Ex Parte 6779118 et al

Patent Trial and Appeal Board

Feb 20, 2015

95002035 (P.T.A.B. Feb. 20, 2015)

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.
90/012,342 06/08/2012 6779118 R1341006-D 5786
40401 7590 02/20/2015
Hershkovitz and Associates, PLLC
2845 Duke Street
Alexandria, VA 22314
EXAMINER
WORJLOH, JALATEE
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/20/2015 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
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.
95/002,035 09/12/2012 6779118 RI1341006F 1745
40401 7590 02/20/2015
Hershkovitz and Associates, PLLC
2845 Duke Street
Alexandria, VA 22314
EXAMINER
WORJLOH, JALATEE
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/20/2015 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
____________

CISCO SYSTEMS, INC.
Requester

v.

LINKSMART WIRELESS TECHNOLOGY, LLC
Patent Owner
____________

Appeal 2014-007780
Reexamination Control Nos. 95/002,035 and 90/012,342 (merged)
Patent 6,779,118 B1
Technology Center 3900
____________

Before JAMES T. MOORE, MARC S. HOFF, and
DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2014-007780
Reexamination Control Nos. 95/002,035
and 90/012,342 (merged)
Patent 6,779,118 B1

2
Patent Owner, Linksmart Wireless Technology, LLC, appeals under
U.S.C. §§ 134 and 315 (2002) the Examiner’s decision to adopt Requester’s
rejection of claims 16-24, 26, 27, 36-43, and 68-90
1
under certain grounds,
as discussed below. An oral hearing was conducted with the Patent Owner
on January 28, 2015. We have jurisdiction under 35 U.S.C. §§ 134 and 315
(2002).
We AFFIRM.

STATEMENT OF THE CASE
This proceeding arose from a request by a Third Party Requester for
an ex parte reexamination (90/009,301) and from a request by Cisco
Systems, Inc. for an inter parte reexamination (95/002,035) of U.S. Patent
6,779,118 B1, entitled “User Specific Automatic Data Redirection System,”
and issued to Ikudome et al. on August 17, 2004 (the “’118 patent”). A
decision sua sponte merged both proceedings into this single inter parte
reexamination proceeding. See Decision Sua Sponte Merging
Reexamination Proceedings, mailed March 20, 2013.
The ’118 patent describes a system that contains a redirection server
that uses a rule set to control data passing between a user and a public
network.
Claim 16, on appeal, was not amended during reexamination and
reads as follows:

1
While claims 2-7, 9-14, 16-24, and 26-90 are subject to reexamination in
the merged proceedings, only the claims listed are subject to the present
appeal. App. Br. 3.
Appeal 2014-007780
Reexamination Control Nos. 95/002,035
and 90/012,342 (merged)
Patent 6,779,118 B1

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16. A system comprising:
a redirection server programmed with a user’s rule
set correlated to a temporarily assigned network address;
wherein the rule set contains at least one of a
plurality of functions used to control data passing
between the user and a public network;
wherein the redirection server is configured to allow
automated modification of at least a portion of the rule
set correlated to the temporarily assigned network
address;
wherein the redirection server is configured to allow
automated modification of at least a portion of the rule
set as a function of some combination of time, data
transmitted to or from the user, or location the user
accesses; and
wherein the redirection server is configured to allow
modification of at least a portion of the rule set as a
function of time.

STATEMENT OF THE REJECTIONS
Requester proposes rejections of the claims over the following prior
art references:

Fortinsky US 5,815,574 Sept. 29, 1998
Wong US 5,835,727 Nov. 10, 1998
Radia US 5,848,233 Dec. 8, 1998
Willens US 5,889,958 March 30, 1999
Stockwell US 5,950,195 Sept. 7, 1999
He US 6,088,451 July 11, 2000
Coss US 6,170,012 B1 Jan. 2, 2001
Zenchelsky US 6,233,686 B1 May 15, 2001
Ikudome US 6,779,118 B1 Aug. 17, 2004

C. Rigney, et al., “Remote Authentication Dial In User Service (RADIUS),”
https://tools.ietf.org/html/rfc2138 (last accessed January 20, 2012).
(Hereinafter “RFC2138).
Appeal 2014-007780
Reexamination Control Nos. 95/002,035
and 90/012,342 (merged)
Patent 6,779,118 B1

