Ex Parte Southam

Board of Patent Appeals and Interferences

Jul 25, 2012

10617002 (B.P.A.I. Jul. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BLAINE R. SOUTHAM
____________

Appeal 2010-000456
Application 10/617,002
Technology Center 2400
____________

Before SCOTT R. BOALICK, BRUCE R. WINSOR,
and GLENN J. PERRY, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL

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Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-3, 5-8, 10-12, 14, and 24-31, which constitute all the claims
pending in this application. Claims 4, 9, 13, and 15-23 are cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
Appellant’s invention relates to collecting data regarding network
service operation by intercepting a message directed to a network service,
storing information about the message, and transmitting the message to a
destination network service. (Abstract). Exemplary claim 1, which is
illustrative of the invention, reads as follows (bracketed letters added for
ease of reference):
1. A method for collecting data regarding service
operation, the method comprising:
[a] a client sending a message using a web protocol to a
web service on the Internet;
[b] a network proxy intercepting the message before it
reaches the web service;
[c] the network proxy storing profiling information about
the message in a database that is separate from the web service,
[d] the profiling information including the time the message
was received by the network proxy; and
[e] the network proxy transmitting the message to a
destination web service.
The Examiner relies on the following prior art in rejecting the claims:
Boucher US 2003/0212739 A1 Nov. 13, 2003
Yairi US 2004/0078424 A1 Apr. 22, 2004
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Carson US 2004/0093580 A1 May 13, 2004
Claims 1-3, 5, 6, 8, 10-12, 14, 24, 25, and 27-31 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Yairi in view of Boucher. (Ans. 4).
Claims 7 and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Yairi in view of Boucher and Carson. (Ans. 11).
Rather than repeat the arguments here, we refer to the Briefs (App. Br.
filed Sept. 15, 2008; Reply Br. filed Apr. 27, 2009) and the Answer (Ans.
mailed July 22, 2009) for the respective positions of Appellant and the
Examiner.1

ISSUES
Based on Appellant’s contentions, we will decide the appeal by
reference to exemplary claim 1. Appellant contends that the Examiner erred
in finding that Yairi teaches or suggests limitations [a] (see App. Br. 8-9;
Reply Br. 2-5) and [c] (see App. Br. 9-10; Reply Br. 5-6) recited in claim 1
and that the Examiner further erred in finding that Boucher teaches or
suggests limitation [d] (see App. Br. 10-11; Reply Br. 6-7) recited in claim
1.
The issues presented by Appellant’s contentions are as follows:
Does Yairi teach or suggest “a client sending a message using a web
protocol to a web service on the Internet,” as recited in limitation [a] of
claim 1?

1 The Reply Briefs filed Feb. 17, 2009, and Mar. 9, 2009, and the Answers
mailed Dec. 18, 2008, and Mar. 9, 2009, have not been considered as they
are deemed to have been superseded.
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Does Yairi teach or suggest “[a] network proxy storing profiling
information about the message in a database that is separate from the web
service,” as recited in limitation [c] of claim 1?
Does Boucher teach or suggest “the profiling information including
the time the message was received by the network proxy,” as recited in
limitation [d] of claim 1?

