Ex Parte O et al

Board of Patent Appeals and Interferences

Aug 23, 2011

10285036 (B.P.A.I. Aug. 23, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TIMOTHY O’KONSKI and ASHISH KARKARE

___________

Appeal 2010-011199
Application 10/285,036
Technology Center 2400
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Before KRISTEN L. DROESCH, KALYAN K. DESHPANDE, and
ERIC B. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-20, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
Appellants’ invention relates to a method for probing a server. A
message including a flag is generated such that the message is deliberately
incomprehensible by the server. The flag includes a requirement providing
that the server does not satisfy the requirement such that the server must
generate a reply. The message is transmitted to the server and the reply is
received from the server in response to the requirement having not been
satisfied. (Spec. Abstract.)
Independent claim 1 is exemplary:
1. A method for probing a server, said method comprising:
generating a message comprising a flag, wherein said message
is deliberately incomprehensible by said server and wherein said flag
comprising a requirement of said server such that provided said server
does not satisfy said requirement, said server must generate a reply;
transmitting said message comprising said flag to said server;
and
receiving said reply from said server in response to said
requirement having not been satisfied.
Claims 1-4, 7-11, 14-18 and 20 stand rejected under 35 U.S.C.
§103(a) as being obvious over Oberstein (U.S. Patent Application
Publication No. 2002/0083213) and Kakivaya (G. Kakivaya et al., SOAP:
Simple Object Access Protocol, HTTP Working Group 1-23 (1999)).
Claims 5, 6, 12, 13 and 19 stand rejected under 35 U.S.C. §103(a) as
being obvious over Oberstein, Kakivaya and Hata (U.S. Patent No.
6,889,261).
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We are not persuaded by Appellants’ arguments (Br. 9-11) that the
combination of Oberstein and Kakivaya would not have rendered obvious
independent claim 1.
The Examiner acknowledged that Oberstein does not teach the
limitations “generating a message comprising a flag”, “wherein said flag
comprising a requirement of said server such that provided said server does
not satisfy said requirement, said server must generate a reply”,
“transmitting said message comprising said flag to said server” and
“receiving said reply from said server in response to said requirement having
not been satisfied.” (Ans. 4) The Examiner cited Kakivaya for the
disclosure of these limitations (Ans. 4-6) and concluded that independent
claim 1 would have been obvious over the combination of Oberstein and
Kakivaya (Ans. 6-7). We agree with the Examiner.
Oberstein describes simulating the “behavior of complex business
systems for . . . testing and certifying network application compatibility and
interoperability and for verifying the behavior of a firm’s internal systems”
at a network interface level. (¶ [0008].) Oberstein also describes that one
known messaging standard for communication and direct transactions is the
Simple Object Access Protocol (SOAP). (¶ [0002].) In one illustrative
example, Oberstein discloses that testing is performed to ensure that two
ECN-type (electronic communication network) securities trading networks
(ECN A and ECN B) are compatible through the use of a testing system T.
(¶ [0046].) To test the compatibility of ECN B (or system B), a user at ECN
A (or system A) “accesses a server running Certification System software of
a preferred embodiment via a user interface 210 (typically a Web browser)
to select a test to run.” (¶ [0055].) During the test, a Test Script 220
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interacts with the user and with a Protocol Engine 230 connected to the
user’s communication system 240. (¶ [0056].) The Test Script 220 controls
and receives event notifications with respect to the Protocol Engine 230’s
performance (¶ [0058]), including “deliberately causing protocol errors or
non-standard protocol behavior to test the resilience of the user’s system
240” (¶ [0064]). In other words, Oberstein teaches “wherein said message is
deliberately incomprehensible by said server,” as recited in claim 1.
Kakivaya defines Simple Object Access Protocol (SOAP) as an “RPC
[remote procedure call] mechanism using XML [Extensible Markup
Language] for client-server interaction across a network.” (§ 1.) Kakivaya
describes that a header element can be tagged with a “mustUnderstand”
attribute, which can have a value of either “1” or “0” (§ 6.5.1) (i.e.,
corresponding to the claimed “generating a message comprising a flag”).
However, if the SOAP implementation does not understand this header
element, “it must return an error” (§ 6.5.1) (i.e., corresponding to the
