Ex Parte Tuomi

Board of Patent Appeals and Interferences

Nov 8, 2010

10761584 (B.P.A.I. Nov. 8, 2010)

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.
10/761,584 01/22/2004 Jukka Tuomi 39700-608001US/NC40090US 4261
64046 7590 11/08/2010
MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C
ONE FINANCIAL CENTER
BOSTON, MA 02111
EXAMINER
GILLIS, BRIAN J
ART UNIT PAPER NUMBER
2441
MAIL DATE DELIVERY MODE
11/08/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JUKKA TUOMI
____________
Appeal 2009-007314
Application 10/761,5841
Technology Center 2400
____________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
JAMES R. HUGHES, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL2

1 Filed on January 22, 2004. This application claims foreign priority to
0324878.8, filed October 24, 2003. The real party in interest is Nokia Corp.
(App. Br. 2.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007314
Application 10/761,584

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 3, 5 through 11, and 13
through 26. (App. Br. 4.) Claims 4 and 12 have been cancelled. (Id.) We
have jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm.
Appellant’s Invention
Appellant invented a method, system, and apparatus for connecting an
end user to a wireless local area network (“WLAN”) and for providing
services via a mobile operator domain. (Spec. 1, para. [0001].)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. An apparatus, comprising:

an access controller connected to an access network and a
domain, wherein the access network is configured to attach to user
equipment;

wherein said access controller is configured to control resolving
of domain name information for both server addresses within said
domain or accessible via said domain, and server addresses that are
not within said domain or accessible via said domain; and

wherein said access controller is configured to:

receive from said user equipment a query identifying a domain
name; and

in response to a determination that said user equipment is
authorized and there is specified for said domain name a server
address within said domain or accessible via said domain resolve
domain name information for said domain name within said domain;
and
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in response to a determination that the user equipment is not
authorized and/or that there is no specified server address for said
domain name within said domain or accessible via said domain
resolve the domain name information for said domain name outside
said domain.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
McCanne US 6,785,704 B1 Aug. 31, 2004
(filed Jul. 3, 2000)
Roos WO 00/64104 Oct. 26, 2000
Westman WO 02/47415 A1 June 13, 2002

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 1 through 3, 5, 11, 13, 14, 16 through 21, and 26 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by McCanne.
Claims 6, 7, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of McCanne and Roos.
Claims 8 through 10, 15, 24, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of McCanne and
Westman.
Appellant’s Contentions
Appellant contends that McCanne discloses only returning the same
Internet Protocol (“IP”) address by specifying a different port number
according to whether or not the client is authorized, whereas the claimed
invention resolves a domain name within or outside a domain depending on
whether or not the client is authorized. (App. Br. 13-14.) In particular,
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Appellant argues that McCanne fails to disclose that the APAR-DNS
(“Administratively Provisioned Interdomain Anycast Routing-Domain
Name Service”) server returns an IP address that is outside a current domain
when the client is not authorized. (Id.)
Further, Appellant alleges that the Examiner’s position is not
supported by substantial evidence because the Examiner mischaracterizes
McCanne’s disclosure. (Reply Br. 5-9.) In particular, Appellant contends
that it is inaccurate for the Examiner to characterize McCanne’s disclosure
as teaching APAR-DNS servers that control the address resolution of any
domain. (Id. at 6.) Additionally, Appellant argues that it is inaccurate for
the Examiner to characterize McCanne’s disclosure as teaching that an
APAR-DNS server resolves the request to an IP address that is ignored or
outside the domain when a client does not appear to be authorized. (Id. at
8.) That is, Appellant alleges that there is no evidence that the IP address is
ignored, but rather McCanne only discloses that the port number of a port is
ignored. (Id.) Moreover, Appellant contends that McCanne fails to disclose
that the IP address is outside the domain. (Id.)
Examiner’s Findings and Conclusions
The Examiner finds that McCanne discloses that APAR-DNS servers
control the address resolution for any domain. (Ans. 15.) The Examiner
also finds that McCanne discloses that an APAR-DNS server determines
whether or not a client is authorized. (Id.) Further, the Examiner finds that
McCanne discloses that: (1) if the client is authorized, the APAR-DNS
server responds to the request with a resolution of the domain name; and (2)
if the client does not appear to be authorized, the APAR-DNS server
resolves the request to an address that is ignored or outside the domain. (Id.)
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II. ISSUE
Has Appellant shown that the Examiner erred in finding that
McCanne anticipates independent claim 1? In particular, the issue turns on
whether McCanne teaches “[an] access controller…configured to control
resolving of domain name information for both server addresses within said
domain or accessible via said domain, and server addresses that are not
within said domain or accessible via said domain,” as recited in independent
claim 1.

