Ex Parte PALIN et al

Patent Trial and Appeal Board

Sep 27, 2018

12947468 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/947,468 11/16/2010
146446 7590 10/01/2018
Dinsmore & Shohl LLP
801 Pennsylvania Avenue, N.W.
Suite 610
Washington, DC 20004
FIRST NAMED INVENTOR
ArtoPALIN
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.
114033-1211/PRAG
741 lPA
CONFIRMATION NO.
1965
EXAMINER
PATEL, DHARMESH J
ART UNIT PAPER NUMBER
2465
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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):
dcipdocket@dinsmore.com
denise.suter@dinsmore.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AR TO PALIN and JUKKA REUNAMAKI
Appeal2016-008297
Application 12/947,468
Technology Center 2400
Before HUNG H. BUI, DANIEL N. FISHMAN, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2016-008297
Application 12/947,468
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-21, which are all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b ).
We reverse.
THE INVENTION
The application is directed to a "system for configuring
communications in an apparatus." (Abstract.) Claim 1, reproduced below,
is representative:
1. A method, comprising:
transmitting, by an apparatus, an access request for
connection information to access locally available resources not
in the apparatus, said access request being transmitted to a
remote location over a wide area network connection, the access
request comprising at least current location information
regarding the apparatus;
receiving connection information for accessing the locally
available resources not in the apparatus in response to the access
request; and
accessing the locally available resources using a connection
configuration based on the received connection information.
1 Appellants identify Nokia Technologies OY as the real party in interest.
(See App. Br. 1.)
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Application 12/947,468
THE REFERENCES AND THE REJECTION
Claims 1-21 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Randall et al. (US 2007/0197260 Al; published August 23, 2007),
Rauhala et al. (US 2005/0289095 Al; published December 29, 2005), and
Bachmann et al. (US 2008/0165740 Al; published July 10, 2008). (See
Final Act. 4--17.)
ANALYSIS
Claim 1 recites a method that involves "transmitting, by an apparatus,
an access request for connection information to access locally available
resources not in the apparatus," where the "access request [is] transmitted to
a remote location over a wide area network connection" and "compris[ es] at
least current location information regarding the apparatus"; "receiving
connection information for accessing the locally available resources ... in
response to the access request"; and "accessing the locally available
resources using a connection configuration based on the received connection
information."
The Examiner finds that Randall discloses most aspects of Appellants'
claim 1, but does not "explicitly disclose[] the access request comprising at
least current location." (Final Act. 4--6.) The Examiner, however, finds that
concept "well known in the art as taught by Rauhala" and concludes that it
would have been obvious to combine Randall and Rauhala. (Id. at 6.) The
Examiner further finds that the Randall/Rauhala combination does "not
explicitly disclose the resources using a connection configuration." (Id. at
6-7.) However, the Examiner finds that concept "well known in the art as
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Application 12/947,468
taught by Bachmann," and that it would have been obvious to add
Bachmann to the Randall/Rauhala combination. (Id. at 7.)
Appellants argue "Randall does not teach or suggest at least
'transmitting, by an apparatus, an access request for connection information
to access locally available resources not in the apparatus, said access request
being transmitted to a remote location over a wide area network connection,'
as required by claim 1." (App. Br. 12.) This is so, according to Appellants,
because "[t]he µServer of Randall is located in the mobile communication
device 100" and "[t]he mobile communication device 100 and, more
specifically, the µServer therein, determines from sources located within the
mobile communication devices itself, what it needs, such as a URL, to
connect to a remote network server ... to access a requested resource."
(App. Br. 12.)
The Examiner responds that "Randall clearly disclose [ s] [ that the]
µServer checks if the requested resource is in [the] cache (i.e. [it] check[s]
for locally available resources)," that the "µServer determines which
network connection has the resource (i.e. determine based on resources not
in apparatus MCD)," and that the "µServer prepares to send HTTP request to
network server (i.e. request transmitted on remote location over a wide area
network)." (Ans. 17.) The Examiner finds that because "[t]he µServer of
Randall is located in the mobile communication device 100" "Randall do[es]
teach [an] access request for connection information that is transmitted to a
remote location over a wide area network." (Id.)
Appellants respond that "in Randall, the 'access request' transmitted
by the device 100 (with µServer) is clearly a request for obtaining the actual
resource itself (i.e., data/content), rather than a request for connection
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Application 12/947,468
information to access a resource, as required by claim 1. The device 100
(with µServer) of Randall already has the 'connection information,' and
thus, there is no need for device 100 to request it." (Reply Br. 2.)
We agree with Appellants that the request on which the Examiner
relies is a request for the resource itself, not a request for "connection
information," as claimed. As shown in Figure 7, the µServer checks if a
requested resource is in the cache at step 716; if not, the µServer at step 728
"determines which network connection has the resource." The
determination of which network connection to use is thus made by the
µServer, 2 and there is no indication that the determination includes
"transmitting ... an access request for connection information ... to a
remote location over a wide area network connection," as recited in claim 1.
After determining which network connection has the resource, the µServer
in steps 730 and 738, shown in Figure 7, prepares and transmits an HTTP
request to a network server, but that request is, as Appellants argue, a
request for the resource itself, not a request for connection information, as
the connection was already determined by the µServer in step 728.
Because we agree the Examiner has not shown that Randall teaches or
suggests "transmitting, by an apparatus, an access request for connection
information to access locally available resources not in the apparatus, said
2 Appellants and the Examiner both state that the µServer is located in the
mobile communication device 100. (See App. Br. 12; Ans. 17.) We note the
reference also states that "the browser and server processes may be disposed
on different physical platforms" (Randall ,r 89), but find that immaterial
because the reference still fails to disclose transmitting a request for
connection information to a remote location over a wide area network
connection.
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Application 12/947,468
access request being transmitted to a remote location over a wide area
network connection," we do not sustain the rejection of the claim 1 as
obvious in view of Randall, Rauhala, and Bachmann. Because independent
claims 8 and 15 similarly require transmission of "an access request for
connection information ... to a remote location over a wide area network
connection," we do not sustain the rejection of those claims for same reason.
Independent claims 6, 13, and 20 all require receiving "over a wide
area network connection from a remotely located source apparatus an access
request for connection information to access resources that are locally
available to the source apparatus but not in the source apparatus." We do
not sustain the Section 103 rejection of these claims because, as we find
Randall does not teach or suggest transmitting such a request, it follows that
it does not teach or suggest receiving such a request.
Finally, because all of the dependent claims require transmitting or
receiving the access request for connection information over a wide area
network connection, as recited in the independent claims from which they
depend, we do not sustain the Section 103 rejection of those claims either.
Because the issue resolved above is fully dispositive, we do not reach
Appellants' argument regarding the claim language "the access request
comprising at least current location information regarding the apparatus."
DECISION
The rejection of claims 1-21 is reversed.
REVERSED
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