Ex Parte Subramanian et al

Patent Trial and Appeal Board

Jan 19, 2018

13413590 (P.T.A.B. Jan. 19, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/413,590 03/06/2012 Balan Subramanian RSW920090116US2 4308
84986 7590
GRAS SO PLLC
1818 LIBRARY STREET, SUITE 500
RESTON, VA 20190
EXAMINER
NICKERSON, JEFFREY L
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
01/23/2018 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):
admin@grassoip.com
vromme @ grassoip. com
fgrasso@grassoip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BALAN SUBRAMANIAN, CHRISTIAN LEE HUNT,
DENILSON NASTACIO, and ROGER MICHAEL MELI
Appeal 2016-005431
Application 13/413,5901
Technology Center 2400
Before NATHAN A. ENGELS, SCOTT B. HOWARD, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—21. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 4.
Appeal 2016-005431
Application 13/413,590
THE CLAIMED INVENTION
Appellants’ claimed invention relates to “network intermediaries
providing dynamic proxying between client applications and service
providers.” Spec. 11. Claim 1 is illustrative of subject matter on appeal and
is reproduced below.
1. A method to manage subscriptions over a network, the
network comprising a plurality of network intermediaries,
clients, and service providers, the method comprising:
at a network intermediary, receiving a subscription, the
subscription having management application data, the
subscription having application level header information;
at the network intermediary, reviewing the application
level header information of the received subscription;
at the network intermediary, redirecting the subscription
over the network using the reviewed application level header
information;
at the network intermediary, managing a proxy for a
client management application subscription such that the client
management application is not aware of change in its
subscription;
at the network intermediary, accepting protocol messages
from a peer network intermediary; and
at the network intermediary, proxying a subscription on
behalf of the client management application.
REJECTIONS2 ON APPEAL
(1) The Examiner rejected claims 1—5, 7—9, 11—14, 16, and 19-21
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
2 The Examiner also provisionally rejected claims 1—20 for obviousness-type
double patenting over claims 1—20 of copending Application No.
12/705,954. No patent has issued yet from that copending Application, nor
do Appellants present arguments traversing this provisional rejection. We
find it is premature to address this provisional rejection. See In re Moncla,
95 USPQ2d 1884, 1885 (BPAI 2010) (precedential).
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Dahlen (US 2009/0125628 Al; published May 14, 2009), Hunt (US
2005/0108251 Al; published May 19, 2005), and Alspector (US 8,214,437
Bl; issued July 3, 2012).
(2) The Examiner rejected claims 6, 10, 17, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Dahlen, Hunt,
Alspector, and Chen (US 2004/0001498 Al; published Jan. 1, 2004).
(3) The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Dahlen, Hunt, Alspector, and
Kryskow (US 2003/0055670 Al; published Mar. 20, 2003).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner erred. In reaching our decision, we consider
ah evidence presented and all arguments made by Appellants. We disagree
with Appellants’ arguments and we incorporate herein and adopt as our own
the findings, conclusions, and reasons set forth by the Examiner in (1) the
January 30, 2015 Final Office Action (“Final Act.” 2—17), (2) the April 22,
2015 Advisory Action (“Adv. Act.” 2), and (3) the March 9, 2016
Examiner’s Answer (“Ans.” 2—25). We highlight and address, however,
specific findings and arguments below for emphasis.
(1) Changing Dahlen’s principle of operation
Appellants argue that combining Dahlen with the other cited
references impermissibility changes Dahlen’s principle of operation because
(0 Dahlen teaches SIP for the communications protocol rather than SOAP
(App. Br. 9—13 § 4.2); (ii) Dahlen teaches that the intermediaries look
inwardly (i.e., use the SOAP Action headers), rather than querying peer
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intermediaries in accordance with the claims (App. Br. 9—13 § 4.2
(managing proxying) and 20—21 § 4.7 (identifying peers having access to
certain data flows)); and (iii) adding a timeout is contrary to the purpose of
real-time SIP communication sessions (App. Br. 32—33 § 4.13).
