Ex Parte Takano

Board of Patent Appeals and Interferences

Dec 8, 2010

10388355 (B.P.A.I. Dec. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KOHJI TAKANO
____________________

Appeal 2009-005978
Application 10/388,3551
Technology Center 2400
____________________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
JAY P. LUCAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed March 13, 2003. Appellant claims the benefit under
35 U.S.C. § 119 of Japanese laid-open patent application No. 2002-127686,
filed April 26, 2002. The real party in interest is IBM Corp.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-005978
Application 10/388,355

STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1 to 6, 8, 9, 11 to
16, 18, 19, and 24 under authority of 35 U.S.C. § 134(a). The Board of
Patent Appeals and Interferences (BPAI) has jurisdiction under
35 U.S.C. § 6(b). Claims 7, 10, 17, and 20 to 23 are cancelled.

We affirm the rejections.

Appellant’s invention relates to an online session relay system that
provides safe access to servers of internal networks from anywhere via
Internet protocols (Spec. ¶¶ [0001] and [0003]). In the words of Appellant:
[T]he session relay system or the session relay
program is formed by, for example, a web server
and a servlet running in the web server. As the
first information processing system, a portable
telephone adapted to i-appli or a personal
computer having a [World Wide Web] browser
that can execute an applet, for example, may be
cited…. As the second information processing
system, a server in an intranet protected by a
firewall, for example, may be cited. As the first
protocol, HTTP 1.0 may be cited, for example,
wherein when one communication based on a
request and a response is finished, a session
(connection) is disconnected. As the second
protocol, a protocol like telnet that can not
normally pass through a firewall and thus can not
be used for accessing a server in an intranet via the
Internet, may be cited, for example. Further, “a
plurality of first sessions” does not represent a
plurality of first sessions that are multiplexed
relative to a plurality of first information
processing systems, but represents a plurality of
first sessions that occur discontinuously on a time
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basis relative to one first information processing
system. The third session represents a logical
connection established between applications of the
first and second information processing systems.
(Spec. ¶ [0009]).
The following claim illustrates the claims on appeal:
Claim 1:
1. A session relay system comprising:

said session relay system conducting a
plurality of separate, sequential first sessions with
a first information processing system according to
a first protocol, and a second session with a second
information processing system according to a
second protocol, and relays between the plurality
of first sessions and said second session to
establish a third session that is composed of the
plurality of first sessions and the second session;

session managing means, which is external
to said first and said second information
processing systems, for producing ID information
for identifying said third session that is established
in response to a connection request from said first
information processing system, and sending said
ID information to said first information processing
system having made said connection request; and

processing result transfer means for sending
data of a processing result to said first information
processing system, said data of the processing
result sent from said second information
processing system in response to a processing
request sent from said first information processing
system along with said ID information.

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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dustan US 5,884,312 Mar. 16, 1999
Whipple US 6,289,384 B1 Sep. 11, 2001
Lambert US 6,363,478 B1 Mar. 26, 2002
Erickson US 6,412,009 B1 Jun. 25, 2002
Mayer US 2003/0128987 A1 Jul. 10, 2003
(filed on Dec. 26, 20023)

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1, 8, 9, 11, 18, 19, and 24 stand rejected under 35
U.S.C. § 103(a) for being obvious over Erickson in view of Official Notice.
R2: Claims 3 and 13 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Erickson in view of Official Notice further in view of Lambert.
R3: Claims 2, 4, 5, 12, 14, and 15 stand rejected under 35 U.S.C. § 103(a)
for being obvious over Erickson in view of Official Notice further in view of
Mayer.
R4: Claims 6 and 16 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Erickson in view of Official Notice.

