Ex Parte Bomgaars et al

Patent Trial and Appeal Board

Mar 2, 2015

11748871 (P.T.A.B. Mar. 2, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOEL BOMGAARS, JEREMY RAYMOND CROSS, DAVID
WILLIAM DURHAM, NATHAN JOEL MCNEILL, HUEY JIUN NGO,
and RYAN D. SLEEVI
____________________

Appeal 2012-010724
Application 11/748,871
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
BRUCE R. WINSOR, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/748,871

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1–10, 12–21, and 23–28. Claims 11 and 22 have been cancelled.
(App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).

Exemplary Claims
Exemplary claims 1, 6, 7, and 10 under appeal read as follows
(emphasis and formatting added):
1. A method comprising:
[(A)] logging onto a network appliance by a first system;
[(B)] establishing encrypted communication sessions,
respectively, with the first system and a second system
via the network appliance,
[(i)] wherein the network appliance is configured to
provide remote access and control, by the first
system, of the second system over the encrypted
communication sessions; and
[(C)] facilitating the remote access and control between the
first system and the second over the encrypted
communication sessions established by the network
appliance, the facilitating step including,
[(i)] detecting selection of a support session associated
with the second system, and
[(ii)] activating, by the network appliance, the selected
support session.

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6. A method according to claim 1, wherein[:]
[(D)] the first system is associated with a representative and the
second system is associated with a customer, and
[(E)] the support session permits the representative to provide
remote support functions to the customer.

7. A method according to claim 6, further comprising:
[(F)] transmitting, by the network appliance, a first software to
the first system and a second software to the second
system for establishment of the support session, wherein
the second software automatically uninstalls upon
termination of the support session.

10. A method according to claim 1, wherein the network
appliance is a virtual appliance.

Rejections on Appeal
The Examiner rejected claims 1–9, 12–20 and 23–28 under 35 U.S.C.
§ 103(a) as being unpatentable over Appiah (US 2002/0161895 A1;
published Oct. 31, 2002) in view of Calhoun (US 2007/0218875 A1;
published Sept. 20, 2007.
1

1
As to this rejection, claims 1, 4, 5, 7, 8, and 9 are argued separately. As
highlighted below, the panel groups the claims differently than requested by
Appellants. We group claims 2, 3, 6, 12, 13, 14, 17, 23, and 25–28 with
claim 1; we group claims 15 and 24 with claim 4; we group claim 16 with
claim 5; we group claim 18 with claim 7; we group claim 19 with claim 8;
and we group claim 20 with claim 9. Separate patentability is not argued for
these claims. Except for our ultimate decision, these claims are not
discussed further herein.
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The Examiner rejected claims 10 and 21 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Appiah, Calhoun, and Dowling
(US 6,574,239 B1; issued June 3, 2003).
2

Appellants’ Case Law Analysis
Before presenting their contentions of Examiner error, Appellants
present a case law analysis which is inapplicable to the current case (App.
Br. 9). Appellants cite to numerous venerable decisions by the Court of
Customs and Patent Appeals without acknowledging that these holdings
were modified by the Court’s holding in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398 (2007). Despite the Court’s explicit guidance in KSR, Appellants
mistakenly argue that KSR requires as a general proposition that “an
obviousness ‘analysis should be made explicit.’” (App. Br. 9:10-11). To the
contrary, the Court’s guidance is that an “analysis should be made explicit”
for the “more difficult” cases where “the claimed subject matter may involve
more than the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement.” KSR, 550 U.S. at 417. In the contentions of error presented
by Appellants, we find no arguments before us that we have a “difficult”
case such as discussed by the Court.
Additionally, Appellants have not presented evidence sufficient to
show that combining the prior art was “uniquely challenging or difficult for
one of ordinary skill in the art” or “represented an unobvious step over the

2
As to this rejection, separate patentability is not argued for claim 21. We
group claim 21 with claim 10. Except for our ultimate decision, this claim is
not discussed further herein.
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prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418–19). Nor have Appellants
presented evidence sufficient to show that any of their incorporations of
known limitations yielded more than expected results.