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Patent Owner appeals the Examiner’s adoption of the following
rejections:
Claims 16-18, 23, 24, 26, 36-43, 68-71, 76-84, and 86-90 under
35 U.S.C. § 103(a) as obvious over the combination of Willens, RFC2138,
and Stockwell.
Claims 16-18, 23, 24, 26, 36-43, 68-71, 76-84, and 86-90 under
35 U.S.C. § 103(a) as obvious over the combination of Willens, RFC2138,
and Ikudome (hereinafter referred to as APA).
Claims 16-24, 26, 27, 36-43, and 68-90 under 35 U.S.C. § 103(a) as
obvious over the combination of Radia, Wong, and Stockwell.
Claims 16-24 and 68-90 under 35 U.S.C. § 103(a) as obvious over the
combination of Radia, Wong, and Stockwell.
Claims 40-43 under 35 U.S.C. § 103(a) as obvious over the
combination of He, Zenchelsky, and APA.
Claims 40-43 under 35 U.S.C. § 103(a) as obvious over the
combination of He, Zenchelsky, Fortinsky, and APA.
Claims 16-24, 26, 27, 36-43, and 68-90 under 35 U.S.C. § 103(a) as
obvious over the combination of Coss and APA.
ISSUES
Did the Examiner err in finding that the combination of Radia, Wong,
and Stockwell teaches or suggests “the redirection server is configured to
allow automated modification,” as recited in independent claims 16-23, 36-
39, and 68?
Appeal 2014-007780
Reexamination Control Nos. 95/002,035
and 90/012,342 (merged)
Patent 6,779,118 B1

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Did the Examiner err in finding that the combination of Radia, Wong,
and Stockwell teaches or suggests “instructions to the redirection sever to
modify the rule set are received by . . . the redirection server,” as recited in
dependent claim 24, or “receiving instructions by the redirection server to
modify at least a portion of the user’s rule set,” as recited in independent
claim 83?
Did the Examiner err in combining Radia, Wong, and Stockwell?

ANALYSIS

Claims 16-23, 36-39, and 68-82
Patent Owner argues that the rejection of claims 16-23, 36-39, and 68-
82 is in error because the Examiner has interpreted the limitation
“configured to allow modification,” as not requiring the redirection server to
be used to perform the modification. App. Br. 13-14; Reb. Br. 10-12.
Patent Owner contends that the correct interpretation, according to the
Specification and the claims, requires the modification to be performed by
the redirection server. App. Br. 14; Reb. Br. 10. Therefore, based on the
Examiner’s interpretation, Patent Owner contends that the combination of
Radia, Wong, and Stockwell does not teach the disputed limitation. App.
Br. 14; Reb. Br. 10. We disagree.
Each of independent claims 16-23, 36-39, and 68 recite the following
full limitation “the redirection server is configured to allow automated
modification of at least a portion of the rule set.” The Examiner finds
(Ans. 10-11) and Requester agrees (3PR Resp. Br. 6) that this limitation
Appeal 2014-007780
Reexamination Control Nos. 95/002,035
and 90/012,342 (merged)
Patent 6,779,118 B1

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should not be so narrowly interpreted as requiring the redirection server to
perform the actual modification. The Examiner (Ans. 11) and Requester
(3PR Resp. Br. 6) both cite to a portion of Patent Owner’s Specification that
supports a finding that Patent Owner contemplated something other than the
redirection server performing the modification. Specifically, the Examiner
(Ans. 11) and Requester (3PR Resp. Br. 6) cited the following from Patent
Owner’s Specification:
In yet another embodiment, signals from the Internet 110 side of
redirection server 208 can be used to modify rule sets being used by
the redirection server . . . Of course, the type of modification an
outside server can make to a rule set on the redirection server is not
limited to deleting a redirection rule, but can include any other type of
modification to the rule set that is supported by the redirection server
as discussed above.
’118 Patent, col. 7, l. 58 – col. 8, l. 11.
Patent Owner argues that the Examiner and Requester take this
citation out of context. App. Br. 15; Reb. Br. 11. Specifically, Patent
Owner contends that the following citation proves that it is the redirection
server that causes the modification, not the outside server (App. Br. 15):
“. . . the web site then sends an authorization to the redirection that
deletes the redirection to the questionnaire web site from the rule set
for the user who successfully completed the questionnaire.”
’118 Patent, col. 8, l. 3-6.
We disagree with Patent Owner. While we agree that the portion
cited by Patent Owner contemplates the redirection server deleting a portion
of the rule set, this citation does not refute the Examiner’s citation that an
outside server can also modify the rule set.
Appeal 2014-007780
Reexamination Control Nos. 95/002,035
and 90/012,342 (merged)
Patent 6,779,118 B1

