Ex Parte Gallagher et al

Board of Patent Appeals and Interferences

Feb 23, 2009

09953369 (B.P.A.I. Feb. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MICHAEL GALLAGHER and ROBERT HANCOCK
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Appeal 2008-4876
Application 09/953,3691
Technology Center 2100
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Decided:2 February 23, 2009
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Before JOHN C. MARTIN, JEAN R. HOMERE,
and CAROLYN D. THOMAS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on September 17, 2001. The real party in interest is Roke Manor
Research Ltd. An Oral Hearing was held on this appeal on February 11,
2009.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 7. Claim 8 has been canceled. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

Appellants’ Invention
Appellants invented a protocol for wireless local area network (LAN)
systems that allows a subscriber authenticated at both a home server of a
first LAN and a visiting server at a second LAN to subsequently regain
access to the visiting server without having to re-enter his/her authentication
credentials so long as the subscriber remains authenticated with his/her
home server. (Spec. 1.) As depicted in the single Figure provided by
Appellants, when a subscriber (11) to the first LAN (1) initially wishes to
connect as a visitor to the second LAN (4), the subscriber provides the
necessary authentication credentials (e.g. MAC address username,
password) to the administrator of the second LAN (4). (Id. at 4.) The visitor
server (V-AAA) (6) of the second LAN (4), upon receiving the subscriber’s
credentials, identifies the home server (H-AAA) (2) associated therewith to
thereby authenticate the entered credentials. (Id.) Upon authenticating the
subscriber’s credentials, the visitor server (6) creates in its database an entry
that links the identity of the subscriber’s LAN device to that of its home
network for future use. Consequently, when the subscriber seeks to
reconnect to the visiting server, the subscriber will be able to do so as long
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as the subscriber remains authenticated with his/her home server. (Id. at 4-
5.)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A user protocol for wireless LAN systems wherein each
LAN comprises a network of computers, and the operator of each
LAN administers home (H) network and Visitor (V) network
authentication, authorization and accounting (AAA) servers, said
protocol comprising:
for connecting for the first time to a second LAN, a
subscriber to a first LAN conveying to an operator of the second
LAN, by user intervention, information, identifying both the
subscriber and the operator of the first LAN, sufficient to enable the
V-AAA server of the second LAN to communicate with the H-AAA
server of the first LAN so as to authenticate the proposed connection;
the V-AAA of the second LAN storing information linking
the subscriber to an operator of the first LAN for so long as the
subscriber remains authorized by the operator of the first LAN,
whereby subsequent connections by the subscriber to the second LAN
may be made without user intervention.

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Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Daniels 6,285,871 B1 Sept. 4, 2001

Rejection on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 1 through 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Daniels.

Appellants’ Contentions
Appellants argue that Daniels does not render independent claim 1
unpatentable. (App. Br. 7-10.) Particularly, Appellants argue that Daniels
discloses a cellular telephone network that operates over a wide area, as
opposed to the claimed “LAN,” which Appellants argue is a network that
operates over a small area. (Id. at 8-9.) Appellants also argue that Daniels’s
cellular telephone network is not “a network of computers,” as claimed. (Id.
at 9.) Further, Appellants argue that Daniels discloses automatically
identifying the cellular phone and the network associated therewith whereas
the claimed invention requires the subscriber to provide such authentication
information. (Id. at 9.) Additionally, Appellants argue that Daniels does not
teach or suggest a visitor server and a home server, as recited in claim 1. (Id.
at 10.)

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Examiner’s Findings/Conclusions
The Examiner finds that Daniels’ disclosure of an MTSO hardware
and a service node computer that communicate with each other in a service
area constitutes a plurality of linked computers in a single site, and thus
teaches the LAN of computers, as recited in independent claim 1. (Answer
7-8.) Further, the Examiner finds that Daniels’s disclosure of the subscriber
manually entering at the service area authentication information such as a
PIN, social security number, or the subscriber’s mother’s maiden name
teaches a subscriber providing authentication information to the operator of
a second LAN, as recited in the claim. (Id. at 8.) Additionally, the
Examiner finds that Daniels’s disclosure of a service node computer at the
subscriber’s home service area teaches the H-AAA server while the service
node computer at the visiting service area teaches the V-AAA server. (Id.
at 9.) Therefore, the Examiner concludes that Daniels renders claim 1
unpatentable. (Id.)

II. ISSUE
Have Appellants shown that the Examiner erred in concluding that
Daniels renders the claimed invention unpatentable? Particularly, the issue
turns on whether the ordinarily skilled artisan would have found that
Daniels’ disclosure teaches or suggests a visiting subscriber to a first LAN
that conveys authentication information to a server of a second LAN to
authenticate the subscriber for connection to the second LAN, as recited in
independent claim 1.
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III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.

