Ex Parte Iwanski et al

Patent Trial and Appeal Board

Dec 11, 2015

12891697 (P.T.A.B. Dec. 11, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/891,697 09/27/2010
24259 7590 12/15/2015
BRENDA POMERANCE
LAW OFFICE OF BRENDA POMERANCE
310 West 52 Street
Suite 27B
NEW YORK, NY 10019
FIRST NAMED INVENTOR
Jerry S. IWANSKI
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.
1810-4004 1878
EXAMINER
SALAD,ABDULLAHIELMI
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
12/15/2015 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):
b.pomerance@verizon.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERRY S. IWANSKI and K. ANDREW WHITE
Appeal2014-001634
Application 12/891,697
Technology Center 2400
Before DEBRA K. STEPHENS, WILLIAM M. FINK, and
JESSICA C. KAISER, Administrative Patent Judges.
FINK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 30-44. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 The real party in interest is identified as Routel, Inc. App. Br. 1.
Appeal2014-001634
Application 12/891,697
STATEMENT OF THE CASE
Appellants' invention relates to peer-to-peer communications between
remote computers and host computers. Spec. 1:4--5; Abstract. 2
Claim 30 is the independent claim on appeal. Claim 30 is illustrative
of Appellants' invention and is reproduced below:
30. A method of enabling a remote to communicate with
a host, comprising:
connecting the remote to a controller,
sending a selection of the host from the remote to the
controller,
responding, at the remote, to a connection request from
the host that was sent in response to a message from the
controller, the message from the controller to the host being an
instruction from the controller to establish a connection to the
remote,
sending a notice from the remote to the controller that a
connection exists between the remote and the host,
after sending the notice, sending input from the remote to
the host without assistance from and without resources of the
controller, and
after sending the notice, receiving, at the remote, screen
display output from the host without assistance from and
without resources of the controller.
App. Br. 17.
Claims 30 and 32--40 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Kiwimagi (US 2005/0120204 Al; June 2, 2005).
2 Our decision refers to Appellants' Appeal Brief filed May 14, 2013 ("App.
Br."); the Examiner's Answer mailed September 12, 2013 ("Ans.");
Appellants' Reply Brief filed November 12, 2013 ("Reply Br."); the Final
Office Action mailed August 14, 2012 ("Final Act."); and the original
Specification filed September 27, 2010 ("Spec.").
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Appeal2014-001634
Application 12/891,697
Claims 31and41--44 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kiwimagi and additional references of record.
Based on Appellants' arguments, the dispositive issue on appeal is
whether Kiwimagi discloses:
responding, at the remote, to a connection request from
the host that was sent in response to a message from the
controller, the message from the controller to the host being an
instruction from the controller to establish a connection to the
remote [ (the "responding limitation")],
sending a notice from the remote to the controller that a
connection exists between the remote and the host,
as recited in claim 30. See App. Br. 11-14; Reply Br. 5---6.
ANALYSIS
In disputing the Examiner's rejection, Appellants contend "that claim
3 0 requires that the remote respond to a connection request from the host. In
contrast, Ki\~1imagi teaches that the remote initiates a connection request to
the host." App. Br. 11. In response, the Examiner states:
Kiwimagi discloses the security host 300 determines whether
the remote client 330 is authorized to access the system host
310. The system host 310 may further authenticate the remote
client 330 before granting access. The remote client 330,
having been authenticated by the security host 300, sends a
request 370 for access to the system host 310 using the network
address 355 provided to by the security host 300 in FIG. 3(a).
Optionally, the remote client 330 also provides the security key
3 60 to the system host 310.
Ans. 8 (quoting Kiwimagi i-fi-138--40); see also id. at 9.
On the record before us, we are constrained to agree with Appellants.
"A claim is anticipated only if each and every element as set forth in the
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Appeal2014-001634
Application 12/891,697
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). Moreover, the elements must be arranged as required
by the claim. In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990).
Here, the responding limitation recites a specific order of
communications between remote, controller, and host. In particular, the
responding limitation requires: "a message from the controller ... to the
host being an instruction from the controller to establish a connection to the
remote," "a connection request from the host that was sent in response to
[the] message," and "responding, at the remote, to [the] connection request."
Even assuming the cited system host's "verification request" to the security
host or its access grant to the remote (Kiwimagi i-f 40) could be construed as
disclosing the recited "a connection request from the host," there is no
showing of the recited "responding, at the remote, to [this] connection
request." Moreover, the Examiner's findings do not address the next step in
the claim, which recites "sending a notice from the remote to the controller
that a connection exists." Consequently, we are persuaded the cited portions
of Kiwimagi do not disclose the elements of the claim arranged as required
by the claim.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claim 30 as well as dependent claims 32--40. Because there
are no additional findings that address the deficiency of the base rejection,
we also do not sustain the Examiner's§ 103(a) rejections of claims 31 and
41--44.
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Appeal2014-001634
Application 12/891,697
DECISION
We reverse the Examiner's final rejection of claims 30-44.
REVERSED
tj
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