(i) Replacing SIP with SOAP
Appellants argue that the Examiner incorrectly changes Dahlen’s
teachings from session initiation protocol (“SIP”) to simple object access
protocol (“SOAP”) for communicating because it would change Dahlen’s
principle of operation “to have intermediaries communicate using the SOAP
protocol,” in accordance with claims 3, 5, 11, and 21. App. Br. 10-11;
Reply Br. 5—6. More specifically, Appellants argue “SOAP is not used as a
protocol in Dahlen for transmission or communication,” but rather SIP is
used as the protocol for transmission and communication — a SOAP action
header in a SOAP envelope is carried by the SIP communication protocol.
App. Br. 10 (citing Dahlen || 27, 30—31, 57; Figs. 1A—IB, 2, 13); see also
Reply Br. 5—6.
The Examiner finds that modifying Dahlen to incorporate the
teachings of Hunt and Alspector does not change the principle of operation
of Dahlen. Ans. 3^4; Final Act. 7—10. The Examiner finds Dahlen teaches
or suggests “SOAP intermediaries . . . because they accept SOAP
subscription messages and proxy a subscription on behalf of a client.” Ans.
3^4 (citing Dahlen Fig. 6 (604); || 10, 51—58 (finding Dahlen teaches “using
intermediary proxy to parse and dispatch SOAP requests on behalf of a
client endpoint”)).
We are not persuaded by Appellants’ arguments. We agree with the
Examiner that the combination, and Dahlen in particular, teaches or suggests
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that intermediary devices communicate using SOAP, and thus, Dahlen is not
modified so as to change its principle of operation. Dahlen Fig. 6, Tflf 10,
51—58. More specifically, Dahlen teaches or suggests intermediary devices
communicate using SIP and SOAP by having a SIP message carry a SOAP
envelope or payload within the SIP message. Id.', see also id. 1 53 (teaching
an intermediary node’s (i) SOAP parser “parses SOAP headers which are
inside a SOAP envelope carried by the SIP messages” and (ii) SOAP
dispatcher “invoke[s] Web Services . . . associated with the SOAP headers
which are addressed to the intermediary node”). Such a teaching is within
the broadest reasonable interpretation of intermediary devices using SOAP
to communicate — also using other protocols (e.g., SIP) in addition to
SOAP to communicate is not precluded by the claims.
(ii) Dahlen teaches looking inward
Appellants argue that the Examiner impermissibility changes
Dahlen’s principle of operation in making the proposed combination. App.
Br. 13, 20—21; Reply Br. 10—11. Appellants contend Dahlen’s principle of
operation is to “look[] to the SOAP envelope and does not look outward.”
App. Br. 20; see also id. at 20-21 (citing Dahlen || 54—58) (arguing Dahlen
teaches evaluating a SOAP Action header, “including for purposes of
whether an application at a receiving intermediary will be invoked”); Reply
Br. 10-11 (arguing Dahlen looks inward rather than querying peers).
Appellants argue modifying Dahlen’s “intermediar[ies] to query each other”
improperly changes Dahlen’s principle of operation. App. Br. 20—21.
The Examiner finds that modifying Dahlen to incorporate the
teachings of Hunt and Alspector does not change the principle of operation
of Dahlen. Ans. 16—17. The Examiner finds Dahlen’s principle of operation
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is “to manage the subscription^].” Ans. 17. The Examiner finds “[i]t is
well known within the art... to query peer intermediaries to identify a peer
intermediary having access to an object of interest.” Ans. 16 (citing Hunt
67—68) (finding Hunt “teaches an intermediary redirecting requests (after
receiving a query) to other peer routers and locating state objects to help
process the request”). The Examiner finds one of ordinary skill “would be
motivated to utilize the teachings of Hunt in the Dahlen system in order to
ease the processing load of a single intermediary device,” and “it would have
been obvious ... to utilize the teachings of Hunt for maintaining a
distributed architecture of intermediaries and to query peer intermediaries to
identity a Peer Intermediary Device having Access to Data Flows.” Ans. 17.
We are not persuaded that combining Dahlen with Hunt and Alspector
changes the principle of operation of Dahlen. We agree with the Examiner
that Dahlen’s principle of operation is not as narrow as Appellants allege
(i.e., using the SOAP envelope received at the intermediary), but rather
relates more broadly to “providing service subscription techniques
associated with real-time composition of services in communications
systems.” Dahlen || 2, 7, Abstract. Appellants provide no persuasive
evidence contrary to this finding. See App. Br. 13, 20-21; Reply Br. 10-11;
see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s
argument in a brief cannot take the place of evidence.”).
