Ex Parte Benayoun et al

Board of Patent Appeals and Interferences

Jun 12, 2009

09834245 (B.P.A.I. Jun. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ALAIN BENAYOUN, OLIVIER HERICOURT,
PATRICK MICHEL, and JEAN-FRANCOIS LE PENNEC
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Appeal 2008-005220
Application 09/834,2451
Technology Center 2400
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Decided2: June 15, 2009
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Before JOSEPH L. DIXON, JEAN R. HOMERE, and JAY P. LUCAS,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed April 12, 2001. Appellant claims the benefit under
35 U.S.C. § 119 of EPO application 00480052.0, filed June 20, 2000. The
real party in interest is International Business Machines Corporation.

2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail date (paper delivery) or Notification Date (electronic Delivery).
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STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 33 under
authority of 35 U.S.C. § 134. The Board of Patent Appeals and Interferences
(BPAI) has jurisdiction under 35 U.S.C. § 6(b).
Appellants’ invention relates to method for accessing data from a
server across a network through a non-permanent connection from a proxy
server. In the words of the Appellants:
The present invention provides an improved system and method
for accessing from a client system connected to an IP (Internet
Protocol) network (Internet or Intranet network), a server system
connected to a circuit switched network, typically an ISDN
(Integrated Services Digital Network) network or a PSTN network
(Public Switched Telephone Network). The IP network and the
circuit switched network, which are two independent networks,
communicate through one or more Proxy servers.

According to one aspect of the present invention, a client/server
application in a Proxy server permits access to servers connected to
the IP network through non-permanent connections. The client/server
application configures the Proxy server to receive from a client system
a request for accessing information located in a server system. The
request can include a source IP address and a destination IP address.
The destination IP address of the server system is identified in the
request. The server system can be connected to the Proxy server
through a circuit-switching network. The identifier of the server
system in the circuit-switching network referring to a first table is
determined. The first table includes, for each server system identified
by a destination IP address, a resource identifier in the circuit-
switching network. A non-permanent connection with the server
system, using the resource identifier associated with the server
system, is established. The information requested by the client system
from the server system is retrieved and sent to the client system.

(Spec. 10).

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Public and private telephone networks are connection oriented.
Most of them use digital high-speed networking techniques based on
Time Division Multiplexing (TDM). When the transmission
bandwidth is very low in cost, it is not necessary to spend a lot of
money on expensive packet switching nodes. Physical links can be
shared using a simple time multiplexing scheme and the "inefficiency"
in link utilization can be tolerated. Intelligent TDMs are needed to set
up and clear down connections and to provide a multiplexed
connection to the end user, but the cost of these may be considerably
lower than the packet node alternative.

(Spec. 16, § 5.0).

Claim 1 is exemplary:
1. A method, for use in a proxy server, of accessing from a client
system connected to an Internet (IP) network, a server system
connected to the proxy server by a non-permanent connection through
a circuit-switching network, the method comprising:
receiving from the client system a request for accessing
information located in the server system, the request comprising a
source IP address and a destination IP address;
identifying in the request, a destination IP address of the server
system, the server system being connected to the proxy server through
the circuit-switching network;
determining the resource identifier of the server system in the
circuit-switching network referring to a first table, the first table
comprising, for each server system identified by a destination IP
address, a resource identifier in the circuit-switching network;
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establishing a non-permanent connection with the server system
using the resource identifier associated with the server system;
retrieving the information requested by the client system from
the server system; and
sending the requested information to the client system

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Voit US 6,104,711 Aug. 15, 2000
Strentzsch US 6,256,671 B1 Jul. 3, 2001
Schneider US 6,442,549 B1 Aug. 27, 2002
Fuh US 6,463,474 B1 Oct. 8, 2002
Hendren US 6,701,415 B1 Mar. 2, 2004
REJECTIONS
The Examiner rejects the claims as follows:
R1: Claims 1 to 3, 5, 7, 10 to 14, 16, 18, 21 to 25, 27, 29, 32, and 33
stand rejected under 35 U.S.C. § 103(a) for being obvious over Hendren in
view of Voit.
R2: Claims 4, 8, 9, 15, 19, 20, 26, 30, and 31stand rejected under 35
U.S.C. § 103(a) for being obvious over Hendren in view of Voit and further
in view of Schneider.
R3: Claims 6, 17, and 28 stand rejected under 35 U.S.C. § 103(a)
for being obvious over Hendren in view of Voit and further in view of Fuh.

Groups of Claims:
The rejections will be discussed in the order of the arguments
presented by Appellants in the Brief.
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Appellants contend that the claimed subject matter is not rendered
obvious by Hendren and Voit alone, or in combination with Schneider or
Fuh, for failure of the references to teach claimed limitations. The Examiner
contends that each of the claims is properly rejected.
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs and the Answer for their respective details. Only those
arguments actually made by Appellants have been considered in this
opinion. Arguments which Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
We affirm the rejections.

