Ex Parte Harif

Board of Patent Appeals and Interferences

Sep 12, 2006

09751823 (B.P.A.I. Sep. 12, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHLOMI HARIF
____________

Appeal No. 2006-2193
Application No. 09/751,823
____________

ON BRIEF
____________

Before THOMAS, HAIRSTON, and MACDONALD, Administrative Patent
Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant has appealed to the Board from the examiner’s final

rejection of claims 1 through 3 and 5 through 26, appellant having canceled

claim 4.

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Representative independent claim 1 is reproduced below:
1. A system for identifying and binding a process, said system
comprising a network server adapted to receive a payload from a network
client over a network, wherein the payload comprises a request for process
execution associated with a task, and wherein the server is further adapted to
evaluate the payload, create an agent from the payload, and forward the
agent to a network host, unknown to and dissimilar from the network client,
for process execution associated with the agent.

The following references are relied on by the examiner:

Kraft et al. (Kraft) 6,112,225 Aug. 29, 2000
May 6,421,653 Jul. 16, 2002
(Filed Oct. 12, 1998)
Ellis 6,732,141 May 4, 2004
(Filed Nov. 26, 1997)

Claims 1 through 3 and 5 through 26 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness as to claims 1 through 3, 5 through 12,
17, 25 and 26, the examiner relies upon Kraft in view of May, with the
addition of Ellis as to claims 13 through 16 and 18 through 24.
Rather than repeat the positions of the appellant and the examiner,
reference is made to the brief (no reply brief has been filed) for appellant’s
positions, and to the answer for the examiner’s positions.
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OPINION
For the reasons set forth by the examiner in the answer, as amplified
and emphasized here, we sustain the rejection of all claims on appeal under
35 U.S.C. § 103.
In the first stated rejection, appellant presents arguments as to each
independent claim 1, 12, 17, 25 and 26 collectively. Independent claims 1,
12 and 17 require that the host be unknown to and dissimilar from the
network client. On the other hand, independent claim 12, which perhaps
appears to be the broadest claim on appeal, does not require that the server
create an agent as in independent claim 1, nor does it require that the
payload from a client relate to a task. The client merely requests a process
execution rather than to request a process execution associated with a task as
in claim 1. As to independent claim 17, this claim does require the creation
of an agent from the payload but there is no task associated with the process
execution from the client. In contrast to that which is extensively argued in
the brief, independent claims 1, 12 and 17 do not explicitly recite the

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anonymity such as is recited in independent claims 25 and 26 on appeal.
These two claims require that the client and the network host maintain
anonymity from each other. Because of this, these two claims do not require
that the client and host be dissimilar from each other as set forth in
independent claims 1, 12 and 17 on appeal. Claim 25 recites that the
payload be associated with the task, whereas claim 26 does not recite this
feature. On the one hand, while claim 26 recites the use of the agent, there is
only a broadly recited process in independent claim 25. Therefore, many of
the arguments presented by appellant in the brief are not coextensive with
the actual features recited in the claims on appeal, thus in effect buttressing
the examiner’s positions of unpatentability.
With respect to May, we agree with the examiner’s views expressed
as to this reference beginning with the background discussion at columns 1
through 4 relating to the extensive prior art discussion there relating to the
need for anonymity in financial transactions or brokerage systems conducted
in an electronic environment. In fact, column 5, lines 20 through 47 address
prior art deficiencies in the major objects of the invention focusing on

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maintaining anonymous financial transactions between parties up to a certain
point in the transactions between them. Note as well the discussion at
column 9, lines 17 through 24; the paragraph bridging columns 12 and 13;
the discussion in the paragraph bridging columns 38 and 39; column 42,
lines 20 through 33 and the top of column 47. Notwithstanding appellant’s
reliance in part upon the discussion between columns 36 through 38 arguing
for patentability, it is significant to note that the discussion beginning at line
36 of column 38 through at least column 42 makes clear that once an active
order has been placed into the system 10 depicted in figure 1, the execution
process itself is complete. Figure 18 depicts messages between the
counterparts with the emphases being that “this [once an active order has
been placed in the system] is the first point in the transaction that
counterparties are identified to one another” as expressed at lines 40 through
42.

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This last analysis leads into the discussion that the examiner begins
with in the responsive arguments in the answer at the bottom of page 6.
Because we agree with the examiner’s views expressed here and the context
of the claims as viewed by the examiner as set forth here initially through
the motivation analysis, we reproduce here a good part of the responsive
arguments of the answer (pages 6 through 9) which also address appellant’s
combinability arguments between Kraft and May set forth between pages 5
and 7 of the brief:
Claims 1, 12 and 17 recite the limitation to “forward the agent
to a network host, unknown to and dissimilar from the network
client.” Claims 25 and 26 recite the limitation “a network client and
network host maintained anonymous from each other for receiving a
payload from the network client.” No other limitations regarding the
anonymity of the network devices is given in any of the claims. The
examiner interprets these items, then, to mean anonymity between the
client and host from the time that the network server forwards the
agent and/or payload, to the time that the host receives the
transmission. To fulfill the limitation, one need not show maintaining
of anonymity at any time after the reception of the payload, and
particularly not during any time of the process execution associated
with the agent. Further, one need not show anonymity between the
server and the host or between the server and the client. (Final action,
Para. 9).