III. FINDINGS OF FACT
The following Findings of Fact (“FF”) are shown by a preponderance
of the evidence.
McCanne
1. McCanne generally relates to efficiently transmitting data over
the Internet and, in particular, to distributing broadcast data from content
producers to multiple recipients. (Col. 1, ll. 31-36.)
2. McCanne discloses that the APAR-DNS server is configured
with one or more APAR anycast addresses and, therefore, appears as a name
server on multiple content distribution networks (“CDNs”). (Col. 16, ll. 38-
40.) Put another way, the APAR-DNS server is a single piece of hardware
that is capable of supporting multiple virtual CDNs that are owned by third
party content service providers or other Internet service providers (“ISPs”).
(Id. at ll. 40-46.)
3. McCanne discloses utilizing the APAR-DNS routing scheme to
limit requests from unauthorized clients. (Col. 31, ll. 11-12.) If the client
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appears to be authorized, McCanne discloses that “the APAR-DNS server
responds to the request with a resolution of the domain name to an IP
address and a port number that…is a port that the content server will connect
over.” (Id. at ll. 15-20.) If the client does not appear to be authorized,
McCanne discloses that “the APAR-DNS server will return an IP address
and port number of a port that the content server ignores.” (Id. at ll. 20-23.)

IV. ANALYSIS
35 U.S.C. § 102(e) Rejection
Claim 1
Independent claim 1 recites, in relevant part, “[an] access
controller…configured to control resolving of domain name information for
both server addresses within said domain or accessible via said domain, and
server addresses that are not within said domain or accessible via said
domain.”
As detailed in the Findings of Fact section above, McCanne discloses
distributing broadcast data from content producers to multiple recipients.
(FF 1.) In particular, McCanne discloses an APAR-DNS server that
supports multiple CDNs, which are owned by either third party content
service providers or other ISPs. (FF 2.) Further, McCanne discloses that:
(1) if the APAR-DNS server determines that a client making a request is
authorized, the APAR-DNS server responds with a resolution of the domain
name to an IP address and a corresponding port number the content server
will connect over; and (2) if the APAR-DNS server determines that the
client making the request is not authorized, the APAR-DNS server responds
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with a resolution of the domain to an IP address and a corresponding port
number that the content server ignores. (FF 3.)
We find that McCanne’s disclosure teaches an APAR-DNS server that
supports a plurality of CDNs and resolves a request from a client for a
domain name depending on whether or not the client making the request is
authorized. In particular, when the APAR-DNS server determines that the
requesting client is unauthorized, we find that McCanne’s disclosure teaches
resolving the domain name by returning both an IP address and
corresponding port number that a first CDN ignores. Further, we find that
McCanne’s disclosure of returning both an IP address and corresponding
port number that the first CDN ignores amounts to resolving a domain name
that is outside or not accessible via the first CDN. Consequently, by
allowing the APAR-DNS server to resolve a domain name outside the first
CDN, we find that McCanne’s disclosure teaches accessing another domain
name via one of the other plurality of CDNs (outside of the first CDN),
which the APAR-DNS server also supports. Thus, we find that McCanne’s
disclosure teaches the disputed limitation.
We are not persuaded by Appellant’s argument that McCanne only
discloses that the port number of a port is ignored and there is no evidence
that the IP address is outside the domain. (Reply Br. 8.) Appellant has not
demonstrated error in the Examiner's position. As set forth above, we find
more than adequate support in McCanne’s disclosure for the Examiner’s
findings. Consequently, we find that the evidence supports the Examiner’s
position.
Alternatively, we note that the claimed limitation is directed to a “[an]