(Hi) Adding a timeout
Appellants argue that “one of skill would not seek to modify
Dahlen ... so that a timeout is introduced as recited in claims 7 and 12
because adding a timeout is contrary to the purpose of the real-time SIP
communication sessions in Dahlen.” App. Br. 32—33 (citing Dahlen 127
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arguing “embodiments provide ‘a solution to the need for real-time
composition of services ... by a Session Initiation Protocol (SIP) transport
binding for SOAP messages.’”). According to Appellants, in “real-time
communication session[s] established using SIP[,]. . . delays are sought to
be avoided and are unwanted during communication sessions, e.g., VoIP
calls.” App. Br. 32.
The Examiner finds that modifying Dahlen to incorporate the
teachings of Hunt’s distributed architecture and state information (e.g.,
waiting for timeout) is not contrary to the purpose of SIP in Dahlen. Ans.
24—25 (citing Hunt Figs. 8—9; 167). “One of ordinary skill in the art would
be motivated to utilize the teachings of Hunt to wait for a timeout in the
Dahlen system in order to determine an intermediary peer with an object of
interest.” Ans. 25.
We are not apprised of Examiner error based on Appellants’
argument. Appellants again focus incorrectly on a narrow aspect of Dahlen
(e.g., that SIP can be used) rather than the broader principle and teachings of
Dahlen (i.e., providing service subscription techniques). Dahlen || 2, 7,
Abstract. Furthermore, Appellants provide no persuasive evidence that
utilizing a timeout period with Dahlen’s teachings is contrary to Dahlen’s
real time communications, including the use of SIP. In re Pearson, 494 F.2d
at 1405. For example, Appellants conjecture that a timeout period would be
incompatible with SIP, despite SIP being packet based.
(2) Addressins the claim elements
Appellants argue the Examiner fails to make a prima facie rejection of
claims 1, 2, and 6 because the Final Office Action fails to address specific
claim language, and instead relies on the substance of a preceding finding as
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to another claim which does not use the same language. App. Br. 13—16;
Reply Br. 6—7.
We are not persuaded by Appellants’ arguments. First, Appellants do
not address persuasively that the Final Action fails to inform them
effectively as to the rationale for the rejection — Appellants simply rely on
the language between the claims not being identical without sufficient
further explanation. It is only “when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection” that the prima facie burden has not been met. Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). Second, Appellants’ Reply
does not address the substance of the Examiner’s findings made in the
Answer (Ans. 4—7), which address the language used in claims 1, 2, and 6.
Instead of ignoring the Answer’s findings, Appellants could have addressed
in the Reply these findings or could have filed a petition to request that the
Answer’s findings be designated as a new ground of rejection — Appellants
did neither. See Manual of Patent Examining Procedure (MPEP)
§ 1207.03(b)3 (9th ed., Rev. 7, Nov. 2015).
3 “37 CFR 41.40 sets forth the exclusive procedure for an appellant to
request review of the primary examiner’s failure to designate a rejection as a
new ground of rejection via a petition to the Director under 37 CFR 1.181.
This procedure should be used if an appellant feels an answer includes a new
ground of rejection that has not been designated as such and wishes to
reopen prosecution so that new amendments or evidence may be submitted
in response to the rejection. However, if appellant wishes to submit only
arguments, the filing of a petition under 37 CFR 1.181 would not be
necessary because appellant may submit the arguments in a reply brief. Any
such petition under 37 CFR 1.181 must be filed within two months from the
entry of the examiner’s answer and prior to the filing of a reply brief.”
MPEP § 1207.03(b) (9th ed., Rev. 7, Nov. 2015).
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(3) Combining Dahlen, Hunt, and Alsvector
Appellants argue the Examiner fails to provide proper motivation to
combine the relevant teachings of Dahlen, Hunt, and Alspector, including
with respect to claims 1,11, and 21. See App. Br. 16—17; Reply Br. 8.
Appellants argue the Examiner, in providing motivation to combine the
relevant teachings of the cited references, “has not provided a citation to the
prior art as to where this motivation exists,” and thus, fails to provide
adequate support for the rejection. App. Br. 17; see also Reply Br. 8.
We are unpersuaded by Appellants’ argument. As the Supreme Court
explained, obviousness does not require that the motivation to combine
references be found explicitly within the references themselves. KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“The obviousness analysis
cannot be confined by a formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the importance of
published articles and the explicit content of issued patents.”); see also id. at
418 (“As our precedents make clear, however, the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.”).
