Ex Parte Oberle et alDownload PDFPatent Trial and Appeal BoardFeb 13, 201311233116 (P.T.A.B. Feb. 13, 2013) Copy Citation 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. 11/233,116 09/23/2005 Karsten Oberle 29250S-000027/US 8672 30594 7590 02/13/2013 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 8910 RESTON, VA 20195 EXAMINER DADA, BEEMNET W ART UNIT PAPER NUMBER 2435 MAIL DATE DELIVERY MODE 02/13/2013 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 KARSTEN OBERLE and PETER DOMSCHITZ _____________ Appeal 2010-009247 Application 11/233,116 Technology Center 2400 ______________ Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and TREVOR M. JEFFERSON, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009247 Application 11/233,116 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1 through 15. We affirm-in-part. INVENTION The invention is directed a method of routing bi-directional communications in a communication network. See pages 2 through 4 of Appellants’ Specification. Claim 1 is representative of the invention and reproduced below: 1. A method for routing a bi-directional end-to-end connection between an end subscriber terminal and the domain of a service provider by means of a signaling protocol via an interposed firewall with address transformation device, wherein a security and tunnel device is located in the end-to-end connection between the end subscriber terminal and the firewall with address transformation device in the domain of the end subscriber, and a session border controller is located in the end- to-end connection in the domain of the service provider, the method comprising: setting up a tunnel between the security and tunnel device and the session border controller; performing a bi-directional data exchange via the tunnel between the end subscriber terminal and the domain of the service provider in the area between the security and tunnel device and the session border controller by means of a tunnel protocol, and storing a correlation between a private address of the end subscriber terminal and an address of the security and tunnel device in the session border controller. Appeal 2010-009247 Application 11/233,116 3 REJECTION AT ISSUE The Examiner has rejected claims 1 through 15 under 35 U.S.C. § 103(a) as unpatentable over Eisenberg (U.S. 2003/0188001 A1) and Landfeldt (U.S. 2006/0259625 A1). Answer 3-6. 1 ISSUES Claims 1, 2, and 4 through 15 Appellants argue on pages 14-17 of the Appeal Brief and 4-5 of the Reply Brief that the Examiner’s rejection of claims 1, 2, and 4 through 15 is in error. 2 These arguments present us with the issue: did the Examiner err in finding the combination of Eisenberg and Landfeldt teaches storing a correlation between a private address and an address of the security and tunnel device in the session border controller as recited in representative claim 1? Claim 3 Appellants’ arguments directed to the rejection of dependent claim 3 presents us with the additional issue: did the Examiner err in finding that the combination of Eisenberg and Landfeldt teach encrypting data packets by the session border controller as recited in claim 3? 1 Throughout this opinion we refer to the Examiner’s Answer mailed on April 13, 2010. 2 Throughout this opinion we refer to Appellants’ Appeal Brief March 1, 2010, and the Reply Brief dated May 10, 2010. Appeal 2010-009247 Application 11/233,116 4 ANALYSIS Claims 1, 2, and 4 through 15 We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejection and the Examiner’s response to the Appellants’ arguments. We disagree with Appellants’ conclusion that the Examiner erred in finding the combination of Eisenberg and Landfeldt teaches storing a correlation between a private address and an address of the security and tunnel device in the session border controller. Appellants’ arguments focus on the Landfeldt reference and assert the reference teaches a border gateway and not a border controller. App. Br. 14- 15. Further, Appellants argue that the border gateway of Landfeldt teaches source and destination IP addresses and not the private address of a subscriber terminal and an address of the security and tunnel device as claimed. App. Br. 16. The Examiner finds the border gateway of Landfeldt meets the claimed border controller as it is a device which is located in the end-to-end connection of a network that stores correlations as is claimed. Answer 6. Further, the Examiner notes that many of the features of border controller cited in Appellants’ arguments are not recited in the claims. Answer 7. We concur with the Examiner. We note Appellants’ assertion that the argued features are merely the ordinary and customary features associated with a border controller, are not persuasive as there is insufficient evidence to support the argument. Further the Examiner finds that Landfeldt teaches storing a correlation between a private address and an address of the security and tunnel device in that the subscriber device is correlated with a tunnel device by uniquely mapping the tunnel with the devices. Answer 7. We Appeal 2010-009247 Application 11/233,116 5 concur with the Examiner’s finding, the mapping of private addresses to tunnels, which are associated with security and tunnel devices, meets the claimed correlation. As such Appellants’ arguments have not persuaded us that the Examiner erred in finding the combination of the references teaches storing a correlation between a private address and an address of the security and tunnel device in the session border controller as recited in representative claim 1. Accordingly, we sustain the Examiner’s rejection of claims 1, 2, and 4 through 15. Claim 3 We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejection and the Examiner’s response to the Appellants’ arguments. We agree with Appellants’ conclusion that the Examiner erred in finding the combination of Eisenberg and Landfeldt teach encrypting data packets by the session border controller as recited in claim 3. The Examiner cites to Landfeldt paragraph 51 as teaching this limitation. Appellants argue that this paragraph discusses encapsulation of data packets and not encrypting packets as claimed. Reply Br. 6. We concur with Appellants. Accordingly, we will not sustain the Examiner’s rejection of claim 3. ORDER The decision of the Examiner to reject claims 1 through 15 is affirmed-in-part. Appeal 2010-009247 Application 11/233,116 6 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-IN-PART ELD Copy with citationCopy as parenthetical citation