Ex Parte Ben

Board of Patent Appeals and Interferences

Feb 26, 2010

10011046 (B.P.A.I. Feb. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY P. BEN
____________

Appeal 2009-005559
Application 10/011,046
Technology Center 2400
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Decided: February 26, 2010
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Before JOSEPH F. RUGGIERO, MARC. S HOFF, and KARL D.
EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1, 3-14, and 16-22, the only claims pending. (App. Br. 3).1 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant invented a method to provide broadband services by
automatically configuring broadband communication devices, such as
routers or modems. Using a dial-up modem, a user contacts a server, which
determines broadband service providers for the user, and transfers a list of
such providers to the user. From the list, a user selects a provider. The
server determines broadband configuration parameters for the broadband
communication device. The server links to the selected service provider to
obtain the configuration parameters and transfers the parameters over the
dial-up connection. (Abstract; Spec. 8:11-19; Fig.1.)
Exemplary claims 1 and 18 follow:
1. A method of provisioning broadband service, said method
comprising:
receiving a request from a node at a remote location via a dial-up
communication link, said request for establishing broadband access for said
node and for automatically configuring a router of said node, said request
comprising a serial number of said router;
determining broadband service providers for said node, using said
serial number of said router provided in said request;
transferring a list of said broadband service providers to said node via
said dial-up communication link;
receiving a selection from said node of a broadband service provider
from said list via said dial-up communication link;
determining configuration parameters by linking to a second node for

1 Appellant’s Brief (“App. Br.”) and Reply Brief (“Reply Br.”), and the
Examiner’s Answer (“Ans.”), are referenced in this opinion.
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said selected broadband service provider;
transferring said configuration parameters to said node; and
automatically configuring said router with said transferred
configuration parameters.

18. A method of configuring a router, said method comprising:
issuing a prompt for input at a first node, said prompt for input
including a request for a serial number of said router, said input allowing a
server to make a determination of a list of broadband service providers in a
user's geographic region, wherein said first node is a point- of-purchase of
said router;
said first node displaying said list of broadband service providers;
receiving a selection of a broadband service provider of said list;
determining configuration parameters based on said selection of said
broadband service provider;
said first node receiving said configuration parameters; and
automatically configuring said router at said first node using said
received configuration parameters.

The Examiner relies on the following prior art references:
Dieterman US 6,560,704 B2 May 6, 2003
Wang US 6,636,505 B1 Oct. 21, 2003
Slaby US 6,938,089 B1 Aug. 30, 2005

The Examiner rejected the claims as follows:
Claims 1, 5-14, 16, and 17 stand rejected as obvious under 35 U.S.C.
§ 103(a) based on Wang and Slaby; and
Claims 3, 4, and 18-22 stand rejected as obvious under 35 U.S.C. §
103(a) based on Wang, Slaby, and Dieterman.

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ISSUES
Appellant contends (App. Br. 8-15) that the Examiner erred in
combining Wang and Slaby to satisfy the limitations of claim 1. Appellant’s
contentions raise the following issue: Did Appellant demonstrate that the
Examiner erred in combining Wang and Slaby to suggest “establishing
broadband access,” “determining broadband service providers,” and
“determining configuration parameters by linking to a second node,” as set
forth in claim 1?
Appellant contends (App. Br. 18-19) that the Examiner erred in
combining Wang, Slaby, and Dieterman to satisfy the limitations of claim
18. Appellant’s contentions raise the following issue: Did Appellant
demonstrate that the Examiner erred in combining Wang, Slaby, and
Dieterman to suggest “issuing a prompt for input at a first node, said prompt
for input including a request for a serial number of said router,” as set forth
in claim 18?

