Ex Parte Karaoguz et al

Board of Patent Appeals and Interferences

Aug 16, 2012

10675491 (B.P.A.I. Aug. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JEYHAN KARAOGUZ and JAMES BENNETT
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Appeal 2010-001001
Application 10/675,491
Technology Center 2400
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Before JOSEPH F. RUGGIERO, BRADLEY W. BAUMEISTER, and
JENNIFER S. BISK, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-26:
Claims 1-12, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as obvious
over Ellis (US 6,774,926 B1; issued Aug. 10, 2004) in view of Takanashi (US
2003/0177249 A1; published Sep. 18, 2003);
Claim 13 stands rejected under 35 U.S.C. § 103(a) as obvious over Ellis in
view of Takanashi and Humpleman (US 6,182,094 B1; issued Jan. 30. 2001);
Claims 16-18 and 20-26 stand rejected under 35 U.S.C. § 103(a) as obvious
over Ellis in view of Yoon (US 2002/0004832 A1; published Jan. 10, 2002); and
Claim 19 stands rejected under 35 U.S.C. § 103(a) as obvious over Ellis in
view of Yoon and Woodhill (US 6,934,858 B2; issued Aug. 23, 2005).
We have jurisdiction under 35 U.S.C. § 6(b). We review the appealed
rejections for error based upon the issues identified by Appellants, and in light of
the arguments and evidence produced thereon. Cf. Ex Parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (citing In re Oetiker, 977 F.2d 1443, 1445).
We affirm-in-part.

STATEMENT OF CASE
Appellants describe the present invention as follows:
[A] method for establishing a communication pathway for
subsequent media exchanges between a television display in a first
home and storage that contains media in a second home. The method
may comprise securely receiving address correlation information
associated with the television display in the first home and securely
receiving address correlation information associated with the storage
in the second home. Affirmative confirmation may be received and/or
stored using the received address correlation information associated
with at least one of the television display and the storage. The
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invention may also include verifying that affirmative information has
been stored in association with any subsequent media exchanges.
(Abstract).

CLAIMS 1-5, 7, AND 8
Independent claim 1 is representative of claims 1-5, 7, and 8:1
1. A method for establishing a communication pathway for
subsequent media exchanges between a television display in a first
home and storage that contains media in a second home, the method
comprising:
securely receiving address correlation information associated
with the television display in the first home;
securely receiving address correlation information associated
with the storage in the second home;
requesting affirmative confirmation using said received address
correlation information associated with one or both of the television
display and/or the storage; and
storing said affirmative confirmation.

1 Appellants argue aspects of claims 1-15 together as a group. See App. Br. 7-11.
Based upon the issues presented, we select independent claim 1 as representative
of claims 1-5, 7, and 8. See 37 C.F.R. § 41.37(c)(1)(vii).
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Contentions2
The Examiner finds that the combination of Ellis and Takanashi teaches or
suggests all of the limitations of independent claim 1 (Ans. 22). The Examiner
further provides a motivation for modifying Ellis with the teachings of Takanashi
(Ans. 5). Appellants assert, inter alia, that the combination of Ellis and Takanashi
fails to describe, teach, or suggest storing affirmative confirmation (Reply Br. 7).
Analysis
Appellants’ arguments are persuasive. The Examiner initially takes the
position that the act of validating a client attempting to access a network of
Takanashi corresponds to the claim language of requesting affirmative
confirmation (Ans. 4-5). The Examiner, however, fails to establish that Takanashi
further teaches storing any information that is generated by the act of validating a
client attempting to access a network.
In the Response to Argument section of the Examiner’s Answer, the
Examiner alternatively indicates that storage of information contained in a
Dynamic Host Control Protocol (“DHCP”) reply packet constitutes storing the
affirmative confirmation (Ans. 26). Takanashi discloses an Internet Protocol
(“IP”) address assignment system, which receives a request for an IP address from
a client (e.g., ¶ 0022). In response, the system assigns an IP address and forwards
it in a reply along with associated authorization data (id.). Since, the Examiner has
equated this assigned IP address with the claimed address correlation information
(Ans. 24), the request does not contain the correlation information. Thus, even if
the reply packet is stored, it is not requested using the address correlation

