Ex Parte Philyaw

Board of Patent Appeals and Interferences

Oct 28, 2011

10791678 (B.P.A.I. Oct. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JEFFRY JOVAN PHILYAW
____________________

Appeal 2009-015272
Application 10/791,678
Technology Center 2400
____________________

Before: HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-015272
Application 10/791,678

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-36. We reverse, but enter a new
ground of rejection under 35 U.S.C. § 103(a). ( 37 CFR § 41.50(b)).

THE CLAIMED INVENTION
Appellant claims a method and apparatus for accessing a remote
location by sensing a machine-resolvable code (Specification 2:5-9). Claim
1 is illustrative of the claimed subject matter:
1. A method of accessing one or more remote locations
on a network by sensing a machine-resolvable code, comprising
the steps of:
providing a first computer disposed on the network, the
first computer being interfacable to an input device for sensing
a machine-resolvable code proximate a first location, the first
computer running a software application which includes a
software identification code unrelated to the machine resolvable
code having an association with at least one of the one or more
remote locations;
accessing with the first computer a second computer
disposed on the network in accordance with routing information
provided by the first computer and in response to sensing by the
input device the machine-resolvable code proximate the first
location;
transferring to the second computer from the first
computer at least the software identification code;
storing in an associative database at the second computer
associations between software identification codes and ones of
the one or more remote locations and operable to have routing
information associated with each of the one or more remote
locations;
performing a lookup operation at the second computer to
match the software identification code with the associated at
least one of the one or more remote locations in accordance
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with the stored associations to obtain associated remote routing
information corresponding to the associated at least one of the
one or more remote locations;
returning to the first computer from the second computer
the remote routing information of the at least one of the one or
more remote locations determined at the second computer to
correspond to the software identification code that was
transferred from the first computer to the second computer; and
accessing with the first computer the associated at least
one of the one or more remote locations according to the
returned remote routing information to retrieve remote
information from the one of the one or more remote locations
associated with the returned remote routing information.

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wilz, Sr. US 6,152,369 Nov. 28, 2000

REJECTION
The following rejection is before us for review: the Examiner rejected
claims 1-36 under 35 U.S.C. § 102(e) over Wilz, Sr.

ISSUES
Did the Examiner err in rejecting claims 1-36 under 35 U.S.C.
§ 102(e) over Wilz, Sr. as disclosing sensing a machine-resolvable code on a
first computer which includes a software identification code and transferring
to a second computer from the first computer at least the software
identification code, since Wilz, Sr. discloses sensing a URL in a bar code
that is used to access the URL in the bar code, but which does not disclose
transferring any software identification code?
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FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. Wilz, Sr. discloses a system to connect a first “Access System”
computer to a second “Server” computer using scanned barcodes, in that
it provides connecting the “Internet Access System to the Internet
Server that contains the information resource specified by the scanned
DN/PN-encoded or URL-encoded bar code symbol.” (Col. 2 ll. 58-67).
2. Wilz, Sr. discloses utilizing Internet protocols, using “well known
TCP/IP networking protocols. In general, the Internet infrastructure
comprises Internet Service Providers (ISPs), Network Service Providers
(NSPs), routers, telecommunication lines and channels, etc., all well
known in the art.” (Col. 10 ll. 28-37).
3. Wilz, Sr. discloses that “[e]ach Internet Web-site Server is assigned a
unique TCP/IP address (and Domain Name) on the Internet, and is
provided with Internet networking software to support the TCP/IP
protocol.” (Col. 11 ll. 3-6).
4. We understand that the Internet uses TCIP/IP protocols which employ
domain name servers to resolve URL addresses.
5. We understand it is common for a computer to have recorded in its
TCP/IP software files the IP address of a Domain Name Server which is
consulted to resolve URL addresses into IP addresses.
6. We further understand that a message sent to a Domain Name Server to
resolve a URL includes the IP address of that Domain Name Server in
the packet addressing.
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7. Wilz, Sr. discloses initiating TCP/IP actions in response to sensing by
the input device the machine-resolvable code, in that the bar code reader
system performs these steps:
(i) read a bar code symbol that has been encoded
with the complete URL of an Internet information
resource to be accessed; and (ii) affix thereto a
prefix code string (i.e., CTR(L)) representative of
the Internet browser program command that writes
the URL into the information resource "Goto"
window of the Internet browser program, and a
suffix code string (i.e., RTN) representative of the
Internet browser program command that executes a
HTTP request on the URL entered into the "Go to"
window.
(Col. 13 ll. 25-33).

