Ex Parte Martin et al

Board of Patent Appeals and Interferences

Jan 28, 2005

09135230 (B.P.A.I. Jan. 28, 2005)

The opinion in support of the decision being entered today was not written
for publication in a law journal and is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte BRUCE K. MARTIN JR., PETER F. KING and STEPHEN S. BOYLE
________________
Appeal No. 2005-0004
Application No. 09/135,230
________________
ON BRIEF
________________
Before KRASS, MACDONALD and NAPPI, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner’s rejection
of claims 1 through 8, 21 through 23, 25 through 27, 38 through 42, 44 and 46. For the
reasons stated infra we affirm-in-part the examiner’s rejection of these claims.
The Invention
The invention relates to a system for controlling a network connection in
accordance with connection information, wherein the connection information is
associated with a destination on a network. (See appellants’ specification pages
2 and 3).
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Claim 1 is representative of the invention and is reproduced below:
1. A method for providing a network connection between a network browser and
a network, the network browser operating on a client machine, said method
comprising:
(a) selecting a particular network address to access a server machine
coupled to the network, the server machine being identified by the particular
network address;
(b) subsequently providing a network connection between the network
browser and the server machine in accordance with connection information
associated with the particular network address; and

(c) accessing the server machine located at the particular network
address using the network connection,
wherein the connection information is retrieved by accessing a
configuration table that resides in the client machine, and locating the connection
information stored in the configuration table indexed by at least a part of the
particular network address.
References
Gauvin et al. (Gauvin) 5,790,800 August 4, 1998
Little et al. (Little) 6,018,770 January 25, 2000
(filed Oct.13, 1997)
Pearce et al. (Pearce) PCT/ WO09/17030 April 23, 1998
Rejections at Issue
Claims 1 through 4, 7, 8, 21 through 23, 25 through 27, 38 through 42, 44 and 46
stand rejected under 35 U.S.C. § 103 as being unpatentable over Gauvin in view of
Little. Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Gauvin in view of Little and Pearce.
Appeal No. 2005-0004
Application No. 09/135,230
1 This decision is based upon the Appeal Brief received December 31, 2003 (certified as being
mailed on December 24, 2003, in accordance with 37 C.F.R. § 1.8(a)).
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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 brief,1
along with the examiner’s rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
With full consideration being given to the subject matter on appeal, the
examiner’s rejections and the arguments of appellants and examiner, for the reasons
stated infra, we will sustain the examiner’s rejection of claims 1 through 8, 21 through
23, 25 through 27, and 38 through 41 under 35 U.S.C. § 103. However, we will not
sustain the examiner’s rejection of claims 42, 44 and 46 under 35 U.S.C. § 103.
At the outset, we note that appellants state, on page 4 of the brief:
For this appeal, claims 1-8, 21-23, 25-27, 38-42, 44 and 46 do not stand or fall
together. Instead, these claims are argues individually in the following argument.
37 C.F.R. § 1.192(c) (7) (July 1, 2003) as amended at 62 Fed. Reg. 53196
(October 10, 1997), which was controlling at the time of appellants filing the brief,
states:
For each ground of rejection which appellant contests and which applies to
a group of two or more claims, the Board shall select a single claim from
the group and shall decide the appeal as to the ground of rejection on the
basis of that claim alone unless a statement is included that the claims of
the group do not stand or fall together and in the argument under
paragraph (c) (8) of this section appellant explains why the claims of the
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group are believed to be separately patentable. Merely pointing out
differences in what the claims cover is not an argument as to why the
claims are separately patentable.
Appellants have not individually argued dependent claims 2 through 4, 8, 22
through 27, and 39 through 41. Accordingly, we will group these claims with their
respective independent claim and will consider the claims in the following five (5)
groups:
-Group A will consist of claims 1 through 4 and 8, with claim 1 as the
representative claim.
-Group B will consist of claims 5 and 6, with claim 5 as the representative claim..
-Group C will consist of claims 21 though 27, with claim 21 as the representative
claim.