FINDINGS OF FACT (FF)
Appellant’s Specification
1. Appellant refers to a “method for provisioning broadband access
service and automatically configuring a broadband communication device.”
(Spec. 4:2-3.) Appellant refers to a server as “determin[ing] a list of
broadband service providers,” (id. at 6-7), and in the same paragraph, refers
to the server as “link[ing] to the selected Internet service provider,” (id. at
11-12).
2. Appellant notes that “the type of setup information is specific to
each Internet access service provider” and further notes that “different
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providers . . . [and] [e]ven the same provider may assign different names to
the same parameter. Thus, the problem of a user selecting a service provider
is intertwined with the problem of configuring the CPNE [(i.e., customer
premises network equipment) (Spec. 1:25)].” (Spec. 2:11-19.)

Wang
3. Wang teaches a method for “automatically provisioning a
broadband communication service to a subscriber having a broadband
modem.” (Abstract.) The modem can be automatically configured by
sending configuration information over either a POTS sub-channel (i.e., dial
up) or a broadband channel. To use a service from a service provider,
virtual connection/configuration information located in a central office must
be provided from the provider to a user’s computer premises equipment
(CPE). Wang’s automatic configuration system overcomes prior art
problems by minimizing user interaction otherwise required for such
configuration. (Abstract; col. 5, l. 25 - col. 6, l. 3; Figs. 1, 2.)
4. A user seeking access to different internet service providers (ISPs)
100 uses the broadband access network 60 represented in Figure 2. Pursuant
to a user’s CPE connection to the network 60, the system automatically
configures, inter alia, the CPE and a DSLAM 90 (Digital Subscriber Line
Access Multiplexer) located at the network central office (CO) site.
Pursuant to the configuration, the system sends a user’s profile and other
connection information to the user’s CPE with a list of registered internet
service providers 100 (ISPs) available to the user for selection. This
selection list of the ISPs appears as icons or otherwise. (Abstract; col. 1, ll.
14-16, 46-49; col. 7, l. 60 to col. 8, l. 35; col. 9, l. 15 to col. 10, l. 60; Fig.2.)
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Figure 6 represents a selection list of such ISP icons: “The user need
only select the services and the selection can be multiple, for example to
have concurrent connections to different ISPs and/or corporate Intranet.”
(Col. 10, ll. 55-60.)
5. A network management system 200 employs user profiles 170 and
service profiles 160 to configure/provision the connections between the ISPs
100, DSLAMs, and CPEs 110. Physical connections occur after a user
selection of a particular ISP. (Col. 9, l. 58 to col. 10, l. 43; Fig.5.)
“The user profile 170 defines the CPE 110 characteristics (such as
which Virtual Circuit to use to get to a specific ISP). The user profile 170
does not configure a CPE 110 but defines the attribute/values needed to
configure any CPE.” (Col. 9, ll. 3-6.)
Information, such as registration information to provide the list of
available ISPs, is provided over Integrated Local Management Interfaces
“ILMI interfaces.” (Col. 1, l. 25; col. 10, ll. 14-16.) The ILMI allows for
automatic provisioning, connecting a user to a specific DSLAM 90 and
passing configuration information from the carrier network 60 to the CPE
110. (Col. 12, ll. 1-20; Fig.8.)
The list of available service providers may be generated from
the registration information provided over the ILMI interfaces.
The details of the connection, such as VPI/VCI and the ATM
Quality of Service definition for the connection, are also passed
over the ILMI. This may be hidden from the user. The
specifics of the binding between the communication protocol
stack on the user’s computer 70 and the ATM service carried
over the ADSL connection are managed by the application
when the user selects a provider 100 from the list.
(Col. 10, ll. 14-24.)
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The remote terminal unit ATU-R generically refers to a remote
modem of the CPE. The ATU-C generically refers to the DSLAM 90 at the
central office. (Col. 6, ll. 6-12.) Several computers 260 at a home office
network connect through a hub 270 and then to the ATU-R. The ATU-R
connects to the DSLAM to establish service. (Figs. 9, 10; col. 13, ll. 63-67.)
The client PCs communicate with the ATU-R and exchange configuration
information and connection information. (Col. 17, ll. 17-24; see also col.
19-24 (disclosing particular messages between the ATU-R and PCs).)
The system allows for automatic reconfiguration. (Col. 12, ll. 58-64.)
The complex protocol information, including configuration information,
resides in the ATU-R, and is hidden from the client PC. (Col. 15, ll. 29-45.)