2 Rather than repeat the Examiner’s positions and Appellants’ arguments in their
entirety, we refer to the following documents for their respective details: the
Appeal Brief (App. Br.) filed May 27, 2009; the Examiner’s Answer (Ans.) mailed
August 26, 2009; and the Reply Brief (Reply Br.) filed October 2, 2009.
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information as claimed. As such, Takanashi’s storing of the reply packet cannot
reasonably be interpreted as storing an affirmative confirmation that was requested
using address correlation information, given the address correlation information is
not received until after the request has been made.
In addition, Examiner newly cites the teachings of “Network Working
Group Request For Comments 2131: Dynamic Host Configuration Protocol”
(“RFC2131”) in relation to claim 1 (Ans. 24). RFC2131, however, was not relied
upon in the Final Rejection of claim 1 that is presently on appeal (Ans. 3). We
therefore view the Examiner’s reference to RFC2131, at pages 24-26 of the
Answer, as an improper effort to bring this reference in the “back door.” See In re
Hoch, 428 F.2d 1341, 1342 n. 3 (CCPA 1970) (“[w]here a reference is relied on to
support a rejection, whether or not in a ‘minor capacity,’ there would appear to be
no excuse for not positively including that reference in the statement of the
rejection.”) Accordingly, we consider the rejection under 35 U.S.C. § 103 based
solely on the evidence contained in Ellis and Takanashi.
We therefore do not sustain the Examiner’s obviousness rejection of
independent claim 1 or of claims 2-5, which depend from claim 1. We likewise do
not sustain the rejection of claims 7 and 8, which also set forth the limitation of
storing the requested confirmation.

CLAIMS 6 AND 9-15
Independent claim 6 is representative of claims 6, 9-12, 14, and 15:3
6. A method for establishing a communication pathway for
subsequent media exchange between a first media component in a first

3 Appellants argue claims 6, 9-12, 14, and 15 together as a group. See App. Br. 7-
10. Accordingly, we select independent claim 6 as representative of these claims.

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home and a second media component in a second home, the method
comprising:
receiving at least one of address correlation information
associated with the first media component in the first home and a
routing address associated with the first media component in the first
home;
receiving address correlation information associated with the
second media component in the second home; and
requesting confirmation using the address correlation
information associated with the second media component.
Contentions
The Examiner rejects claims 6, 9-12, 14, and 15 over the combination of
Ellis and Takanashi for substantially the same reasons relied upon for rejecting
claims 1-5, 7, and 8 (e.g., Ans. 22). Claims 6, 9-12, 14, and 15 are broader,
though, in that they do not require that the requested affirmative confirmation be
stored. We therefore address the remaining argument that Appellants present for
claims 1-15. Specifically, Appellants assert that the combination of Ellis and
Takanashi fails to describe, teach, or suggest requesting confirmation using the
address correlation information associated with the second media component (App.
Br. 11; Reply Br. 2).
Analysis
Appellants have not persuaded us that the Examiner erred in finding that
Ellis and Takanashi teach or suggest, as recited by independent claim 6, requesting
confirmation using the address correlation information associated with the second
media component. Ellis teaches establishing communication pathway for media
exchange between two devices (Ans. 22 (citing Ellis, col. 10, ll. 17-33; Figures 1
and 7)). Takanashi discloses an IP address assignment system, which transmits an
IP address (the claimed “address correlation information”) to a client device
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seeking network access (Ans. 26 (citing Takanashi, ¶¶ 0022-0023)). The client
device subsequently presents the IP address and user credentials to an access
system in a login request, and the access system grants access to the client device if
the supplied information is valid (Ans. 25 (citing Takanashi, ¶¶ 0022-0024)).
We note that the claim language fails to specify what entity is requesting
confirmation or what the object of the confirmation is. As such, the login request
by the client device reads on “requesting confirmation using the address correlation
information associated with a second media component,” as recited in claim 6.
That is, by logging in via a protocol wherein the login information is matched with
the device’s IP address, the user may be deemed to be requesting confirmation that
the user may access the network. Alternatively, by requiring a login that is
matched with the device’s IP address, the access system may also be deemed to be
requesting confirmation using correlation information, as claimed.
We therefore find that the Examiner has established that the system of Ellis
and Takanashi teaches requesting confirmation using the address correlation
information associated with the second media component.
For the foregoing reasons, Appellants have not persuaded us of error in the
Examiner’s obviousness rejection of independent claim 6. Accordingly, we will
sustain the Examiner’s rejection of that claim as well as the rejection of claims 9-
12, 14, and 15, which are not separately argued.
With respect to the remaining rejection of dependent claim 13, Appellants
provide no additional patentability arguments directed to the additionally cited
reference, Humpleman. Rather, Appellants merely incorporate the arguments
presented in relation to claims 1 and 12 (App. Br. 12). For the reasons discussed
above, then, we also sustain the obviousness rejection of dependent claim 13.