ANALYSIS
Limitation [a] of Claim 1
The Examiner finds that Yairi teaches “a client sending a message
using a web protocol to a web service on the Internet [fig. 1, items 13-117;
121-125; see abstract, par. 0033; 0040; note that IM client 113 sends a
message to web service 125 via proxy 103].” (Ans. 5 (brackets in original)
(emphasis omitted)). Appellant contends that Yairi fails to teach or suggest
limitation [a] (see generally App. Br. 8-9; Reply Br. 2-5).
We first construe limitation [a]. In doing so, we give the claim its
broadest reasonable interpretation in light of the Specification, In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997), but we do not import limitations from
the Specification into the claims, SuperGuide Corp. v. DirecTV Enters., Inc.,
358 F.3d 870, 875 (Fed. Cir. 2004). The recited verb “using” is very broad,
see MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 1301 (10th ed. 1999),
and we conclude that it encompasses any utilization of a “web protocol” at
any stage or any part of the transmission path in the step of sending the
recited “message” from the “client” to the “web service.” In particular, we
conclude that using a “web protocol” for only a portion of the path between
the “client” and the “web service” is encompassed by limitation [a]. We
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further conclude that limitation [a] does not preclude the initial transmission
of a message from the “client” to a “proxy server” (see limitation [b]) from
being encoded with a protocol other than a “web protocol” if in some other
portion of the path, such as a portion between the “proxy server” and the
“web service,” the message is encoded with a “web protocol.”
Referring to Yairi’s Figure 1, the substance of Appellant’s argument
is that because Yairi’s web service proxy 103 translates messages into a
protocol suitable for the intended destination web service provider 121, 123,
125, the messages from the IM clients 113, 115, 117 are not sent over voice
network 131 using a web protocol. (App. Br. 8-9). Appellant’s argument is
unpersuasive because it is not commensurate with the scope of the claim.
As stated by Appellant, “[Yairi’s] proxy module 103 is responsible for
translating messages between the format used by the mobile terminals into a
web services format [(i.e., a “web protocol)]. Yairi, paragraph 0026.” (App.
Br. 6; see also App. Br. 8; Reply Br. 2). Thus, Yairi teaches that a web
protocol is “us[ed]” for at least part of the path taken by the message in
“sending” the “message” from the “client” to the “web service” as
encompassed by limitation [a].
As it is not a limitation of the claim, we do not reach the question of
whether Yairi teaches or suggest the use of a “web protocol” between the
“client” and the “network proxy.”
Therefore, we do not agree with Appellant’s contention that the
Examiner erred in finding that Yairi teaches or suggests limitation [a] of
claim 1.
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Limitation [c] of Claim 1
The Examiner finds that Yairi teaches the message profiling limitation
at Figure 1 and paragraphs [0040] and [0045]. (Ans. 5). Referring to Yairi’s
paragraphs [0027]-[0029], the Examiner explains as follows:
Payment information contained in the database 133, results
form [sic] individual IM messages received from IM user client
that comprise profile data pertaining to individual account [sic]
with specific web services. Furthermore, the service broker
105 may be instructed by the IM client through a message
request to perform specific search criteria, when locating any
new and/or existing web services, these constitute profiling
message data that are stored to facilitate interaction between
the end user and future similar request for the same web service
from the same provider.
(Ans. 17 (citation omitted)).
Appellant contends that Yairi does not teach including message
profiling information in the database 133 (App. Br. 9-10; Reply Br. 5-6).
That the information [stored in the database 133] may also
comprise “payment information” does not mean that “profiling
information” is stored. Simply stated, payment information is
not profiling information. Moreover, the Examiner’s
explanation of what the payment information is and how it
constitutes profiling information has no basis in the Yairi
disclosure.
(Reply Br. 5).
The Examiner is correct that Yairi discloses a database 133 that is
separate from the web services 121, 123, 125. (Ans. 5). However, we agree
with Appellant that the Examiner has not pointed to any teaching or
suggestion that Yairi’s database 133 includes message profiling information.
We understand the passages (Yairi ¶¶ [0027]-[0029], [0040], [0045])
cited by the Examiner as teaching the message profiling limitation to refer to
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the database 133 as containing information about the web service rather than
individual messages. For example:
Web service controller 107 in step 305 obtains the
description metadata corresponding to the selected web service
from web service database 133, and analyzes the metadata to
determine parameters that web service proxy 103 needs to
obtain from IM client 211 in step 307 prior to sending a
message to the web service provider in step 309.
(Yairi ¶ [0040] (emphasis added)). “Web service proxy 103 may construct
the message as a SOAP message according to the web service’s
corresponding metadata obtained from database 133.” (Yairi ¶ [0045]
(emphasis added)). “The stored data may additionally include program
control logic, payment information, or any other information about the web
service or web service provider that may be presented to the user, e.g.,
during web service discovery or activation.” (Yairi ¶ [0027] (emphasis
added)).
Therefore, we agree with Appellant’s contention that the Examiner
erred in finding that Yairi teaches or suggests limitation [c] of claim 1.
Limitation [d] of Claim 1
The Examiner finds (Ans. 5-6) that Boucher teaches the network
proxy deleting a message after an expiry time (Boucher ¶¶ [0155], [0157])
which, in turn, teaches recording the time a message is received in a
database at the network proxy. The Examiner further explains that “[i]n
order to calculate the message expiry time, the time the message was
received is inherently calculated and is part of this message’s profiling or
metadata stored.” (Ans. 18).
Appellant contends as follows:
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Although Boucher identifies a store and forward proxy 12,
nowhere does Boucher indicate that proxy stores “profiling
information” about a received message or that the stored
profiling information includes “the time the message was
received”. Instead, Boucher only indicates that the proxy writes
a request to a database “if the request cannot be completed
immediately.” See Boucher, paragraphs 0144, 0147, 0151,
0154, and 0157.
(App. Br. 10-11). Appellant further contends as follows:
[T]he Examiner . . . suggests . . . that Boucher “inherently”
stores the time a message is received because Boucher purges
messages after an expiry time elapses. The problem with the
Examiner’s analysis, however, is that Boucher does not indicate
how the “request expiry time” is calculated. While the
Examiner presumes that the expiry time is calculated based on a
stored received time, there is no reason that it must be so. For
example, the expiry time may be calculated from some time
after the message is received, such as the time after some initial
processing has been performed. Regardless, just because it may
have been possible to calculate the expiry time from a stored
received time does not mean that such functionality is inherent.
(Reply Br. 6).
We would agree with Appellant that, in an anticipation context,
inherency requires that “the allegedly inherent characteristic necessarily
flows from the teachings of the applied prior art.” Ex parte Levy, 17
USPQ2d 1461, 1464 (BPAI 1990). However, in an obviousness context,
“the [obviousness] analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for [the Examiner] can
take account of the inferences and creative steps that a person of ordinary
skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” Id. at 421. “[T]he test [of obviousness] is
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what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981).
We understand the Examiner to mean that one of ordinary skill in the
art would have inferred from Boucher’s teaching of deleting a message from
Boucher’s network proxy database after an expiry time (Boucher ¶¶ [0155],
[0157]) that a message receipt time is stored in Boucher’s network proxy
database. We find this to be a reasonable finding and agree with the
Examiner that the one of ordinary skill in the art, using ordinary skill and
creativity, would have drawn that inference. Accordingly, we conclude that
Boucher, when combined with Yairi, teaches or suggests limitation [d].
Therefore, we do not agree with Appellant’s contention that the
Examiner erred in finding that Yairi teaches or suggests limitation [d] of
claim 1.
Summary
The Examiner did not err in finding that Yairi teaches or suggests
limitation [a] of claim 1 and did not err in finding that Boucher teaches or
suggests limitation [d] of claim 1. However, the Examiner erred in finding
that Yairi teaches or suggests limitation [c] of claim 1. Independent claim
24, which was rejected on the same basis as claim 1 (see Ans. 9), recites a
limitation substantially the same as limitation [c]. Accordingly we will not
sustain the rejection of (1) independent claims 1 and 24; (2) claims 2, 3, 5-8,
10-12, and 14, which depend from claim 1; and (3) claims 25-31, which
depend from claim 24.

