Ex Parte Oba et al

Board of Patent Appeals and Interferences

Apr 27, 2010

10761347 (B.P.A.I. Apr. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte YOSHIHIRO OBA and SHINICHI BABA
____________________

Appeal 2009-006534
Application 10/761,3471
Technology Center 2400
____________________

Decided: April 28, 2010
____________________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and JAY P. LUCAS,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed January 22, 2004. The real party in interest is Toshiba
America Research, Inc. and Telcordia Technologies, Inc.
Appeal 2009-006534
Application 10/761,347

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 through 3, 5, and
7 through 27 under authority of 35 U.S.C. § 134(a). The Board of Patent
Appeals and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
Claims 4 and 6 are objected to by the Examiner.

We affirm.

Appellants’ invention relates to a communication tunnel between a
client node and an access router through an access network, such that the
client nodes sends and receives data packets from a serving network. (See
claim 1.) In the words of Appellants:
When the client node 103 needs to send or receive
data packets through a serving network, it
establishes a secure tunnel (logical interface) using
IP Security protocol (IPSec tunnel) to the access
router of that serving network through the IP
access network. Tunneling allows one network to
send its data through another network’s
connections, and works by encapsulating a
network protocol within packets carried by the
second network.
(Spec. 6, bottom to 7, top).

Claim 1 is exemplary, and is reproduced below:
1. A method of dynamically connecting a
client node to a serving network, comprising the
steps of:

providing an access network to which a
client node has a network connection;
2
Appeal 2009-006534
Application 10/761,347

providing at least one access router having a
network connection to said access network and
having a network connection to at least one serving
network;

sending serving network provider
advertising information to said client node;

receiving from said client node serving
network provider information specifying a serving
network to which said client node desires access;
and

establishing a communication tunnel
between said client node and said access router
through said access network, such that said client
node is able to send and receive data packets to
and from the serving network specified by said
client node within said communication tunnel
through said access network.

In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Forslöw US 2002/0069278 A1 Jun. 06, 2002
Sakov US 2002/0196802 A1 Dec. 26, 2002
Boden US 2003/0145104 A1 Jul. 31, 2003
(filed on Jan. 23, 2002)
Le US 2004/0019664 A1 Jan. 29, 2004

3
Appeal 2009-006534
Application 10/761,347

REJECTIONS
The Examiner rejects the claims as follows:

R12: Claims 1, 2, 5, 9, 10, 13, 17, 18, 20, 21, and 25 through 27 stand
rejected under 35 U.S.C. § 102(e) for being anticipated by Boden.
R2: Claim 3 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Boden in view of Sakov.
R3: Claims 8, 11, 12, 14 through 16, and 19 stand rejected under
35 U.S.C. § 103(a) for being obvious over Boden in view of Forslöw.
R4: Claim 7 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Boden in view of Le.

Appellants contend that Boden does not anticipate the claimed subject
matter, and that Boden in combination with Sakov, Forslöw, or Le does not
render the claimed subject matter unpatentable because Boden fails to teach
“establishing a communication tunnel between said client node and said
access router,” as recited in claim 1 (App. Br. 8, middle to bottom). The
Examiner contends that each of the claims is properly rejected (Ans. 4, top
to 16, bottom).
We will review the rejections in the order argued, and as grouped in
the Brief. The claims are as per Appellants’ Briefs. We have only

2 Appellants contend that the Examiner’s rejection [R1] under
35 U.S.C. § 102(e) is a new grounds of rejection because a previous Office
Action (filed on September 28, 2007) stated [R1] as being under
35 U.S.C. § 102(b) (id. at p.3, bottom) (App. Br. 13, middle to 14, middle).
We treat the Examiner’s oversight as a typographical error. By failing to file
a petition under 37 CFR § 1.181 within two (2) months of the Answer,
Appellants have waived any allegation that the Answer contains an improper
new ground of rejection. (See MPEP 1207.03 (IV).)
4
Appeal 2009-006534
Application 10/761,347

considered those arguments that Appellants actually raised in the Briefs.
Arguments that Appellants could have made but chose not to make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The principal issue before us is whether Appellants have shown that
the Examiner erred in rejecting the claims under 35 U.S.C. §§ 102(e) and
103(a). The issue specifically turns on whether Boden teaches “establishing
a communication tunnel between said client node and said access router,” as
recited in claim 1.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellants have invented a communication tunnel between a client node
and an access router through an access network, such that the client node
sends and receives data packets from a serving network. (See claim 1.)
Boden
2. The Boden reference teaches communication link between a client node
(i.e., Node A1) and an access router (i.e., VPN Gateway A) through an
access network (i.e., Network A), such that the client node sends and
receives data packets from a network (Network B or Network C). (See
Fig. 4, ¶¶ [0039] and [0073] to [0076].)
5
Appeal 2009-006534
Application 10/761,347

Sakov
3. The Sakov reference discloses multiple access routers connected via
network connections to an original access network and multiple serving
networks. (See ¶¶ [0029] to [0035].)
Forslöw
4. The Forslöw reference discloses authenticating clients before establishing
IPSec secure communication tunnels in a wireless VLAN network that
uses a Router discovery mechanism. (See ¶¶ [0093], [0094], and [0108].)
Le
5. The Le reference discloses using a PANA protocol to advertise network
elements. (See ¶¶ [0039] to [0044].)