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CLAIMS 16-26
Independent claim 16, which is representative of claims 16-26, is reproduced
with key claim language emphasized:4
16. A system for communicating information, the system
comprising:
at least one processor that issues access information from a first
device to at least a second device;
said at least one processor transfers at least a portion of said
access information to a third device; and
said at least one processor authenticates said access information
by said first device when said third device attempts to transfer at least
one of media data and service to said at least said second device.
Contentions
The Examiner finds Ellis teaches all of the limitations of independent claim
16 except that “Ellis does not teach a processor used to issue access information to
a second and third device by way of a first device or that the processor
authenticates access information between the second and third devices” (Ans. 14).
The Examiner further finds that Yoon discloses these missing elements and
provides a motivation for modifying Ellis with the aforementioned elements (Ans.
14-15). The Examiner’s rejection is premised upon interpreting the claim term
“when” broadly so as to be merely setting forth a conditional requirement, but not
a temporal requirement (Ans. 30). That is, the Examiner interprets claim 16 as
reading on the step of a processor authenticating access information at any time,
merely so long as a third device does attempt the claimed transfer.
Appellants assert that the combination of Ellis and Yoon fails to describe,
teach, or suggest authenticating said access information by said first device when

4 Appellants argue claims 16-26 together as a group. See App. Br. 13-15.
Accordingly, we select independent claim 16 as representative.

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said third device attempts to transfer at least one of media data and service to said
at least said second device (Reply Br. 8-9). Appellants more specifically contend
that the claim language makes clear that the claimed authentication must occur
when the third device attempts to transfer at least one of media data and service
(Reply Br. 9). That is, Appellants urge that the claim term “when” must be
construed more narrowly as setting forth a temporal requirement – that the
processor authenticates access information in response to the third device
attempting to the claimed transfer.
Analysis
Office personnel must rely on Appellants’ disclosure to properly determine
the meaning of the terms used in the claims. Markman v. Westview Instruments,
Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc). “[I]nterpreting what is meant by
a word in a claim is not to be confused with adding an extraneous limitation
appearing in the specification, which is improper.” In re Cruciferous Sprout
Litigation, 301 F.3d 1343, 1348 (Fed. Cir. 2002) (internal quotation marks and
citations omitted; emphasis in original).
“[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.”
Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). It is the
use of the words in the context of the written description and customarily by those
skilled in the relevant art that accurately reflects both the “ordinary” and the
“customary” meaning of the terms in the claims. Ferguson Beauregard/Logic
Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed.
Cir. 2003).
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[The claims] are part of a fully integrated written instrument,
consisting principally of a specification that concludes with the
claims. For that reason, claims must be read in view of the
specification . . . . [T]he specification is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is the single
best guide to the meaning of a disputed term.
Phillips, 415 F.3d at 1315 (citations omitted) (internal quotation marks omitted).
Interpreting the claim term “when” in light of Appellants’ Specification, we
find Appellants’ arguments to be persuasive. Contrary to the Examiner’s
interpretation (Ans. 29-30), we interpret the term “when” as requiring that the
authentication of the third device occurs in response to an attempt by the third
device to transfer media data or service to the second device.  
Yoon teaches authenticating a local computer by a connection authentication
server, and providing the local computer with temporary credentials if the
authentication succeeds (Yoon, ¶¶ 0022-0024). The local computer subsequently
uses the credentials to transfer media data to another device (id.) As such, Yoon
does not teach authenticating a device in response to the device attempting to
transfer media data or service.
We therefore do not sustain the Examiner’s obviousness rejection of
independent claim 16, or of claims 17, 18, and 20-26, which depend from claim 16.
With respect to the remaining rejection of dependent claim 19, the Examiner
does not rely on Woodhill to cure the deficiency of the obviousness rejection
explained above. Accordingly, we do not sustain the obviousness rejection of
claim 19 for the reasons noted in relation to independent claim16.

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CONCLUSIONS
We do not sustain the obviousness rejection of claims 1-5, 7, and 8 under
35 U.S.C. § 103.
We sustain the obviousness rejection of claims 6 and 9-15 under 35 U.S.C.
§ 103.
We do not sustain the obviousness rejection of claims 16-26 under 35 U.S.C.
§ 103.

DECISION
The Examiner’s decision rejecting claims 1-5, 7, 8, and 16-26 is reversed.
The Examiner’s decision rejecting claims 6 and 9-15 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

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