Ex Parte Kleinrock et al

Board of Patent Appeals and Interferences

Jun 23, 2003

08712502 (B.P.A.I. Jun. 23, 2003)

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The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte LEONARD KLEINROCK
and JOEL E. SHORT
________________
Appeal No. 2001-2260
Application 08/712,502
________________
ON BRIEF
________________
Before THOMAS, HAIRSTON, and JERRY SMITH, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from
the examiner’s rejection of claims 1-9, 11, 13, 14, 17-30 and 45-
47, which constitute all the claims remaining in the application.
The disclosed invention pertains to a method and apparatus
for connecting a user to a computer information network by
providing access numbers to a remotely located computing device
for subsequent access to the information network.
Appeal No. 2001-2260
Application 08/712,502
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Representative claim 1 is reproduced as follows:
1. A method for connecting a user to a computer information
network comprising the steps of:
providing a central processing station comprising a database
including an index of computer network access numbers and
associated information for using the numbers;
accessing the central processing station from a remote
computing device through a transmission line;
receiving location identifying information from the remote
computing device;
comparing the received location identifying information with
the index of network access numbers stored in the database;
selecting at least one appropriate computer network access
number from the database;
downloading the selected appropriate computer network access
number to the remote computing device.
The examiner relies on the following references:
Abel et al. (Abel) 5,289,371 Feb. 22, 1994
Weinberger et al. (Weinberger) 5,425,085 June 13, 1995
Chinnock et al. (Chinnock) 5,426,427 June 20, 1995
Claims 1-9, 11, 13, 14, 17-30 and 45-47 stand rejected under
35 U.S.C. § 103. As evidence of obviousness the examiner offers
Chinnock in view of Weinberger with respect to claims 1, 7-9, 11,
13, 14, 25, 26, 45 and 46, and Abel is added to this combination
with respect to claims 2-6, 12, 17, 18 and 47. Although not
Appeal No. 2001-2260
Application 08/712,502
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specifically listed in either rejection, claims 19-24 and 27-30
are apparently subject to the first noted rejection.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in the
claims on appeal. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
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Application 08/712,502
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F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
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Application 08/712,502
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arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellants have been considered in this
decision. Arguments which appellants could have made but chose
not to make in the brief have not been considered and are deemed
to be waived [see 37 CFR § 1.192(a)].
We consider first the rejection of the claims based on
Chinnock and Weinberger. The examiner explains how he finds the
claimed invention to be obvious over the applied references
[answer, pages 3-6]. With respect to independent claims 1 and
45, appellants argue that Chinnock does not teach a system for
receiving location identifying information and using this
information to search a database to select and download a
computer network access number to a remote computing device.
Appellants also argue that Weinberger teaches a least cost
routing device but the information is based on the dialed
telephone number and not on the location of the remote device.
Appellants argue that there is no motivation to modify the
Chinnock system with the least cost routing feature of Weinberger
because the user in Chinnock has already accessed the network
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Application 08/712,502
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[brief, pages 5-7 and 9]. With respect to independent claim 25,
appellants argue that neither Chinnock nor Weinberger teaches
using the telephone number of a remote computing device which was
used to call the central processing station in selecting the
appropriate access number [id., page 8].
With respect to claims 1 and 45, the examiner responds
that each of the host computers in Chinnock has the access
numbers of the other host computers. The examiner also notes
that since Chinnock determines the host computer based on
information supplied by the user, Chinnock teaches receiving
location identifying information of the user [answer, pages 8-
10]. With respect to independent claim 25, the examiner repeats
the latter argument [id., page 10].
We will not sustain the examiner’s rejection of
independent claims 1, 25 and 45. A key feature of these claims
is that a network access number is downloaded to the user’s
computer based on the location of the user. Thus, in the claimed
invention, the access number is selected based on the user’s
location. The host computers in Chinnock are selected after the
user has already accessed the network. The particular host
computer selected in Chinnock is based on the type of information
which the user is looking for and is not based on the location of
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the user. Although Chinnock teaches that the host computer is
selected based on user supplied information, there is no
suggestion that this information includes location information of
the user. The user’s location is completely unrelated to the
type of information that the user is looking for on the network.
Therefore, the examiner’s finding that Chinnock teaches receiving
location identifying information is incorrect. Since this key
feature of each of the independent claims is not taught or
suggested by Chinnock or Weinberger, the examiner has failed to
establish a prima facie case of the obviousness of these claims.
Since independent claims 1, 25 and 45 are not rendered
obvious by the collective teachings of Chinnock and Weinberger,
and since the additional teachings of Abel do not overcome the
deficiencies discussed above, we also do not sustain the
examiner’s rejection of any of the dependent claims.
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In summary, we have not sustained either of the
examiner’s rejections of the claims on appeal. Therefore, the
decision of the examiner rejecting claims 1-9, 11, 13, 14, 17-30
and 45-47 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
KENNETH W. HAIRSTON ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JERRY SMITH )
Administrative Patent Judge )
JS/dal
Appeal No. 2001-2260
Application 08/712,502
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