10304452 (B.P.A.I. Feb. 28, 2012)

Ex Parte Paller

Board of Patent Appeals and InterferencesFeb 28, 2012

10304452 (B.P.A.I. Feb. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte GABOR PALLER _____________ Appeal 2009-013761 Application 10/304,452 Technology Center 2400 ____________ Before MARC S. HOFF, CARLA M. KRIVAK, and ELENI MANTIS MERCADER, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-013761 Application 10/304,452 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1-35. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. INVENTION Appellant’s claimed invention is directed to automatically configuring a protocol gateway by identifying a network element to the gateway and installing configuration files on the gateway. The installation of the configuration files configures the gateway to allow access to the network element through the gateway. See Spec. 3, 7-8. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method for automatically configuring a mobile services protocol gateway for operation with a network element, comprising: identifying the network element to the gateway; and installing configuration information on the gateway, installation of the configuration information allowing access to the network element through the gateway. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Batz US 7,120,148 B1 Oct. 10, 2006 (filed Feb. 12, 2002) The following rejection is before us for review: The Examiner rejected claims 1-35 under 35 U.S.C. § 102(e) as being anticipated by Batz. Appeal 2009-013761 Application 10/304,452 3 ISSUE The pivotal issue is whether the Examiner erred in finding that Batz teaches the limitation of “installing configuration information on the gateway, installation of the configuration information allowing access to the network element through the gateway” as recited in claim 1 (emphasis added). PRINCIPLE OF LAW “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). ANALYSIS The Examiner finds that Batz teaches a Wireless Application Protocol (WAP) gateway 20 which converts data into a format or configuration that can be displayed (col. 4, ll. 34-57). Appellant argues that claim 1 requires that the configuration information is installed on the Gateway which results in allowing access to a network element, not that some data is converted to another format (App. Br. 12). Appellant further asserts that the Examiner’s conclusion that the mobile gateway WAP 20 must contain some software/hardware inherently configured on the gateway for any type of conversion to take place, ignores the limitation of “allowing access to the network element through the gateway” as recited in claim 1 (App. Br. 12). We are persuaded by Appellant’s argument. The Examiner identifies the claimed “network element” as the mobile device 12 (Ans. 3). The Appeal 2009-013761 Application 10/304,452 4 Examiner finds (Ans. 3), and we agree, that configuration files on the WAP translate files received from web server 40 allowing for communication with the web server 40 (col. 4, ll. 34-57). However, we find no support for, nor does the Examiner address, how this translation allows “access” to the mobile device 12. We agree with Appellant (App. Br. 10) that access to the mobile device 12 is provided by way of an identifier in the request packet identifying the source which allows the web servers to identify the source and transmit the appropriate requested data such as web page to the requesting mobile device (see col. 5, ll. 25-43; col. 4, ll. 34-57; and col. 2, ll. 4-13). Thus, we agree with Appellant that access is provided through the identifier in the request packet and not through the translation files or configuration files to display the web page as identified by the Examiner. For the aforesaid reasons we will reverse the Examiner’s rejection of claim 1. We note that independent claim 13 recites a similar limitation: “configuration information . . . for operation with the secure network.” Again, the cited configuration files in Batz do not allow access to the mobile device and certainly do not allow access to a secure network. Independent claim 20 also recites a similar limitation of: “configuration information . . . to allow access to the network element.” Thus, we will also reverse the Examiner’s rejections of claims 2-35. CONCLUSION The Examiner erred in finding that Batz teaches the limitation of “installing configuration information on the gateway, installation of the configuration information allowing access to the network element through the gateway” as recited in claim 1 (emphasis added). Appeal 2009-013761 Application 10/304,452 5 ORDER The Examiner’s rejection of claims 1-35 is reversed. REVERSED rwk