Ex Parte Doyle et al

Patent Trial and Appeal Board

Feb 11, 2014

10831056 (P.T.A.B. Feb. 11, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RONALD PATRICK DOYLE and DAVID LOUIS KAMINSKY
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Appeal 2011-003577
Application 10/831,056
Technology Center 2400
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Before ANTON W. FETTING, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 27, 30-33, 36-39, and 42-44. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
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Application 10/831,056

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Claimed Subject Matter
Claims 27, 33, and 39, are independent. Claim 27, reproduced below,
is illustrative of the subject matter on appeal.
27. A method for enabling a service requester to use a service
offered by a service provider, said method being performed on
an intermediary computer in communication with both the
service requester and the service provider and comprising:
identifying the service to be requested from the service
provider;
defining a service requirement established by the service
provider;
defining a related service capability of the service
requester;
determining whether said related service capability
satisfies said service requirement;
in response to a determination that said related service
capability does not satisfy said service requirement, generating
a service translation that provides a translation between said
service requirement and said related service capability; and
forwarding the generated service translation to the
service requester, thereby enabling the service requester to
request the service directly from the service provider and to
process results received from the service provider using the
generated service translation.

Rejections
The Appellants request our review of the following Examiner’s
rejections:
claims 27, 30, 33, 36, 39, and 42 under 35 U.S.C. § 103(a) as
unpatentable over Warren (US 2003/0204612 A1, pub. Oct. 30, 2003) and
Little (US 7,610,045 B2, iss. Oct. 27, 2009); and
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claims 31, 32, 37, 38, 43, and 44 under 35 U.S.C. § 103(a) as
unpatentable over Warren, Little, and Busboom (US 2006/0053296 A1, iss.
Mar. 9, 2006).

OPINION
Construction of Claim 27
During prosecution the PTO gives claims their “broadest reasonable
interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000). Conditional steps in a method claim need not be
found in the prior art if, under the broadest scenario, the method need not
invoke the steps. See Ex parte Katz, 2010-006083, 2011 WL 514314, *4
(BPAI 2011) (non-precedential) (citing In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004)).
Claim 27 recites a method including the step of “determining whether
said related service capability satisfies said service requirement.” Br., Clms.
App’x. (emphasis added). There are two possible responses to this
“determining” step: first, the response to the determination may be that the
related service capability does satisfy said service requirement; and, second,
the response to the determination may be that the “related service capability
does not satisfy said service requirement,” as recited in claim 27. If the
“first response” occurs, then the claim does not require an additional step to
be performed. If the “second response” occurs, then the claim requires
additional steps to be performed, i.e., “generating a service translation that
provides a translation between said service requirement and said related
service capability; and forwarding the generated service translation to the
service requester, thereby enabling the service requester to request the
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service directly from the service provider and to process results received
from the service provider using the generated service translation.”
Accordingly, the broadest reasonable interpretation of claim 27
includes a scenario where the method of claim 27 invokes the first response
and not the second response. As such, any steps that depend on the second
response occurring are not invoked. Since the steps of “generating a service
translation . . . and forwarding the generated service translation . . . ,” inter
alia, are steps of claim 27 that may not be invoked, the Examiner is not
required to show that prior art reads on those steps for the claimed method to
be unpatentable.

Obviousness based on Warren and Little
The Appellants argue independent claims 27, 30, 33, 36, 39, and 42 as
a group. Br. 5-8. We select claim 27 as representative of the group. See 37
C.F.R. § 41.37(c)(1)(vii) (2011).
The Appellants’ contentions are directed solely to the second response
discussed supra. See Br. 5-7. As discussed above, we do not construe the
second response, along with its additional steps, to be a requirement of claim
27. As such, the Examiner’s rejection does not have to account for the
second response for the rejection of claim 27 to be sustained. Notably, the
Appellants do not contend that the Examiner’s rejection includes error in a
required step of method claim 27. Thus, the Appellants’ arguments do not
persuade us of error in the Examiner’s determination that the subject matter
of claim 27 would have been obvious in view of Warren and Little.
Accordingly, we sustain the rejection of claim 27. Claims 30, 33, 36, 39,
and 42 fall with claim 27.
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Obviousness based on Warren, Little, and Busboom
The Appellants argue independent claims 31, 32, 37, 38, 43, and 44 as
a group. Br. 8-9. We select claim 31 as representative of the group. See 37
C.F.R. § 41.37(c)(1)(vii) (2011).
Claim 31, which depends from claim 27, recites “wherein said service
requirement is for authentication using a first authentication mechanism and
said related service capability is for authentication using a second
authentication mechanism.” Br., Clms. App’x.
The Appellants contend that Busboom does not teach an exchange of
information between a client or web service requester and a service provider.
See Br. 8. The Appellants’ contention is unpersuasive. The Examiner did
not rely on Busboom to teach an exchange of information between a service
requester and a service provider, rather the Examiner relies on Warren.
Ans. 6. Further, the Examiner correctly finds that Warren discloses an
exchange of information between a service requester (manager 102) and a
service provider (network elements 108). Id.
Thus, the Appellants’ arguments do not persuade us of error in the
Examiner’s determination that the subject matter of claim 31 would have
been obvious in view of Warren, Little, and Busboom. Accordingly, we
sustain the rejection of claim 31. Claims 32, 37, 38, 43, and 44 fall with
claim 31.
DECISION
We AFFIRM the rejections of claims 27, 30-33, 36-39, and 42-44.

AFFIRMED

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