8. We accept as our own the Examiner’s findings as to claims 2 (Answer
6), 4-8 (Answer 7), 11-16 (Answer 8-10), 18, 20-24, and 27-36 (Answer
10-11).
9. Wilz, Sr. discloses audio used as a machine-resolvable code in that “a
large-vocabulary speech recognition subsystem may be integrated
within the remote housing 42 so that the user can enter information to
the Internet browser by speaking rather than through manual keystroke”
(Col. 36 ll. 11-17).
10. We understand that domain name servers contain a database of
hostnames/uniform record locator addresses corresponding to IP
addresses for those hostnames/URL records.
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ANALYSIS
Rejection of Claims 1-36 under Section 102(e)
Independent claims 1 and 17 each recite essentially identical claim
requirements, though claim 1 is directed to a method and claim 17 is
directed to a system.
Appellant argues “the cited portions of Wilz do not disclose that any
information is transferred from a first computer to a second computer. The
only information that is used is the URL (58), which is encoded within the
bar-code. Wilz does not teach ‘transferring to the second computer from the
first computer at least the software identification code.’” (Appeal Br. 25).
We agree with Appellant. Claim 1 requires two codes: a machine-
resolvable code, and a software identification code. The claim requires the
machine-resolvable code be sensed at a first computer and in claims 1-12
serves no purpose other than to initiate action by the first computer to utilize
the software identification code. The software identification code is required
to be included in the first computer running a software application, and is
transferred to a second computer which returns remote routing information
to a remote location. We find Wilz, Sr. discloses a first computer at its
“Internet Client System” (FF 1), and a sensed machine-resolvable code at its
scanned “URL-encoded bar code symbol” (FF 1).
In Wilz, Sr. however, the scanned bar code is sensed and is not part of
software on the first computer, and is therefore not the software
identification code. We do not find a software identification code in Wilz,
Sr. that is transferred to the second computer from the first computer, as
required by the claim, because the only code transferred is the machine-
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resolvable code that was sensed from the bar-code (FF 1). We therefore
cannot sustain the rejection of claims 1 and 17 under 35 U.S.C. § 102(e).
Since claims 2-16 and 18-36 depend from claims 1 and 17, and since
we cannot sustain the rejection of claims 1 and 17, the rejection of claims 2-
16 and 18-36 likewise cannot be sustained.
NEW GROUNDS OF REJECTION
Pursuant to 37 CFR § 41.50(b) we enter a new grounds of rejection
for claims 1-36 under 35 U.S.C. § 103(a) over Wilz, Sr.
As to independent claims 1 and 17, we find Wilz, Sr. discloses that its
system for connecting a client computer system with a server computer
system using, among other things, URL-encoded bar codes scanned at the
client system (FF 1) and the well-known infrastructure of the Internet (FF 2)
that utilizes TCP/IP communications protocols, uniform record locators, and
domain names (FF 3). We understand that standard TCP/IP Internet
protocols include a domain name service that translates the URL address
(e.g., www.website.com) to a numeric IP address (e.g., 192.1.1.1), and that
the domain name service runs on separate servers on the Internet (FF 4).
See, Akamai Technologies, Inc. v Cable & Wireless Internet Services, 344
F.3d 1186, 1188-1189 (Fed. Cir. 2003) (cited by Appellant, Appeal Br. 12,
fn. 67).
Based on these findings and our understanding of common knowledge
of one of ordinary skill in the art about the Internet and TCP/IP protocols,
we find that it is common for a computer to have recorded in its TCP/IP
software files the IP address of a Domain Name Server which is consulted to
resolve URL addresses into IP addresses (FF 5). We further understand that
a message sent to a Domain Name Server to resolve a URL includes the IP
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address of that Domain Name Server in the addressing contained in the
packet sent using TCP/IP protocols to the other computer (FF 6).
We therefore find one of ordinary skill in the art would recognize in
Wilz, Sr. the disclosure of the common practice of storing a software
identification code in the form of an IP address of a Domain Name Server in
a first computer (client system). This DNS server address is unrelated to a
URL the DNS server is being asked to resolve in that they identify different
remote systems. We further find in Wilz, Sr. that the scanning of the bar
code causes a response to sensing by the input device the machine-
resolvable code which is the URL encoded in the bar code (FF 7). That
response, we find, is the accessing with the first computer (client system) a
second computer (DNS server) disposed on the network in accordance with
routing information provided by the first computer (FF 5) and transferring
to the second computer from the first computer at least the software
identification code (FF 6). (In DNS resolution, the message sent to the DNS
server also contains the URL of the remote server, which is the subject of
claim 13.)
We further find that one of ordinary skill in the art would know that
the DNS server stores additional IP addresses (software identification codes)
that correlate to URL system addresses of one of more remote locations such
that the URL is “resolved” into routing information (IP addresses) so that
the first computer can reach the remote locations (FF 10). The table of
URL/domain names and IP addresses stored and consulted at the DNS server
is the very purpose of the DNS system. We find that the DNS server
receives the request from the first computer (FF 4), and in checking the
TCP/IP message destination address with its own records to determine that it
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is the recipient of the message, the DNS server performs a lookup operation
at the second computer to match the software identification code with a
remote location (that is that DNS server)1, so that the DNS server may
obtain associated remote routing information. We find that the DNS server
returns the IP address/routing information in the DNS request to the first
computer which corresponds to the software identification code (address of
the DNS server in the DNS request message of a URL to resolve) for the
remote location such that the first computer can access the remote location
corresponding to the URL address sent for resolving, using the returned IP
address (FF 4). We therefore find that one of ordinary skill in the art would
recognize that Wilz, Sr. discloses the common practice of requesting an IP
address for a URL (from the scanned bar code) from a DNS server, thus
meeting the claim language as to routing information.
We accept as our own the Examiner’s findings as to claims 2, 4-8, 11-
16, 18, 20-24, and 27-36 (FF 8), rejected under Section 102(e), about which
Appellant does not present argument. Using those findings, we enter new a
rejection of those claims under 35 U.S.C. § 103(a) because a disclosure that
anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under
35 U.S.C. § 103, for anticipation is the “epitome of obviousness.” In re
Pearson, 494 F.2d 1399, 1402 (CCPA 1974).
Claims 3 and 19
Dependent claim 3 recites, in pertinent part, wherein in response to
the sensing of a machine-resolvable code using the input device, the