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Patent Owner also argues that it would be impossible for the rule set
to change without the redirection server being involved in the process. App.
Br. 15; Reb. Br. 11. While we agree that the redirection server is present
during the process, there is nothing in the Specification, or the claims, that
require the redirection server to be actively involved in the process.
Therefore, under the broadest reasonable interpretation consistent with
Patent Owner’s Specification, we find no error in the Examiner’s
interpretation. There is nothing in Patent Owner’s Specification or the
claims, themselves, that persuasively indicate that the redirection server
must be the component that performs the modification. Instead, as indicated
by the Examiner (Ans. 11), the claim only requires that the redirection server
“allow” the modification. Thus, we see no error in the Examiner’s
interpretation that something other than the redirection server can perform
the modification to the rule set.
Additionally, Patent Owner argues that Radia fails to teach
modification and instead teaches removing and replacing a rule set. App.
Br. 13; Reb. Br. 11. For instance, Patent Owner contends that when a filter
has outlived its usefulness a new filter is created and the new filter is
configured in the router. App. Br. 16. Again, we disagree with Patent
Owner’s position.
The Examiner finds, and Requester agrees, that Radia teaches a
system wherein a router receives instructions to modify filtering rules by
reconfiguring the router. Ans. 11 (citing Radia, col. 6, l. 66-col. 7, l. 8).
Thus, we agree that the router is not just configured, but reconfigured.
Therefore, we do not find Patent Owner’s arguments to be persuasive.
Appeal 2014-007780
Reexamination Control Nos. 95/002,035
and 90/012,342 (merged)
Patent 6,779,118 B1

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Claims 24, 26, 40-43, and 83-90
Patent Owner argues that even if the Examiner’s interpretation of the
limitation listed above was correct, that interpretation would only apply to
those claims. App. Br. 14. Patent Owner contends that claims 24, 26, 40-
43, and 83-90 recite a different limitation that would, in fact. require the
redirection server to perform the modification step and the combination of
references fails to teach that limitation. Id. We disagree.
Claim 24 recites “instructions to the redirection server to modify the
rule set are received by . . . the redirection server,” and claim 83 recites
“receiving instructions by the redirection server to modify at least a portion
of the user’s rule set.” Claims 26 and 40-43 are dependent upon cancelled
independent claim 25 which, before cancelled, recited similar language to
claim 83.
2
The Examiner interprets (Ans. 10-11), and the Requester agrees
(3PR Resp. Br. 6-7), that these claims only require the redirection server
receive the instructions to modify the rule set and do not necessarily require
the redirection server to perform the modification. We are not persuasively
pointed to error with the Examiner’s position, as there is nothing in the
claim that indicates the redirection server must perform the actual
modification to the rule set.
Additionally, the Examiner finds that, even if the claims are
interpreted as Patent Owner contends they should be, the references read on
the claims. Ans. 11. Specifically, the Examiner finds that Radia teaches a

2
In the event of further prosecution, we recommend the Examiner and
Patent Owner address the cancellation of independent claim 25 and its non-
cancelled dependent claims.
Appeal 2014-007780
Reexamination Control Nos. 95/002,035
and 90/012,342 (merged)
Patent 6,779,118 B1

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system wherein an ANCS sends instructions to a router to modify its
filtering rules. Id. The Examiner finds that when the router and ANCS are
combined to form the redirection server, the combination meets Patent
Owner’s interpretation of the disputed claim limitations. Id.
Patent Owner argues that it would not make sense to combine the
router and the ANCS of Radia into one because each of these components
has its own separate and distinct functionality. App. Br. 15-16; Reb. Br. 13.
However, we agree with Requester that Radia teaches combining the ANCS
with SMS 114 and, thereby, contemplates the combination of multiple
components regardless of their functionality. 3PR Resp. Br. 9. As such, we
also agree with Requester that it would have been obvious to combine other
components within Radia’s system, as the combination is nothing more than
a design choice.
3