We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to

3 Mayer is a continuation-in-part of PCT IL01/01042, filed on November 8,
2001.
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make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). The issue specifically turns
on whether Erickson, the Examiner’s use of Official Notice, Whipple,
Dustan, Lambert, and Mayer render obvious Appellant’s claimed “plurality
of separate, sequential first sessions” (claim 1), as well as a claimed “fourth
information processing system” of dependent claim 6.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellant has invented a system, method, and program product in
which an external network requests a connection with an internal network
via a logical connection (i.e., “third session”) that interfaces the two
networks. (See claim 1, Appellant’s Fig. 1.) The “third session” attaches an
identification (ID) information tag with the connection request made to the
internal network and, in turn, relays “data of a processing result” to the
external network (id.).
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Erickson
2. The Erickson reference discloses an external network requesting a
connection with an internal network via a firewall that interfaces the two
networks. (See col. 7, ll. 7 to 16; Fig. 3.)
Official Notice
3. The Examiner has taken Official Notice of the fact that a person of
ordinary skill in the art would have recognized that a demilitarized zone
(DMZ) is a logical connection that interfaces external and internal networks.
(See Ans. 9, middle to bottom; see also Whipple, infra.) Further, the
Examiner takes notice of the fact that session IDs, which attach ID
information to a connection request made to an internal network, were well
known in the art at the time the claimed invention was made. (Ans. 4,
bottom; see also Dustan, infra.) Lastly, the Examiner takes Official Notice
that session IDs were well known to be relayed with data from internal
networks to external networks (id.).
Whipple
4. The Examiner cites the Whipple reference as evidence that one of
ordinary skill in the art would have known and recognized the use of a
demilitarized zone (DMZ) (col. 5, ll. 9 to 10) in a networked computer
system. Whipple provides evidence that internal firewalls were well-known
at the time of the claimed invention. (See Fig. 2.)

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Dustan
5. The Examiner employs the Dustan reference as evidence that using a
session ID to maintain a session over separate sequential requests was
known in the art at the time the claimed invention was made (col. 13, ll. 65
to 67; col. 14, ll. 20 to 23).

PRINCIPLE OF LAW
Appellant has the burden on appeal to the Board to demonstrate
Examiner error. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006).

ANALYSIS
Arguments with respect to the rejection
of claims 1, 8, 9, 11, 18, 19, and 24
under 35 U.S.C. § 103(a) [R1]

The noted claims are rejected for being obvious over Erickson and
Official Notice, pages 3 to 5 of the Examiner’s Answer.
Appellant argues that Erickson merely teaches one connection
between the Web server and Web client. (App. Br. 14, top; see also App.
Br. 15, top.) Erickson does not, in Appellant’s view, teach the claim
limitation “a plurality of separate, sequential first sessions” (claim 1) (id.).
In reply, the Examiner points out that a reliance upon “a plurality of
separate, sequential first sessions,” as claimed, was obviated by newer
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technology (i.e., HTTP 1.1 and Erickson’s disclosure of so-called data
“chunking”4) (Ans. 4, middle).
We find that Appellant has invented a system, method, and program
product in which an external network requests a connection with an internal
network via a logical connection (i.e., “third session”) that interfaces the two
networks (FF#1). The “third session” attaches an identification (ID)
information tag with the connection request made to the internal network
and, in turn, relays “data of a processing result” to the external network (id.).
In comparison, we find that the Erickson reference discloses an
external network requesting a connection with an internal network via a
firewall that interfaces the two networks (FF#2). Further, the Examiner has
taken Official Notice of the fact that a person of ordinary skill in the art
would have recognized that a demilitarized zone (DMZ) is a logical
connection (cited as the claimed “third session”) that interfaces external and
internal networks (FF#3). The Examiner also takes notice of the fact that
session IDs which attach identification information to a connection request
made to an internal network, were well known in the art at the time the
claimed invention was made (id.). Lastly, the Examiner takes Official
Notice that session IDs were well known to be relayed with data from
internal networks to external networks (id.).
We agree with the Examiner’s conclusion of obviousness for the
following reasons. We find that a person of ordinary skill in the art would

