Ex Parte Choi et al

Patent Trial and Appeal Board

Apr 22, 2013

10870695 (P.T.A.B. Apr. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RYAN CHOI and CRAIG WEISSMAN
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Appeal 2010-011504
Application 10/870,695
Technology Center 2100
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Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
STACEY G. WHITE, Administrative Patent Judges.

WHITE, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/870,695

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-11, 14-25, and 28-29. Claims 12, 13, 26, and 27 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF CASE
Appellants’ claims are directed to a system and method for
dynamically generating network communication contracts. (Spec. 0001).
These contracts are generally for use between a database server and some
number of clients in a multi-tenant databases system. (Id.). Claim 1 is
illustrative and is reproduced below (disputed limitation in italics):
1. A method of dynamically generating a network communication
contract in a multi-tenant database server for use between the server
and a client system, the method comprising:
determining a set of available objects for inclusion in the
network communication contract, the available objects
including objects in a multi-tenant database that are available
for accessing by a specific user;
automatically creating the network communication
contract for the specific user, the network communication
contract including an identification of parameters and properties
that are required in an access request of the user for accessing
each object of the available objects; and
sending the communication contract to a client system
corresponding to the user.
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REJECTIONS
(1) Claims 1-2,5-8, 14-15, 19-21, 24, and 28-29 stand rejected under 35
U.S.C. § 103(a) over Brodersen (U.S. 6,732,100 B1, May 4, 2004) and
Dunn (U.S. 7,076,558 B1, July 11, 2006).
(2) Claims 3-4, 10-11, 16-18, 22-23, and 25 stand rejected under 35 U.S.C.
§ 103(a) over Brodersen, Dunn, and Guthrie (U.S. 6,587,854 B1, July 1,
2003).
(3) Claim 9 stands rejected under 35 U.S.C. § 103(a) over Brodersen, Dunn,
and Applicant Admitted Prior Art.
ISSUE
Appellants’ response to the Examiner’s position presents the
following issue:
Did the Examiner err in finding that the cited art teaches or suggests
“automatically creating the network communication contract for the
specific user” as required by claim 1?
ANALYSIS
Our representative claim, claim 1, recites, inter alia, “automatically
creating the network communication contract for the specific user.”
Independent claims 14 and 25 recite commensurate limitations.
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Thus, the
scope of each of the independent claims includes the creation of a network
communication contract. Appellants argue that Examiner is incorrect in

1
Independent claims 14 and 25 each include the limitation “automatically
generate a communication contract for the specific user.”(Emphasis added).
Appellants have argued the independent claims together without regard to
the differing “creating” and “generate” terminology. (Br. 30-33; 50-51). As
such, we consider these limitations together.
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finding that the cited art discloses the automatic creation of the network
communication contract for a specific user. (Br. 30-33). The Examiner
points to Dunn’s discussion of communication via Simple Object Access
Protocol (“SOAP”) messages as disclosing this limitation in combination
with disclosure from Brodersen. (Ans. 5 (citing Dunn Fig. 10; 29:19-25);
Ans. 21-22 (citing Dunn Figs. 2, 5-9; 8:11-18; 17:9-18); see also Ans. 20
(citing Brodersen 3:26-29)).
The Examiner argues that Brodersen discloses a “communication
contract,” which in combination with Dunn’s “network” would render
obvious the claimed “network communications contract.” (Ans. 20 (citing
Brodersen 3:26-29)). The Examiner finds that Brodersen’s access request is
equivalent to a communication contract. (Id.). The disclosed access request
is a database query from a user requesting access to one or more data items.
(1:55-57). In Dunn, the messages shared between client and server are
preferably SOAP messages. (Ans. 22; Dunn 17:9-18). Dunn also discloses
access request messages from the client and these requests contain
“parameters” that identify the client and the information sought by the client.
(Dunn 8:11-18).
We conclude that, the Examiner has not adequately explained how
and in what manner Dunn’s SOAP messages in combination with
Brodersen’s access request are to be interpreted as corresponding to the
claimed automatic creation of the network communication contract. The
Examiner has not shown where Brodersen or Dunn automatically create any
sort of message informing the client of “available objects” and the
“parameters and properties” for accessing those objects. Each of the
independent claims recite automatically creating the network communication
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contract for the specific user and as such, we do no sustain the Examiner’s
rejection of independent claims 1, 14, and 25 and their associated dependent
claims 2-11, 15-24, and 28-29.
DECISION
The Examiner’s decision rejecting claims 1-11, 14-25, and 28-29
under 35 U.S.C. § 103(a) is reversed.
REVERSED

ELD