations:
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automatically configuring an asset of said broadband
communication network to communicate with said personal
computer, wherein said automatically configuring said asset is
performed by an automation server of said broadband
communication network.
(claim 1).

In particular, Appellant avers that the terms “modem” and “asset” are
separate entities, as claimed:
Importantly, claim 1 recites configuring a modem coupled to
said personal computer for access to the broadband
communication network that contains the asset. In other words,
the modem is configured to enable access to the broadband
communication network that contains the asset. Claim 1 makes
clear that the modem and the asset are separate entities since the
asset is contained in the broadband communication network for
which the modem is configured.
(App. Br. 6, last paragraph).

When we look to Appellant’s Specification for context, we find the
term “asset” is used to broadly encompass “all physical network assets.”
(Spec., as amended, p. 10, ¶1).
After considering the record before us, it is our view that Appellant is
imputing an overly narrow interpretation to the claim term “asset” as
excluding a modem, not supported by any special definition in the
Specification. To the contrary, we find the claim term “asset” broadly but
reasonably reads on any network asset, including a “modem” coupled to a
personal computer that is part of a network, as disclosed by Wang:
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Once the network 60 is configured, the ADSL modem in the
CPE 110 is automatically configured for ADSL service by the
server 130 over the communication channel 120.
(Wang, col. 5, ll. 43-46).
Therefore, it is our view that Wang discloses “automatically
configuring an asset of said broadband communication network to
communicate with said personal computer, wherein said automatically
configuring said asset is performed by an automation server of said
broadband communication network,” as claimed (see representative claim
1).
For at least the aforementioned reasons, we find the weight of the
evidence supports the Examiner’s position that Wang is an anticipatory
reference. Because we conclude that Appellant has not shown the Examiner
erred, we sustain the Examiner’s rejection of representative independent
claim 1 (and claims 2, 3, 7, 9-13, and 17-20 that fall therewith), as being
anticipated by Wang.

Obviousness under 35 U.S.C. § 103
PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1742 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 1740. Appellant has the burden on appeal to
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the Board to demonstrate error in the Examiner’s position. See In re Kahn,
441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an
applicant can overcome a rejection [under § 103] by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.”) (quoting In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Therefore, we look to
Appellant’s Briefs to show error in the proffered prima facie.

Issue 3
We consider the question of whether Appellant has shown that
the Examiner erred in combining Wang with Bahlmann. We note that
Appellant does not contest the Examiner’s finding that Bahlmann
teaches a broadband communication network that is a cable network,
as claimed (see claims 4 and 14).
Regarding Appellant’s arguments against the combinability of the
cited references (App. Br. 7-9), our reviewing court has reaffirmed that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR, 127 S. Ct. at 1739).
This reasoning is applicable here. The Examiner has combined
familiar elements taught by Wang, i.e., a broadband network, a computer,
and a modem (see Wang’s Figures 1 and 2), with Bahlmann’s teaching of a
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broadband communication network that is a cable network connected to a
cable modem (col. 3, ll. 37-48). We find the Examiner’s proffered
combination of such familiar elements would have yielded predictable
results. Appellant has not rebutted the Examiner’s legal conclusion of
obviousness by showing that the claimed combination of familiar elements
produces any new function. Moreover, Appellant has not provided any
factual evidence of secondary considerations, such as unexpected or
unpredictable results, commercial success, or long felt but unmet need.
Accordingly, we find Appellant’s arguments unpersuasive that the cited
references have been improperly combined by the Examiner.
For at least the aforementioned reasons, we conclude that Appellant
has not shown the Examiner erred in establishing prima facie obviousness in
rejecting representative claim 4. Therefore, we sustain the Examiner’s
rejection of claim 4 (and claims 5, 6, 8, and 14-16 that fall therewith) as
being unpatentable over Wang in view of Bahlmann.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has not met his burden of showing that the Examiner erred in
rejecting claims 1-3, 7, 9-13, and 17-20 under 35 U.S.C. § 102(e) for
anticipation.
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Likewise, we conclude that Appellant has not met their burden of
showing that the Examiner erred in rejecting claims 4-6, 8, and 14-16 under
35 U.S.C. § 103(a) for obviousness.

DECISION
We affirm the Examiner’s decision rejecting claims 1-3, 7, 9-13, and
17-20 under 35 U.S.C. § 102(e) for anticipation.
We affirm the Examiner’s decision rejecting claims 4-6, 8, and 14-16
under 35 U.S.C. § 103(a) for obviousness.

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).

AFFIRMED

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