Ex Parte Knox et al

Patent Trial and Appeal Board

Feb 16, 2017

13172919 (P.T.A.B. Feb. 16, 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.
13/172,919 06/30/2011 Richard I. Knox GB920110064US1 8214
37945 7590 02/21/2017
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
02/21/2017 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 2016-001172
Application 13/172,919
Technology Center 2400
Before MICHAEL J. STRAUSS, SHARON FENICK, and
MICHAEL J. ENGLE, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-001172
Application 13/172,919
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 7—20, which are all of the claims now pending. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
THE INVENTION
The claims are directed to a client server communication system.
Spec., Title. Claim 7, reproduced below with an argued limitation
emphasized in italics, is illustrative of the claimed subject matter:
7. 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 the
processor unit is configured to process the program code to send
a first request to a first agent application to communicate with a
server application, wherein the first agent application is located
in a first network, and send a second request to a second agent
application to instruct the first agent application to communicate
with the server application in response to the first agent
application failing to respond to the first request, wherein the
first agent application is located on a first client computer system
that is in a zone with a second client computer system on which
the second agent application is located.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hayes US 2005/0159823 A1 July 21, 2005
Agarwal US 2009/0055489 A1 Feb. 26, 2009
Schneider US 2009/0138602 A1 May 28, 2009
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Appeal 2016-001172
Application 13/172,919
REJECTIONS
The Examiner made the following rejections:
Claims 7, 8, 10-14, and 16—20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Schneider and Agarwal.
Claims 9 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schneider, Agarwal, and Hayes.
APPELLANTS’ CONTENTION1
Appellants contend AgarwaTs recipient, mapped by the Examiner to
the claimed “first agent,” only “identifies a delay upon receiving a
notification, who may then decide to communicate using an out-of-band
communication and provide an IP address for a sender” but that Agarwal
does not teach or suggest a server executing the server-performed steps
defined by the argued limitation of claim 7. App. Br. 8—9.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner erred in rejecting independent claims 7 and 13
under 35 U.S.C. § 103(a) as unpatentable over Schneider and Agarwal. We
agree with Appellants’ conclusions as to this rejection of the claims.
The Examiner finds AgarwaTs second message/request 112, which
may include information about how to communicate with the sender of an
email message, “represents the second message/request sent to the 2nd agent
application to instruct the 1 st agent application to communicate with the
server application” as required by claim 7. Ans. 12—13. Appellants argue
1 We note Appellants raise additional contentions of error but we do not
reach them as our resolution of this contention is dispositive of the appealed
rejections under 35 U.S.C. § 103(a).
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Appeal 2016-001172
Application 13/172,919
Agarwal’s notification 112 is not equivalent to the claimed second request
because it “is not sent responsive to a ‘first agent application ’failing to
respond to a ‘first request’. Instead, this ‘notification 112’ is sent responsive
to a sender sending an email message (Agarwal paragraph [0028]).” Reply
Br. 2-3.
We agree with Appellants. While the overall concept of initiating
contact over an alternate communications path when no response is received
(e.g., “tell your brother to call home, he doesn’t answer his phone” or “try
his cellphone, his landline isn’t working”) may be obvious, the Examiner’s
specific mapping of the prior art to the disputed claim language fails to teach
the argued limitation. In particular, Agarwal’s asserted notification 112
(which the Examiner maps to the “second request” of claim 7) is always sent
(see Agarwal ]ff[ 27—29, 33) and is not disclosed to be sent in response to
recipient 108 (the “first agent application”) failing to respond to Electronic
Mail Message 102 (the “first request”) as required by claim 7. Accordingly,
on the record before us, we do not sustain the rejection of independent claim
7 and, for the same reason, we do not sustain the rejection of independent
claim 13 together with the rejection of dependent claims 8—12 and 14—20
which stand with their respective parent claims.
We note, in an ex parte appeal, the Board “is basically a board of
review—we review . . . rejections made by patent examiners.” Ex parte
Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). “The review authorized by
35 U.S.C. Section 134 is not a process whereby the examiner . . . invite[s]
the [Bjoard to examine the application and resolve patentability in the first
instance.” Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). Because
we are a board of review and not a place of initial examination, we do not
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Appeal 2016-001172
Application 13/172,919
engage in a de novo examination supplementing the Examiner’s findings in
this particular case. Although the Board is authorized to reject claims under
new grounds pursuant to 37 C.F.R. § 41.50(b), no inference should be drawn
when the Board elects not to do so. See Manual of Patent Examining
Procedure (MPEP) § 1213.02 (9th Ed., Mar. 2014).
Furthermore, our decision is limited to the findings before us for
review. The Board does not “allow” claims of an application. Rather, the
Board’s primary role is to review adverse decisions of examiners including
the findings and conclusions made by the Examiner. See 37 C.F.R.
§ 41.50(a)(1) (“The Board, in its decision, may affirm or reverse the decision
of the examiner in whole or in part on the grounds and on the claims
specified by the examiner.”). Therefore, despite this Decision reversing the
Examiner’s rejection, no inference should be made as to whether other prior
art may exist rendering the claims unpatentable.
DECISION
We reverse the Examiner’s decision to reject claims 7—20.
REVERSED
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