Ex Parte Thomas et al

Board of Patent Appeals and Interferences

Nov 8, 2006

09823084 (B.P.A.I. Nov. 8, 2006)

The opinion in support of the decision being entered today
was not written for publication in
and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte CHRISTIAN R. THOMAS, NARASIMHA R. EDALA and JOEL I. MARCEY
___________

Appeal No. 2006 - 1314
Application No. 09/823,084
___________

ON BRIEF
___________

Before LEVY, NAPPI, and FETTING, Administrative Patent Judges.
FETTING, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. §134 from the examiner's final rejection of
claims 1 through 21, which are all of the claims pending in this application.

We AFFIRM.
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BACKGROUND

The appellants’ invention relates to a method for acquiring an internet service from a
broker. An understanding of the invention can be derived from a reading of exemplary claim 1,
which is reproduced below.
1. A method comprising;
registering an Internet service with a broker;
transmitting metadata, to the broker, describing at least one communication
proxy, including at least one supported protocol, a type, and a location of the
communication proxy; and
accessing, by the communication proxy, a web server to provide the Internet
service to a client if the type of the communication proxy matches a
communication proxy type specified by the client.

PRIOR ART
The prior art reference of record relied upon by the examiner in rejecting the appealed
claims are:
Graham et al. (Graham) 6,594,700 July 15, 2003
(filed June 14, 1999)

REJECTION
Claims 1-21 stand rejected under 35 U.S.C. § 102(e) as being unpatentable as anticipated by
Graham.
Rather than reiterate the conflicting viewpoints advanced by the examiner and appellants
regarding the above-noted rejection, we make reference to the examiner's answer (mailed July
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21, 2005) for the reasoning in support of the rejection, and to appellants’ brief (filed April 11,
2005) and supplemental appeal brief (filed March 7, 2006) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to appellants’
specification and claims, to the applied prior art reference, and to the respective positions
articulated by appellants and the examiner. As a consequence of our review, we make the
determinations that follow.

Claims 1-21 rejected under 35 U.S.C. § 102(e) as being unpatentable as anticipated by Graham.
As to claims 1 through 5, we note that the appellants argue these claims as a group in p. 6
through 12 of the brief. Accordingly, we select claim 1 as representative of the group.
Graham describes a Universal Service Broker Interchange Mechanism (USBIM) as a
coordinated set of components that provide interoperability among service discovery protocols,
having service provider protocol adapter servlets that listen for service advertising requests and
look for matching service providers [col. 2 lines 22 through 35]. Thus, because each internet
service that is registered within the USBIM exists, it must have been registered with the USBIM,
further evidenced by the registration described col. 6 lines 41 through 49. The request for
service must necessarily contain metadata, which is simply data characterizing data, describing
the communication proxy associated with the request, by virtue of the request itself. This
metadata includes service, name and protocol [col. 7 lines 35 through 39] and implicitly the
proxy itself.
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The appellants argue that the examiner improperly equated Graham’s service provider
protocol adapter servlets with the invention’s communication proxy provided to a broker by a
service provider [Brief p. 7]; improperly equated Graham’s client lookup mechanism with the
invention’s interaction mechanism between matching clients and service providers [Brief p. 8];
and equated Graham’s duty of the client to provide a mechanism of interaction with the
invention’s duty of the provider [Brief, p. 11].
The examiner responds that, as to the first two arguments, Graham’s protocol adapter
servlets are for both the client and service provider and are provided by the USBIM, being a
registry service, and thus support reading Graham’s service provider protocol adapter servlets on
the invention’s communication proxy provided to a broker [Answer, p. 8]. As to the first and
third arguments, the examiner responds that claim 1 is silent as to who provides the
communication proxy [Answer, p. 9].
We first note that, as indicated by the examiner, claim 1 is indeed silent as to who provides
the proxy. We next note that the USBIM client protocol adapter servlets listen for client lookup
requests and look up a matching service provider [col. 2 lines 37 through 39]. This results in an
interchange mechanism [col. 7 lines 32 through 34], i.e. a standing in by one for another, which
is a proxy. We further note that claim 1 requires that metadata describe only a proxy, a protocol,
an uncharacterized type, and a proxy location, and that, as noted above, the request for service
contains metadata, which is simply data characterizing data, describing the communication proxy
associated with the request, that includes service (i.e a type), name (implicitly identifying
location within USBIM) and protocol [col. 7 lines 35 through 39] and implicitly the proxy itself.
Accordingly we are persuaded that the examiner is correct that it is appropriate to equate reading
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Graham’s service provider protocol adapter servlets on the invention’s communication proxy
provided to a broker. Therefore we find the appellants’ arguments unpersuasive and sustain the
rejection as to claims 1 through 5.
As to claims 6, 10 through 12 and 17 through 19, we note that the appellants argue these
claims as a group in p. 12 through 15 of the brief. Accordingly, we select claim 6 as
representative of the group. The appellants essentially make the same arguments as to claims 1
through 5, which are unpersuasive for the same reasons as above. The appellants further argue
that Graham does not download the proxy from a location specified by the metadata [Brief, p.
14]. The examiner responds that this is necessarily inherent by operation of such a proxy
[Answer, p. 13].
We note that Graham’s USBIM operates by means of servlets, which are programs that must
inherently be loaded, i.e. downloaded from their storage, to operate. We note that the claims do
not specify the source or destination of downloading, other than being from a location specified
by the metadata. Because Graham’s metadata necessarily specifies the protocol that must be
used, USBIM inherently interprets this as a pointer to the location of the servlet’s storage for
loading.
Accordingly we are persuaded that the examiner is correct that Graham does download the
proxy from a location specified by the metadata, this being necessarily inherent by operation of
such a proxy. Therefore we find the appellants’ arguments unpersuasive and sustain the
rejection as to claims 6, 10 through 12 and 17 through 19.

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As to claims 13 through 16, we note that the appellants argue these claims as a group in p.
15 through 17 of the brief. Accordingly, we select claim 13 as representative of the group. The
appellants essentially make the same arguments as to claims 6, 10 through 12 and 17 through 19,
which are unpersuasive for the same reasons as above. Thus, we sustain the rejection as to
claims 13 through 16.
As to claims 7 through 9, we note that the appellants argue these claims as a group in p. 18
through 20 of the brief. Accordingly, we select claim 7 as representative of the group. The
appellants argue that Graham is silent as to dynamic interacting [Brief, p. 20]. The examiner
responds that Graham discloses dynamic interaction at col. 9 lines 17 through 25 [Answer, p.
15]. We note that the portion of Graham cited by the examiner does indeed describe interaction
between the servlets and the client, which is fairly characterized as dynamic. Therefore we find
the appellants’ arguments unpersuasive and sustain the rejection as to claims 7 through 9.
Accordingly, we sustain the examiner’s rejection of claims 1-21 as rejected under 35 U.S.C.
§ 102(e) as being unpatentable as anticipated by Graham.

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CONCLUSION
To summarize,
• The rejection of claims 1-21 under 35 U.S.C. § 102(e) as being unpatentable as
anticipated by Graham, is sustained.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED

STUART S. LEVY )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ROBERT E. NAPPI ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

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