Ex Parte Kim et al

Patent Trial and Appeal Board

Apr 22, 2014

11932075 (P.T.A.B. Apr. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte STEVEN D. KIM and LIOR ELAZARY
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Appeal 2011-005685
Application 11/932,075
Technology Center 2400
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Before CARLA M. KRIVAK, JEFFREY S. SMITH and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 4-12, 14-18, and 20-25.1 We have jurisdiction under 35
U.S.C. § 6(b). We reverse.

STATEMENT OF THE CASE
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellants’

1 The Examiner withdrew the rejection under 35 U.S.C. § 101. See Ans. 3.
Appeal 2011-005685
Application 11/932,075

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arguments. We concur with Appellants’ conclusion that the Examiner erred
in finding Frailong’s (U.S. 6,496,858 B1) column 5, lines 37-40 teach “an
application program parameter” as recited in independent claim 4.2 We
disagree with the Examiner’s findings that Frailong teaches the claimed
subject matter. Specifically, Appellants argue
Although the Examiner has steadfastly maintained his position
throughout prosecution that the relied upon passage teaches “at
least one parameter as claimed[”] (Answer, p. 17), he has
provided no reasoning, rationale, explanation, or evidence as to
why a person of ordinary skill in the art would understand the
network interface device of Frailong to encompass an
“application program” such that the parameters related to the
network interface device would be properly understood as
“application program parameters[.]”

Reply Br. 2; see also App. Br. 6.

The Examiner finds the configuration information related to LAN
210, internet address blocks, internet domain names, and data related to the
physical and logical interfaces between the client network 220 and ISP 204
as taught by column 5, lines 37-40 of Frailong teach the claimed
“application program parameter.”See Ans. 17. However, the Examiner has
not persuasively explained how configuration parameters for the LAN,
internet address blocks, internet domain names, and data related to interfaces
teach parameters for an “application program.” Because the Examiner has
not provided adequate reasoning responding to Appellants’ argument that
the Examiner fails to explain how the network interface device of Frailong
teaches an “application program,” we are constrained by the record to not

2 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
Appeal 2011-005685
Application 11/932,075

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sustain the Examiner’s rejection of independent claim 4, and claims 10 and
16 argued together (App. Br. 6, 9), and corresponding dependent claims.

DECISION
The Examiner’s decision rejecting claims 4-12, 14-18, and 20-25 is
reversed.

REVERSED

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