Ex Parte O et alDownload PDFBoard of Patent Appeals and InterferencesAug 23, 201110285036 (B.P.A.I. Aug. 23, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte TIMOTHY O’KONSKI and ASHISH KARKARE ___________ Appeal 2010-011199 Application 10/285,036 Technology Center 2400 ____________ Before KRISTEN L. DROESCH, KALYAN K. DESHPANDE, and ERIC B. CHEN, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011199 Application 10/285,036 2 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). Appeal 2010-011199 Application 10/285,036 3 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 Appeal 2010-011199 Application 10/285,036 4 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”). Appeal 2010-011199 Application 10/285,036 5 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 Appeal 2010-011199 Application 10/285,036 6 “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- Appeal 2010-011199 Application 10/285,036 7 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 tj Copy with citationCopy as parenthetical citation