-Group D will consist of claims 38 through 41, with claim 38 as the representative
claim.
-Group E will consist of claims 42, 44 and 46, with claim 42 as the representative
claim.
Rejection of claims in group A (claims 1-4 and 8)
Appellants argue, on pages 5 and 6 of the brief, that claim 1
recites “providing a network connection between the network browser and the
server machine in accordance with connection information associated with the
particular network address” (claim 1, lines 6-8). Here, the network connection
being made serves to facilitate communication between the network browser and
the server machine, and the network connection is dependent on the connection
information which is associated with the particular network address.
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In contrast, Gauvin et al. describes a distributed computer environment in
which a mobile client 110 is able to connect to a gateway or router 120 through a
network 130.
Appellants assert, on page 7 of the brief, “[h]ence, although a connection
between a client and server can be achieved in Gauvin et al. from different access
locations, such a connection is NOT provided in accordance with connection information
associated with a particular network address of a server machine to be accessed.”
In response, the examiner states on page 4 of the answer:
Gauvin teaches a communication manager 200 on the client for managing
network communication using various protocols- IPX/SPX, Net BEUI, TCP/IP etc.
(See col. 4, lines 5-8). It is well known that these protocols require a destination
address of the server in order to make a connection with it. Gauvin further
teaches providing a database 300 containing information necessary to initiate
and maintain a communication connection to a server (See Col. 4 lines 9-12).
We concur with the examiner; however, before we consider the teachings of
Gauvin we must first determine the scope of the claim limitations. Claims will be given
their broadest reasonable interpretation consistent with the specification, limitations
appearing in the specification will not be read into the claims. In re Etter 756 F.2d 852,
858, 225 USPQ 1, 5 (Fed. Cir. 1985). In analyzing the scope of the claim, office
personnel must rely on the appellant’s disclosure to properly determine the given their
broadest reasonable interpretation consistent with the specification, meaning of the
terms used in the claims. Markman v. Westview Instruments, Inc., 52 F3d 967, 980,
34 USPQ2d 1321, 1330 (Fed. Cir. 1995). “[I]nterpreting what is meant by a word in a
claim ‘is not to be confused with adding an extraneous limitation appearing in the
specification, which is improper.’” (emphasis original) In re Cruciferous Sprout
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Litigation, 301 F.3d 1343, 1348, 64 USPQ2d 1202, 1205, (Fed. Cir. 2002) (citing
Intervet America Inc v. Kee-Vet Laboratories Inc. 12 USPQ2d 1474, 1476 (Fed. Cir.
1989)). “[T]he terms used in the claims bear a “heavy presumption” that they mean
what they say and have the ordinary meaning that would be attributed to those words by
persons skilled in the relevant art.” Texas Digital Sys, Inc. v. Telegenix, Inc., 308
F.3d 1193, 1202, 64 USPQ2d 1812, 1817 (Fed. Cir. 2002). “Moreover, the intrinsic
record also must be examined in every case to determine whether the presumption of
ordinary and customary meaning is rebutted.” (citation omitted). “Indeed, the intrinsic
record may show that the specification uses the words in a manner clearly inconsistent
with the ordinary meaning reflected, for example, in a dictionary definition. In such a
case, the inconsistent dictionary definition must be rejected.” Texas Digital Systems,
Inc. v. Telegenix, Inc., 308 F.3d at 1204, 64 USPQ2d at 1819 (Fed. Cir. 2002). (“[A]
common meaning, such as one expressed in a relevant dictionary, that flies in the face
of the patent disclosure is undeserving of fealty.”); Id. (citing Liebscher v. Boothroyd,
258 F.2d 948, 951, 119 USPQ 133, 135 (C.C.P.A. 1958) (“Indiscriminate reliance on
definitions found in dictionaries can often produce absurd results.”)).
Claim 1 includes the limitations “providing a network connection between the
network browser and the server machine in accordance with connection information
associated with the particular network address.” Appellants argue, on page 8 of the
brief: “the specification of the present application explains that the connection
information is about how to make a connection, not with whom to make a connection.”