In response to applicant’s argument that the references fail to
show certain features of applicant’s invention, it is noted that the
features upon which applicant relies (i.e., “anonymity is maintained
between a client and a host (P. 4, lines 20-23)”) are not recited in the
rejected claim(s). Although the claims are interpreted in light of the
specification, limitations from the specification are not read into the
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claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed.
Cir. 1993). As shown above, maintenance of anonymity is only
taught for the period of payload transmission and reception, and the
anonymity may be dropped after this. Thus, the applicant’s statement
regarding May’s eventual ending of anonymity (P. 5, lines 20-31)
does not apply in regards to the claims as drawn, as this activity
clearly occurs at the end of the process execution associated with the
transmitted agent.

The applicant further admits that May teaches an automated
system for distributing anonymous price and position information
(P. 7, lines 9-12). This example further shows that the anonymity is
maintained at the point of transmission.

In response to applicant’s argument that there is no suggestion
to combine the references, the examiner recognizes that obviousness
can only be established by combining or modifying the teachings of
the prior art to produce the claimed invention where there is some
teaching, suggestion, or motivation to do so found either in the
references themselves or in the knowledge generally available to one
of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d
1596 (Fed. Cir. 1988) and In re Jones, 958 F.2d 347, 21 USPQ2d
1941 (Fed. Cir. 1992). In this case, the applicant argues that
anonymity would be undesirable to Kraft (P. 6, lines 23-28) on the
grounds that Kraft teaches that options include requiring digital
signatures or authentication (P. 6, lines 28-34). First, these are only
sample embodiments and do not by themselves preclude a Kraft
combination involving anonymity. In fact, there are clearly
embodiments upon which anonymity is not required (Fig. 5). Second,
the authentication processes would occur at Kraft’s server (#102), thus
potentially maintaining anonymity between the client (remote
computer) and performing host (#106). Third, such certifications
occur after reception of the imported task, and thus do not preclude
anonymity before or during reception of the imported task. Assuming
argumendo [sic arguendo] that May teaches authentication at the end
of the task, as the applicant claims (P. 7, lines 4-7), the combination
would not destroy the primary invention, and therefore the
combination may be allowed, given proper motivation.
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May’s purpose is to allow transactions between initially
anonymous parties while still providing a way for them to negotiate
with the same power and security as initially non-anonymous parties
(col. 2, lines 1-50). As shown above, Kraft teaches an interest in
developing security trades with a remote client that may be initially
anonymous. May teaches that the reasons for anonymity are
numerous, but include the fact that without anonymity, certain parties
may not wish to deal with certain other parties (col. 2, lines 50-56),
and may even cancel the transaction before it is completed, indicating
a desire to ensure the maintenance of anonymity for some time, or
manipulate the price based on the party identity (col. 43, lines 43-50).
Thus, at the time the invention was made, one of ordinary skill in the
art would have added May’s anonymity handling to Kraft in order to
provide remote clients with assurance of non-preferential treatment
based on identity, while still allowing Kraft [sic Kraft’s] servers to
keep their security measures.

Thus, as argued by the examiner to the extent claimed, the entire
dialog between the client and the server and the host (to the extent these
elements are recited at all in any claim on appeal) is not required to be
anonymous. The examiner has identified compelling portions of Kraft and
May supporting the examiner’s reasoning of combinability and enhancement
of the security capabilities already taught in Kraft with those set forth in
May. Essentially, May identifies an additional type of security
consideration, that is, the identities of the actual counterparties or sending
and receiving parties between a client and a host, to add to the types

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of security measures discussed beginning at column 10, line 5 in Kraft. In
other words, the anonymity in the claims is not recited to be absolute or
otherwise always in effect. No reply brief has been filed for our
consideration challenging the examiner’s views here with respect to the
matters discussed in the quoted portion from the answer.
Lastly, as to the second stated rejection relying additionally upon Ellis
as to certain dependent claims, the examiner’s answer at page 9 has
persuasively addressed each of the positions set forth with respect to argued
dependent claims 13 and 18, 14 and 19, and 15 and 20, argued at pages 8
through 10 of the brief. Additionally, it is worthy of note here that appellant
has not argued that the additional reference to Ellis was not properly
combinable within 35 U.S.C. § 103 to the teachings already combined with
respect to Kraft and May. Appellant’s basic argument as to the second
stated rejection then is that what is claimed is not taught by Ellis or the
combined teachings of the three references. Appellant has not persuaded us
of any error of the examiner’s position.

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In view of the foregoing, the decision of the examiner rejecting all
claims on appeal under 35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv).
AFFIRMED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )

JDT:pgc

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