Ex Parte TOGA

Board of Patent Appeals and Interferences

Jul 20, 2004

08773692 (B.P.A.I. Jul. 20, 2004)

-1-
The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 39
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JAMES E. TOGA
________________
Appeal No. 2003-0425
Application 08/773,692
________________
ON BRIEF
________________
Before JERRY SMITH, BARRETT, and RUGGIERO, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from
the examiner’s rejection of claims 1, 3, 4, 6, 8-23 and 25-29,
which constitute all the claims remaining in the application.
The disclosed invention pertains to a method of controlling data
transfers between a first and a second computer network. The
invention restricts access to certain resources within the first
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Application 08/773,692
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and second computer networks based on the type of communication
protocol being used and the type of protocol commands exchanged
between the first and second computer networks, wherein
restricting access is determined dynamically based on
environmental changes.
Representative claim 1 is reproduced as follows:
1. A method of controlling data transfers between a first
and a second computer network, the method comprising:
monitoring protocol commands by a proxy coupled between the
first and second computer networks;
interpreting protocol commands exchanged between the first
and second computer networks;
determining the type of protocol being used; and
restricting access to certain resources within the first and
second computer networks based on the type of communications
protocol being used and the type of protocol commands exchanged
between the first and second computer networks, wherein
restricting access is determined dynamically based on
environmental changes.
The examiner relies on the following references:
Baker et al. (Baker) 5,678,041 Oct. 14, 1997
(filed Aug. 25, 1995)
Shwed et al. (Shwed) 5,835,726 Nov. 10, 1998
(filed June 17, 1996)
Dascalu 5,958,015 Sep. 28, 1999
(filed Oct. 29, 1996)
Claims 1, 3, 4, 6, 8-23 and 25-29 stand rejected under 35
U.S.C. § 103(a). As evidence of obviousness the examiner offers
Appeal No. 2003-0425
Application 08/773,692
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Baker in view of Dascalu with respect to claims 1, 3, 4, 6, 8,
19, 22, 23 and 25-29, and Shwed is added to this combination with
respect to claims 9-18, 20 and 21.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on appeal,
the rejections advanced by the examiner and the evidence of
obviousness relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in the
claims on appeal. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
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Application 08/773,692
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support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
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Application 08/773,692
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the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
[see 37 CFR § 1.192(a)].
We consider first the rejection of claims 1, 3, 4, 6, 8, 19,
22, 23 and 25-29 based on the teachings of Baker and Dascalu.
Claims 1, 4, 6, 8 and 19 stand or fall together as a first group
[brief, page 3], and we will consider independent claim 1 as the
representative claim for this group. With respect to
representative claim 1, the examiner essentially finds that Baker
teaches the claimed invention except that Baker does not teach
restricting access based on the determination of the type of
protocol. The examiner finds that restricting access to specific
clients, resources and protocols is well known in the art as
disclosed by Dascalu. The examiner finds that it would have been
obvious to the artisan to restrict access based on the type of
protocol being used [answer, pages 3-4].
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Appellant argues that neither Baker nor Dascalu teaches
restricting access to certain resources based on (1) the type of
communication protocol and (2) the type of protocol commands
exchanged between the first and second networks. Appellant also
argues that neither Baker nor Dascalu teaches that restricting
access is dynamically based on environmental changes. Appellant
argues that the examiner has failed to provide a proper
motivation for combining the teachings of Baker and Dascalu
[brief, pages 7-13].
The examiner responds that Baker teaches restricting access
based on protocol and that Baker teaches dynamic restricting such
as restrictions based on certain resources, ratings and time of
day. The examiner also responds that protocol commands are
associated with protocols and are inseparable. Thus, the
examiner finds that restricting access based on protocols
necessarily includes the associated protocol commands [answer,
pages 11-13].
Appellant responds that restricting access based on
determination of a specific protocol as taught by Dascalu does
not include restricting access based on protocol commands as
claimed. Appellant argues that the examiner’s findings are
tantamount to a reliance on inherency which is improper [reply
brief].
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We will not sustain the examiner’s rejection of independent
claim 1 or of dependent claims 4, 6, 8 and 19 which are grouped
with claim 1. The examiner has failed to establish a prima facie
case of obviousness because the examiner has failed to properly
consider all the limitations of the claimed invention.
Specifically, we agree with appellant that the suggestion in
Dascalu that access can be restricted based on the type of
communication protocol being used does not, by itself, suggest
that access is also restricted based on the protocol commands.
The suggestion in Dascalu is that as long as the protocol is
acceptable, then the access will be permitted. The claimed
invention, however, can restrict access even though the protocol
is acceptable if the command within the protocol is not
acceptable. The examiner’s failure to treat the access
limitation based on protocol commands as a separate requirement
results in the examiner having failed to consider all the
limitations of the claimed invention. While we cannot say
whether there is prior art which teaches restricting network
access based on both the type of communications protocol and the
type of protocol commands, we can say that the prior art relied
on by the examiner fails to support the examiner’s findings.
Although appellant has argued the appealed claims in eight
different groups, each of independent claims 9, 14, 22 and 25
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contains limitations similar to independent claim 1. Therefore,
the evidence relied on by the examiner fails to support the
rejection of these claims for the same reasons discussed above
with respect to claim 1. Although independent claims 9 and 14
were rejected using the additional teachings of Shwed, Shwed does
not overcome the deficiencies in the basic combination of Baker
and Dascalu discussed above.
In summary, we have not sustained either of the examiner’s
rejections of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 1, 3, 4, 6, 8-23 and 25-29 is
reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
LEE E. BARRETT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JS/dal
Appeal No. 2003-0425
Application 08/773,692
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