Ex Parte Thambrahalli et alDownload PDFPatent Trial and Appeal BoardSep 29, 201411947947 (P.T.A.B. Sep. 29, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SHASHIKANTH RAO THAMBRAHALLI, HARSHAVARDHANA M. PUTTAMADIAH, and SUPRIYA KANNERY ____________ Appeal 2012-005020 Application 11/947,9471 Technology Center 2400 ____________ Before HUBERT C. LORIN, BIBHU R. MOHANTY, and CARL L. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The real party in interest is International Business Machines Corporation. (Appeal Br. 2). Appeal 2012-005020 Application 11/947,947 2 STATEMENT OF THE CASE The claims are directed to negotiating a device name using a string of characters and a wild card character. Spec. 3, para. 9. Claim 1, reproduced below, is representative: 1. A method of dynamically negotiating a device name for establishing a communications session between a host computer and a client computer, comprising: receiving one device name from a client computer, said device name comprising a string including one or more fixed characters and at least a wildcard character; replacing, by a host computer, said wildcard character in the device name with one or more second characters to generate a unique device name that is not already being used in the host computer; and notifying the client computer of the unique device name for use. Appeal Br. 14, Claims App. THE REJECTIONS The following rejections are before us: Claims 1–20 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 1–9 and 13–20 are rejected under 35 U.S.C. § 103(a) over Shuster (US 2004/0172465 A1, pub. Sept. 2, 2004) in view of Krissell (US 2004/0019631 A1, pub. Jan. 29, 2004). Claims 10–12 are rejected under 35 U.S.C. § 103(a) over Shuster and Krissell in view of Fritchman (US 6,785,677 B1, iss. Aug. 31, 2004). Appeal 2012-005020 Application 11/947,947 3 ANALYSIS THE 35 U.S.C. § 112, SECOND PARAGRAPH, REJECTION OF CLAIMS 1–20 Referring to claim 1, the Examiner states that the claim recites the limitation "the client computer" in line 9 and it is unclear whether the limitation is referring to "a client computer" in line 2 or line 4 and that it is unclear whether the limitation "the host computer" in lines 7–8 is referring to "a host computer" in line 2 or line 6. The Examiner also found that the preamble recites the purpose or intended use of the claim and therefore is part of the claim limitation. Claims 2–20 have similar limitations and are rejected by the Examiner for the same reasons. Ans. 4–5, 14. Appellants argue that the claims are reasonably clear and the preamble doesn’t limit the claims. Moreover, even if the preamble limits the claims, Appellants argue that the claims are reasonably ascertainable. Appeal Br. 6– 8, Reply Br. 6. A claim is invalid for indefiniteness if its language, when read in light of the Specification and the prosecution history, “fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Insts., Inc., 134 S. Ct. 2120, 2124 (2014). Given that the terms “host computer” and “client computer” are common terms to one of ordinary skill in the art, we find claims 1–20 to be Appeal 2012-005020 Application 11/947,947 4 reasonably ascertainable by one of ordinary skill in the art, considered in light of the Specification. Accordingly, the rejection of claims 1–20 under 35 U.S.C § 112, second paragraph, is not sustained. THE 35 U.S.C. § 103(a) REJECTION OF CLAIMS 1–9 AND 13–20 OVER SHUSTER IN VIEW OF KRISSELL The Examiner found Shuster discloses the claim limitations for domain naming, but not for device naming, and that Krissell discloses device naming. The Examiner found it to be obvious to incorporate Krissell into Shuster to enable clients to name their devices. Ans. 6–7. Generally, the Shuster client provides input to customize a domain name by adding to the provider name(s). See, Figs. 3a, 3b, 4, and paras. 44, 45. Shuster, for example, discloses a four level domain name. The top level and second level are established by the provider, corresponding to the “host computer.” The third level and fourth level are established by the client by filling in the submission form. The Examiner refers to Figures 3b, 4, and paragraph 45 and takes the position that 1) levels not entered by the client are blanks and 2) that the blanks are equivalent to transmitting wildcards to the provider (host) as in the claim. When the proposed domain name is presented by the provider to the client at box 58, the host computer is filling in the blanks or wildcards. Filling in the blanks is equivalent to replacing the wildcard characters (“boxes not entered”). Ans. 6, 15. Appeal 2012-005020 Application 11/947,947 5 In contrast, Appellants argue that Shuster does not disclose the claimed “receiving” and “replacing” limitations. These limitations are recited in the independent claims here rejected: claims 1, 13, and 17 and therefore, are included in all the claims on appeal. More particularly, Appellants argue, in Shuster: the provider (host) chosen domain names are stored by the provider (host) with a wildcard indicating that other levels may exist (para. 45); the client does not transmit a wildcard to the provider (host) so the provider (host) does not receive a wildcard from the client; there is no replacing of the wildcard character by the host because the host does not receive a wildcard from the client so there is nothing for the host to replace; Shuster does not treat the fields un-entered by the client as blanks. If a client field is blank, it is not used and not replaced. See para. 49. Shuster does not use the term “blanks”; and Shuster does not generate a unique name because Shuster only adds the client input fields to its top and second level name and sends the combined name to the client for approval. See id. Appeal Br. 9–12, Reply Br. 2–3. Referring to the “receiving” limitation, we agree with Appellants that the wildcard character in Shuster is not received from the client computer as required by the claim. Instead, a wildcard character is used by the provider to indicate additional levels may exist. See, para. 45. There is insufficient basis for the Examiner’s assertion that the un-filled fields are blanks and equivalent to wildcards that are replaced by the provider (host). Similarly, Shuster does not disclose the “replacing” limitation because the host does not receive the wildcard character from the client. Therefore, Shuster does not disclose these claim limitations. Appeal 2012-005020 Application 11/947,947 6 Appellants argue that, even if Krissell discloses dynamically negotiating a device name at paragraphs 54 and 55, combining with Shuster does not lead to the claimed invention because the combination is still missing at least that the client does not transmit a wild card character to the host so there is no “receiving . . . device name from a client computer . . . comprising a string . . . [of] fixed characters and . . . a wildcard character.” Similarly, while Fritchman teaches locating a wildcard character at a prefix/suffix, Fritchman does not teach that the client transmits a wild card character to the host. Appeal Br. 10–11, Reply Br. 5–6. As we have found that Shuster is missing the “receiving” and “replacing” limitations, and the Examiner has not argued that Krissell discloses these limitations, the combination of Shuster and Krissell suggested by the Examiner does not lead to the claimed invention. Claims 2–20 include similar limitations so the above discussion is applicable. In view of the foregoing, we do not sustain the rejection of claims 1– 9, and 13–20 over Shuster in view of Krissell. THE 35 U.S.C. § 103(a) REJECTION OF CLAIMS 10–12 OVER SHUSTER AND KRISSELL IN VIEW OF FRITCHMAN Claims 10–12 are dependent claims. The rejection of the corresponding independent claims is reversed for the reasons above. Accordingly, for the same reasons, we will not sustain the rejections of claims 10–12 over the cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”). Appeal 2012-005020 Application 11/947,947 7 CONCLUSIONS The rejections of claims 1–20 under 35 U.S.C. § 112, second paragraph; claims 1–9 and 13–20 under 35 U.S.C. § 103(a) over Shuster in view of Krissell; and claims 10–12 under 35 U.S.C. § 103(a) over Shuster and Krissell in view of Fritchman are not sustained. DECISION For the above reasons, the Examiner’s decisions rejecting claims 1–20 is reversed. REVERSED hh Copy with citationCopy as parenthetical citation