Ex Parte Boer et al

Board of Patent Appeals and Interferences

May 31, 2012

10859752 (B.P.A.I. May. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/859,752 06/03/2004 Gerrit de Boer 10191/3663 9666
26646 7590 06/01/2012
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
SEFCHECK, GREGORY B
ART UNIT PAPER NUMBER
2477
MAIL DATE DELIVERY MODE
06/01/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GERRIT DeBOER and RODOLFO MANN PELZ
____________________

Appeal 2010-003226
Application 10/859,752
Technology Center 2400
____________________

Before ERIC S. FRAHM, KRISTEN L. DROESCH, and JUSTIN T.
ARBES, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-21, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Disclosure
Appellants disclose and claim a device for accessing at least one
component of a networked system (Fig. 1; Spec. 3:23-4:6) including a
network of a vehicle (10) having a plurality of sub-networks (18, 20, and 22)
and vehicle components (24, 28, and 32), where access from outside the
system takes place via service gateways (SG1, SG2, … SGn), a service
gateway 38 representing a first hierarchical level and the service gateways
(SG1, SG2, … SGn) allocated to the sub-networks (18, 20, and 22)
representing a second hierarchical level, the network (10) being connected
through an interface (14) to infrastructure (40) such as the Internet, service
devices at a service center of a vehicle manufacturer, or a diagnostic device
at a repair shop (Spec. 4:25-5:16). Using such a device, an instruction can
be given to a gateway operator “to replace the software in one or more
components when replacing, supplementing, or changing components in the
vehicle” (Spec. 6:24-25), and to check and control “networked electronic
components from various domains, such as the vehicle body, drive train,
telematics, multimedia, etc.” (Spec. 7:10-11).
Exemplary independent claim 1 under appeal reads as follows:
1. A device for accessing at least one component of a
networked system from outside or from at least one component
of a networked system outward, the device comprising:
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an outward network interface; and
a network including sub-networks, each of the sub-
networks including at least one component, at least one of the
sub-networks including at least one second service gateway
distinct from the at least one component, controlled by at least
one gateway operator, the network further including at least one
first service gateway through which the network is connected to
the interface, the first service gateway forming a first
hierarchical level, the at least one second service gateway of the
at least one sub-network being allocated to the first service
gateway of the first hierarchical level, the at least one second
service gateway representing a second hierarchical level, the at
least one gateway operator of the at least one second service
gateway being allocated to the second hierarchical level and
being positioned in the first service gateway of the first
hierarchical level.
Rejections
(1) The Examiner rejected claims 1 and 3-8 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Hicks (US 7,209,945 B2)
and Choquier (US 5,951,694). Ans. 3-8.
(2) The Examiner rejected claims 2 and 9-21 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Hicks, Choquier, and
Lavelle (US 6,678,892 B1). Ans. 8-12.
Appellants’ Contentions
(1) Appellants contend (App. Br. 6-9; Reply Br. 2-5) that the
Examiner erred in rejecting claims 1 and 3-8 under 35 U.S.C. § 103(a) over
Hicks and Choquier for numerous reasons, including:
(a) Choquier has no “gateway operator” as recited in claim 1, and
Choquier‟s service map 136 is not equivalent to a gateway operator because
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service map 136 does not operate gateways, and instead maps and locates
servers to perform load balancing (App. Br. 7-8);
(b) the plain meaning of Appellants‟ Specification (Spec. 2:24-31) is
that gateway operators (Fig. 1; GO1, GO2, … GOn) operate the service
gateways allocated to them and service/maintain them (Reply Br. 3-4 citing
Spec. 2:28-30);
(c) “operate” means to perform a function or exert power or influence,
and service map 136 in Choquier is an inert collection of information that
does not perform any function to exert power or influence (Reply Br. 3-4);
and
(d) it would not have been obvious to modify Hicks with Choquier
because Choquier does not perform any function to exert power or influence,
or “control” the gateway (Reply Br. 4).
(2) Appellants contend (App. Br. 9-12; Reply Br. 5-8) that the
Examiner erred in rejecting claims 2 and 9-21 under 35 U.S.C. § 103(a) over
Hicks, Choquier, and Lavelle because:
(a) Lavelle fails to cure the deficiencies of Hicks and Choquier; and
(b) the Examiner‟s modification of Hicks and Choquier with Lavelle
involves the use of improper hindsight, is not based on sufficient evidence or
motivation, and is conclusory.
Principal Issue on Appeal
Based on Appellants‟ arguments, the following issue is presented for
appeal:
Did the Examiner err in rejecting claims 1-21 as being obvious
because the base combination of Hicks and Choquier fails to teach or
suggest the “gateway operator” limitation of sole independent claim 1?
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ANALYSIS
We have reviewed the Examiner‟s rejections in light of Appellants‟
contentions in the Appeal Brief (App. Br. 11-16) and the Reply Brief (Reply
Br. 2-4) that the Examiner has erred.
We disagree with Appellants‟ conclusions. We adopt as our own
(1) the findings and reasons pertaining to the obviousness rejections set forth
by the Examiner in the action from which this appeal is taken, and (2) the
reasons set forth by the Examiner in the Examiner‟s Answer in response to
Appellants‟ Appeal Brief (see Ans. 3-16). We concur with the conclusions
reached by the Examiner, and highlight and address specific findings and
arguments for emphasis as follows.
Claims 1 and 3-8
With regard to claims 1 and 3-8, the Examiner has provided a factual
basis and articulated reasoning with a rational underpinning to support the
conclusion of obviousness (see Ans. 3-8). See KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)); In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). Claim 1
recites that each of the one or more second service gateways (SG0, SG1, …
SGn) associated with each of the sub-networks (18, 20, and 22) which are
part of the network 10 are “controlled by at least one gateway operator
