Ex Parte Rothschild

Patent Trial and Appeal Board

Sep 26, 2013

11999570 (P.T.A.B. Sep. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LEIGH ROTHSCHILD
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Appeal 2011-005422
Application 11/999,570
Technology Center 2400
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Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-11, 13-22, 24, and 25. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
INVENTION
The invention is directed to a digital media communication protocol
for transferring digital media files via a computer network (Spec. 1:6-10).
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A digital media communication protocol,
comprising:

at least one media terminal disposed in an accessible
relation to at least one interactive computer network,

a wireless range structured to permit authorized access to
said at least one interactive computer network,

at least one media node disposable within said wireless
range, wherein said at least one media node is detectable by
said at least one media terminal,

at least one digital media file initially disposed on at least
one of said at least one media terminal or said at least one
media node, said at least one media terminal being structured to
detect said at least one media node disposed within said
wireless range,

a communication link structured to dispose said at least
one media terminal and said at least one media node in a
communicative relation with one another via said at least one
interactive computer network,

said communication link being initiated by said at least
one media terminal,

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said at least one media node and said at least one media
terminal being structured to transmit said at least one digital
media file therebetween via said communication link, and

said communication link is structured to bypass at least
one media terminal security measure.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rockwell

Gustavsson
US 2004/0128375 A1

US 2008/0120369 A1
July 1, 2004

May 22, 2008
(filed Nov. 16, 2006)

REJECTION
Claims 1-11, 13-22, 24, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gustavsson and Rockwell.

ANALYSIS
The Examiner finds Gustavsson discloses all the limitations of
independent claim 1 except “said communication link is structured to bypass
at least one media terminal security measure” (see Ans. 3-4), and relies on
Rockwell for disclosing this feature (id. at 13). Specifically, the Examiner
finds “Rockwell teaches said communication link is structured to bypass at
least one media terminal security measure (i.e., networked systems that also
had wireless connections since this is a way that suppliers/service providers
or another party could bypass their firewalls, section 167) in order to
potentially access other resources on their network (section 167)” (id.).
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Therefore, the Examiner concludes, “it would have been obvious . . . to
utilize the teaching of Rockwell in the system of Gustavsson in order to
potentially access other resources on their network” (id.).
Appellant contends “the Examiner has failed to present an articulated
reasoning with some rational underpinning to support the Examiner’s
conclusion of obviousness” (App. Br. 13) because “the Examiner’s
secondary reference of Rockwell has stated that the proposed modification
(i.e., bypassing the security measure) is not desired” (id. at 14). We agree
with Appellant.
The Examiner’s reason for combining Rockwell with Gustavsson is
based on the fact Rockwell discloses the possibility of bypassing a network
security measure such as a firewall (See Ans. 13; Rockwell, ¶[0167]).
However, Rockwell does not suggest structuring a communication link to
bypass a security measure as claimed, but rather raises bypassing a firewall
as a possible problem with a wireless network: “users voiced concerns with
networked systems that also had wireless connections since this is a way that
suppliers/service providers or another party could bypass their firewalls and
potentially access other resources on their network” (Rockwell, ¶ [0167]).
In other words, Rockwell suggests the opposite of the claimed invention.
The mere fact it is possible to bypass a firewall (see Ans. 14), absent “some
articulated reasoning with some rational underpinning” to implement this
feature in Gustavsson’s system, does not support the Examiner’s conclusion
that it would have been obvious to modify Gustavsson in such a way as to
meet the limitations of claim 1. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Moreover, the Examiner’s response that it would have been obvious to try
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the solution embodied in Appellant’s claim 1 based on the knowledge one
could bypass a firewall (Ans. 14) is unavailing. As Appellant points out, the
Examiner did not make the required factual findings to support this
obviousness rationale (Reply Br. 9-12).
We are therefore constrained by the record to find the Examiner erred
in rejecting independent claim 1, independent claims 18, 22, and 25, which
recite commensurate limitations, and dependent claims 2-11, 13-17, 19-21,
and 24 for similar reasons.

CONCLUSION
The Examiner erred in rejecting claims 1-11, 13-22, 24, and 25 under
35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 1-11, 13-22, 24, and 25 is
reversed.

REVERSED

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