Ex Parte JamisonDownload PDFBoard of Patent Appeals and InterferencesMay 16, 201110128375 (B.P.A.I. May. 16, 2011) 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. 10/128,375 04/23/2002 James D. Jamison III SVL920020007US1 7254 85831 7590 05/16/2011 Tucker Ellis & West LLP 925 Euclid Avenue Suite 1150 Cleveland, OH 44115-1414 EXAMINER FISHER, PAUL R ART UNIT PAPER NUMBER 3689 MAIL DATE DELIVERY MODE 05/16/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JAMES D. JAMISON, III ____________ Appeal 2010-003791 Application 10/128,375 Technology Center 3600 ____________ Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and MICHAEL W. KIM, Administrative Patent Judges. KIM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003791 Application 10/128,375 2 STATEMENT OF THE CASE This is an appeal from the final rejection of claims 1-311. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6. The claimed invention is generally directed to methods and systems used in providing strategic outsourcing and e-business hosting services in the field of pervasive computing where authorized corporate customers utilize the services, infrastructure, and processes of a middle-tier service provider (MTSP) (Spec. 1:2-5). Claim 1, reproduced below, is further illustrative of the claimed subject matter. 1. An integrated system for selectively enabling computing services for use by associated pervasive computing devices of users of said system through an associated middle tier service provider, the system comprising: a corporate mobility enablement CME service enablement system providing a secure insulation layer including authentication procedures for enabling only entitled users to utilize said computing services, the authentication procedures being adapted to be performed by the associated middle tier service provider; and, a corporate mobility enablement CME portal system in communication with the CME service enablement system and utilizing a secure hosting infrastructure for all interaction between said entitled users of the integrated system, corporate infrastructures, the associated middle tier service provider and partners. Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as anticipated by Gore (US Pat. 5,826,029, iss. Oct. 20, 1998) ; claims 3-8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gore; claims 9-13 and 18-27 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gore in view 1 Claims 32-39 are withdrawn (App. Br. 5, 67). Appeal 2010-003791 Application 10/128,375 3 of Jay Fry, Compuware announces EcoCHARGEBACK, Bus. Wire, 1 (Sep. 13, 1993) (hereinafter “Fry”); and claims 14-17 and 28-31 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gore in view of Fry and Peter Reefman, Getting personal--a guide to customized websites, 69 Australian CPA, 74 (Dec. 1999) (hereinafter “Reefman”). We AFFIRM and enter a NEW GROUND of rejection under 37 C.F.R. § 41.50(b). ISSUES Did the Examiner err in asserting that the authentication system situated between the internal and external networks of Gore anticipates “a corporate mobility enablement CME service enablement system providing a secure insulation layer including authentication procedures for enabling only entitled users to utilize said computing services, the authentication procedures being adapted to be performed by the associated middle tier service provider,” as recited in independent claim 1? Did the Examiner err in asserting that Gore renders obvious the subject matter of dependent claims 3-8 without providing supporting references for certain aspects of those claims? Did the Examiner err in asserting that the authentication system of Gore renders obvious “corporate mobility enablement CME account management system managing a utilization of said CME services and reporting said utilization of the CME services by the entitled users to said entity,” as recited in independent claim 9? Did the Examiner err in asserting that the authentication system of Gore renders obvious Appeal 2010-003791 Application 10/128,375 4 a corporate mobility system CME service enablement system providing a secure insulation layer including authentication procedures for enabling only said entitled employee users to utilize said CME services, the authentication procedures being adapted to be performed by the associated middle tier service provider whereby only said entitled employee users may access an infrastructure of said corporate mobility enablement portal system (CMEPS), and “corporate mobility enablement CME account management system managing a utilization of said CME services and reporting said utilization of said CME services by said entitled employee users to said entity,” as recited in independent claim 18? Did the Examiner err in asserting that a combination of Gore, Fry, and Reefman renders obvious “a wireless customer agent interface; a wireless public communications network interface in communication with the wireless customer agent interface; a wired customer agent interface; [and] a wired public communications network interface in communication with the wired public communications network interface,” “the management agent CME portal presenting a first view based on a management agent profile of said authorized users and authorized customer agents,” and “the executive agent CME portal presenting a second view based on an executive profile of said authorized users and authorized customer agents,” as recited in dependent claims 14 and 28? FINDINGS OF FACT We adopt the Examiner’s findings of fact, as set forth on pages 38-61 of the Examiner’s Answer. Appeal 2010-003791 Application 10/128,375 5 ANALYSIS Independent Claim 1 We are not persuaded the Examiner erred in asserting that the authentication system situated between the internal and external networks of Gore anticipates “a corporate mobility enablement CME service enablement system providing a secure insulation layer including authentication procedures for enabling only entitled users to utilize said computing services, the authentication procedures being adapted to be performed by the associated middle tier service provider,” as recited in independent claim 1 (App. Br. 25-29). We adopt the Examiner’s reasoning, as set forth on pages 38-43 of the Examiner’s Answer. Dependent Claims 3-8 We are not persuaded the Examiner erred in asserting that Gore renders obvious the subject matter of dependent claims 3-8 without providing supporting references for certain aspects of those claims (App. Br. 30-33). Appellant asserts that the Examiner has not provided adequate evidence to render obvious both wired and wireless networks, as recited in dependent claims 3 and 5 (App. Br. 30-31). However, column 3 of Gore is cited for disclosing a network system including external server 310 and internal server 320, where external server 310 is connected to the Internet (Exam’r’s Ans. 45). There are only two ways to connect servers 310, 320; through wired or wireless methods. Given the finite number of choices, we agree with the Examiner that it would have been obvious to connect server 310, 320 via wired or wireless methods. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 402-03 (2007) Appeal 2010-003791 Application 10/128,375 6 [w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. Insofar as our rationale differs from that set forth by the Examiner, we denominate it a new ground of rejection under 37 C.F.R. § 41.50(b). Appellant further asserts that the Examiner has not provided adequate evidence to render obvious either the SLA database recited in dependent claim 6, or the various trouble-shooting databases recited in dependent claim 8 (App. Br. 31-33). We agree with the Examiner that contents of these databases constitute printed matter that, as the claims are written, passively resides within and thus do not affect the operation of the claimed system (Exam’r’s Ans. 45-48). See In re Gulack, 703 F.2d 1381, 1385-86 (Fed Cir. 1983) (“[w]here the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability”). Independent Claim 9 We are not persuaded the Examiner erred in asserting that the authentication system of Gore renders obvious “corporate mobility enablement CME account management system; managing a utilization of said CME services and reporting said utilization of the CME services by the entitled users to said entity,” as recited in independent claim 9 (App. Br. 34- 37). By authenticating a user and creating a process environment for the user at daemon 314 on external server 310, Gore discloses “managing” the user’s utilization of the services of server 310 (col. 6, ll. 46-64). And as the Appeal 2010-003791 Application 10/128,375 7 creation of this process environment for the user is recorded somewhere on the network system, this utilization is also “reported,” as recited in independent claim 9. Independent Claim 18 We are not persuaded the Examiner erred in asserting that the authentication system of Gore renders obvious a corporate mobility system CME service enablement system providing a secure insulation layer including authentication procedures for enabling only said entitled employee users to utilize said CME services, the authentication procedures being adapted to be performed by the associated middle tier service provider whereby only said entitled employee users may access an infrastructure of said corporate mobility enablement portal system (CMEPS), and “corporate mobility enablement CME account management system managing a utilization of said CME services and reporting said utilization of said CME services by said entitled employee users to said entity,” as recited in independent claim 18 (App. Br. 37-41). The middle tier aspect is similar to that recited in independent claim 1. Accordingly, we again adopt the Examiner’s reasoning, as set forth on pages 38-43 of the Examiner’s Answer. For the managing and reporting aspects, we adopt the reasoning set forth above with respect to similar provisions of independent claim 9. Appeal 2010-003791 Application 10/128,375 8 Dependent Claims 14 and 28 We are not persuaded the Examiner erred in asserting that a combination of Gore, Fry, and Reefman renders obvious “a wireless customer agent interface; a wireless public communications network interface in communication with the wireless customer agent interface; a wired customer agent interface; [and] a wired public communications network interface in communication with the wired public communications network interface,” “the management agent CME portal presenting a first view based on a management agent profile of said authorized users and authorized customer agents,” and “the executive agent CME portal presenting a second view based on an executive profile of said authorized users and authorized customer agents,” as recited in dependent claims 14 and 28 (App. Br. 41-47). For the wired/wireless aspect, we adopt the reasoning set forth above with respect to similar provisions of dependent claims 3 and 5. Accordingly, insofar as our rationale differs from that set forth by the Examiner, we denominate it a new ground of rejection under 37 C.F.R. § 41.50(b). Concerning the recited first and second views, Appellant asserts that there is no teaching or suggestion in any of the art of record of a pair of processes including a []management agent CME portal and an executive agent CME portal wherein, as set out in claim 14, the management agent CME portal presents a first view based on a management agent profile of authorized users and authorized customer agents, and the executive agent CME portal presents a second view based on an executive profile of the authorized users and the authorized customer agents. Appeal 2010-003791 Application 10/128,375 9 (App. Br. 43, 46). However, the Examiner cites Gore for disclosing a CME portal and Reefman for disclosing “customize[d] websites based on the users profile information (Page 1, abstract …),” which the Examiner corresponds to the recited first and second views (Exam’r’s Ans. 33, 59-60). As Appellant has not identified any specific errors concerning either Reefman or the rationale for combining Gore and Reefman, we sustain this rejection. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“[o]nce a prima facie case of obviousness [is] established …, the burden shift[s] to appellant to rebut it”). See also In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (conclusory statements, without further analysis and evidence, do not demonstrate error in the Examiner’s position). This decision contains a new rationale for rejecting dependent claims 3, 5, and 14 under 35 U.S.C. § 103(a) pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner .… (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record .… Appeal 2010-003791 Application 10/128,375 10 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. § 1.136(a)(1)(iv). AFFIRMED; 37 C.F.R. § 41.50(b) hh Copy with citationCopy as parenthetical citation