Slaby
6. Slaby discloses a router which automatically sends its serial
number to one or more service providers. This sending causes configuration
data to be automatically sent to the router for automatic connection to a
service provider. The router may enable a user to select one or more service
providers. The user, who has purchased the router, either registers the serial
number at the time of purchase and selects a service, or selects a service and
registers on-line at a later time. In both situations, the configuration data is
automatically downloaded, and the router connected, as described above.
The down-load and configuration setup can occur over any type of
connection, including analog, or ISDN (integrated services digital network).
ISDN provides a high data rate. (Col. 1, ll. 17-20; col. 4, ll. 19-63; col. 5, ll.
20-42; col. 6, ll. 4-16; Fig.3.)

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Dieterman
7. Dieterman’s system automatically configures network settings.
(Abstract.) The system identifies a telephone number dialed via a modem by
a user wishing to connect to an ISP (internet service provider). The user
dials a number to a POP (Point of Presence) owned or leased by the ISP.
POPs are hardware facilities through which a user can access the internet.
Expanding ISPs can lease POPs from other commercial providers to avoid
the expense of maintaining POP facilities, thereby allowing a traveling user
to dial a local number to a POP (to avoid extra telephone charges). (Col. 1,
ll. 13-49.)
8. Typically, POP local telephone numbers are established when a
user’s account is established. However, new POP telephone numbers may
be required as the ISP expands to new localities or particular POPs develop
excess capacity, thereby requiring the user’s configuration software to be
updated. (Col. 1, l. 50 to col. 2, l. 12.)
9. Dieterman’s system overcomes the prior art problem of
configuration updates by automatically pushing them to the user. After a
user dials a POP or other ISP number, Dieterman’s ISP determines an
optimized list of POPs based on the caller’s origination number via caller ID
(i.e., with cost optimization based inter alia on geographical relationships to
telephone prefixes), and then pushes two POPs and associated configuration
information to the user. If caller ID is not received, the user may be
prompted to enter the originating telephone number. In one embodiment,
users can select a number to a POP, while in others, the system
automatically selects the optimized POP or guides the user to select a certain
POP. (Col. 3, ll. 6-34; col. 4, ll. 8-67.col. 5, ll. 6-14; Figs. 2, 5.)
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PRINCIPLES OF LAW
The Examiner bears an initial burden of factually supporting any
rejection. Appellants may rebut the Examiner’s findings with opposing
evidence or argument. See In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992).
Appellant has the burden on appeal to present arguments showing reversible
error by the Examiner in maintaining the rejection. See 37 C.F.R.
§ 41.37(c)(1)(vii).
“[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.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
(citation omitted). Obviousness is determined on the basis of the evidence
as a whole and the relative persuasiveness of the arguments. See Oetiker,
977 F.2d at 1445.

ANALYSIS
Appellant’s arguments against the obviousness rejection based on
Wang and Slaby focus on claims 1 and 12 with particular emphasis on claim
1. (App. Br. 9-15.) Accordingly, independent claim 1 is selected as
representative of claims 1, 5-14, 16, and 17.2
Appellant asserts that the Examiner relied on two distinct
embodiments (i.e., Figs. 2 and 6) of Wang to support the rejection. This
assertion is without merit. (App. Br. 9-10.) Notwithstanding Appellant’s
arguments to the contrary, Figure 6 represents of list of ISPs presented to a