In addition, we are unpersuaded by Appellants’ arguments (App. Br.
16—17) that the Examiner provides different motivations for combining the
references — rather, the Examiner provides (Ans. 10—11) multiple
articulations of the same rationale (i.e., “will allow one of ordinary skill in
the art to change anything at all on a server without notifying the end user,”
“to not require an administrator to inform a client every time anything is
changed on a server relating to the client or user”). We also are not
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persuaded that the Examiner fails to provide rationale for making the
combination for claim 21. See, e.g., Ans. 11—12. Appellants’ arguments do
not persuade us that the Examiner has failed to provide “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
(4) Modification ofDahlen
Appellants argue that the Examiner fails to make a prima facie case of
obviousness with respect to claim 17, as well as claims 6, 10, and 18,
because the Examiner “does not cite to anything in Dahlen as being
modified by the teachings of Chen.” App. Br. 18; Reply Br. 9. “For
example, the [Final Office Action] mentions ‘subscription rules’ and
‘subscription filters’ in the context of Chen but does not cite back to what in
Dahlen is being modified by these subscription [rules] and subscription
filters of Chen.” App. Br. 18 (citing Final Act. 15).
The Examiner submits that a prima face case of obviousness has been
made. Ans. 13—14; Final Act. 15. The Examiner finds that the combination
of Dahlen, Hunt, and Alspector teaches or suggests “peer intermediary
devices receive a subscription, and review and proxy a subscription,” in
accordance with the claims. Ans. 13. To these teachings, the Examiner adds
Chen’s teaching for claim 17’s updating subscription rules (Chen’s filters)
by comparing previously received rules with subsequently received
subscription rules. Id. (citing Chen|| 163—169, Fig. 2IB). More
specifically, the Examiner finds it would have been obvious to one of
ordinary skill in the art to modify the combination’s subscriptions with
Chen’s teachings regarding “merging filters,” which would “allow one of
ordinary skill in the art to remove duplicate or overlapping subscription rules
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and to provide improved subscription rules.” Id. at 14; see also Final Act.
7—8 (citing numerous portions of Dahlen as teaching subscriptions with
respect to claim 11, from which claim 17 depends).
We are not persuaded by Appellants’ arguments. For example, the
Examiner identifies modifying Dahlen’s teachings regarding subscriptions
with Chen’s teachings. See Ans. 13; Final Act. 7—8. In addition, the
Supreme Court has clearly articulated that a direct citation to a reference is
not required for the obviousness analysis. KSR, 550 U.S. at 418 (“As our
precedents make clear, however, the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”). Appellants do not address
persuasively the Examiner’s findings, including in the Answer, and we also
are unconvinced that the Examiner fails to inform Appellants effectively as
to the rationale for the rejection. Cf. Chester, 906 F.2d at 1578.
Our reasoning above also applies to Appellants’ similar arguments
(App. Br. 23) made with respect to the Examiner allegedly failing to provide
a direct citation to what in Dahlen is being modified by Alspector, with
respect to the combination of Dahlen, Hunt, and Alspector for claims 1 and
11.
(5) Combining Dahlen and Chen
Appellants argue “one of skill would not be motivated by Chen’s
filters to compare previously received SIP messages at an intermediary with
subsequently received SIP messages at the intermediary because doing so is
inconsistent with the SIP protocol, which uses IP communication protocol to
create communication between two distinct points,” with respect to claims 6,
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17, and 18. App. Br. 19; see also Reply Br. 9—10. Appellants further
contend “SIP regards communication and setting up a session between
endpoints so each SIP message is necessary to promote the session,” and that
“additional overhead and complexity would be added at the intermediary” if
storage and filtering is added thereto “without any gain as a SIP session is
carried out in real-time.” App. Br. 19.
The Examiner finds Dahlen and Chen’s teachings are properly
combined. Final Act. 15—16; Ans. 14—15. The Examiner finds “[o]ne of
ordinary skill in the art would be motivated to utilize the teachings of Chen
in the Dahlen/Hunt/Alspector system in order to reduce extra traffic, extra
processing, and extra storage required by the use of unnecessary filters that
are already being fulfilled via overlap or duplication.” Final Act. 15.