Appellants’ Contentions

1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[T]he mere general teaching of a secure communication by
Calhoun is insufficient to establish the obviousness of the
subject matter of independent [claim 1].
App. Br. 10 (emphasis added).
Further, the server 20 of Appiah does not serve to activate a
selected support session associated with the computing device
45 (i.e., “activating, by the network appliance, the selected
support session.”).
App. Br. 13.
2. Appellants contend that the Examiner erred in rejecting claim 4
under 35 U.S.C. § 103(a) because “[c]laim 4 recites, ‘wherein the encrypted
communication session with the second system is initiated outbound towards
the network appliance’” and “this means that the second system 103 and the
first system 105 connect ‘outbound’ to the network appliance 101” (App. Br.
13) (emphasis added).
3. Appellants contend that the Examiner erred in rejecting claim 5
under 35 U.S.C. § 103(a) because “wherein the network appliance is
collocated with either the first system or the second system” and “there is no
suggestion anywhere else within the disclosure of Appiah that the server
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may be collocated with either of clients 40 and/or 45” (App. Br. 14)
(emphasis added).
4. Appellants also contend that the Examiner erred in rejecting claim 7
under 35 U.S.C. § 103(a) because “Appiah does not, in fact, disclose or
suggest second software for automatically uninstalling upon termination of
a support session.” (App. Br. 14) (emphasis added).
5. Appellants also contend that the Examiner erred in rejecting claim 8
under 35 U.S.C. § 103(a) because “Appiah does not, in fact, disclose or
suggest a network appliance restricting control and access to a second
system ‘according to a profile corresponding to the first system.’” (App.
Br. 15) (emphasis added).
6. Appellants also contend that the Examiner erred in rejecting claim 9
under 35 U.S.C. § 103(a) because:
Appiah only discloses sending a request to a network to initiate
communication between two computing devices. There is no
third system, as claimed. The request includes identification of
a desired communications protocol and such protocols are
automatically employed. This is substantially different from,
and does not suggest, the establishment of an encrypted
communication session with a third system, with a network
appliance queueing a service request by a second system and
another service request by a third system for handling by a first
system. There is no such "queue" disclosed or suggested by
Appiah. Calhoun does not cure this deficiency of Appiah.
App. Br. 16 (Appellants’ emphasis omitted and the panels’ emphasis added).
7. Appellants also contend that the Examiner erred in rejecting claim
10 under § 103(a) because:
Dowling is directed to systems involving virtual connectivity,
which is irrelevant to the claimed inventions. Claims 10 and
21 recite, “wherein the network appliance is a virtual
Appliance” (Emphasis added). The disclosure, by Dowling, at
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col. 3, lines 36 through 44, of “virtual” connectivity, has no
bearing to a teaching or suggestion of “a virtual appliance.”
That is, Dowling specifically recites, “enable a remote working
to stay virtually connected to a central server without the need
to continuously remain connected via a physical channel.” The
only commonality with the claimed feature is the term “virtual,”
but in an entirely different context. Dowling is completely
devoid of any teaching or suggestion of a “virtual appliance,”
teaching, at best, only visualization, in general.
App. Br. 17 (emphasis omitted).

