Ex Parte Cuellar et al

Patent Trial and Appeal Board

Mar 13, 2013

10463426 (P.T.A.B. Mar. 13, 2013)

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.
10/463,426 06/18/2003 Jorge Cuellar 1454.1203C1 3618
21171 7590 03/13/2013
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
WILLIAMS, JEFFERY L
ART UNIT PAPER NUMBER
2437
MAIL DATE DELIVERY MODE
03/13/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JORGE CUELLAR and GUENTHER HORN
____________

Appeal 2011-002534
Application 10/463,4261
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, CAROLYN D. THOMAS, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Siemens Aktiengesellschaft.
Appeal 2011-002534
Application 10/463,426

2

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 6, 7, 9, 11, 12, 15, 16, 22, and 23, which
are all the claims remaining in the application. Claims 2-5, 8, 10, 13, 14,
and 17-21 are cancelled. We have jurisdiction over the appeal under 35
U.S.C. § 6(b). An Oral Hearing was held on March 5, 2013.
We REVERSE.
The present invention relates generally to checking the authenticity of
a first communication subscriber in a communications network. See Spec. ¶
[0002].
Claim 1 is illustrative:
1. A method for resynchronizing an error detection datum
in a communication network, comprising:
forming an authentication information item for a first
communication subscriber using a first error detection datum and an
information item concerning a random datum, the first communication
subscriber being a service provider;
transmitting the authentication information item and the
information item concerning the random datum, from the first
communication subscriber to a second communication subscriber, the
second communication subscriber being a service user;
forming a second error detection datum at the second
communication subscriber using the authentication information item
and the information item concerning the random datum;
checking whether the second error detection datum lies in
a predetermined range, the second error detection datum being
checked by the second communication subscriber by a process
comprising:
determining a difference between the first and
second error detection data; and
Appeal 2011-002534
Application 10/463,426

3
forming a sequence error when the difference does
not lie in the predetermined range
transmitting the sequence error from the second
communication subscriber to the first communication subscriber; and
resynchronyzing the first error detection datum using the
sequence error wherein
the sequence error is transmitted to the first
communication subscriber without the first communication subscriber
first transmitting a resynchronization request to the second
communication subscriber,
the sequence error contains the information item
concerning the random datum and contains the second error detection
datum,
the first communication subscriber verifies the sequence
error, and
the first communication subscriber changes a value of the
first error detection datum in dependence on a value of the second
error detection datum to thereby resynchronize the first error detection
datum.

Appellants appeal the following rejection:
Claims 1, 6, 7, 9, 11, 12, 15, 16, 22, and 23 are rejected under 35
U.S.C. § 103(a) as being unpatentable over 3GPP (3GPP, 3G TS 33.102
V3.0.0 (1999)).

ANALYSIS
Our representative claim, claim 1, recites, inter alia, “the sequence
error is transmitted to the first communication subscriber without the first
communication subscriber first transmitting a resynchronization request to
the second communication subscriber” (emphasis added). Independent
claims 15, 16, and 23 recite commensurate limitations. Thus, the scope of
Appeal 2011-002534
Application 10/463,426

4
each of the independent claims includes transmitting error data without first
receiving a request.

Issue: Did the Examiner err in finding that 3GPP teaches and/or
suggests that the sequence error is transmitted to the first communication
subscriber without the first communication subscriber first transmitting a
resynchronization request, as set forth in claim 1?

Appellants contend “[t]he claims require that the sequence error be
transmitted without the first communication subscriber first sending a
resynchronization request” (App. Br. 17). Appellants further contend that
“neither page 98 nor page 101 [in Watson2] supports the Examiner’s
conclusion that it is well known to reduce the number of messages within a
protocol for achieving improved speeds” (App. Br. 19).
Here, the Examiner found that “3GPP does not explicitly disclose
wherein the sequence error is transmitted to the first communication
subscriber without the first communication first transmitting a
resynchronization request. However, . . . [i]t is a fact that it was well
known . . . (e.g. for evidence of this fact, refer to Watson . . . )” (Ans. 7-8).
We disagree with the Examiner.
Here, the Examiner admits that 3GPP does not explicitly disclose the
argued limitation, but instead relies upon a “well known” theory and
introduces Watson as evidence to disclose such a feature. As such, we shall
primarily look for error in the Examiner’s interpretation of Watson.

2 Richard W. Watson & Sandy A. Mamrak, Gaining Efficiency in Transport
Services by Appropriate Design and Implementation Choices, 5 ACM
TRANSACTIONS ON COMPUTER SYS. 97 (1987).
Appeal 2011-002534
Application 10/463,426

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Based upon our review of the record, we find the weight of the
evidence supports Appellants’ position as articulated in the Brief. For
example, while Watson discusses ways for improving efficiency, such as
eliminating unneeded functionalities (see p. 98), we find that the Examiner
has not shown how eliminating a request, for example, is an unneeded
functionality that is taught and/or suggested by Watson. In fact, Watson’s
mechanisms for transporting data appear to suggest using “requests” and/or
handshake-based procedures (see p. 101, Fig. 1), and does not explain any
improved protocol mechanism that would eliminate the same. As such, we
find the Examiner’s “well-known” conclusion which is allegedly supported
by Watson unavailing given Watson’s teachings to the contrary and 3GPP’s
explicit procedure of sending a request (see 3GPP p. 23).
We are therefore constrained by the record before us to find that the
Examiner erred in rejecting claim 1 and claims 6, 7, 9, 11, 12, 15, 16, 22,
and 23 for similar reasons. Since we agree with at least one of the
arguments advanced by Appellants, we need not reach the merits of
Appellants’ other arguments. It follows that Appellants have shown that the
Examiner erred in finding that 3GPP with Watson’s teachings renders claims
1, 6, 7, 9, 11, 12, 15, 16, 22, and 23 unpatentable.

DECISION
We reverse the Examiner’s § 103 rejection.

REVERSED

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