1 We find that the remote location associated with the software identification
code cannot be the same remote location associated with the machine
resolvable code because that would mean those two codes would then fail to
be unrelated, as required.
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software application running on the first computer converts the software
identification code and generates routing information for transmission to the
second computer. Claim 19, which depends from independent claim 17,
recites essentially the same limitation.
We enter a new grounds of rejection of claims 3 and 19 under 35
U.S.C. § 103(a) over Wilz, Sr., because we find, as set forth above, that in
the use of TCP/IP protocols and Domain Names in Wilz, Sr., one of ordinary
skill in the art would understand this would most commonly employ the use
of a stored DNS server IP address (FF 5). We further find one of ordinary
skill in the art would understand that the client/first computer in Wilz, Sr.
converts the address to the destination address of a TCP/IP message to the
DNS server, requesting the DNS server resolve a URL into an IP address
(FF 6), thus meeting the claim requirements.
Claims 9 and 25
Dependent claims 9 and 25 recite, in pertinent part, wherein the
optical code is a portion of a display screen displaying a pattern of
modulated brightness and the optical code scanner comprises a light sensor.
We enter a new grounds of rejection of claims 9 and 25 under 35
U.S.C. § 103(a) over Wilz, Sr., because we find one of ordinary skill in the
art would recognize that that a bar code displayed on paper and read by a bar
code reader is essentially the same as a bar code displayed on a display
screen and read by a bar code reader, because each serve the same function
with the same displayed patterns of encoded information. Therefore we find
no functional difference between reading a bar code from either medium,
and find the disclosure in Wilz, Sr. of a bar code reader to read encoded bar
code symbols (FF 7) meets the claim requirements.
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Claims 10 and 26
Dependent claims 10 and 26 recite, in pertinent part, wherein the
machine-resolvable code is an audio tone and the input device comprises a
microphone.
We enter a new grounds of rejection of claims 10 and 26 under 35
U.S.C. § 103(a) over Wilz, Sr., because we find that Wilz, Sr. discloses the
use of speech recognition “so that the user can enter information to the
Internet browser by speaking rather than through manual keystroke” (FF 9),
and find that such speech encodes the URL and is thus a machine-resolvable
code in the form of an audio tone, thereby meeting the claim language.

CONCLUSIONS OF LAW
The Examiner erred in rejecting claims 1-36 under 35 U.S.C. § 102(e)
over Wilz, Sr.
We enter a new ground of rejection under 35 U.S.C. § 103(a) over
Wilz, Sr. of claims 1-36.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-36 is
REVERSED.
We enter a new ground of rejection under 35 U.S.C. § 103(a) over
Wilz, Sr. of claims 1-36.

This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of
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rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . . .

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No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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