claimed “wherein said flag comprising a requirement of said server such that
provided said server does not satisfy said requirement”). Kakivaya further
describes that “SOAP works with today’s deployed World Wide Web and
provides extensibility mechanisms for future enhancements” (§ 3) (i.e.,
corresponding to the claimed “transmitting said message comprising said
flag to said server”). Last, Kakivaya describes that “[i]f a method call fails
to be processed because of a non-understood extension header element . . .
the method invocation must return a SOAPFault” (§ 7.2) (i.e., corresponding
to the claimed “receiving said reply from said server in response to said
requirement having not been satisfied”).
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Thus, the combination of Oberstein and Kakivaya is nothing more
than incorporating the known SOAP messaging protocol, as taught by
Kakivaya, with the known method of testing compatibility between two
ECN systems, as taught by Oberstein, which does no more than yield
predictable results. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007). Thus, we agree with the Examiner (Ans. 6-7) that incorporating the
SOAP messaging protocol of Kakivaya with Oberstein would have been
obvious.
Appellants argue that “the intended functionality of Oberstein and
Applicants’ invention bear no relationship to each other” because
“Appellants understand Oberstein to teach a method of testing a first user’s
system’s (system A) compatibility with a second user’s system (system B)”
while “Applicants’ invention focuses upon a method for probing a server to
in part determine its online status, which includes the transmitting of a
generated message to a server.” (Br. 9.) However, Appellants’ arguments
are not commensurate in scope with the claim language because claim 1
does not require probing a server to determine its online status.
Related to this previous argument, Appellants also argue that
“Oberstein remains silent as to generating a message for a server,
transmitting this message to the server, and receiving a reply from this
server” (Br. 9) and “nothing in Oberstein suggests substituting a server such
as in Applicants’ invention for Oberstein’s user system in order to test
compatibility, or sending a flagged message to this server” (Br. 9-10).
However, the Examiner cited Kakivaya, rather than Oberstein for the
disclosure of the claim limitations “generating a message comprising a flag”,
“transmitting said message comprising said flag to said server” and
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“receiving said reply from said server in response to said requirement having
not been satisfied.” (Ans. 4-6.)
Appellants further argue that “modifying Oberstein according to
Applicants’ invention would render Oberstein inoperable for its intended
purpose” because “substituting Applicants’ server as Oberstein’s user
systems would render Oberstein unsatisfactory for testing its user systems’
compatibility” (Br. 10) and “Kakivaya does not overcome these
shortcomings” (Br. 11). However, as discussed previously, the rejection of
claim 1 is based on the combination of the known SOAP messaging protocol
of Kakivaya with the known method of testing compatibility between two
ECN systems of Oberstein, to yield predictable results. The rejection of
claim 1 is not based on “substituting Applicants’ server as Oberstein’s user
systems” (Br. 10), as argued by Appellants.
Thus, we agree with the Examiner that the combination of Oberstein
and Kakivaya would have rendered obvious independent claim 1.
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claims 2-4 and 7 depend from independent claim 1 and
Appellants have not presented any substantive arguments with respect to
these claims. Therefore, we sustain the rejection of claims 2-4 and 7 under
35 U.S.C. § 103(a) for the reasons discussed with respect to independent
claim 1.
Independent claims 8 and 15 recite limitations similar to those
discussed with respect to independent claim 1 and Appellants have not
presented any substantive arguments with respect to these claims.
Therefore, we sustain the rejection of claims 8 and 15, as well as claims 9-
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11, 14, 16-18 and 20, which depend from claims 8 and 15, for the reasons
discussed with respect to claim 1.
With respect to dependent claims 5, 6, 12, 13 and 19, Appellants
merely argue that Hata does not cure the deficiencies of Oberstein and
Kakivaya. (Br. 12-13.) We are not persuaded by these arguments for the
reasons discussed with respect to claims 1, 8 and 15, from which claims 5, 6,
12, 13 and 19 depend. Accordingly, we sustain the rejections of claims 5, 6,
12, 13 and 19.
DECISION
The decision to reject claims 1-20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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