Daniels
1a. Daniels discloses a cellular telephone system for authenticating
a roaming subscriber who wishes to use a cellular telephone (16) outside of
the subscriber’s home service area. Particularly, the disclosed system
determines if the subscriber has sufficient privileges to permit his/her
cellular telephone (cell phone) to be used in a foreign service area. (Col. 2,
ll. 19-22.)
1b. As shown in Figure 1, Daniels discloses a plurality of service
areas (20, 22, 24, and 26), each being identified by a system identification
number (SID) and being controlled by a mobile telecommunication
switching office (MTSO) (18, 28, 30, and 32). (Col. 3, ll. 40-47.)
1c. As the subscriber roams into a foreign service area (22), the
MTSO (28) of the foreign service area extracts the unique electronic serial
number (ESN), as well as the mobile identification number (MIN) of the cell
phone to look up the SID for the cell phone’s home service area (20). The
MTSO subsequently forwards the extracted information to an MTSO (18) in
home service area (20) to authenticate the subscriber. (Col. 4, l. 63 to col. 5,
l. 5.)
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1d. Each service area further includes a service node (34, 44, 46,
48) that includes a home location register (HLR) (34), a visitor location
register (36), a computer terminal (40), and interactive voice responsive unit
(42). Particularly, the service node utilizes the computer to check HLR (36)
in its databases (HLR, VLR) to see if the roaming cellular phone (16) has
sufficient roaming privileges to enter the foreign service area. (Col. 5, ll. 8-9,
38-42.)
1e. If the cell phone successfully authenticates initially, it needs not
re-authenticate for subsequent call attempts made during a predetermined
period of time. (Col. 6, ll. 17-27.)
1f. The authentication methods in the service node include the
subscriber inputting credential information such as his PIN, his social
security number or mother’s maiden name. (Col. 9, ll. 22-27.)

IV. PRINCIPLES OF LAW
Claim Construction
"[T]he words of a claim 'are generally given their ordinary and
customary meaning.'" Phillips v. AWH Corp., 415 F.3d at 1312 (internal
citations omitted). "[T]he ordinary and customary meaning of a claim term
is the meaning that the term would have to a person of ordinary skill in the
art in question at the time of the invention, i.e., as of the effective filing date
of the patent application." Id. at 1313.
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
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F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)). Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d at 1323.

Obviousness
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).
In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art," and discussed circumstances in which a patent might be determined to
be obvious. Id. at 1739 (citing Graham v. John Deere Co., 383 U.S. 1, 12
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(1966)). The Court reaffirmed principles based on its precedent that "[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." Id. The
operative question in this "functional approach" is thus "whether the
improvement is more than the predictable use of prior art elements according
to their established functions." Id. at 1740.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 127 S. Ct. at 1739).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art." Id. at 1162 (citing KSR, 127 S. Ct. at
1741).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d at 987-988; In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991);
and In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, in evaluating
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such references it is proper to take into account not only the specific
teachings of the references but also the inferences which one skilled in the
art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d
825, 826 (CCPA 1968).

V. ANALYSIS
Independent claim 1 recites in relevant part a visiting subscriber to a
first LAN providing authentication information to a server at a second LAN
to authenticate the subscriber for connection to the second LAN.
We first consider the scope and meaning of the term “LAN,” which
must be given its broadest reasonable interpretation consistent with
Appellant’s disclosure, as explained in In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997):
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.