2 See 37 C.F.R. § 41.37(c)(1)(vii).
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user who seeks access thereto via the network represented in Figure 2. (FF
4.)
Appellant’s arguments show agreement with the finding that the
network connections 60 provide for automatic connection to the various
ISPs. (App. Br. 10; FF 3, 4.) Appellant’s argument spanning the last two
paragraphs on page 10 of the Brief purport to contrast claims 1 and 12 with
Wang’s teachings, but the repetition of the first three steps of Claim 1, with
multiple underlinings and emphasis by bolding of various elements, does not
demonstrate, much less explain, how Wang fails to satisfy claims 1 and 12.
Appellant’s explanation on page 11 also does not demonstrate any
specific error. Apparently, Appellant argues that in Wang the ISPs are
selected after the network 60 is selected, but again, this argument does not
explain why Wang (as combined with Slaby) does not satisfy claim 1. For
example, claim 1 requires “receiving a request from a node at a remote
location . . . for establishing broadband access.” Establishing a broadband
network connection 60 for a CPE in Wang reasonably satisfies this step. (FF
3, 4.)
Claim 1 also recites “determining broadband service providers for
said node,” and “transferring a list of said broadband service providers to
said node.” Determining and transferring a list of ISPs as indicated in
Wang’s Figure 6, as the Examiner found, reasonably satisfies this step. (FF
4, Ans. 4.) Claim 1 does not preclude the recited “list of broadband service
providers” from being a list of ISPs such as those listed in Wang’s Figure 6:
“AOL premium, 3Com premium, and 3Com Westboro.” (Ans. 4.) Further,
the ISPs each have specific network connections, so that selection thereof
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amounts to selecting a broadband service provider (and one or more can be
selected). (See FF 4, 5.)
In support of this finding, Appellant’s Specification refers to internet
service providers as broadband access providers. (See FF 1.) Appellant also
indicates that even within one service provider, configuration problems
arise. (See FF 2.) Thus, in light of the Specification, Appellant’s claim 1
reasonably reads on Wang’s system which provides broadband access (via
network 60) and determines broadband service providers (the ISPs with
specific network connections).
Appellant also argues that Wang does not teach or suggest “a teaching
regarding linking to a second node for the selected broadband service
provider to determine configuration parameters.” (App. Br. 11.) This
argument also does not demonstrate error. It fails to explain why any of
several nodes in Wang’s system do not constitute a second node for the
provider.
For example, any one of Wang’s several PCs in a CPE home network
satisfies the first node in claim 1, and any upstream nodes, such as an ATR-
R and/or hub servicing those different PC nodes, satisfy the second node.
To connect to an ISP provider, the PCs link through the hub to the ATU-R
(second node) to determine configuration information for a selected ISP. In
other words, Wang teaches that at least in some embodiments,
configuration/protocol information resides in the ATU-R (rendering the
information transparent to the PCs). (FF 5).
As another example, even if the configuration parameters are stored in
a PC (first node), “determining configuration parameters by linking to a
second node for said selected broadband service provider,” as required by
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claim 1, is broad enough to encompass gathering the configuration
parameters from the PC because this gathering is triggered by a user
prompting a connection link to a DSLAM (second node) at the central office
associated with (said selected) ISP. (See FF 3-5.) 3 In other words, claim 1
does not require the configuration parameters to be stored at the second
node.
As a final example, Wang discloses automatic re-configuration. (FF
5.) Re-configuration implies re-determining configuration information (i.e.,
after the claim 1 steps of transferring a list of providers and receiving a
selection). As such, to determine configuration parameters as required by
claim 1, Wang at least suggests re-configuration for any of several upstream
second nodes for a (previously) selected provider, with such second nodes
including any of the various user and service profile data bases, and/or
DSLAMS (which nodes store automatic configuration information for
linking from a user (CPE or PC) to the various ISPs). (See FF 4, 5.)
Appellant also argues that “the teachings of Slaby are not directed
toward establishing broadband access, but are instead toward establishing
access to a service via a broadband network.” (App. Br. 12.) This argument
is not persuasive for at least two reasons. First, the Examiner did not
employ Slaby to teach providing access to a broadband network. Rather, the
Examiner employed Slaby to teach automatic configuration of a router by
sending its serial number. (Ans. 4-5.) Second, Appellant does not explain
how Slaby’s providing access to a high data rate service differs from
providing broadband access. (See FF 6.) Slaby’s teachings, directed toward

