Ex Parte Herberth et alDownload PDFPatent Trial and Appeal BoardFeb 17, 201712829777 (P.T.A.B. Feb. 17, 2017) Copy Citation 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. 12/829,777 07/02/2010 Harald Herberth 5029-682-307229.000 9208 27799 7590 Cozen O'Connor 277 Park Avenue, 20th floor NEW YORK, NY 10172 EXAMINER MESA, JOEL ART UNIT PAPER NUMBER 2447 NOTIFICATION DATE DELIVERY MODE 02/22/2017 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): patentsecretary @ cozen. com patentdocket@cozen.com patentsorter@cozen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HARALD HERBERTH and FRANK VOLKMANN Appeal 2016-001961 Application 12/829,777 Technology Center 2400 Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and ADAM J. PYONIN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1—9. See App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2016-001961 Application 12/829,777 STATEMENT OF THE CASE Introduction Appellants’ disclosure relates to “a device and a method for distinguishably addressing a plurality of web servers to which an identical host name or an identical host IP address is allocated.” Spec. 1 6. Claims 1 and 9 are independent. Claim 1 is reproduced below for reference (with formatting and emphases added): 1. A device including a processor and memory for distributing and forwarding requests to a plurality of web servers in an industrial automation arrangement, wherein the device including the processor and memory is configured to receive requests addressed to a single public port, each of said plural web servers in the industrial automation arrangement being addressable by at least one local host address and by one private port number; wherein the device including the processor and memory is configured to evaluate destination URLs of the requests received at the same single public port, in which each request of the received requests can contain a same host header and server addressing components of the destination URLs can be identical, and a path component of a destination URL of each request defines one web server of said plural web servers in the industrial automation arrangement at the same one private port number in the industrial automation arrangement; and wherein the device including the processor and memory is configured to forward each of the received requests to the one web server of said plural web servers in the industrial automation arrangement defined by the path component. The Examiner’s Rejection Claims 1—9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Colby (US 2004/0039820 Al; Feb. 26, 2004) and Callaghan (US 20070061018 Al; Mar. 15, 2007). Final Act. 3. 2 Appeal 2016-001961 Application 12/829,777 ANALYSIS We review the appealed rejection for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner's rejections”)). Appellants argue the Examiner erred in the rejection of claim 1, because “[t]he skilled person has no motivation or reason to combine the teachings of Colby with the teachings of Callaghan.'” App. Br. 5. Appellants contend the Examiner used “an impermissible hindsight reconstruction based on Appellants’ own invention, because the objects and solutions described by Callaghan are completely different than the objects and solutions described in Colby.” App. Br. 6. Appellants additionally contend “Colby is not within the field of endeavor of the invention and, while Callaghan does teach processing that occurs in an industrial automation system, neither Colby nor Callaghan are reasonably pertinent to the problem that Appellants’ claimed invention seeks to solve.” App. Br. 7. We are not persuaded of Examiner error. First, Appellants do not persuade us the Examiner improperly relied upon knowledge gleaned from Appellants’ disclosure. The Examiner finds, and we agree, that the Callaghan “reference itself provides motivation to combine [with Colby] ‘in order to communicate in an industrial automation environment’.” Final Act. 2—3 (citing Callaghan Abstract). For example, the Examiner finds Colby’s use of a path component provides benefits including “seamlessly forwarding] the content request to a server that is well-suited to serve the 3 Appeal 2016-001961 Application 12/829,777 content request” (Final Act. 7, citing Colby 110). Colby discloses additional benefits such as selection of a “best-fit server” (Colby 113) and “content-aware flow switching without requiring modifications to the core of existing IP networks” (Colby 114). See also Colby H 15—19. We agree with the Examiner that one ordinarily skilled in the art would apply the benefits afforded by Colby to manage web requests in an industrial automation arrangement1 as taught by Callaghan. See Final Act. 7—8. Appellants have not presented evidence sufficient to show that combining the prior art was “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19). Second, Appellants do not persuade us that Colby and Callaghan are not analogous art. Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, 1 Additionally, the Examiner finds “Colby discloses the claimed subject matter as discussed above except in the industrial automation arrangement.” Final Act. 7. We find the claim limitation “in the industrial automation arrangement” is a statement of intended use of the claimed device, and a statement of intended use cannot distinguish over a prior art apparatus that discloses all the recited limitations and is capable of performing the recited function. See Ans. 16; In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Thus, Appellants do not persuade us the limitations of claim 1 preclude the teachings of Colby. See In re Bush, 296 F.2d 491,496 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966). 4 Appeal 2016-001961 Application 12/829,777 whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658—59 (Fed. Cir. 1992) (emphasis added and citations omitted). Here, Appellants narrowly define the field of endeavor as processing that occurs within an industrial automation system. See App. Br. 7. We find, however, the field of endeavor is more broadly understood to encompass network communications. See, e.g., Spec, 6—7; In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). We agree with the Examiner that Colby and Callaghan both relate to this broader field of communications among such network components. See Final Act. 3; cf KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appellants present new arguments in the Reply Brief, regarding the level of modifications and experimentation necessary to incorporate the teachings of Callaghan into Colby (see Reply Br. 3). Appellants, however, had the opportunity to raise these arguments in the Appeal Brief in response to the Examiner’s findings in the Final Office Action (see Final Act. 2—8). As the new arguments by Appellants were not timely raised, they are deemed waived. See Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its opening brief... is waived.”) (internal citations and quotation marks omitted); see also 37 C.F.R. § 41.41(b)(2). Accordingly, we affirm the Examiner’s obviousness rejection of independent claim 1 and independent claim 9, and dependent claims 2—8 not argued separately. See App. Br. 8. 5 Appeal 2016-001961 Application 12/829,777 DECISION We affirm the Examiner’s rejection of claims 1—9 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation