Ex Parte Jones et al

Board of Patent Appeals and Interferences

Feb 4, 2010

09831274 (B.P.A.I. Feb. 4, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte IAN JONES and NGO NEUV
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Appeal 2009-001385
Application 09/831,2741
Technology Center 2400
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Decided: February 4, 2010
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Before JEAN R. HOMERE, DEBRA K. STEPHENS, and JAMES R.
HUGHES, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on May 9, 2001. This application is a national stage entry of
PCT/GB99/03834, which has an international filing date of November 17,
1999. Further, PCT/GB99/03834 claims foreign priority to 98310090.0,
which was filed on December 9, 1998. The real party in interest is British
Telecommunications Public Ltd., Co. (App. Br. 3.)
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 14, 16 through 21, and 23 through 34.
(App. Br. 5.) Claims 1 through 13, 15, and 22 have been cancelled. (Id.)
We have jurisdiction under 35 U.S.C. § 6(b) (2008).
We reverse and enter a new ground of rejection.
Brief Summary of The Invention
Appellants invented a method and apparatus for maintaining
communication within a circuit switched network, such as an Asynchronous
Transfer Mode (“ATM”) network. (Spec. 1, ll. 4-6.) In particular, the
communication network utilizes a Uniform Resource Locator (“URL”)
including an identifier part, which identifies a resource as being accessible
via a circuit switched network, an address part comprising a service
parameter part, and the address of the resource. (Spec. 2, ll. 4-8.)
According to Appellants, the claimed invention “enables the dynamic
bandwidth and [quality of service (“QoS”)] characteristics associated with
ATM technology to be exploited and, importantly, helps to hide the
complexity of establishing ATM [Switched Virtual Circuits (“SVCs”)] from
the end user.” (Spec. 16, ll. 18-20.)
Illustrative Claim
Independent claim 14 further illustrates the invention as follows:
14. A method for operating a network circuit using a uniform
resource locator (URL), the uniform resource locator comprising a
circuit-switched identifier part identifying a resource as being
accessible via a circuit-switched network, an address part comprising
the address of the resource, and a service parameter part, wherein it is
the circuit-switched identifier part which identifies the specific type of
circuit switched network via which the resource is accessible, the
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service parameter part determines parameters of a connection in the
specific type of circuit switched network identified by the circuit-
switched identifier part to the resource, and the uniform resource
locator has the format:
://*
where * is a predetermined separator character.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Dominique Bonjour, et al., Internet applications over native ATM, 30
COMPUTER NETWORKS AND ISDN SYSTEMS 1097, 1097-1110 (1998)
(hereinafter “Bonjour”).

UNIFORM RESOURCE LOCATORS (URL), 2-25 (Tim Berners-Lee et al.
eds., 1994), (hereinafter “Lee”).

HF ZHU, DNS AND URL LEVEL ADDRESSING FOR PUBLIC CIRCUIT-
SWITCHING NETWORK DEVICES ,
(University of Texas-Austin, Oct. 1997) (hereinafter “Zhu”).

Rejection on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 14, 16 through 21, and 23 through 34 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Bonjour, Lee,
and Zhu.
Appellants’ Contentions
Appellants contend that Lee’s disclosure of protocols suitable for use
in relation to packet switched networks does not teach a URL that includes a
circuit switched identifier part that identifies a resource as being accessible
via a circuit switched network. (App. Br. 20-21.) In particular, Appellants
argue that Lee’s disclosure of utilizing packet switched networks teaches
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away from a URL comprising a circuit switched identifier part. (Id. at 22.)
Further, Appellants contend that Zhu’s disclosure of replacing telephone or
fax numbers with URLs does not teach a service parameter part that
determines parameters of a connection in a circuit switched network. (Id. at
24-25.) Additionally, Appellants allege that there is insufficient rationale for
the proffered combination. (Id. at 22-24.)
Examiner’s Findings and Conclusions
The Examiner finds that Bonjour’s disclosure of using URLs in an
ATM network, in conjunction with Lee’s disclosure of how URL syntax and
semantics vary in accordance with a specified scheme, teaches a URL
scheme utilized in a circuit switched network as claimed. (Ans. 14-15.)
Further, the Examiner finds that Lee does not teach away from the claimed
invention because it is within the scope of the prior art analogous to the
claimed invention. (Id. at 15-16.) Additionally, the Examiner finds that
there is sufficient rationale for the proffered combination. (Id. at 15.)

II. ISSUE
The pivotal issue before us is whether Appellants have shown that the
Examiner erred in concluding that that the combination of Bonjour, Lee, and
Zhu render independent claim 14 unpatentable. In particular, the issue turns
on whether the proffered combination teaches “[a] uniform resource locator
[that] has the format: ://*,” as recited in independent claim 14.

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III. FINDINGS OF FACT
The following Findings of Fact (“FF”) are shown by a preponderance
of the evidence.
Appellants’ Invention
1. Appellants’ Specification discloses that the first aspect of the
claimed invention provides a digital signal encoded with a URL. (Spec. 2,
ll. 4-5.) Additionally, Appellants’ Specification states that “[t]he [claimed]
invention…encompasses a signal carrier carrying a signal in accordance
with the first aspect of the [claimed] invention.” (Spec. 3, ll. 6-7.)
Bonjour
2. Bonjour generally relates to the adaptation of existing Internet
applications to native ATM. (1098, Para. [1]-[3].) In particular, Bonjour
discloses that existing Internet applications can operate directly over an
ATM network. (Id.) Further, Bonjour discloses reusing existing Internet
naming structures whereby ATM-attached application servers retain their
usual Domain Name System (“DNS”) style names. (1099, Para. [2].)
Lee
3. Lee generally relates to a URL, including the syntax and
semantics of formalized information for location and access of resources via
the Internet. (1, Abst.)
4. Lee discloses that “URLs are used to locate resources that
contain pointers to other resources.” (4, Sec. 2.3.) Lee discloses that an
Hypertext Transfer Protocol (“HTTP”) “URL scheme is used to designate
Internet resources accessible using HTTP.” (9, Sec. 3.3.) “An HTTP URL
takes the form: http://>:/?.” (Id.)
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Further, Lee discloses that new schemes should try to follow the same
syntactic conventions of existing schemes. (17, Sec. 4.)

IV. PRINCIPLES OF LAW
Obviousness
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner's position. See In re Kahn, 441 F.3d 977, 985-86 (Fed.
Cir. 2006) (“‘On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.’”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).

V. ANALYSIS
Claim 14
Independent claim 14 recites, in relevant part: “[a] uniform resource
locator [that] has the format: ://*.”
As detailed in the Findings of Fact section above, Bonjour discloses
adapting existing Internet applications to an ATM network thereby allowing
each application to operate directly over the ATM network. (FF 2.) In
particular, Bonjour discloses that each application will reuse their existing
Internet DNS name. (Id.) We find that Bonjour’s disclosure teaches using a
URL for applications within an ATM network, or a circuit switched
network.
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Further, Lee discloses utilizing a URL, including varying syntax and
semantics formats, to locate and access resources via the Internet. (FF 3.)
For example, Lee discloses that an HTTP URL scheme is used to designate
Internet resources accessible using HTTP, e.g., http://>:/
?. (FF 4.) Further, Lee discloses that new URL
schemes should follow the same syntactic conventions of existing schemes.
(Id.) We find that Lee’s disclosure teaches utilizing a scheme dependent on
a URL’s syntax and semantics to access a resource. At best, we find that an
ordinarily skilled artisan would readily appreciate that Bonjour’s disclosure
of using a URL for applications within a circuit switched network, in
conjunction with Lee’s disclosure of utilizing a scheme dependent on a
URL’s syntax and semantics to access a resource, teaches utilizing a scheme
dependent on a URL’s syntax and semantics to access a resource in a circuit
switch network. However, we agree with Appellants’ that the cited
disclosures fall short of teaching or suggesting utilizing a URL that has the
following format: ://*. In particular, we find the proffered disclosure to be
wholly silent about including a service parameter as part of the URL.
Further, we find that Zhu does not cure the noted deficiencies of Bonjour
and Lee. It follows that the Examiner has improperly relied upon the
combined disclosures of Bonjour, Lee, and Zhu to teach or suggest the
disputed limitations.
Since Appellants have shown at least one error in the rejection of
independent claim 14, we need not reach the merits of Appellants’ other
arguments. Accordingly, Appellants have shown that the Examiner erred in
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concluding that Bonjour, Lee, and Zhu renders independent claim 14
unpatentable.
Claims 16 through 21 and 23 through 34
Because claims 16 through 21 and 23 through 34 also incorporate the
limitations discussed above, we find that Appellants have also shown error
in the Examiner’s rejection of these claims for the reasons set forth in our
discussion of independent claim 14.

VI. NEW GROUND OF REJECTION
35 U.S.C. § 101 Rejection
Independent claims 20 and 27 recite, in relevant part, “[a] machine-
readable carrier tangibly carrying machine executable instructions and a
URL for operating a network circuit using the URL.”
According to Appellants' Specification, machine-readable carriers
carrying a URL may either be construed as a digital signal encoded with a
URL or a signal carrier carrying a signal. (FF 1.) We find that such
transmissions implicate a carrier wave or a signal modulated by a carrier
over a transmission medium. Therefore, independent claims 20 and 27
encompass the use of a computer data signal embodied in a carrier wave to
transmit information. A computer data signal embodied in a carrier wave is
a transitory, propagating signal not within any of the four statutory
categories and, therefore, non-statutory. See In re Nuijten, 500 F.3d 1346,
1357 (Fed. Cir. 2007). It follows that independent claims 20 and 27 are
directed to non-statutory subject matter.
Independent claim 21 recites, in relevant part, “[a] Uniform Resource
Locator product with a uniform resource locator (URL).”
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Patentable subject matter must fall within one of the categories set out
in 35 U.S.C. § 101. See In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir.
2009), petition for cert. filed, 77 U.S.L.W. 3680 (U.S. Jun. 2, 2009) (No. 08-
1501); Nuijten, 500 F.3d at 1359. Appellants’ “URL product” claim
appears, at first glance, to fall within the category of an article of
manufacture, defined as a “tangible article or commodity” “resulting from
the process of manufacture.” Nuijten, 500 F.3d at 1356 (citing Diamond v.
Chakrabarty, 447 U.S. 303, 308 (1980); Bayer AG v. Housey Pharms., Inc.,
340 F.3d 1367, 1373 (Fed. Cir. 2003)). However, a close review of
Appellants’ “URL product” claim shows that it does not recite a tangible
article or commodity resulting from the process of manufacture, but rather
encompasses either a digital signal encoded with a URL or a signal carrier
carrying a signal. (FF 1.) We find that Appellants’ “URL product” claim
implicates a carrier wave or a signal modulated by a carrier over a
transmission medium. Therefore, independent 21 encompasses the use of a
computer data signal embodied in a carrier wave to transmit information. A
computer data signal embodied in a carrier wave is a transitory, propagating
signal not within any of the four statutory categories and, therefore, non-
statutory. See Nuijten, 500 F.3d at 1357. It follows that independent claim
21 is directed to non-statutory subject matter.
Because claims 23 through 26 also incorporate a “URL product” as
discussed above, we find that these claims are also directed to non-statutory
subject matter.

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VII. CONCLUSIONS OF LAW
1. Appellants have shown that the Examiner erred in rejecting
claims 14, 16 through 21, and 23 through 34 as being unpatentable under 35
U.S.C. § 103(a).
2. However, we have entered a new ground of rejection against
claims 20, 21, and 23 through 27 as being directed to non-statutory subject
matter under 35 U.S.C. § 101.

VIII. DECISIONS
1. We reverse the Examiner’s decision to reject claims 14, 16
through 21, and 23 through 34 as being unpatentable under 35 U.S.C. §
103(a).
2. We reject claims 20, 21, and 23 through 27 as being directed to
non-statutory subject matter under 35 U.S.C. § 101.

37 C.F.R. § 41.50(b) provides that, “[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 the Appellants, 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 proceedings (37 C.F.R. § 1.197 (b)) 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
37 C.F.R. § 41.52 by the Board upon the same record …
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REVERSED
37 C.F.R. § 41.50(b)

nhl

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