Ex Parte Datla et al

Patent Trial and Appeal Board

Sep 26, 2016

14051025 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/051,025 10/10/2013
71867 7590 09/28/2016
BANNER & WITCO FF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
FIRST NAMED INVENTOR
Raju Datla
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
007412.02549 2623
EXAMINER
CHEN, SHIN HON
ART UNIT PAPER NUMBER
2431
NOTIFICATION DATE DELIVERY MODE
09/28/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTO-71867@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAW DATLA and SRINI A VIRNENI
Appeal2015-006942
Application 14/051,025
Technology Center 2400
Before JASON V. MORGAN, MELISSA A. RAAP ALA, and
NABEEL U. KHAN, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Appeal2015-006942
Application 14/051,025
STATEivIENT OF THE CASE
Exemplary Claim
1. A method comprising:
permitting, at a computing device, communications from a user
device to a captive domain and blocking communications from
the user device to an open domain; and
subsequent to the permitting, forwarding, at the computing
device, new communications from the user device to the open
domain after a provisioning attribute configured to force access
to the open domain via an open domain device and not via the
computing device has been sent to the user device.
App. Br. 13, Claims Appx.
Rejections
Claims 1-20 stand rejected for obviousness-type double patenting
over claims 1-20 of U.S. Patent No. 8,108,911 and claims 1-21 of U.S.
Patent No. 8,601,545. Final Act. 3.
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being obvious
over Wittenberg (US 2005/0078668; April 14, 2005).
DOUBLE PATENTING REJECTION
Appellants do not contest the obviousness-type double patenting
rejection. We therefore summarily sustain this rejection of claims 1-20.
OBVIOUSNESS REJECTION
In rejecting the invention of claim 1, the Examiner relies on
Wittenberg to teach or suggest that: (1) routing device 203 blocks access to
an open domain by redirecting, in response to an initial access control list
2
Appeal2015-006942
Application 14/051,025
(ACL) of the routing policies, incoming client-device 204, 205 requests for
the ISP services 207 to the redirect server 202 (Final Act. 4 (citing
Wittenberg i-f 18); Ans. 8); (2) redirect server 202 permits access to a captive
domain by ascribing the HTTP request a captive portal URL address, which
is transmitted to the client device 204, 205 for redirecting of the client's
browser to the captive portal (Final Act. 4 (citing Wittenberg i-f 18); Ans. 8);
(3) a replacement ACL-which replaces the initial ACL in response to the
client device 204, 205 satisfying a condition of the captive portal (e.g., bill
payment}-constitutes a provisional attribute forcing access to the open
domain by no longer causing redirection of the client's HTTP requests to the
redirect server 202 (Final Act. 4 (citing Wittenberg i-fi-133-34); Ans. 8-10);
and (4) routing device 203forwards the client's new communications to the
open domain by, per the replacement ACL, transmitting the client's HTTP
requests to the ISP services 207 (Final Act. 4 (citing Wittenberg i-fi-133-34);
Ans. 8-10).
The Examiner finds that it would have been a mere design choice to
conduct Wittenberg's ACL-directed routing at the client-side device 204,
205, instead of Service Selection Network Element (SSNE) 201, by
providing the ACL updates to the client device 204, 205 from the SSNE
201; thus reaching the claimed requirement for a provisioning attribute sent
to the user device (claims 1 and 16). Final Act. 4--5; Ans. 8-9.
Appellants argue against the Examiner's reading of the claimed
provisioning attribute on Wittenberg's replacement ACL, contending:
Wittenberg's replacement ACL is not sent to the user device.
Rather, a replacement/redirect URL setup based on an ACL and
not the ACL itself is sent to computing device 204. See
Wittenberg at paras. 30 and 32. Accordingly, Wittenberg fails to
3
Appeal2015-006942
Application 14/051,025
show at least the claim 1 feature of "a provisioning attribute
... [that] has been sent to the user device."
App. Br. 4--5 (orig. brackets). In response to the Examiner's finding of
design choice, Appellants argue:
Throughout the Examiner's Answer, the Examiner generalizes
the claims to a central concept, states that this central concept is
similar to prior art, and states that any differences between the
features recited in the claims and the teachings of Wittenberg are
a matter of design. . . . However, the Office has not offered any
evidence or analysis in support of this assertion. . . . A proper
rejection under 35 U.S.C. § 103 using a design choice is for the
Office to establish that the claimed feature is a functional
equivalent of what is shown in the cited document. The Office
has not met this burden as a conclusion is not evidence.
Reply Br. 2-3.
The Examiner acknowledges that "Wittenberg does not explicitly
disclose sending [a] provisioning attribute to the user device." Ans. 8.
Rather, the Examiner finds that:
routing communication by a routing policy at network element
or by a network configuration file at client device is well known
in the art. The central concept of present application is disclosed
by Wittenberg, which is to restrict access to captive
portal/domain until specific condition is satisfied. Configuring
user device or service selection network element to control
access to captive or open domain appears to be a matter of design
choice, since user will be provided direct access to intended
resources without redirection subsequent to satisfaction of
condition imposed by captive portal.
Id. at 8-9 (emphasis added).
The Examiner thus proposes, as an alternative "design choice" to
Wittenberg's ACL-directed routing at the SSNE 201, performing the
captive/open portal routing at Wittenberg's client device 204, 205 by
4
Appeal2015-006942
Application 14/051,025
providing the ACL updates from the SSNE 201 to the client device 204, 205.
Supra. Design choice can be an acceptable rationale for an obviousness
rejection if, and only if, the alternative does not result in a difference in
function or yield unexpected results. See In re Rice, 341 F .2d 309, 314
(CCPA 1965).
Because moving Wittenberg's ACL-directed routing from the SSNE
201 to a client device 204, 205 yields functional tradeoffs of avoiding
redirection (see above block quote) and decentralizing the ACL-directed
routing (to a plurality of client devices), the rearrangement is not one of
mere design choice. Given the above differences, which are more than
slight, the Examiner's reliance on design choice to support the proposed
rearrangement ofWittenberg's ACL-directed routing from the SSNE 201 to
a client device 204, 205 is insufficient to show that the proposed
modification would have been obvious to an artisan of ordinary skill.
Accordingly, the Examiner's findings do not show that claim 1, and
claims 2-20, which recite similar recitations, are obvious over Wittenberg.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 103(a) rejections
of claims 1-20.
5
Appeal2015-006942
Application 14/051,025
DECISION
The Examiner's decision to reject claims 1-20 for obviousness-type
double patenting is affirmed.
The Examiner's decision to reject claims 1-20 for obviousness is
reversed.
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.
§ 41.50(±).
AFFIRMED
6