Ex Parte Itshaki et al

Patent Trial and Appeal Board

Mar 16, 2018

12163046 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/163,046 06/27/2008
69316 7590 03/20/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
FIRST NAMED INVENTOR
Ehud Mordechai Itshaki
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
323560.01 7985
EXAMINER
COONEY, ADAM A
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
03/20/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
usdocket@microsoft.com
chriochs@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EHUD MORDECHAI ITSHAKI, NIR NICE,
EUGENE JOHN NEYSTADT,
and NOAM GERSHON BEN-YOCHANAN
Appeal2017-006011
Application 12/163,046 1
Technology Center 2400
Before ALLEN R. MacDONALD, IRVINE. BRANCH, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 5, 6, and 21-35, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Technology
The application relates to an "automatic connection to a[] (e.g.,
corporate) network ... made for a client device .... based on the device's
current location data (e.g., LAN or remote)." Spec. Abstract.
1 According to Appellants, the real party in interest is Microsoft Technology
Licensing, LLC. App. Br. 2.
Appeal 2017-006011
Application 12/163,046
Illustrative Claim
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1. A method performed on a computing device that includes at
least one processor and memory, the method comprising:
intercepting, by the computing device from a client
endpoint device of a user, an outgoing communication directed
to a destination network;
determining, by the computing device based on a location
of the client endpoint device and on a location of the destination
network, access methods that are each configured for
establishing a connection between the client endpoint device and
the destination network on behalf of the user;
establishing, by the computing device via a first of the
access methods, the connection between the client endpoint
device and the destination network on behalf of the user; and
verifying, by the computing device, the connection
between the client endpoint device and the destination network.
Rejections
Claims 1-3, 6, 21-25, 27-32, 34, and 35 stand rejected under 35
U.S.C. § 103(a) as obvious over the combination of Shi (US 7 ,646,737 B2;
Jan. 12, 2010) and Magarasevic et al. (US 2004/0151290 Al; Aug. 5, 2004).
Final Act. 8-13.
Claims 5, 26, and 33 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Shi, Magarasevic, and Rao et al.
(US 2006/0037071 Al; Feb. 16, 2006). Final Act. 13-14.
ISSUE
Did the Examiner err in finding Shi teaches or suggests "determining,
by the computing device based on a location of the client endpoint device
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Appeal 2017-006011
Application 12/163,046
and on a location of the destination network, access methods that are each
configured for establishing a connection between the client endpoint device
and the destination network on behalf of the user," as recited in claim 1?
ANALYSIS
Claim 1 recites "determining, by the computing device based on a
location of the client endpoint device and on a location of the destination
network, access methods that are each configured for establishing a
connection between the client endpoint device and the destination network
on behalf of the user." Independent claims 23 and 30 recite commensurate
limitations.
The Examiner finds Shi discloses a device can operate in a variety of
different networks (e.g., GSM and CDMA) and the device uses a "list of
preferences" to determine which network to use. Ans. 12 (citing Shi 1:67-
2:4, 6: 11-15, 6:63---66, 11:61-12:16, 12:22-25, 17:29-34, 17:57---62). In
particular, "the system will go down the list of preferred system modes"
until it finds a network it can connect to. Id. at 12-13. "[W]hen the device
is located outside the coverage area ... the system mode ... corresponding
to that particular network would not work," so the system will move on to
try the next network. Id. Thus, "when the device is located outside of the
coverage area ... a different system mode will be used," whereas "when the
device is located within the coverage area" then that "particular system
mode is used." Id. at 13. The Examiner therefore finds that Shi' s system
mode is "based on a location of the client endpoint device" as claimed.
We agree with Appellants, however, that "Shi's process of working
down the list of operating modes is without any consideration for the
location of the device" and instead "is determined simply by it being the
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Application 12/163,046
[first] one that worked" in the list. App. Br. 10 (emphasis omitted). For
example, Appellants correctly point out that Shi attempts to connect to each
network in the order listed regardless of whether the device is outside the
coverage area of a given network. Id. at 10-11. Similarly, even if a device
was located adjacent to a cell tower (i.e., within what normally should be the
area of coverage), any lapse in connectivity at the time Shi was testing
networks-whether temporary (e.g., due to weather or an object passing by)
or permanent (e.g., thick walls of a building}--would prevent that network
from being chosen, further demonstrating that Shi' s mode is selected based
on connectivity, not on location.
Accordingly, we do not sustain the Examiner's rejection of
independent claims 1, 23, and 30, and their dependent claims 2, 3, 5, 6, 21,
22, 24--29, and 31-35. 2
DECISION
For the reasons above, we reverse the Examiner's decision rejecting
claims 1-3, 5, 6, and 21-35.
REVERSED
2 In the event of further prosecution, the Examiner may wish to consider
whether the claims are obvious as the automation of a manual process, such
as a user manually determining to use a VPN to connect to the office
because the user is located at home. It is well settled that there is no
invention in merely automating a manual activity. In re Venner, 262 F .2d
91, 95 (CCPA 1958); see also MPEP § 2144.04(III).
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