4 “The present invention expands the use of the chunking option [under
HTTP version 1.1] by sending a series of HTTP messages with embedded
session-oriented data, ‘chunked messages,’ between the Web server and the
Web client without sending an end chunk message.” (Erickson, col. 6, ll. 24
to 28.)
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have recognized that the HTTP (hypertext transfer protocol) of Appellant’s
disclosure (HTTP version 1.0) was replaced by Erickson’s concept
“chunking” a series of “messages with embedded session-oriented data”
being sent via HTTP version 1.1. (See Erickson, col. 6, ll. 13 to 32.) More
particularly, “[Erickson’s chunking] allows one connection to remain active
during the series of interleaved HTTP messages between the Web server and
the Web client, thereby creating an HTTP tunnel that is persistent for the
duration of the communication between the host system and the Web client.”
(Id. at ll. 28 to 33). Hence, the need for the claimed “plurality of separate,
sequential first sessions” was obviated.5
Concerning the issue of whether it is obvious to use a more modern
technology in substitution for an older one, this Board takes guidance from
the decision in Leapfrog Enterprises, Inc. v. Fisher Price, Inc. and Mattel,
Inc:
Thus, we bear in mind that the goal of the clam 25
device was to allow a child to press a switch
associated with a single letter in a word and hear
the sound of the letter as it is used in that word. …
Accommodating a prior art mechanical device that
accomplishes that goal to modern electronics
would have been reasonably obvious to one of
ordinary skill in designing children’s learning
devices. Applying modern electronics to older
mechanical devices has been commonplace in
recent years.

5 Even, assuming arguendo, the need for the claimed “plurality of separate,
sequential first sessions” was not obviated by newer technology, the
Examiner points to the Dustan reference. (See Ans. 5, top; col. 13, l. 60 to
col. 14, l. 26). The Examiner employs the Dustan reference as evidence that
using a session ID to maintain a session over separate sequential requests
was known in the art at the time the claimed invention was made (FF#5).
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485 F.3d 1157, 1162 (Fed. Cir. 2007).

Here, as in Leapfrog, a newer technology (i.e., HTTP version 1.1 and
Erickson’s disclosure of “chunking” capabilities) described in the prior art
has replaced an older technology. In view of Leapfrog’s teachings and the
above-stated analysis, we find Appellant has demonstrated nothing improper
concerning the Examiner’s rejection R1.
Appellant further argues that Erickson teaches away from the claimed
“plurality of separate, sequential first sessions” because having such claimed
“sessions” would defeat Erickson’s purpose (App. Br. 14, bottom).
Appellant raises the issue of Erickson teaching away from the claimed
invention (id.). Our guiding court has held that “[t]he prior art’s mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claims in the ’198
application.” (In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
We find that Erickson neither vitiates nor criticizes Appellant’s
claimed “plurality of separate, sequential first sessions.” Rather, the patent
merely points out an updated alternative obviating the need to reconnect for
each of a plurality of “first sessions,” as recited in claim 1. An updated
technology, as disclosed in Erickson, is not a teaching away, but a mere
alternative. (See Fulton, cited above.) We thus find unconvincing
Appellant’s argument that Erickson teaches away from the invention of
exemplary claim 1.
Next, Appellant argues that Erickson’s “request” is not the equivalent
of Appellant’s claimed “session” (App. Br. 15, top). Appellant asserts that a
session is a time when two computers maintain a connection (id.). A request
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can be sent to a second computer without the second computer ever
receiving that request (id.). Since a request can occur without a connection,
Appellant argues that the two terms (i.e., Erickson’s “request” and
Appellant’s claimed “session”) are not synonymous (id.). Further, Appellant
argues that by the Examiner’s own “admission,” a request, alone, outside the
context of a request/response pair is not analogous to a session (App. Br. 15,
middle).
We carefully reviewed the Briefs, the Answer, the cited portions of
Erickson, and indeed the entire reference. We note that the Examiner has
cited Erickson’s request/response pairing (see col. 7, ll. 11 to 13) as being
similar to Appellant’s “session” or “sessions,” as recited in claim 1. In
forming the above-stated argument, Appellant has failed to respond to the
Examiner’s finding that Erickson’s disclosure of a request/response pairing
meets the claimed “session” or “sessions.” (Ans. 14, middle to bottom). We
thus find Appellant has not met the burden of demonstrating error in the
Examiner’s position in this regard.