We find the Examiner provides “articulated reasoning [(e.g., reduce
extra traffic, extra processing, and extra storage required by unnecessary
filters)] with some rational underpinning to support the legal conclusion of
obviousness.” Kahn, 441 F.3d at 988. We disagree with Appellants that the
Examiner’s reasoning provides insufficient motivation to combine the
relevant teachings of Dahlen, Hunt, and Alspector with Chen’s teachings —
reducing unnecessary traffic, processing, and storage is a design incentive.
See KSR, 550 U.S. at 417 (“When a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
it, either in the same field or a different one.”). Appellants’ arguments that
the Examiner’s combination would be “inconsistent with the SIP protocol”
and would be “without any gain,” is unsupported by record evidence. See
Pearson, 494 F.2d at 1405 (“Attorney’s argument in a brief cannot take the
place of evidence.”).
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We similarly are unpersuaded by Appellants’ arguments (App. Br. 32)
that it would be superfluous and not obvious to modify Dahlen’s
intermediaries to consolidate rules “because Dahlen is using SIP
communication, which has its own common protocol, so there would be no
need to further modify this protocol with previously received SIP packets”
— such arguments are mere attorney argument unsupported by record
evidence and fail to address directly the Examiner’s proffered motivation to
combine. Pearson, 494 F.2d at 1405.
(6) Improver hindsight
Appellants argue that the Examiner uses improper hindsight, which
“is demonstrated by the motivations proposed . . ., which do not identify
particulars of the primary reference that would allegedly be ripe for change
by the second or third identified reference.” App. Br. 21—23, 30—31.
Appellants argue that the Examiner’s proffered motivations are vague and
lack septicity. Id. at 23.
We are not apprised by Appellants’ arguments that the Examiner used
impermissible hindsight in making the various combinations cited in the
rejections. As discussed above, we find Appellants’ arguments alleging that
the Examiner does not provide direct citations to what in Dahlen is being
modified by the other references in the combinations unpersuasive. See,
e.g., supra § 3; see also In re McLaughlin, 443 F.2d 1392, 1313—14 (CCPA
1971) (“Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill. . . and
does not include knowledge gleaned only from applicant’s disclosure, such a
reconstruction is proper.”). Appellants argue that the Examiner “relies on
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information gleaned solely from Applicant’s specification to make the
combination,” but this argument is unsupported by the record evidence.
Pearson, 494 F.2d at 1405; see also supra § 3.
(7) Subscription
Appellants argue that the combination of Dahlen, Hunt, and Alspector
fails to teach or suggest “managing a proxy for a client management
application subscription such that the client management application is not
aware of change in its subscription,” as recited in claims 1 and 11. App. Br.
27—29. More specifically, Appellants argue Alspector fails to teach the
claimed subscription, and instead Alspector teaches a spam filter “applied to
unopened mail in a user’s mailbox” to filter out “unwanted spam from
arriving or residing at a user’s inbox.” App. Br. 27 (citing Alspector col. 14,
11. 7—21). Appellants contend that spam filtering differs from a subscription,
which “include[s] subscribing in some way or manner - e.g., a request or an
indication of interest or predication on an advance order. Conversely, an
email, in and of itself, without more, is sent to a recipient without the need
for an earlier subscribing action or indication of interest.” Id. at 27—28.
Appellants also argue that Alspector teaches blocking unwanted or
unrequested spam, in contrast to a subscription, which is desired or sought
after. Id. at 28; see also id. at 29 (providing definitions for filtering
contrasted with subscription).
The Examiner finds that the combination teaches the disputed
limitation. Final Act. 9—10; Ans. 21—22. More specifically, the Examiner
finds Alspector teaches or suggests a server managing email spam filters
(i.e., subscriptions) and “performing changes in the subscription ([i.e.,]
retraining of global filter) without a particular client having any part in the
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process (either actively changing the subscription themselves or being
notifying of a change).” Final Act. 9 (citing Alspector Fig. 3; col. 13,1. 4 —
col. 14,1. 6). The Examiner finds that “a spam filter and ‘subscriptions’ are
equivalent to one of ordinary skill in the art, as they both are a set of rules
dictating which information/messages should or should not be received.”