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
the references teach the tables of resource identifiers as claimed, the non-
permanent connections with a server system using the resource identifiers as
claimed, the most frequently requested web pages cached in the proxy server
as claimed, and the claimed resource identifier being a phone number.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented an improved system and method for accessing
data, such as web pages across a network, such as the Internet, from a
web server. (Spec 12, l. 10). The method uses proxy servers as
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intermediaries for communications between the web browsers and the
data servers (id. at l. 22); said proxy servers capable of caching the most
popular web pages for repeated retrieval without needing to access the
data server. (Spec. 15, l. 6, et seq.). The web servers are connected by
either an Internet Network connection, or a connection through the
Telephone Network, a type of connection included in the term non-
permanent physical connection. (Spec 14, l. 25; Fig. 5). The destination
identifier of the request for a web page is the Internet address of the web
server supplying the page, which may be a phone number derived from a
proxy phone number table. (Spec. 15, l. 10).
2. Appellants’ Figure 5 is reproduced below:

Figure 5 shows a physical view of the Appellants’ invention in a
network.
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3. Hendren teaches the supplying of web pages over the Internet, storing
commonly requested web pages in one or more caches on proxy servers
to speed up their retrieval. (Col. 1, l. 65). Web pages are provided by web
servers, such as #102, (Fig. 8). Proxy servers, containing cache storage
#124, are functionally intermediate on the Internet and can speed the
retrieval process when the same page is often retrieved.
4. Voit teaches sending web pages across the Internet using a domain name
server (DNS) with lookup tables capable of translating destination
identifiers to either Internet connected servers or to telephone connected
servers. (Col. 8, ll. 47-59). Tables in the DNS provide the destination IP
address for direct Internet connection, or phone numbers for phone-based
servers using the telephone network system. (Col. 9, l. 64, et seq.).
5. Figure 1 of Voit is shown here:

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The Voit network shown above has access to Internet and telephone
(PSTN) connected servers.
6. The Strentzsch patent is used by the Examiner to teach that it is common
for DNS servers to provide the proxy function, including a cache
memory, in the Internet. (Figure 2).

PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).

ANALYSIS
From our review of the administrative record, we find that Examiner
has presented a prima facie case for the rejections of Appellants’ claims
under 35 U.S.C. § 103(a). The prima facie case is presented on pages 3 to
10 of the Examiner’s Answer. In opposition, Appellants present a number of
arguments against the evidence of the prima facie case.
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Arguments with respect to the rejection
of claims 1 to 3, 5, 7, 10 to 14, 16, 18, 21 to 25, 27, 29, 32, and 33
under 35 U.S.C. § 103 [R1]

Appellants contend that Examiner erred in rejecting the noted claims
under 35 U.S.C. § 103 because “Hendren and Voit in combination fail to
teach or suggest, and Voit teaches away from, ‘determining the resource
identifier of the server system in the circuit switching network referring to a
first table, the first table comprising, for each server system, identified by a
destination IP address, a resource identifier in the circuit-switching network’
as recited in claim 1” and a similar limitation in independent claims 12 and
23. (App. Br. 20, bottom to 21, top) (italics and underlining omitted).
The Examiner points out that the Hendren reference teaches the
retrieval of web pages using proxy servers, but the Voit reference is relied
upon for an explicit teaching of the tables identifying the resource identifiers
of the respective servers. (Answer 11, top). Reviewing Voit, column 9, lines
4 to 12, and elsewhere, we find that the Examiner has not erred, and that
Voit in the DNS server performs the required table translations. We agree
with the Examiner (id.) that Voit’s DNS server performs the claimed proxy
functions, and that the claims are rendered obvious, in this regard, over the
Voit reference. (See FF 6 above).
With regard to claims 3, 14, and 25, Appellants argue that Hendren
and Voit “in combination fail to teach or suggest, and Voit teaches away
from . . . ‘updating the most frequently requested information cached in the
proxy server by establishing a non-permanent connection with the server
system, and retrieving and storing in the cache the most frequently requested
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information’ as recited in dependent claim 3” and similar language in claims
14 and 25. (App. Br. 21, bottom to 22, top) (italics and underlining omitted).
Examiner points to the teachings in Hendren describing the storing of the
most frequently requested information in a cache, and teachings in Voit
disclosing establishing a non-permanent connection with the system.
(Answer 13, middle). We find that the Examiner has not erred in relying on
the combination of those teachings, adding only that the Internet branch of
Voit’s network, as well as the Hendren network, also teach a non-permanent
connection, when the term is broadly and fairly interpreted. Internet TCP/IP
protocol is based on packets, which connection is sometimes active,
channeling the information, and sometimes dormant. In that sense the actual
connection for the passage of information is not permanent.
With regard to claims 11, 22, and 33, Appellants argue that the
references fail to teach or suggest “wherein . . . the resource identifier is a
phone number.” (App. Br. 23, middle) (alteration in original, underlining
omitted). The Examiner points to the teachings in Voit, column 10, lines 9 to
20, which certainly do teach the telephone number resource identifiers as
claimed. (Answer 14, top).

Arguments with respect to the rejection
of claims 4, 8, 9, 15, 19, 20, 26, 30, and 31 under 35 U.S.C. § 103 [R2] and
the rejection of claims 6, 17, and 28 under 35 U.S.C. § 103 [R3]

Appellants present no specific arguments with respect to rejections R2
and R3, so they will be affirmed pro forma.

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CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 33.

DECISION
The Examiner's rejections of claims 1 to 33 are Affirmed.

AFFIRMED

msc

Frank Nicholas
Cardinal Law Group
1603 Orrington Ave Suite 2000
Evanston IL 60201