See also In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (stating that “claims
must be interpreted as broadly as their terms reasonably allow.”).
Appellant’s Specification simply indicates that a LAN is a local area
network. (Spec. 1.)
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Our reviewing court further states, “the ‘ordinary meaning’ of a claim
term is its meaning to the ordinary artisan after reading the entire patent.”
Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005.)
Regarding the types of apparatus that comprise a LAN, the Examiner
found that “[i]t is understood in the art however that LAN stands for Local
Area Network, and is comprised of computers, printers, and other devices.”
(Answer 4.) However, we note that claim 1 specifically recites that “each
LAN comprises a network of computers.”
Regarding the size of a LAN, the Examiner initially took the position
that
[a] local area network is not a LAN based on any definite
geographic vicinity. A LAN may be a network confined to a
single office, group offices, buildings, groups of buildings, or
even a city. Just as common usage of the word "local" suggests
geographical proximity confined to a singular region, the usage
of local can extend from a few miles, to even hundreds of miles
depending upon its context. For example, university LANs
often extend over miles across campus.
(Final Action 3.)
Upon reviewing Appellants’ Specification, we fail to find a definition
for the claim term “LAN” or for the term “Local Area Network (LAN),”
which appears at page 1, line 3 of the Specification. We therefore construe
LAN consistently with its ordinary meaning as provided in a dictionary.
The Examiner has not cited any authority as support for construing the
term “LAN” to a network that “can extend from a few miles, to even
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hundreds of miles depending upon its context.” Final Action 3. Appellants,
on the other hand, assert that
Chamber's Scientific and Technology Dictionary defines the
term “LAN” as a “high bandwidth local computer network
operating over a small area, such as an office or group of
offices”. Similarly, M. Hayden, [“N]etworking" [(]Sams
Publishing, 1998) states that, “A LAN is nothing more than a
group of computers li[n]ked through a network that are all at a
single site.”
(App. Br. 8-9.3)
In the absence of the citation of any broader definition of “LAN” by
the Examiner, we will apply the definitions offered by Appellants.
The Examiner, addressing the second of those definitions, found that
“[u]sing this interpretation of ‘LAN’, the service areas/cells of Daniels
(Figure 1, elements 20, 22, 24, 26) meet the limitation of LANs using a
broad but reasonable interpretation since each service area/cell includes a
group of computer elements that are linked together at a single site (See
Figure 1).” (Answer 8.) As explained below, the Examiner is reading the
LANs on apparatus other than the cell phones. That is, although the
Examiner previously explained that a cell phone device is an example of a
computer (Final Action 3), the Examiner subsequently explained that “it is
not the mobile phones that make up the claimed LANs. Instead, it is the
service areas/cells which are made up of linked same site computers, as
discussed above.” Answer 8. Specifically, the Examiner reads each claimed

3 These definitions are also quoted at page 6 of the October 11, 2006,
“Reply” to the May 11, 2006, nonfinal Office action.
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LAN on an MTSO (e.g., 18) and its corresponding service node (e.g., 34) in
a service area (e.g., 20). See Answer 7-8 (“Using a broad but reasonable
interpretation of ‘LAN’ the corresponding MTSO (Figure 1, elements 18,
28, 30, 32), which is hardware (Col. 3, lines 33-35), and service nodes
(Figure 1, elements 34, 44, 46, 48), which are computers (Col. 5, lines 8-9),
for each service area/cell represent ‘LAN’ hardware.”). The Examiner’s
characterization of only the service nodes as “computers” and the
characterization of the MTSOs as “hardware” is problematic. Assuming
arguendo that the term “LAN” can be read on a network that includes a
single computer and other hardware, claim 1 specifies “each LAN comprises
a network of computers,” which is a requirement for more than one
computer. However, that claim requirement is satisfied because we agree
with the Examiner’s conclusion that “[i]t would have been obvious to one of
ordinary skill in the art at the time of invention to have the LANs of Daniels
include computers in order to provide for faster and more efficient
processing of cellular control in their respective service areas” (Answer 4),
which we understand to mean that it would have been obvious to use
computers in the MTSOs.
Our review of the record before us indicates that Appellants have not
responded to this new characterization of the LAN as advanced by Examiner
in the Answer. Similarly, Appellants have failed to address the Examiner’s
explanation that Daniels teaches the H-AAA server as the service node
computer in the subscriber’s home service area, and the V-AAA server as
the service node computer in the visiting service area. (Answer 8.)
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Additionally, Appellants have failed to respond to the Examiner’s finding
that Daniels’ disclosure of the subscriber manually entering at the service
area authentication information such as a PIN, social security number, or the
subscriber’s mother’s maiden name teaches a subscriber providing
authentication information to the operator of a second LAN, as recited in the
claim. (Id. at 8.)
In deciding this appeal, we have considered only those arguments that
Appellants submitted in the Appeal Brief. Appellants’ failure to provide
arguments in a Reply Brief to respond to the Examiner’s findings in the
Answer constitutes a waiver of such arguments. See 37 CFR 41.37(c)(1)
(vii)(eff. Sept. 13, 2004). See also In re Watts, 354 F.3d 1362, 1368, (Fed.
Cir. 2004). It follows that Appellants have not shown that the Examiner
erred in finding Daniels renders claim 1 unpatentable.
Appellants did not provide separate arguments with respect to the
rejection of claims 2 through 7. Therefore, we select independent claim 1 as
being representative of the cited claims. Consequently, claims 2 through 7
fall together with representative claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

VI. CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in concluding that
Daniels renders claims 1 through 7 unpatentable.

VII. DECISION
We affirm the Examiner’s decision to reject claims 1 through 7.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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