[GO1, GO2, … GOn],” and “the at least one gateway operator” is “allocated
to the second hierarchical level” and is “positioned in the first service
gateway [38] of the first hierarchical level” (claim 1). We agree with the
Examiner (Ans. 12-14) that these limitations are taught or suggested by the
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combination of Hicks and Choquier, and note that Choquier discloses a
service map 136 that is the equivalent of the recited gateway operator.
Appellants make multiple arguments with regard to claim 1 (App. Br.
6-9; Reply Br. 2-5), concerning the failure of Choquier‟s service map 136 to
perform the function(s) of the recited gateway operator. Appellants assert
(App. Br. 7-8) that service map 136 maps and locates servers, and thus fails
to operate the gateways 126. We have carefully reviewed these arguments,
however, and they are not convincing of the non-obviousness of the claimed
invention set forth in representative claim 1, and thus of the claimed
invention set forth in dependent claims 3-8, which are not separately argued.
We agree with the Examiner‟s broad but reasonable interpretation of claim 1
and the phrase “gateway operator,” that the gateway operator must control a
service gateway (Ans. 13). We also agree with the Examiner that
“Choquier‟s disclosure of the service map 136 selecting and allocating an
appropriate server to the corresponding gateway 126 for a particular service
would also meet the claim limitation of a service gateway being controlled
by a gateway operator” (Ans. 14).
“During examination, „claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.‟” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)); see also In re Morris, 127 F.3d 1048, 1053-54
(Fed. Cir. 1997).
Appellants describe gateway operators (GO) (shown in Fig. 1) as
“provid[ing] for the administration of one or more service gateways, which
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check the provision and relaying of services for the individual service
gateways” (Spec. 2:24-26 (emphasis added)). The administration of the
individual service gateways “includes the download, activation,
deactivation, updating or upgrading of application software found on the
service gateway, the managing of access rights, etc.” (Spec. 2:26-28).
Appellants also describe the functioning of the gateway operators (GO) as
follows: “the gateway operator operates the service gateway(s) allocated to
it and its services and maintains these” (Spec. 2:28-30 (emphasis added)).
However, the Specification is otherwise silent as to the definition of
“operate” or “gateway operator.”
The PTO is permitted to use dictionary definitions in tandem with the
specification and prosecution history to enlighten the broadest reasonable
interpretation of a claim term, and our reviewing court, the Court of Appeals
for the Federal Circuit, has held that “dictionary definitions are []
pertinent.” In re Trans Tex. Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir.
2007) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005)).
We agree with Appellants that “operate means to perform a function,
or exert power or influence” (Reply Br. 4). The plain and ordinary meaning
of “operate” is “exert power or influence.” Webster’s Third New
International Dictionary, p. 1580-81 (1971). Applying the broadest
reasonable interpretation of the term in light of the Specification, we find the
ordinary meaning for “gateway operator” to be any module or element that
controls, operates, or administers a gateway. We also agree with Appellants
(Reply Br. 3) that the plain meaning of “gateway operator” and the
description in the Specification make it clear that “the gateway operator
operates the service gateway(s) allocated to it and its services and maintains
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these” (Spec. 2:28-30). However, we cannot agree with Appellants that
Choquier‟s service map 136 fails to exert power or influence over service
gateway 126.
Under the broadest reasonable interpretation of claim 1, in light of the
Specification, the recitation of a “gateway operator” encompasses
Choquier‟s service map 136 which exerts control and/or influence over
gateway 126. Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1364. Choquier‟s
service map 136 shown in Figure 1 “serves to inform the Gateways 126 (and
other components of the on-line services network 100) of the addition,
deletion or change in state of any server 120 in the system” and “service
map 136 thereby allows changes to be made to the servers 120 of the system
without manual intervention” (col. 11, l. 58-col. 12, l. 7 (italicized emphasis
added)), and therefore exerts influence and/or control over gateway 126
associated with application servers 120 (i.e., second service gateways).
Further, service map 136 updating gateway 126‟s software correlates to
Appellants‟ description in the Specification of the functions of a gateway
operator (GO) (see Spec. 2:24-30). Because Choquier discloses service
maps 136 that control, operate, and/or administer gateways 126, Choquier‟s
service maps 136 are gateway operators as recited in claim 1.
In view of the foregoing, Appellants‟ arguments (App. Br. 6-8; Reply
Br. 3-4) that Hicks and Choquier fail to teach or suggest a gateway operator
as recited in claim 1, are unpersuasive. Appellants‟ arguments have not
shown that the Examiner erred in finding that the combination of Hicks and
Choquier teaches or suggests the invention recited in claim 1. Accordingly,
we will sustain the obviousness rejection of sole independent claim 1, and
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claims 3-8 which depend therefrom, based upon the combined teachings and
suggestions of Hicks and Choquier.
Claims 2 and 9-21
We will sustain the Examiner‟s rejections of claims 2 and 9-21 under
§ 103(a) over Hicks, Choquier, and Lavelle for similar reasons as discussed
with regard to claim 1 from which claims 2 and 9-21 ultimately depend.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1 and 3-8 as being
obvious, because the combination of Hicks and Choquier teaches or suggests
the gateway operator limitation of the claims.
(2) The Examiner has not erred in rejecting claims 2 and 9-21 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Hicks,
Choquier, and Lavelle.
(3) Claims 1-21 are not patentable.

DECISION
The Examiner‟s rejections of claims 1-21 are affirmed.
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).

AFFIRMED

ELD