Ex Parte Hansen

Patent Trial and Appeal Board

Feb 24, 2014

11140288 (P.T.A.B. Feb. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ERIC J. HANSEN
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Appeal 2011-011146
Application 11/140,288
Technology Center 2400
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Before JOHN C. KERINS, EDWARD A. BROWN, and
MICHAEL L. HOELTER, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Eric J. Hansen (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 1-7, 9, 11, 13-16, 18-20, and 22-28.1
App. Br. 8. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

CLAIMED SUBJECT MATTER
Claims 1, 3, 14, and 23 are the independent claims on appeal. Claim 1
is illustrative of the claimed subject matter and reads:
1. A method of testing a target server’s
website visitor actions, the method comprising:
a reverse proxy server receiving a request
from an electronic device operated by a visitor;
said reverse proxy server requesting and
retrieving content from a target server;
modifying said content for testing;
said reverse proxy server sending modified
content to said electronic device; and
tracking actions of said visitor.

REJECTIONS
I. Claim 1 stands rejected under 35 U.S.C. § 102(e) as anticipated
by George (US 2005/0144315 A1; pub. Jun. 30, 2005).

1 Claims 8, 10, 12, 17, 21, and 29-31 have been cancelled. Appellant does
not include dependent claim 19 in the “GROUNDS OF REJECTION TO
BE REVIEWED ON APPEAL.” App. Br. 8. However, Appellant argues
for the patentability of claim 19. Id. at 18. Thus, we include dependent
claim 19 within our review.
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II. Claim 2 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over George and Louviere (US 6,934,748 B1; iss. Aug. 23,
2005).
III. Claims 3, 5-7, 9, 11, 13-16, 18-20, and 22-28 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over George, Louviere, and
Lockwood (US 7,093,023 B2; iss. Aug. 15, 2006).
IV. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over George, Louviere, Lockwood, and Domi (US 6,202,201
B1; iss. Mar. 13, 2001).

ANALYSIS
Rejection I
Regarding claim 1, the Examiner found that George teaches, inter
alia, “a reverse proxy server” (proxy/surrogate server 404) that performs the
steps of the recited method. Ans. 4. For support that the proxy/surrogate
server 404 of George is a reverse proxy server, the Examiner found that
George’s proxy/surrogate server 404 can accept requests as though it were a
web server and is used in the same manner as the reverse proxy server in
claim 1. Id. at 15-16 (citing George, para. [0077]). The Examiner also
found that RFC 30402 states that “[d]evices commonly known as ‘reverse
proxies’ and ‘(origin) server accelerators’ are both more properly defined as
surrogates.” RFC 3040 at 6; see also Ans. 17. The Examiner concluded that
one of ordinary skill in the art would interpret a surrogate server as a reverse

2 I. Cooper et al., Internet Web Replication and Caching Taxonomy,
Network Working Group Request for Comments: 3040, 1-31 (Jan. 2001),
available at http://www.ietf.org/rfc/rfc3040.txt (last visited Dec. 19, 2009)
(hereinafter “RFC 3040”).
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proxy server, and that George’s proxy/surrogate server 404 is a surrogate
server. Ans. 17.
In contrast, Appellant contends that George’s proxy/surrogate server
404 is not a “reverse proxy server,” but instead is a “forward proxy server.”
App. Br. 10-11. Appellant agrees with the Examiner that RFC 3040 shows
that a surrogate server is a reverse proxy server; however, Appellant
contends that the proxy/surrogate server 404 of George is not a surrogate
server as defined in RFC 3040. Id. at 11-12. Rather, Appellant contends
that a surrogate server as defined in RFC 3040 must be linked to providing
cached content from one or more specific origin servers, and must be
delegated authority to operate on behalf of the origin server. Id. at 11.
Appellant contends that the proxy/surrogate server 404 of George does not
have these characteristics, and in support, provides three Declarations3 as
evidence to show that one of ordinary skill in the art, upon reading George’s
disclosure, would recognize that George discloses a forward proxy server,
not a reverse proxy server. Id. at 12. Appellant contends that the Examiner
ignored the Declarations by failing to address them. Id. at 12-13.
We agree with Appellant that the Examiner did not indicate in the
record that the Declarations were considered. “Evidence traversing
rejections, when timely presented, must be considered by the examiner
whenever present.” Manual of Patent Examining Procedure (MPEP) §
716.01 (8th ed., rev. 9, Aug. 2012) (emphasis added). “Affidavits and
declarations submitted under 37 CFR 1.132 and other evidence traversing
rejections are considered timely if submitted . . . prior to a final rejection.”

3 The three Declarations are Declarations of Eric Hansen, Paul Silevitch, and
Theodore Loder (hereinafter, collectively “Declarations”).
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Id. The Declarations were submitted by Appellant on July 1, 2010, prior to a
Final Rejection dated September 15, 2010. Thus, the Declarations were
timely presented by Appellant and, as such, should have been considered by
the Examiner.
“The ultimate determination of patentability must be based on
consideration of the entire record, by a preponderance of [the] evidence,
with due consideration to the persuasiveness of any arguments and any
secondary evidence.” MPEP § 716.01(d); see In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992). We find no indication that the Examiner considered
the merits of the Declarations in either the Final Rejection or the Examiner’s
Answer. Thus, the Examiner’s determination of anticipation was not based
on consideration of the entire record, including all of Appellant’s arguments
and supporting evidence. Therefore, we do not sustain the anticipation
rejection of claim 1.
Rejection II
Claim 2 depends from claim 1. The Examiner’s reliance on Louviere
does not cure the deficiencies of the rejection of claim 1, as described supra.
Ans. 5-6. Hence, we do not sustain the obviousness rejection of claim 2
over George and Louviere.
Rejection III
Independent claims 3, 14, and 23 each require a “reverse proxy
server.” The Examiner’s findings (Ans. 6-10) and Appellant’s contentions
(App. Br. 13-18) regarding George in relation to these claims are similar to
those discussed supra for claim 1. The Examiner’s application of Louviere
and Lockwood does not cure the deficiencies of George. Ans. 6-9. Hence,
we do not sustain the obviousness rejection of claims 3, 14, and 23, and their
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dependent claims 5-7, 9, 11, 13, 15, 16, 18-20, 22, and 24-28, over George,
Louviere, and Lockwood.
Rejection IV
Claim 4 depends from claim 3. The Examiner’s reliance on Domi
does not cure the deficiencies of the rejection of claim 3, as described supra.
Ans. 14-15. Hence, we do not sustain the obviousness rejection of claim 4
over George, Louviere, Lockwood, and Domi.

DECISION
We REVERSE the Examiner’s rejections of claims 1-7, 9, 11, 13-16,
18-20, and 22-28.

REVERSED

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