Ex Parte Jamison

Board of Patent Appeals and Interferences

May 16, 2011

10128375 (B.P.A.I. May. 16, 2011)

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
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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).
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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
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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.

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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)
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[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
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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.
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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.
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(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 .…

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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)

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