Ex Parte Popovich et al

Board of Patent Appeals and Interferences

Jul 17, 2012

10784363 (B.P.A.I. Jul. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GEROGE POPOVICH and TYRONE D. BEKIARES
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Appeal 2010-003744
Application 10/784,363
Technology Center 2400
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Before ALLEN R. MacDONALD, KALYAN K. DESHPANDE, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-003744
Application 10/784363

2

Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-9 and 11-22.
1
Claims 23, 24 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Introduction
According to Appellants, the invention relates to dynamically
allocating a network prefix to a mobile router (Spec. 5).
Exemplary Claims
Claims 1, 4, and 7 are exemplary, with disputed limitations in italics:
1. In a system comprising at least one mobility server, at least one
mobile router and a plurality of hosts, a method for mobile network
prefix allocation comprising the steps of:
detecting a need for at least one mobile network prefix for a mobile
router, wherein each mobile network prefix corresponds to a subnet
behind the mobile router and comprises a plurality of internet protocol
addresses;
sending a registration request message to a mobility server that includes
a request to allocate said at least one mobile network prefix to said
mobile router; and
receiving a registration reply responsive to said registration request that
includes at least one allocated mobile network prefix, wherein said at
least one allocated mobile network prefix is reserved for said mobile
router for a first time period.

1
The Examiner has indicated that claim 10 contains allowable subject
matter. Ans. 4.
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4. The method of Claim 1, wherein said registration request message
further includes a request to allocate said at least one mobile network
prefix for said first time period.

7. The method of Claim 1, wherein said at least one allocated mobile
network prefix is identified in said registration request message.

Prior Art
Shitama US 2002/0126642 A1 Sep. 12, 2002

C. Perkins, Ed., IP Mobility Support for IPv4, FRC 3344, Aug. 2002.

Rejection
Claims 1-9 and 11-22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Perkins and Shitama. (Ans. 4).
Claim Groupings
Appellants focus their arguments with respect to the independent
claims 12 and 13 on independent claim 1 (Br. 11-14) and rely on the same
reasoning provided for claim 1 to argue the patentability of the dependent
claims 2-3, 5-6, 8-9, 11, 14, 16-18, and 20-21 claims (Br. 15). In view of
Appellants’ arguments in the Appeal Brief, we will decide the appeal on the
basis of claim 1.
2
See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants’ Contentions
Claims 1-3, 5-6, 8-9, 11-14, 16-18, and 20-21
Appellants contend that the combination of Perkins and Shitama does
not disclose “a registration request message ... that includes a request to

2
Appellants have grouped together (a) Claims 1-3, 5-6, 8-9, 11-14, 16-18,
and 20-21 to stand or fall together; (b) Claims 4 and 19 to stand or fall
together; and (c) Claims 7 and 22 to stand or fall together. (Br. 5).
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allocate at least one mobile network prefix to said mobile router" and "a
registration reply ... that includes at least one allocated mobile network
prefix.” (Br. 11-14). Specifically, Appellants assert that (a) Perkins does not
teach or suggest “mobile network prefix allocation” (Br. 12); and (b)
Shitama does not teach or suggest “a mobile router.” (Br. 13.)

Claims 4 and 19
Appellants further assert that Perkins does not disclose “said
registration request message further includes a request to allocate said at
least one mobile network prefix for said first time period.” (Br. 15).
Claims 7 and 22
Appellants further assert that Perkins does not disclose “said at least
one allocated mobile network prefix is identified in said registration
request.” (Br. 16).
Claim 15
Appellants lastly assert that Perkins and Shitama do not disclose
“returning said at least one allocated mobile network prefix to a pool of
available mobile network prefixes upon the expiration of said timer.” (Br.
17-18).

ISSUE
Did the Examiner err in finding that a person of ordinary skill in the
art would have found claims 1-9 and 11-22 obvious based on the
combination of Perkins and Shitama?

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (Br. 11-18) that the Examiner has erred. We
disagree with Appellants’ conclusions.
We concur with the conclusions reached by the Examiner (Ans. 4-19).
We also agree with the Examiner’s findings with respect to the individual
references, and with the Examiner’s determination that it would have been
obvious to combine the references based on the rationale set forth by the
Examiner (Ans. 6, 17). Appellants argue that Perkins does not teach or
suggest a “mobile network prefix allocation” and Shitama does not teach or
suggest “mobile router,” when the Examiner has relied upon the
combination of Perkins and Shitama to teach or suggest these features. The
Examiner has combined Perkins to teach “mobile routers/nodes (Perkins
Sections 1.5, 2.4.2.1, 3.1, 3.3, 3.4)” with Shitama to teach the “network
prefix allocation (Shitama Paragraphs 0086-0089, Fig. 16).” (Ans. 17). One
cannot show non-obviousness by attacking references individually when the
rejection is based on a combination of references. In re Merck, 800 F.2d at
1097.

Additionally, we note that the Examiner has identified the relevant
portions of Perkins and Shitama and has properly equated the features
disclosed in the references with the disputed features in claims 1, 12, and 13.
In response to each of the above contentions raised by Appellants (Br. 11-
18), the Examiner has presented detailed findings and responses (Ans. 4-19).
We agree with these findings and conclusions and adopt them as our own.
Regarding Appellants’ contention challenging the propriety of the rejection
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and whether the proposed combination teaches or suggests all the claimed
features, we find that the Examiner has articulated how the claimed features
are met by the reference teachings with a rational underpinning to combine
Perkins and Shitama. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
We therefore sustain the Examiner’s rejection of claims 1, 12, and 13,
and claims 2-3, 5-6, 8-9, 11, 16-18, and 20-21 not separately argued with
particularity.
With respect to the rejection of dependent claims 4, 7, 15, 19, and 22,
we agree with the Examiner’s findings and conclusions (Ans. 7-8, 12-15,
and 18-19) that the combination of Perkins and Shitama teaches or suggests
the disputed features of these claims. Thus, we sustain the rejection of
claims 4, 7, 15, 19, and 22.
In view of the foregoing, we conclude that the inventions recited in
claims 1-9 and 11-22 have not been shown to be patentably distinguishable
from the combined teachings of the applied prior art.

DECISION
The Examiner’s decision to reject claims 1-9 and 11-22 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)(iv) (2010).

AFFIRMED

ELD