Ans. 21. The Examiner also finds that one of ordinary skill in the art would
also understand that “the concepts of a filter and subscription to be
synonymous in this context.” Id. at 21—22 (citing Internet Society RFC4660,
Functional Description of Event Notification Filtering, § 3.3 (Sept. 2006)).
We are not persuaded by Appellants’ arguments. We agree with the
Examiner’s findings that the combination, and Alspector in particular,
teaches or suggests the disputed limitation, including with respect to the
claimed subscription. Alspector Fig. 3; col. 13,1. 4 —col. 14,1. 6.
Alspector’s teaching of a filter is within the scope of the broadest reasonable
interpretation of subscription — the spam filter is managed to allow certain
emails through, as well as block certain emails. Id.', see also id. col. 13,
11. 42-46 (“For example, if the majority of e-mail users change a particular
e-mail’s classification to spam or, conversely, the majority of users change
it to legitimate, then the e-mail and its new classification may be chosen as
retraining data.” (emphasis added)). Further, users themselves select
legitimate emails (which types are used for receiving emails of the same
types) which is akin to subscribing to a service. Alspector Fig. 3; col. 13,
1.4-col. 14,1. 6.
(8) Combination’s teachings
Appellants argue that certain limitations are missing from the
combination of Dahlen, Hunt, and Alspector, but do so while focusing on the
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teachings of these references individually rather than the combination’s
teachings. App. Br. 24—27, 32—33; Reply Br. 12—13.
For example, Appellants argue with respect to claim 21 that the
combination fails to teach or suggest “at a second SOAP intermediary
network device, receiv[ing] a subscription request. . . and upon determining
that data flows for the subscription of the subscription request have been
seen by the second intermediary device, accepting] responsibility for
collecting data flows for the subscription” because Dahlen’s “data flows are
not collected in the SIP communication scheme,” “[t]he SIP packets are
simply reviewed and passed along using the SIP protocol,” and “[t]here is no
acceptance of responsibility collection of data at an intermediary or
determination regarding data flows.” App. Br. 25 (citing Dahlen Fig. 6
(604); 11 10, 46,51-58).
The Examiner, however, finds that the combination (and more
specifically, Dahlen and Hunt’s combined teachings) teaches or suggests
this disputed limitation. Ans. 18—20; Final Act. 13—14; see also Ans. 19
(citing Dahlen Fig. 6 (602); H 51—58, 86) (finding Dahlen teaches or
suggests “receiving a subscription request at [a] second intermediary device
from a peer intermediary device, using SOAP for receipt of [the]
subscription request”); id. at 19-20 (citing Hunt Figs. 8—9; 1 67) (finding
Hunt teaches or suggests “querying peer intermediaries to identify the object
of interest (subscription data) is stored at another intermediary (seen by the
second peer intermediary) and to then delivery the object of interest (accept
responsibility for the subscription request)”).
Similarly, Appellants argue (App. Br. 26—27) that the Examiner errs
in rejecting claims 1 and 11 because Alspector addresses an email server,
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rather than a proxy and an intermediary. Appellants incorrectly focus on
Alspector instead of addressing persuasively the combined teachings of
Alspector, Dahlen, and Hunt. Id. The Examiner bases the rejection on the
combined teachings. Ans. 20-21 (basing the rejection on, inter alia,
Dahlen’s teaching of “a SOAP intermediary device receiving management
data for a subscription using SOAP,” Hunt’s teaching of having a
“distributed architecture of the intermediaries and querying intermediaries to
identify a peer having object of interest,” and Alspector’s teaching of a
server “manag[ing] subscriptions such that [a] client application is not aware
of a change in its subscriptions”).
We are not persuaded by Appellants’ arguments above, which
incorrectly focus on the teachings of individual references rather than the
combined teachings of the references in the combination. In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.”); In re Keller, 642 F.2d
413, 425 (CCPA 1981) (finding the relevant inquiry is whether the claimed
subject matter would have been obvious to those of ordinary skill in the art
in light of the combined teachings of the references).
CONCFUSION
Based on our findings and reasoning above, we sustain the
Examiner’s (i) § 103(a) rejection of claims 1—5, 7—9, 11—14, 16, and 19—21;
(ii) § 103(a) rejection of claims 6, 10, 17, and 18; and (iii) § 103(a) rejection
of claim 15.
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Appeal 2016-005431
Application 13/413,590
DECISION
We affirm the Examiner’s decision rejecting claims 1—21 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
18