PRINCIPLES OF LAW
Appellants have 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).

“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).

“[R]ather than reiterate the positions of the parties in toto, we focus on
the issue therebetween.” Ex parte Nikoonahad, No. 2006-3247, 2007 WL
1591636, at *2 (BPAI 2007).

6
Appeal 2009-006534
Application 10/761,347

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).

Our reviewing court states in In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989) that “claims must be interpreted as broadly as their terms reasonably
allow.” However, “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).

“[T]he words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (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.

ANALYSIS
From our review of the administrative record, we find that the
Examiner presents his conclusions of unpatentability on pages 3 to 12 of the
Examiner’s Answer. In opposition, Appellants present a number of
arguments.
7
Appeal 2009-006534
Application 10/761,347

Arguments with respect to the rejection
of claims 1, 2, 5, 9, 10, 13, 17,
18, 20, 21, and 25 through 27
under 35 U.S.C. § 102(e) [R1]

Appellants argue: Boden fails to teach “between said client node and
said access router,” as recited in claim 1, since Boden’s “tunnel is a VPN
connection between access routers (or Gateways in Boden), and not [a VPN
connection] between a client node and an access router.” (App. Br. 7).
Boden’s tunnel resides outside of any of the access networks whereas the
tunnel, as claimed, resides within an access network (id.).
We carefully considered the Briefs, the Examiner’s Answer, the cited
portion of the Boden reference, and indeed the entire reference. We agree
with the Examiner’s conclusions of unpatentability for the following
reasons.
We find that Appellants have invented a communication tunnel
between a client node and an access router through an access network, such
that the client node sends and receives data packets from a serving network
(FF#1). In comparison, Boden reference teaches communication link
between a client node (i.e., Node A1) and an access router (i.e., VPN
Gateway A) through an access network (i.e., Network A), such that the
client node sends and receives data packets from a network (Network B or
Network C) (FF#2).
Exemplary claim 1 recites a method that includes, in relevant part,
“establishing a communication tunnel between said client node and said
access router.”
This dispute is mainly about claim interpretation. Appellants urge an
interpretation of “tunnel” as a secure VPN (App. Br. 7). We reasonably but
8
Appeal 2009-006534
Application 10/761,347

broadly interpret claims (In re Zletz, cited above). Our claim interpretation
starts with the common meaning of the terms. (Phillips v. AWH Corp., cited
above). If there is a special, narrower meaning, defined in the Specification,
we will follow it. (See id.). Here, while the Specification provides
numerous examples of tunnels, the Specification fails to provide a delimited,
binding definition that is carried to the claims. We thus interpret Appellants’
“communication tunnel” (claim 1) broadly as being an electrical data
connection “between a client node and an access router,” as claimed. We
place no further limitation on what “communication tunnel” means,
represents, or includes, since Appellants chose not to specifically limit the
claimed “communication tunnel” in any way. Further, we find that a person
of ordinary skill in the art would have recognized the claimed
“communication tunnel” as being no more than an electrical data connection
over which data packets are sent and received. Consequently, we find that
Boden’s teaching for a communication link (i.e., an electrical data
connection) between said client node and said access router (FF#2) is
sufficient to meet Appellants’ claim limitation “establishing a
communication tunnel between said client node and said access router.”
To be clear, we do not read Appellants’ claim language as being so
narrowly defined as to include only a “secure tunnel” or only a “Virtual
Private Network tunnel,” as disclosed in the Specification. (See Spec. 6,
bottom to 7, top.) To construe the claims in such a manner would involve
impermissibly reading limitations from the Specification into the claims.
(See In re Van Geuns, cited above.) Accordingly, we find no error in the
rejection [R1] of claim 1.

9
Appeal 2009-006534
Application 10/761,347

Arguments with respect to the rejection
of claims 3, 7, 8, 11, 12, 14 through 16, and 19
under 35 U.S.C. § 103(a) [R2 to R4]

Appellants choose not to argue the Examiner’s findings regarding the
secondary references (i.e., Sakov, Forslöw, and Le) (App. Br. 13, middle).
Rather, Appellants merely contend that “these secondary references fail to
correct the deficiencies of Boden et al. noted above with respect to claim 1.”
(Id.). Contrary to Appellants’ argument regarding Boden’s deficiencies, we
found above that the Boden reference meets the argued limitations of claim
1. (See supra.) Since no separate arguments were made regarding claims 3,
7, 8, 11, 12, 14 through 16, and 19 (App. Br. 13, middle), we find no error in
the Examiner’s rejections [R2 to R4].

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 3, 5, 7 through 27.

DECISION
We affirm the Examiner’s rejections [R1 to R4] of claims 1 through 3,
5, 7 through 27.

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

10
Appeal 2009-006534
Application 10/761,347

peb

WATCHSTONE P+D, PLLC
1250 CONNECTICUT AVENUE, N.W.
SUITE 700
WASHINGTON, DC 20036
11