We concur with this interpretation of the limitation. We find that the connection
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2 Definition taken from Computer Dictionary, The Comprehensive Standard For Business,
School, Library and Home, Microsoft Press, 1991.
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information is directed to how to make the network connection and the address
information identifies which server to make the network connection with. Claim 1 also
includes the limitation that a configuration table is “indexed by at a least part of the
particular network address.” The meaning of the term “index” is not discussed by
appellants in their arguments nor is it defined in appellants’ specification. We find that
the dictionary definition of “a listing of key words and associated data that point to the
location of more comprehensive information” to be consistent with the examples given
of an indexed table in appellants’ specification.2 Thus, we find that the scope of claim 1
includes a table of information related to how to make the network connection, indexed
by information which identifies which server to make the network connection with.
We find that Gauvin teaches a database is used to store the resources
necessary to maintain network connection (see column 5, lines 49-60). The database
contains information describing how the mobile computer should access the selected
server. Gauvin states “[t]he information can include the type of network to be used to
access the selected server, e.g. LAN or WAN.” (see column 6 line 67 to column 7, line
3). We consider selection of the server to be the information of whom to contact, the
address data, and the data identifying the network to be used, either LAN or WAN, to be
the how to make the connection, the connection information. Thus, we find that the
database of Gavin does store connection information for each address, the selected
server.
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3 Definition taken from Computer Dictionary, The Comprehensive Standard For Business,
School, Library and Home, Microsoft Press, 1991.
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On page 7 of the brief, appellants argue that:
Nothing in Little et al. teaches or suggests that connection information
pertaining to a particular network address to be accessed is utilized in making a
network connection between a network browser and a server machine
associated with the particular network address.
We are not convinced as the examiner relies upon Gauvin to teach retrieving
access information. As stated supra we find that Gauvin teaches the connection
information is in a database. A database is defined as “any aggregation of data a file
consisting of a number of records (or tables), each of which is constructed of fields
(columns) of a particular type, together with a collection of operations that facilitate
searching, sorting, recombination, and similar activities.”3 Thus, we find that Gauvin
teaches the information as claimed and that the information is described generically as
in a database, but we find that Gauvin is silent as to the data structure used in the
database and as such does not teach a table indexed by based upon network address.
Little teaches a computer system where a look up table (a form of a database) is used
to determine to which host, of a plurality of hosts, a particular packet of data is to be
sent. (Little, column 6, lines 18-29). The look up table is indexed based upon MAN
number (a host identifier, type of address) to determine a hardware address (see
column 7, lines 4-9). Thus, Little teaches that data for use in establishing network
connection should be indexed based upon address. We find that this suggests to the
skilled artisan that the database of Gauvin should be formatted as tables indexed by
address.
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Appellants argue, on page 8 of the brief, that neither Gauvin nor Little teaches
accessing a configuration table that is stored locally. Further, appellants state “[t]he
examiner appears to admit that Gauvin et al. lacks any teaching of a configuration table.
The Examiner instead relies upon Little et al. as teaching a configuration table. While
Little et al. does teach a configuration table 20, the configuration table 20 described in
Little et al. does not store ‘connection information.’” Further, on page 9 of the brief,
appellants argue “Gauvin et al. fails to teach or suggest accessing a configuration table
that resides in the client machine to locate connection information that is stored in the
configuration table indexed by at least part of a particular network address.”
The examiner’s response to these arguments, on page 5 of the answer, states
“Gauvin specifically teaches storing the table (database 300) locally on the client
machine. (See col. 4, lines 5-7).
We concur with the examiner. As stated supra we find that Gauvin teaches a
database which contains connection information which is accessed to establish network
connections with individual servers. Though, Gauvin does not teach the specific data
structure implemented in the database, Gauvin does teach that the database is stored
on the client machine. Further, as stated supra we find that Little suggests to the skilled
artisan that the database of Gauvin should be in the form of a table indexed by address.
For the forgoing reasons we sustain the examiner’s rejection of claim 1 and the
claims grouped with claim 1 in Group A, claims 2 through 8.