access controller…configured to control resolving of domain name
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information for both server addresses within said domain or accessible via
said domain, and server addresses that are not within said domain or
accessible via said domain.” (Claims App'x) (emphasis added.) We find
that the cited recitation merely requires that the access controller be capable
of resolving domain name information for server addresses within or
accessible via a domain, and not within or accessible via the domain. Such
recitation does not require, however, that the access controller actually
resolve domain name information for server addresses within or accessible
via a domain, and not within or accessible via the domain. This recitation is
a statement of intended use, which is fully met by an anticipating prior art
structure that is capable of performing the recited functions. It has been held
that a statement of intended use in an apparatus claim cannot distinguish
over a prior art apparatus that discloses all the recited limitations and is
capable of performing the recited function. See In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997). We note that “[a]n intended use or purpose
usually will not limit the scope of the claim because such statements usually
do no more than define a context in which the invention operates.”
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003). Although ''[s]uch statements often . . .
appear in the claim's preamble,'' In re Stencel, 828 F.2d 751, 754 (Fed. Cir.
1987), a statement of intended use or purpose can appear elsewhere in a
claim. Id. We are therefore satisfied that McCanne discloses an equivalent
structure that resolves domain name information for server addresses within
or accessible via a domain, and not within or accessible via the domain.
(FFs 1-3.) It follows that Appellant has not shown that the Examiner erred
in finding that McCanne anticipates independent claim 1.
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Claims 2, 3, 5, 11, 13, 14, 16 through 21, and 26
Appellant does not provide separate and distinct arguments for
patentability with respect to independent claims 13, 17, and 18, and
dependent claims 2, 3, 5, 11, 14, 16, 19 through 21, and 26. Therefore, we
select independent claim 1 as representative of the cited claims.
Consequently, Appellant has not shown error in the Examiner’s rejection of
independent claims 13, 17, and 18, and dependent claims 2, 3, 5, 11, 14, 16,
19 through 21, and 26, for the reasons set forth in our discussion of
independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
35 U.S.C. § 103(a) Rejections
Claims 6 through 10, 15, and 22 through 25
Appellant offers the same argument set forth in response to the
anticipation rejection of independent claim 1 to rebut the obviousness
rejection of dependent claims 6 through 10, 15, and 22 through 25. (App.
Br. 20-28.) We have already addressed this argument in our discussion of
independent claim 1, and we found it unpersuasive. Consequently,
Appellant has not shown that the Examiner erred in concluding that
dependent claims 6, 7, 22, and 23 are unpatentable over the combination of
McCanne and Roos, and dependent claims 8 through 10, 15, 24, and 25 are
unpatentable over the combination of McCanne and Westman.

V. CONCLUSIONS OF LAW
1. Appellant has not shown that the Examiner erred in rejecting
claims 1 through 3, 5, 11, 13, 14, 16 through 21, and 26 as being anticipated
under 35 U.S.C. § 102(b).
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2. Appellant has not shown that the Examiner erred in rejecting
claims 6 through 10, 15, and 22 through 25 as being unpatentable under
35 U.S.C. § 103(a).

VI. DECISION
1. We affirm the Examiner’s decision to reject claims 1 through 3,
5, 11, 13, 14, 16 through 21, and 26 as being anticipated under 35 U.S.C.
§ 102(b).
2. We affirm the Examiner’s decision to reject claims 6 through
10, 15, and 22 through 25 as being unpatentable under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

Vsh

MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C
ONE FINANCIAL CENTER
BOSTON, MA 02111