Additionally, Patent Owner argues that while Radia teaches that the
router can be a combination of components, Radia teaches that each of the
combined components must forward packets. Reb. Br. 12. Thus, Patent
Owner is arguing essentially that Radia teaches away from the combination
of components proposed by Requester. However, we are not pointed to, and
do not find in our review, sufficient evidence in the reference that only
allows the combination of components to be combined if they are able to
forward packets. Teaching an alternative or equivalent method does not

3
Making elements of a device integral or separable is considered to be an
obvious design choice and does not render an invention patentable. See In re
Larson, 340 F.2d 965, 968 (CCPA 1965); In re Dulberg, 289 F.2d 522, 523
(CCPA 1961).
Appeal 2014-007780
Reexamination Control Nos. 95/002,035
and 90/012,342 (merged)
Patent 6,779,118 B1

10
teach away from the use of a claimed method. See In re Dunn, 349 F.2d
433, 438 (CCPA 1965).
Combination of Radia and Stockwell
Lastly, Patent Owner contends that the combination of Stockwell and
Radia does not teach the disputed limitations addressed above. App. Br. 16-
18; Reb. Br. 13. However, as indicated above, we find that the combination
of Radia, Wong, and Stockwell does, in fact, teach the disputed limitations.
Additionally, we find that the Examiner has adopted Requester’s rejections
identifying the relevant portions of each of the references relied on
throughout the rejection. See generally Ans. 21 which incorporates the
rejections from Exhibit BB, pp. 2-47. To the extent that the Examiner and
Requester relied on the knowledge of one of ordinary skill in the art to
combine the teachings of the references, this practice is consistent with
current case law. For example, the Supreme Court explains
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this
analysis should be made explicit. See In re Kahn, 441 F.3d
977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness”). As our precedents make clear, however, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
Appeal 2014-007780
Reexamination Control Nos. 95/002,035
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Patent 6,779,118 B1

11
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
In this case, the conclusions of obviousness are clearly articulated
and based on detailed factual findings that are supported by the references of
record. See Ans. 21 which incorporates the rejections from Exhibit BB, pp.
2-47. Additionally, the reason a skilled artisan would combine the
references is provided by the Examiner. Ans. 12. For example, the
Examiner explains that it would have been obvious to combine Stockwell
and Radia in order to improve filtering capabilities of routers. Ans. 12. We
find no error in the Examiner’s reasoning, and Appellants have failed to
specifically address the Examiner’s findings.
Thus, for all of the reasons stated supra, we sustain the Examiner’s
adoption of Requester’s rejection of claims 16-24, 26, 27, 36-43, and 68-90
under 35 U.S.C. § 103(a) as obvious over Radia, Wong, and Stockwell.

Claims 16-24, 26, 27, 36-43, and 68-90 - Other proposed rejections
Our conclusions above address the patentability of all of the claims on
appeal and, thus, render it unnecessary to reach the propriety of the
Examiner’s decision to adopt the proposed rejections of the same claims on
a different basis. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009).
As such, we need not reach the other proposed and adopted rejections listed
above.
CONCLUSION
Appeal 2014-007780
Reexamination Control Nos. 95/002,035
and 90/012,342 (merged)
Patent 6,779,118 B1

12
The Examiner did not err in finding that the combination of Radia,
Wong, and Stockwell teaches or suggests “the redirection server is
configured to allow automated modification,” as recited in independent
claims 16-23, 36-39, and 68.
The Examiner did not err in finding that the combination of Radia,
Wong, and Stockwell teaches or suggests “instructions to the redirection
sever to modify the rule set are received by . . . the redirection server,” as
recited in dependent claim 24, or “receiving instructions by the redirection
server to modify at least a portion of the user’s rule set,” as recited in
independent claim 83.
The Examiner did not err in combining Radia, Wong, and Stockwell.
DECISION
We affirm the Examiner’s decision to adopt the rejection of
claims 16-24, 26, 27, 36-43, and 68-90 (all of the claims subject to this
appeal) under 35 U.S.C. § 103(a) as obvious over the combination of Radia,
Wong, and Stockwell.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED

Appeal 2014-007780
Reexamination Control Nos. 95/002,035
and 90/012,342 (merged)
Patent 6,779,118 B1

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Hershkovitz & Associates, PLLC
2845 Duke Street
Alexandria, VA 22314

Third Party Requester:

Haynes and Boone, LLP
2323 Victory Avenue, Suite 700
Dallas, TX 75219

James J. Wong
2108 Gossamer Avenue
Redwood City, CA 94065