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Rejection of claims in Group B (claims 5 and 6).
On page 12 of the brief, appellants argue:
On page 10 of the Final Office Action, the examiner rejected claim 5 as
being unpatentable over Gauvin et al. in view of Little et al. and further in view of
Pearce et al. The Examiner admits that Gauvin et al. fails to disclose “the
utilization of more than one bearer networks for the mobile devices.” Final Office
Action, page 10. To supplement the deficient teaching of Gauvin et al., the
Examiner relies on Pearce et al. Although Pearce et al. does disclose multiple
communication networks, it does not teach choosing one of the available multiple
communication networks based on “the connection information associated with
the particular network address.”
The examiner responds, on page 6 of the answer, stating “Gauvin and Little
expressly teach selection of various networks” and cites several examples.
We concur with the examiner and further note that as discussed supra with
respect to claim 1, Gauvin teaches that selection of the network can be based upon the
connection information (see column 6, lines 67 to column 7, line 1, which describe that
the connection information identifies if the particular server is to be accessed via a LAN
or WAN). Accordingly, we sustain the examiner’s rejection of claim 5 and the claims
grouped with claim 5 in group B, claim 6.
Rejection of claims in Group C (claims 21 through 27).
On page 7 of the brief appellants argue:
For similar reasons to those as noted above with respect to claim 1, there is
nothing in Gauvin et al. that would teach or suggest one of ordinary skill in the art
to provide a network connection “in accordance with the obtained connection
information that is associated with the destination identity” of the remote server
from which a resource is to be retrieved.”
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We are not convinced by these arguments for the reasons stated supra with
respect to claim 1. Accordingly, we sustain the examiner’s rejection of claim 21 and the
claims grouped with claim 21 in group C, claims 22 through 27.
Rejection of claims in Group D (claims 38 through 41).
On pages 8 and 9 of the brief, appellants present arguments directed to the
rejection of claim 38, asserting that neither Gauvin nor Little teach or suggest accessing
a configuration table that is stored locally. As discussed supra with respect to claim 1,
we find that combination of Gauvin and Little teaches that a database containing the
configuration data is stored on the client machine. Gauvin teaches on that the client is a
mobile device (see figure 1, item 110 which is described as a mobile client).
Accordingly, we sustain the examiner’s rejection of claim 38 and the claims grouped
with claim 38 in group D, claims 39 through 42.
Rejection of claims in Group E (claims 42, 44 and 46).
Appellants argue, on pages 11 and 12 of the brief, “Neither Gauvin et al. nor
Little et al. teaches or suggests that connection information, to be stored in the
configuration table, is received at the client device over a network.”
In response, the examiner asserts, on page 6 of the answer, “Little clearly
teaches downloading the connection information for storage on the client device. (see
col. 4, lines 12-16).”
While we agree with the examiner, Little teaches downloading the connection
information, the download is to the gateway, item 12, figure 1, and not the client device
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as is required by each of claims 42, 44 and 46. Accordingly, we will not sustain the
examiner’s rejection of claims 42, 44 and 46.
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 or by filing a reply brief have not been considered and are deemed waived by
appellants (see 37 CFR § 41.37(c)(vii)) Support for this rule has been demonstrated by
our reviewing court in In re Berger 279 F.3d 975, 984, 61 USPQ2d 1523, 1528-1529
(Fed. Cir. 2002) wherein the Federal Circuit Court stated that because the appellant did
not contest the merits of the rejections in his brief to the Federal Circuit Court, the issue
is waived. See also In re Watts 354 F.3d 1362, 1368, 69 USPQ2d 1453, 1458 (Fed.
Cir. 2004).
In summary, we sustain the examiner’s rejection of claims 1 through 8, 21
through 23, 25 through 27, and 38 through 41under 35 U.S.C. § 103. However, we will
not sustain the examiner’s rejection of claims 42, 44 and 46 under 35 U.S.C. § 103.
The decision of the examiner is affirmed- in-part.
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ALLEN R. MACDONALD ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

RN/RWK
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Application No. 09/135,230
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