3 Claim 1 also recites transferring said configuration parameters to said
node. The term “said node” does not specify which node, the first or second.
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providing selection of a service provider over a high data rate (ISDN) access
line, reasonably correspond to providing selected broadband access. Slaby
further teaches that the router can be employed to allow a user to select from
a list of available service providers (and a user can do so on-line). (FF 6.)
Appellant also argues that the combination of Wang and Slaby would
destroy the principle of operation of both references and also render both
unsatisfactory for their intended purpose. (App. Br. 13.) Appellant bases
this argument on the contention that neither reference teaches determining,
providing, or selecting broadband service providers. Based on the foregoing
discussion, this argument lacks merit. Both references teach selecting
service providers (i.e., selecting includes, implies, or suggests, determining
and providing). Also, as discussed supra, the Examiner employed Slaby to
teach providing a router serial number to obtain automatic service access.
(Ans. 4-5.) As such, contrary to Appellant’s related arguments (App. Br. 14-
15), the record establishes an apparent reason (automatic service access via
the router serial number) to combine the elements in the fashioned claimed.
Appellant’s arguments against the obviousness rejection based on
Wang, Slaby, and Dieterman create two claim groupings: Claims 3 and 4;
and Claims 18-22. (App. Br. 16-20.) Accordingly, dependent claim 3 and
independent claim 18 are selected as representative of the two groups.
With respect to claim 3, Appellant’s arguments rely on those
presented against the rejection of claim 1. (App. Br. 16-17.) Based on the
foregoing discussion of claim 1, these arguments do not demonstrate error in
the rejection of claims 3 or 4, which fall therewith.
With respect to claim 18, Appellant repeats the language of claim 18,
underlines certain claim elements, and asserts error without a sufficient
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explanation to support the assertions. (App. Br. 18-19.) These claim
recitations coupled with denials do not meet the burden on appeal of
articulating why the Examiner’s position lacks a foundation.
Appellant does provide some explanation for asserting error as to one
clause in claim 18: “Appellant understands Dieterman to teach requesting or
extracting a telephone number for determination of a configuration setting . .
. , this is very different from a ‘. . . prompt for input including a request for a
serial number of said router, said input allowing a server to make a
determination of a list of broadband service providers in a user’s geographic
region’, as claimed.” (App. Br. 19.) The argument is not persuasive.
As the Examiner reasoned, Dieterman teaches a prompt for input
including a request for a user’s telephone number. The prompt allows a
server to provide a list of optimal POPs in a specific geographic region.
(Ans. 10; FF 7-9.) POPs reasonably suggest, or correspond to, different
ISPs or broadband service providers, especially since Dieterman teaches that
ISPs lease POPs from other providers to provide and expand service to
different areas. (In addition, different vendor POPs provide varying prices
and services.) (See FF 7-9.) In any case, Wang’s system also provides
automatic ISP lists to users requesting services. (FF 3, 4.) Slaby teaches
providing a router serial number to facilitate automatic connection to a
selectable service. (FF 6.) Each type of number, serial and telephone,
reasonably identifies a purchaser of services and facilitates automatic
connection.
Thus, a “mere substitution,” KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 416 (2007) (citation omitted), of Slaby’s serial number for Dieterman’s
telephone number, produces the claimed invention and yields no more than a
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predictable result of automatic connection, list generation, and consumer
identification, based on a prompt for an identifying number. “[W]hen . . .
the prior art . . . is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result.” Id. As such, Appellant’s have not demonstrated error in the
rejection of claim 18, or of claims 19-22, which fall therewith. In re
Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).

CONCLUSION
Appellant did not demonstrate that the Examiner erred in combining
Wang and Slaby to suggest “establishing broadband access,” “determining
broadband service providers,” and “determining configuration parameters by
linking to a second node,” as set forth in claim 1. Appellant did not
demonstrate that the Examiner erred in combining Wang, Slaby, and
Dieterman to suggest “issuing a prompt for input at a first node, said prompt
for input including a request for a serial number of said router,” as set forth
in claim 18.

DECISION
We affirm the Examiner's decision rejecting claims 1, 3-14, and 16-
22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136. See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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