Ex Parte Westman et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201412073640 (P.T.A.B. Feb. 27, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/073,640 03/07/2008 Ilkka Westman 800.0258.U2(US) 1093 10948 7590 02/28/2014 Harrington & Smith, Attorneys At Law, LLC 4 Research Drive, Suite 202 Shelton, CT 06484 EXAMINER RENNER, BRANDON M ART UNIT PAPER NUMBER 2478 MAIL DATE DELIVERY MODE 02/28/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ILKKA WESTMAN and MARKKU TUOHINO ____________________ Appeal 2011-0100341 Application 12/073,640 Technology Center 2400 ____________________ Before JEAN R. HOMERE, CAROLYN D. THOMAS, and JOHNNY A. KUMAR, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is Nokia Corp. (App Br. 3.) Appeal 2011-010034 Application 12/073,640 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1-20. (App. Br. 5.) We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Invention Appellants invented a communications method and system for allowing a roaming mobile terminal (1) to get connected with a network element (e.g., call state control function (CSCF), domain name system (DNS) (3)) to thereby establish a session with the network via an associated proxy device (5). ([0002]). In particular, in response to the mobile terminal, upon entering the network area, requesting information about the proxy device, the DNS retrieves from its database a list of service-related parameters from which the terminal selects a parameter to establish a session with the network. (Fig.1, [0044], [0045].) Illustrative Claim Independent claim 1 further illustrates the invention. It reads as follows: 1. A method, comprising: obtaining in a user equipment information about a proxy available in a communication system; receiving in the user equipment a list of parameters in response to intending to establish a session using the proxy in the communication system, the list of parameters comprising service-related information; where the information is obtained from, and the list of parameters is received from, a network element, other than the proxy, of an access network of the communication system; Appeal 2011-010034 Application 12/073,640 3 selecting at least one parameter from the list; and establishing the session via the proxy using the selected parameter, wherein said receiving of the list of parameters comprises receiving the list using a communication channel of the access network of the communication system where the session is to be established, and wherein the list is extracted from at least one database of the network element of the access network of the communication system. Prior Art Relied Upon Mustajarvi WO 98/32304 Jul. 23, 1998 Matsuda US 7,039,688 B2 May 2, 2006 Babe US 7,184,418 B1 Feb. 27, 2007 Hsu US 7,454,500 B1 Nov. 18, 2008 Rejections on Appeal The Examiner rejects the claims on appeal as follows: 1. Claims 1-11, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Hsu and Mustajarvi. 2. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hsu, Mustajarvi, and Baba. 3. Claims 13 and 16 stands rejected under 35 U.S.C. § 102(e) as being anticipated by Hsu. 4. Claims 17, 18, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hsu and Mustajarvi. Appeal 2011-010034 Application 12/073,640 4 5. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hsu, Matsuda, and Mustajarvi. ANALYSIS We consider Appellants’ arguments seriatim as they are presented in the Appeal Brief, pages 13-32, and the Reply Brief, pages 2-9. Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in finding that the combination of Hsu and Mustajarvi teaches or suggests in response to intending to establish a session using a proxy in a communication system, a user equipment obtains a list of parameters about the proxy using a communication channel of an access network of the communication system, as recited in claim 1? Appellants argue that the proposed combination of references does not teach or suggest the disputed limitations emphasized above. (App. Br. 13- 22; Reply Br. 2-9.) According to Appellants, Hsu discloses in response to a client requesting a DNS server to resolve a URL server host IP address, the client “obtains a list of IP addresses associated with proxy servers configured on switches which are separate from the host server of Hsu.” (App. Br. 14-15.) However, Appellants argue that Hsu’s host servers and site switches do not disclose obtaining information about the proxy or using the proxy because Hsu’s client did not send the query to the DNS server Appeal 2011-010034 Application 12/073,640 5 with the intent to establish a session with a particular proxy or using the proxy. That is, because the client submitted the request before becoming aware that a proxy existed, the client did not intend to obtain information about a particular proxy or establish a session therewith. (Reply Br. 4-5.) Further, Appellants argue because Mustajarvi’s broadcast control channel is a point to multipoint channel through which a cell broadcasts its information to multiple terminals to maintain an existing session, as opposed to a bidirectional channel that can broadcast point-to-point to establish a session, Mustajarvi teaches away from the invention, and would further render Hsu unsuitable for its intended purpose. (App. Br. 17-21; Reply Br. 6-9.) In response, the Examiner finds because in Hsu the client’s request to a DNS to establish a session with a website causes the DNS to provide the client with a list including any proxy that can facilitate establishment of the session, Hsu’s disclosure of the request teaches the client’s intent to be connected to the server via the proxy. (Ans. 18-19.) Further, the Examiner finds because Mustajarvi’s broadcast channel can establish two-way communication between various components of the network including the MS and the SGSN, it is a bi-directional channel. (Ans. 20-22.) Additionally, the Examiner finds because the claim does not require the communication channel to be a point-to-point channel, Appellants’ argument to that effect is not commensurate with the scope of the claim. (Id.) Based upon our review of the record before us, we find no error in the Examiner’s obviousness rejection regarding claim 1. We agree with the Examiner that because the list of URLs obtained from the DNS database, in Appeal 2011-010034 Application 12/073,640 6 response to the client’s request to establish a session with a website, includes addresses of any proxy that may be instrumental in establishing the session with the site (Col. 3, ll. 4-33), the client’s request for information includes an intent to retrieve any and all available means for establishing the session with the website. Further, we agree with the Examiner that because the communication channel recited in the claim does not specify that it supports bi-directional or point-to-point communication, such argument is not commensurate with the scope of the claim. Furthermore, because Mustajarvi’s broadcast control channel allows a roaming mobile device to exchange data with a network (page 18, ll. 14-17), the broadcast control channel would allow Hsu’s client to establish a session with a proxy server selected from the list of URLs received from the DNS server. Consequently, because Hsu and Mustarjarvi disclose prior art elements that perform their ordinary functions to predictably result in a system wherein a roaming client can access a website via a proxy selected from a list and a broadcast channel, the proffered combination is proper. Therefore, we find unavailing Appellants’ argument that Mustajarvi’s disclosure would render Dimitrova’s solution unsuitable for its intended purpose or that it teaches away from the same.2 We are satisfied that because the proposed combination would 2 An argument that the system is rendered “unsuitable for its intended purpose” is a “teach away” argument. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (The court concluded that in effect, “French teaches away from the board's proposed modification” because “if the French apparatus were turned upside down, it would be rendered inoperable for its intended purpose”). The Federal Circuit has held “[a] reference may be said to teach Appeal 2011-010034 Application 12/073,640 7 predictably result in a system that can allow a mobile device to select a proxy from a list of URLs obtained from a DNS to establish a communication session therewith via a broadcast channel, it teaches or suggests the disputed limitations. It follows that Appellants have not shown error in the Examiner rejection of claim 1. Regarding the rejection of claims 2-20, because Appellants have either not presented separate patentability arguments or have reiterated substantially the same arguments as those previously discussed for patentability of claim 1, claims 2-20 fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). Further, while Appellants raised additional arguments for patentability of the cited claims, we find that the Examiner has rebutted in the Answer each and every one of those arguments by a preponderance of the evidence. (Ans. 22-25.) Therefore, we adopt the Examiner’s findings and underlying reasoning incorporated herein by reference. Consequently, we find no error in the Examiner’s rejections of claims 2-20. DECISION We affirm the Examiner’s rejections of claims 2-20 as set forth above. away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed.Cir.1994)). Appeal 2011-010034 Application 12/073,640 8 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). 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