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NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Yairi in view of Boucher. We adopt the Examiner’s findings (Ans. 4-6)
regarding the preamble of claim 1, limitations [a], [b], [d], and[e], as
discussed supra regarding limitations [a] and [d], and the rationale for
combining Yairi and Boucher. We find that Boucher, when combined with
Yairi, teaches or suggests limitation [c].
The Examiner finds, and we agree, that Yairi teaches a database at the
network proxy that is separate from the web service. (Ans. 5). Boucher also
teaches a “network proxy,” i.e., Boucher’s store and forward proxy 12
(Boucher Fig. 1) that includes a “database” separate from the destination
“web service,” i.e. Boucher’s application server (Boucher ¶ [0236]).
Boucher further teaches that “messages,” i.e., Boucher’s requests that cannot
be completed within a certain period of time are written to the database and
purged if a “message” expiry time elapses. (Boucher ¶¶ [0155], [0157]). In
order to determine the expiry time of a message, one of ordinary skill in the
art would understand that information about the message, e.g., a message
receipt time (see the discussion of limitation [d] supra) is stored in the
database. Such information about the message is encompassed by “profiling
information about the message,” as recited in limitation [c] of claim 1.

ORDER
The decision of the Examiner to reject claims 1-3, 5-8, 10-12, 14, and
24-31 is reversed.
We enter a new ground of rejection for claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over Yairi in view of Boucher. We have chosen to
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enter a new ground of rejection regarding exemplary claim 1, leaving to the
Examiner to formulate such grounds of rejection of claims 2, 3, 5-8, 10-12,
14, and 24-31 as may be appropriate consistent with our findings and
conclusions herein.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
Section 41.50(b) also provides that 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.
37 C.F.R. § 41.50(b).
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

REVERSED
37 C.F.R. § 41.50(b)

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