Ex Parte Heninger et al

Patent Trial and Appeal Board

Oct 16, 2013

10711940 (P.T.A.B. Oct. 16, 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.
10/711,940 10/14/2004 Ivan M. Heninger RSW920040122US1 5939
46320 7590 10/17/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
LANIER, BENJAMIN E
ART UNIT PAPER NUMBER
2432
MAIL DATE DELIVERY MODE
10/17/2013 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 IVAN M. HENINGER and JOHN DAMON KARI

Appeal 2013-009187
1

Application 10/711,940
Technology Center 2100
____________________

Before JEAN R. HOMERE, JOHN A. JEFFERY, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1
The real party in interest is International Business Machines, Corp. (App.
Br. 2.) In an earlier Appeal (2009-011772, dated 10/26/2011), we affirmed
the Examiner’s rejection of claims 1, 7, and 13.) (Op. 7.)
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2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 7, and 13. Claims 2-6 and 8-12 have been cancelled. (App. Br. 1.)
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for allowing a computer
(160) disposed in an originating network (130A) to avoid network address
collision upon connecting to a destination network (130B) having a server
(120B) that distributes addresses for accessing the same. (Fig. 1, Spec. 1,
¶ [01].) In particular, the computer (160) compares its originating network
address with another address obtained from the destination network during
its attempted connection thereto. Upon detecting that the two addresses
conflict with each other, the computer reports the conflict to the server
(120B), which subsequently selects another network address from a pool of
predefined addresses. (Spec. 6, ¶¶ [26-27].)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A system for avoiding a network address collision, the
system comprising:
a server for distributing addresses for accessing a target
network;
an originating network;
a computer connected to the originating network, the
computer identified on the originating network with a first
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address, the first address having a first network address, the
computer requesting a connection to the target network while
maintaining the connection with the originating network, the
server returning a second address having the second network
address to the computer in response to the computer's request,
the computer comparing the first and second network addresses
to determine whether there is a conflict, upon making a
determination of a conflict between the first and second
network addresses, the computer reporting that the second
network address is in conflict, wherein
the server is a virtual private network (VPN) server and
generates a different network address in response to the
computer’s report by selecting the different network address
from a pool of pre-defined addresses.

Prior Art Relied Upon
Bahl US 6,957,276 B1 Oct. 18, 2005
(filed Oct. 23, 2000)
Sato US 7,047,314 B2 May 16, 2006
(filed Dec. 26, 2001)

Rejection on Appeal
Claims 1, 7, and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Bahl and Sato.

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ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 5-10 and the Reply Brief, pages 2-7.
Dispositive Issue: Under 35 U.S.C. § 103(a), did the Examiner err in
finding that the combination of Bahl and Sato teaches or fairly suggests
upon a computer still connected to an originating network via a first address
requesting a connection to a destination network, a VPN server of the
destination network assigns a second address to the computer, and (2) upon
the computer reporting a conflict between the first and second addresses, the
server assigns a new address to the computer, as recited in independent
claim 1?
Appellants argue that the proposed combination does not teach or
suggest the disputed limitations emphasized above. (App. Br. 6-9, Reply Br.
2-7.) In particular, Appellants argue that Bahl discloses a DHCP server
assigning addresses to a computer within a same network, as opposed to
assigning the addresses to the computer in two different networks. (App. Br.
7.) Further, Appellants argue that Bahl’s disclosure of the server assigning a
new address to the computer as it moves to a new network does not teach
that the computer is still connected to both the originating network and the
destination network. (App. Br. 8-9.) Additionally, Appellants argue that
Bahl discloses a DHCP server, as opposed to a client, performing the
conflict detection. (App. Br. 9.) Therefore, Appellants submit that the
proposed combination does not render independent claim 1 unpatentable.
(Id.)
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5
On the record before us, we agree with the Examiner’s conclusion of
obviousness. First, we agree with the Examiner’s finding that Bahl’s
disclosure of the DHCP server assigning a new IP address to a computer as
it moves from an originating network to a destination network (col. 1, ll. 29-
31) teaches or fairly suggests that the server assigns an initial address to the
computer in a first network, and subsequently assigns a second address to
the computer as it moves to the second network. (Ans. 4.) Second, as noted
by the Examiner in the Answer, we previously found in our prior Decision
(Appeal No. 2009-011772) that:
Bahl’s computer still remains attached to the first network until
it becomes attached to the second network upon verifying that
no address conflict exists between the two assigned addresses.
Thus, within the broad scope of the disputed claim limitations,
Bahl’s computer is attached to the first network while
attempting to find a suitable IP address in order to move to the
second network, and become attached thereto.

(Prior Decision 6.)
We reiterate this finding herein. Further, we note that the claim does
not require that the computer be connected to both networks simultaneously.
Rather, it requires that the computer request connection to the second
network while it is still connected to the first network. Consequently,
Appellants’ arguments are not commensurate with the broader scope of the
claim, and are therefore unpersuasive. Similarly, we find no merit in
Appellants’ argument that Bahl’s conflict is between a previously assigned
address and a newly assigned address, as opposed to addresses assigned by
two different networks. (Reply Br. 4-5.) Nothing in the claim requires the
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two networks to assign the addresses. It merely requires that the VPN server
provide the second network addresses to the computer to connect to a
destination network. Accordingly, the cited disclosure of Bahl teaches the
disputed limitation. Third, while Appellants correctly argue Bahl discloses a
server that performs the conflict detection, we agree with the Examiner
(Ans. 4) that Bahl also discloses that a client computer can perform the
conflict detection as well. (Col. 13, ll. 56-60.) We are therefore satisfied
that, as set forth in the Examiner’s Answer, the combination of Bahl and
Sano adequately teaches or suggests the disputed limitations. It follows that
Appellants have not shown the Examiner erred in concluding that the
proffered combination renders claim 1 unpatentable.
Because Appellants argue claims 1, 7, and 13 as a single group, they
fall together with claim 1 for the same reasons set forth above. See 37
C.F.R. § 41.37(c)(1)(iv).

ADDITIONAL ISSUE
We note claim 13 recites a computer-readable storage medium.
However, Appellants’ Specification does not define machine-readable
storage to exclude transitory media. Consequently, the claimed storage
medium encompasses transitory media, which is not patent eligible. See Ex
parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential). In the
event of further prosecution, the Examiner should consider rejecting claim
13 under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
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DECISION
We affirm the Examiner’s rejection of claims 1, 7, and 13 as set forth
above.
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
ELD