Issue on Appeal
Did the Examiner err in rejecting claims 1, 4, 5, and 7–10, as being
obvious?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
As to Appellants’ above contention 4 covering claim 7, we agree. We
note that at page 27 of the Answer the Examiner attempts to address
deficiencies in the rejection by the Examiner’s response to the argument.
We agree with the Examiner’s reasoning at page 27 of the Answer, stating
“once the session is terminated, it would have been obvious to remove the
installed software when computing device is a mobile device where memory
is limited.” However, this reasoning overlooks the “automatically”
limitation recited in claim 7. Therefore, the rejection does not present a
sufficient articulated reasoning with regard to the argued “automatically”
limitation of contention 7, as required by KSR Int’l Co. v. Teleflex, Inc., 550
U.S. at 398. While we agree with the Examiner that the argued limitation
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would likely be deemed obvious to an artisan, this explanation is simply
insufficient as it is not supported by evidence or articulated reasoning of
record. Given the situation before us, we reverse the rejection of claim 7
and leave it to the Examiner to do a proper new ground of rejection.
As to Appellants’ above contention 5 covering claim 8, we agree.
As to Appellants’ above contention 1 covering claim 1, we disagree.
Although Appellants allege that the general teaching of Calhoun “is
insufficient,” Appellants’ disclosure relies on just such a general prior art
teaching as sufficient written description for the argued limitation:
In one embodiment, the security on these links is achieved
using the 256-bit Advance Encryption Standard (AES) Secure
Sockets Layer (SSL).
(Spec. ¶ 0026). As to the argued limitation, we are unable to find anything
more detailed than this general prior art description in Appellants’
Specification. As to this limitation, Appellants are attempting to place a
greater burden on the Examiner than is reasonable given Appellants’ own
prior art based disclosure of the limitation. This argument does not persuade
us that the Examiner erred in rejecting the claim.
Further as to Appellants’ above contention 1, Appellants’ argue that
“the server 20 of Appiah does not serve to activate a selected support session
associated with the computing device 45 (i.e., ‘activating, by the network
appliance, the selected support session.’),” this argument overstates the
reliance of the rejection on the server 20 being the network interface of the
claim language. Our review finds that the Examiner relied on the “interface
(e.g., a network interface implemented in software)” on the server 20 (or as
Appiah explicitly states “[t]he interface is preferably implemented in
software and can reside in a server 20, the network 30, in a computing
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device 40, 45 or be standalone.” (Appiah ¶ 0020)). As the Examiner points
out (Final Rej. 3), Appiah at ¶ 0023 then states “the interface determines the
type of platform being controlled and uses the appropriate remote control
protocol to control it.” The Examiner then relies on Appiah at ¶¶ 0058–59
to show further details of such a support session.
As to Appellants’ above contention 2 covering claim 4, we disagree.
Appellants’ argument is based on a requirement that both “the second
system 103 and the first system 105 connect ‘outbound’ to the network
appliance 101.” We find no such requirement in claim 4. Claim 4 only
requires “wherein the encrypted communication session with the second
system is initiated outbound towards the network appliance.” (Emphasis
added). Appellants’ argument is not commensurate with the scope of the
claim language, which at best only requires that the initiation of the
encrypted communication session be outbound towards the network
appliance from one of first and second systems.
As to Appellants’ above contention 3 covering claim 5, we disagree.
Appiah at ¶ 0020 teaches “[t]he interface is preferably implemented in
software and can reside in a server 20, the network 30, in a computing
device 40, 45 or be standalone.” (emphasis added). As noted above,
Appellants’ argument overstates the Examiner’s reliance on the server 20.
As to Appellants’ above contention 6 covering claim 9, we disagree.
As to duplicating with a third system the functions as to the second system,
we agree with the Examiner that such would be obvious to an artisan.
Appellants have presented no evidence that merely duplicating the prior art
(i.e., redundantly combining the same limitations of the prior art) was
“uniquely challenging or difficult for one of ordinary skill in the art” or
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“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d at 1162 (citing KSR, 550 U.S. at 418–19). Nor
have Appellants presented evidence that such duplicating yields more than
expected results.
Further as to contention 6, we disagree that no such “queue” is
suggested by Appiah. In rejecting this claim as it depends from claim 1, the
Examiner cites to ¶ 0059, which describes using a “help ticket.” An artisan
would understand that it is conventional for such a “help ticket” to include
request management such as “queue” placement. We deem no more
suggestion that this is required.
As to Appellants’ above contention 7 covering claim 10, we disagree.
Appellants’ argument that Dowling “is irrelevant to the claimed inventions”
appears to overlook the explicit claim language requiring the network
appliance be involved with establishing communications sessions in addition
to remote access and control. We find Dowling’s virtual connectivity highly
relevant to the virtual communications requirements of the claimed virtual
network appliance. If Appellants’ point is that the particulars of Dowling
appear irrelevant to the remote access and control aspect of a virtual network
appliance, we agree. However, this aspect of a virtual network appliance is
taught by Appiah at ¶ 0020 (“[t]he interface is preferably implemented in
software and can reside in a server 20, the network 30, in a computing
device 40, 45 or be standalone.” (emphasis added)). We note that
Appellants describe the virtual appliance as a “software appliance.” (Spec.
¶ 0027, line 2).

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CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 7, 8, 18, and 19 as being unpatentable under 35 U.S.C. § 103(a).
(2) The Examiner did not err in rejecting claims 1–6, 9, 10, 12–17,
20, 21, and 23–28 under 35 U.S.C. § 103(a).
(3) Claims 1–6, 9, 10, 12–17, 20, 21, and 23–28 are not patentable.

DECISION
The Examiner’s rejection of claims 7, 8, 18, and 19 is reversed.
The Examiner’s rejections of claims 1–6, 9, 10, 12–17, 20, 21, and
23–28 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-IN-PART

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