Ex Parte Piccinini et al

Patent Trial and Appeal Board

Mar 25, 2014

12348347 (P.T.A.B. Mar. 25, 2014)

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.
12/348,347 01/05/2009 Sandro Piccinini FR920080182US1 2852
50170 7590 03/25/2014
IBM CORP. (WIP)
c/o WALDER INTELLECTUAL PROPERTY LAW, P.C.
17304 PRESTON ROAD
SUITE 200
DALLAS, TX 75252
EXAMINER
GORNEY, BORIS
ART UNIT PAPER NUMBER
2449
MAIL DATE DELIVERY MODE
03/25/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte SANDRO PICCININI, LUIGI PICHETTI,
MARCO SECCHI, and STEFANO SIDOTI
____________________

Appeal 2011-011920
Application 12/348,347
Technology Center 2400
____________________

Before: JENNIFER D. BAHR, EDWARD A. BROWN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011920
Application 12/348,347
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
20. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to an on-demand network connection. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A method in a data processing system, for establishing an
on-demand network connection for a remote user, the method
comprising:
responsive to a contacting user device being unable to
send an electronic communication to a remote user device
directly over a network, receiving, by an instrumented server, a
notification from the contacting user device to have the remote
user device establish the on-demand network connection to the
network in order to send the electronic communication;
responsive to receiving the notification, determining by
the instrumented server, whether the remote user device is
reachable on-demand;
responsive to the remote user device being reachable on-
demand, determining, by the instrumented server, whether the
electronic communication from the contacting user device
meets a set of requirements for establishing the on-demand-
network; and
responsive to the notification meeting the set of
requirements, sending, by the instrumented server, a connection
request to the remote user device indicating that the on-demand
network connection to the network is to be established,
wherein, upon receiving the connection request, the remote user
device establishes the on-demand network connection from
the remote user device to the network and receives the
electronic communication via the on-demand network
connection to the network.
Appeal 2011-011920
Application 12/348,347
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REJECTIONS
Claims 1, 2, 4-9, 11-15 and 17-20 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Harris (US 6,711,610 B1, iss. Mar. 23,
2004). Ans. 3.
Claims 3, 10 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Harris in view of Abdelhak (US 2005/0097190 A1, pub.
May 5, 2005). Ans. 7.

OPINION
In rejecting each of the independent claims involved in this appeal the
Examiner interprets Harris’s remote computer 20 as the recited “contacting
user device”; Harris’s host computer 10 as the recited “remote user device”;
and Harris’s intermediary computer 22 as the recited “instrumented server.”
Ans. 4. The Examiner interprets Harris’s telephone call 56 to the host
computer 10 to meet the step of, or instruction for, “determining, by the
instrumented server, whether the remote user device is reachable on-
demand.” Ans. 4. The Examiner interprets Harris’s authentication as
“determining, by the instrumented server, whether the electronic
communication from the contacting user device meets a set of requirements
for establishing the on-demand network.” Id. In Harris, authentication may
be performed by the intermediary computer (Harris, col. 4, ll. 42-45) and/or
by the host computer (Harris, col. 4, ll. 65-67). The Examiner does not
specify which authentication is cited to meet this step. Since the
intermediary computer is interpreted as the recited “instrumented server,”
and it is the instrumented server that must determine “whether the electronic
communication from the contacting user device meets a set of
Appeal 2011-011920
Application 12/348,347
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requirements,” the authentication performed by the host computer,
interpreted by the Examiner as the “remote user device,” would not meet this
limitation. While the authentication by the intermediary computer would
meet this limitation, this authentication 48 take place before the telephone
call, or other attempt (i.e., ping), to determine if the host is reachable in
Harris. See Harris col. 6, ll. 28-57, fig. 3; contra Ans. 11. Thus, Appellants
correctly argue that “the authentication performed by Harris is . . . not in
response to the host computer system being deemed reachable on-
demand.” App. Br. 10 (emphasis added). The Examiner’s conclusion “that
[sic] instant application does not claim that any results from ‘reachability’
determination are used or needed for performed [sic] authentication” is
unsupported by the record. Ans. 11. The Examiner has not established how a
step can be “responsive to” a user device being reachable without first
determining whether the user device is reachable. Our interpretation of the
claims as requiring reachability to be a prerequisite to authentication is
consistent with Appellants’ disclosure. See steps 406, 410 in fig. 4. Thus, we
agree with Appellants that “Harris does not teach the feature of, responsive
to the remote user device being reachable on-demand, determining
whether the electronic communication from the contacting user device
meets a set of requirements for establishing the on-demand-network.”
App. Br. 10 (emphasis added).

DECISION
The Examiner’s rejections are reversed.

REVERSED

Appeal 2011-011920
Application 12/348,347
5
mls