Ex Parte Tu et al

Board of Patent Appeals and Interferences

Jul 18, 2011

09618954 (B.P.A.I. Jul. 18, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EDAR ALLAN TU and ERIC PANG
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Appeal 2009-011670
Application 09/618,954
Technology Center 2400
____________

Before JOSEPH L. DIXON, JOHN A. JEFFERY, and THU A. DANG,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-6 and 23-26. Claims 7-22 are withdrawn from
consideration. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellants’ invention provides remote and secure access to a host
computer via an open application standard. See generally Spec. 1, 5-8.
Claim 1 is illustrative:
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1. A system for providing access to a base device
identified with a user of a remote client device, said remote
access system comprising:

a) a web server operatively coupled for communication with
the remote client device accessed by the user; and

b) a user server operatively coupled to said web server and
said remote client device, said user server further
configured to communicate data between the base device
and the user of the remote client device, said user server
further configured to communicate data with said base
device via requests initiated by said based device.

The Examiner relies on the following as evidence of unpatentability:
Kikinis US 6,167,120 Dec. 26, 2000
(filed June 24, 1998)

THE REJECTION
The Examiner rejected claims 1-6 and 23-26 under 35 U.S.C. § 102(e)
as anticipated by Kikinis. Ans. 3-6.1

CONTENTIONS
Regarding independent claim 1, the Examiner finds that Kikinis
provides access to a “base device” (i.e., support technician workstation 122)
that is said to be identified with a user of a remote client device. Ans. 3-7.
According to the Examiner, Kikinis’ “user server” (i.e., home server unit
100) communicates data with the “base device” via requests initiated by the

1 Throughout this opinion, we refer to (1) the Appeal Brief filed August 12,
2008; (2) the Examiner’s Answer mailed April 2, 2009; and (3) the Reply
Brief filed May 21, 2009.
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base device as claimed since the support technician “invariably” initiates
requests to the user server to initialize, configure, debug, and support the
system. Id.
Appellants challenge these findings as unsupported since Kikinis does
not initiate data requests, let alone by a base device identified with the user
as claimed. App. Br. 18-23; Reply Br. 5-6. The issue before us, then, is as
follows:

ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Kikinis discloses a user server configured to communicate data with a
base device identified with a user of a remote client device via requests
initiated by the base device?

FINDINGS OF FACT (FF)
1. Kikinis’ support technician workstation 122 is (1) located at the
service provider’s end of a home networking system, and (2) connected to
Ethernet backbone 121. Server 123 and Multi-Bridge Adapter Unit 120 are
also connected to the backbone at the service provider end. Kikinis’ home
network is shown in Figure 1 reproduced below:
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Kikinis’ home network in Figure 1

2. Kikinis’ Multi-Bridge Adapter Unit 120 receives and processes
data packets delivered over network 110, and (2) sends data packets from the
service provider’s end to Home Server Unit 100 identified for the PC or
peripheral device to which each transmission is intended. Kikinis, col. 4, ll.
40-50; Fig. 1.

ANALYSIS
This appeal hinges on one question: Is Kikinis’ home server unit 100
(i.e., the “user server”) necessarily capable of communicating data with the
identified “base device,” namely Kikinis’ support technician workstation,
via requests initiated by that workstation?
We are constrained by this record to answer this question “no.” As
Appellants indicate (Reply Br. 5), Kikinis provides scant disclosure of the
support technician workstation’s functionality apart from merely indicating
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its connection to an Ethernet backbone on the service provider’s end of the
system. FF 1. Based on this limited disclosure, we cannot say that the
support technician workstation (“base device”) necessarily initiates requests
to enable it to communicate with (1) the home server unit (“user server”) as
recited in independent claim 1, or (2) the identified remote client devices
(i.e., the PCs, fax, telephone, and printer) (Ans. 3) as recited in independent
claims 23 and 25.
The Examiner’s assertion that Kikinis’ support technician workstation
“invariably” initiates requests to the user server (i.e., the home server unit) to
initialize, configure, debug, and support the system (Ans. 7) is speculative
and unsubstantiated on this record. Although the support technician
workstation is connected to the user server via an Ethernet backbone,
adapter unit, and network (FF 1), we cannot say that the support technician
workstation necessarily initiates requests, let alone that such requests are
used to facilitate communication between the workstation and the home
server unit or remote client devices. Nor can we say that this workstation is
necessarily identified with a user of the remote client device as claimed.
Indeed, it may be that the support technician workstation is intended to
communicate solely with devices on the service provider’s end: we simply
cannot tell from the limited evidence on this record. Although Kikinis’
adapter unit communicates with the home server unit and client devices via
the network, the same cannot necessarily be said for the support technician
workstation. Nor will we speculate in this regard here in the first instance on
appeal.

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We are therefore constrained to find that the Examiner erred in
rejecting (1) independent claim 1; (2) independent claims 23 and 25 which
recite commensurate limitations; and (3) dependent claims 2-6, 24, and 26
for similar reasons.

CONCLUSION
The Examiner erred in rejecting claims 1-6 and 23-26 under § 102.

ORDER
The Examiner’s decision rejecting claims 1-6 and 23-26 is reversed.

REVERSED

pgc