Arguments with respect to the rejection
of claims 3 and 13
under 35 U.S.C. § 103(a) [R2]

The Examiner has rejected the noted claims for being rendered
obvious by Erickson in view of Official Notice further in view of Lambert,
pages 5 and 6 of the Examiner’s Answer.
Regarding the Lambert reference, Appellant merely contends that the
Examiner misstates Lambert’s teachings when the Examiner states that to
maintain a session over multiple HTTP requests (i.e., “first sessions,” as
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claimed), Web servers allocate a session ID to a client during a first request
(App. Br. 16, middle to bottom). However, Appellant asserts that Lambert
does not teach maintaining a session over multiple HTTP requests (i.e., first
sessions).
In reply, the Examiner finds that Appellant has not demonstrated in
the Brief why the cited passage in Lambert is not similar to the claimed
invention (Ans. 15, middle).
“It is not the function of [the U.S. Court of Appeals for the Federal
Circuit] to examine the claims in greater detail than argued by an appellant,
looking for nonobvious distinctions over the prior art.” In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991).
Similarly, it is not the function of this Board to examine claims in
greater detail than argued by Appellant, looking for distinctions over the
prior art. Accordingly, we affirm the rejection R2.

Argument with respect to the rejection
of claims 2, 4, 5, 12, 14, and 15
under 35 U.S.C. § 103(a) [R3]

The Examiner has rejected the noted claims for being obvious over
Erickson in view of Official Notice further in view of Mayer, pages 6 to 8 of
the Examiner’s Answer.
Again, Appellant argues that Erickson teaches away for the reasons
discussed with respect to the Examiner’s rejection R1. (See App. Br. 17,
middle). Since we already addressed Appellant’s teaching away argument in
discussing the rejection R1 (see discussion, supra), we need not redress the
issue here. Accordingly, we affirm the Examiner’s rejection R3.
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Arguments with respect to the rejection
of claims 6 and 16
under 35 U.S.C. § 103(a) [R4]

The Examiner has rejected the noted claims for being obvious over
Erickson in view of Official Notice, pages 8 and 9 of the Examiner’s
Answer.
Dependent claim 6 recites a “session relay system,” comprising, in
relevant part, “said session relay system including a third information
processing system that conducts the first session with said first information
processing system, and a fourth information processing system that conducts
the second session with said second information processing system and
communicates with said third information processing system.”
Appellant argues that Erickson’s Figure 3 shows three systems, and
not the four systems claim 6 requires (App. Br. 18, bottom). Erickson shows
web client 126, server 120, and host system 110 (id.). The Examiner fails to
show what portion of Figure 3 is believed to disclose a fourth information
processing system (id.).
In response, the Examiner points out that the Whipple reference
demonstrates evidence that internal firewalls were well known in the art at
the time Appellant’s claimed invention was made (FF#4). The Examiner
states that “[t]he use of internal firewalls allowed corporate entities to
protect their intranet with an extra layer of security. An instruction through
the first firewall would allow the intruder into a demilitarized zone (DMZ),
but not into the intranet, which would be protected by a second firewall.”
(Ans. 9, middle). We examined the Whipple patent and note, in particular,
Whipple’s Figure 2, which offers evidence of internal firewall designs (e.g.,
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a “secure collaborative workspace” located within an “internal global
collaborative workspace”). We find that the evidence the Examiner
proffered would have been recognized by a person of ordinary skill in the art
as being similar to that of a “fourth information processing system,” as
claimed. Accordingly, Appellant has not demonstrated Examiner error in
the rejection R4 in this regard.
Appellant further argues that the Examiner failed to address the
limitation of a “third protocol” and a claimed “third destination port” (App.
Br. 18, bottom).
Appellant makes general allegations of patentability that fail to
demonstrate the Examiner’s error (id.). A statement that merely points out
what the claim recites will not be considered as an argument for separate
patentability of a claim (37 C.F.R. § 41.37(c)(1)(vii)). Further, a general
allegation that the claim defines a patentable invention without specifically
pointing out how the language of the claims patentably distinguishes them
from the references does not constitute a persuasive response. (37 C.F.R. §
1.111(b)).
Since Appellant failed to argue how or why a “third protocol” differs
from the claimed “first protocol” or the claimed “second protocol,” we find
unconvincing Appellant’s arguments. Accordingly, we affirm the
Examiner’s rejection R4.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown that the Examiner erred in rejecting claims 1 to 6,
8, 9, 11 to 16, 18, 19, and 24.
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DECISION
We affirm the Examiner’s rejection R1 to R4 of claims 1 to 6, 8, 9, 11
to 16, 18, 19, and 24.

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

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