Ex Parte Knox et al

Patent Trial and Appeal Board

Jan 31, 2017

13172924 (P.T.A.B. Jan. 31, 2017)

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.
13/172,924 06/30/2011 Richard I. Knox GB920110079US1 8225
37945 7590 02/02/2017
DTTKFW YFF
EXAMINER
YEE AND ASSOCIATES, P.C. JOSHI, SURAJM
P.O. BOX 802333
DALLAS, TX 75380 ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
02/02/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptonotifs @yeeiplaw.com
mgamez @ yeeiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD I. KNOX and JAMES K. MACKENZIE
Appeal 2016-001173
Application 13/172,924
Technology Center 2400
Before JUSTIN BUSCH, SCOTT E. BAIN, and ALEX S. YAP,
Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 8—25, which are all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b)
We reverse.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. (App. Br. 2.)
Appeal 2016-001173
Application 13/172,924
STATEMENT OF THE CASE
Introduction
Appellants’ invention “relates generally to network data processing
systems and, in particular, to a method and apparatus for communications
between a client and a server.” (June 30, 2011 Specification (“Spec.”) 11.)
Specifically, according to the Specification, a “first request is received by a
first agent application on a first client computer system from the server
application to request to instruct a second agent application on a second
client computer system to communicate with the server application.
Responsive to receiving the first request, a second request is sent by the first
agent application to the second agent application on the second client
computer system to communicate with the server application.” {Id. 1 6,
emphases added.) Claim 8 is illustrative, and is reproduced below:
8. A computer system comprising:
a bus system;
a storage device connected to the bus system;
a processor unit; and
program code stored on the storage device, wherein a first
agent application on the computer system is configured to
process the program code to receive a first request from a server
application to request to instruct a second agent application on a
client computer system to communicate with the server
application and send a second request to the second agent
application on the client computer system to instruct the second
agent application to communicate with the server application in
response to receiving the first request.
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Appeal 2016-001173
Application 13/172,924
Prior Art and Rejections on Appeal
The following table lists the prior art relied upon by the Examiner in
rejecting the claims on appeal:
Agarwal et al.
(“Agarwal”)
Schneider
US 2009/0055489 Al Feb. 26, 2009
US 2009/0138602 Al May 28, 2009
Srivastava et al.
(“Srivastava”) US 2010/0318676 Al Dec. 16, 2010
Claims 8—11, 13—17, 19-22, 24, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Schneider in view of Agarwal. (See
Final Office Action (mailed Jan. 9, 2015) (“Final Act.”) 3—10.)
Claims 12, 18, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schneider, in view of Agarwal, and further in view
of Srivastava. (See Final Act. 10-12.)
ANAFYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We are persuaded that the Examiner
erred in rejecting the claims on appeal.
With respect to claim 8, the claim recites first agent application on
the computer system is configured to process the program code to receive a
first request from a server application . . . and send a second request to the
second agent application on the client computer system to instruct. . . in
response to receiving the first request.'” (Emphases added.) The Examiner
finds paragraphs 5 and 33 of Agarwal teach the limitation at issue:
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Appeal 2016-001173
Application 13/172,924
Agarwal does teach the first request is to instruct a second agent
application and sending a second request to the second agent
application on the client computer system to instruct the second
agent application to communicate with the server application in
response to receiving the first request (i.e., Notification 112 (first
and then second request) is transmitted by notification server
(first agent) from the server (sender) to recipient (second agent)
which includes information on how the second agent (recipient)
is to communicate with the sender (server), Paragraph 33) in
order to ensure delivery of a message (Paragraph 5).
(Final Act. 4, emphasis added; Ans. 12—13; see also Agarwal, FIGs. 2a and
2b described in paragraphs 33 and 34.) Appellants contend that “Agarwal
describes a notification server ‘sending’ a notification to a recipient (not a
cascaded series of different actions).” (App. Br. 9-11.) Specifically,
Appellants contend that the second request is not sent in response to the first
agent receiving the first request. (Id.)
We agree with Appellants that the portions of Agarwal cited by the
Examiner do not teach or suggest the limitation at issue. The claim
limitation requires, “a first agent application . . . send a second request to the
second agent application ... in response to receiving the first request.”
Here, the Examiner finds that Agarwal teaches the first and second requests
are transmitted by the notification server (first agent). (Final Act. 4
(“Notification 112 (first and then second request) is transmitted by
notification server (first agent) from the server (sender) to recipient (second
agent)”); Ans. 12—13.) However, the cited portions of Agarwal do not show
that the second request sent by the notification server (first agent), was sent
after receiving the first request (by the same notification server) in response
to the first request. (See Agarwal Tflf 33—36; FIGs. 2a and 2b.)
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Appeal 2016-001173
Application 13/172,924
To the extent the Examiner is interpreting Agarwal to teach a first
request being sent from the sender to the notification server (first agent) and
the second request is sent by the notification server to the recipient (second
agent), we do not agree, based on the record before us, that the Examiner has
explained how the “first request from a server application . . . instruct[s] a
second agent application [to] send a second request.”
For the foregoing reasons, we are persuaded of Examiner error in the
rejection of claim 8 and do not sustain the 35 U.S.C. § 103 rejection of claim
8.2 Independent claim 14 contains a similar limitation at issue and the
Examiner cites to the same passages of Agarwal for the limitation and makes
similar findings. (Final Act. 7 (“The limitations of Claim 14 are rejected in
the analysis of Claim 8 above, and the claim is rejected on that basis”).)
Thus, for the same reason, we do not sustain the 35 U.S.C. § 103 rejection of
independent claim 14, as well as claims 9-13 and 15—25, which depend from
independent claims 8 or 14.
DECISION
The decision of the Examiner to reject claims 8—25 is reversed.
REVERSED
2 Because we do not sustain the Examiner’s rejection for the reasons
discussed herein, we need not address Appellants’ further arguments. See
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
administrative agency is at liberty to reach a decision based on “a single
dispositive issue”).
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