Ex Parte Bozionek et al

Patent Trial and Appeal Board

Sep 16, 2013

10525778 (P.T.A.B. Sep. 16, 2013)

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.
10/525,778 02/28/2005 Bruno Bozionek 2002P10504WOUS 8327
7590 09/16/2013
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
SMITH, JOSHUA Y
ART UNIT PAPER NUMBER
2477
MAIL DATE DELIVERY MODE
09/16/2013 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 BRUNO BOZIONEK, DIETER HEMKEMEYER,
and RAINER ZIMMERMANN
____________

Appeal 2011-009357
Application 10/525,778
Technology Center 2400
____________

Before JOHN A. JEFFERY, BARBARA A. BENOIT, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

BENOIT, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 33-51, which constitute all the claims pending in the application.
Claims 1-32 have been canceled. App. Br. 1. We have jurisdiction under 35
U.S.C. § 6(b), and we heard the appeal on September 5, 2013.
We affirm.

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STATEMENT OF THE CASE
Appellants’ invention relates to forwarding signaling messages and
corresponding components where a protocol conversion is made only if
necessary. See generally Abstract, Title, Fig. 1. Claims 33 and 45 are
illustrative and read as follows, with key limitations emphasized:
33. A method for forwarding at least one signaling
message with a network access unit of a third network, the at
least one signaling message being from an originating unit in a
first network, the at least one signaling message being intended
for a destination unit in a second network, the originating unit
supporting a first signaling protocol and the destination unit
supporting a second signaling protocol, the third network
connecting the first network to the second network, the method
comprising:
transmitting a signaling message from the originating
unit to the network access unit by tunneling via the third
network, the signaling message comprising destination datum
identifying the destination unit;
determining that the signaling message is intended for
the destination unit via the network access unit assessing the
destination datum;
converting the signaling message into the second
signaling protocol if the second signaling protocol is different
from the first signaling protocol and transmitting the converted
signaling message such that the converted signaling message is
sent to the destination unit; and
forwarding the signaling message without converting the
signaling message to another signaling protocol if the first and
second signaling protocols are identical.
45. A network access device for a third network, the
network access device for transmitting a signaling message
having a first signaling protocol received from a first device in
a first network to a second device in a second network
comprising:
a protocol conversion device converting the signaling
message received from the first device to a converted signaling
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message having a second signaling protocol that is different
from the first signaling protocol if the second device does not
support the first signaling protocol, the network access device
transmitting the converted signaling message to the second
device.

The Rejections
The Examiner rejected claims 45 and 46 under 35 U.S.C. § 102(b) as
anticipated by Raffali-Schreinemachers (US 5,740,374; issued Apr. 14,
1998). Ans. 3-5.
The Examiner rejected claims 33-35, 37, 39-44, and 47-51 as
unpatentable over Raffali-Schreinemachers and Bell (US 6,229,818 B1;
issued May 9, 2001). Ans. 6-21.
The Examiner rejected claim 36 as unpatentable over Raffali-
Schreinemachers, Bell, and Ould-Brahim (US 7,274,704 B1; filed July 12,
2001). Ans. 21-22.
The Examiner rejected claim 38 as unpatentable over Raffali-
Schreinemachers, Bell, and Nilsen (US 7,136,372 B1; filed May 1, 2000).
Ans. 23.
THE ANTICIPATION REJECTION
Regarding illustrative independent claim 45, the Examiner finds that
Raffali-Schreinemachers discloses every recited limitation in claim 45. Ans.
3-5. Raffali-Schreinemachers describes a transmission system for sub-
networks having different transmission protocols by translating control
information for a message into control information that is compatible with
the control protocol in another sub-network. See Abstract; col. 3, ll. 49-53.
Raffali-Schreinemachers provides examples in which the control
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information is represented in a header and a trailer for the message. See col.
3, ll. 49-53. Raffali-Schreinemachers describes transferring a message from
sub-network 2 to sub-network 6, during which the header and trailer of the
message are translated into the format of the protocol in sub-network 6. See
col. 4, ll. 48-66; Figs. 4, 4a; see also Ans. 4-6 (citing Figs. 4, 4a).
Appellants argue that Raffali-Schreinemachers does not convert any
portion of a signaling message into a different protocol but rather only adds
a header and trailer to permit the transport of a signaling message. App. Br.
8-9; Reply Br. 3 (indicating Raffali-Schreinemachers is directed only to
tunneling which does not convert the message body). For support,
Appellants point to their Specification description of signaling as relating to
“instructions for the exchange of information, which relates to setting up,
taking down and controlling a connection.” App. Br. 8 (citing Spec. 1:17-
18). Appellants also assert that “[a]s is well known in the art, signaling
messages ‘are composed of a header that includes a protocol discriminator, a
call reference, a message type and a message length, and a body composed
of information elements.’” App. Br. 8 (citing an undated definition of
signaling messages purportedly available at
http://www.cmf.nrl.navy.mil/ccs/project/public/sean/node32.html).
Appellants specifically argue that claim 45 requires the entire message—that
is, both payload and control portions—be converted and so Raffali-
Schreinemachers’ disclosure of converting control information is
insufficient. Reply Br. 2-3 (further relying on Appellants’ Substitute Spec.
¶¶ 0043-451 and a definition of “convert”).

1 Appellants’ Reply Brief cites ¶¶ 0053-55 in Appellants’ published
application US 2005/0259635 Al, which corresponds to ¶¶ 0043-45 in
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We agree with the Examiner’s interpretation (Ans. 4-5) that claim 45,
which recites “converting the signaling message,” does not require the entire
message—including the body or payload information—to be converted. It is
well-established that we apply the broadest reasonable interpretation to the
claim language in light of the Specification, and, in doing so, account for
any definitions presented in the Specification. See In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Doing so is appropriate
because Appellants have the opportunity to amend the claims to obtain more
precise coverage. Id.
We are not persuaded by an example of converting a message in
Appellants’ Specification (Reply Br. 2) because we decline to read
limitations into a claim from an example described in Appellants’
Specification. See id. at 1364. Further, Appellants’ proffered definition
indicates signaling messages include a header as well as a body composed of
information elements (App. Br. 8), which supports the Examiner’s
interpretation that the recited “converting a signaling message” encompasses
converting control information, albeit converting only a portion of a
signaling message.
Appellants’ argument (Reply Br. 3) that conversion requires change
from one form to another form likewise is not persuasive. Raffali-
Schreinemachers describes translating control information (that is, a header
and a trailer) of a message “into the format of the protocol in sub-network
6.” Col. 4, ll. 61-66; see also Figs. 4, 4a. Even under Appellants’ proffered
definition that conversion requires a change from one form to another,

Appellants’ Substitute Specification.
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Raffali-Schreinemachers’ translation converts the message control
information into another format, as the Examiner correctly finds (Ans. 4-6).
Appellants also argue that Raffali-Schreinemachers does not
determine the destination device for which the message is intended. App.
Br. 8. In response, the Examiner indicates that claim 45 does not require
such a determination. Ans. 30. In reply, Appellants assert that converting
the signaling message “if the second device does not support the first
signaling protocol” implicitly requires that the destination of the message be
determined. Reply Br. 4.
Such a determination would only be implicit if claim 45 requires
converting the signaling message only if the second device does not support
the first signaling protocol. Claim 45 does not explicitly recite converting
the signaling message only if the second device does not support the first
signaling protocol. Thus, converting the signaling message in every
instance, whether or not the second device supports the first signaling
protocol, would convert the signaling message in the event that the second
device does not support the first signaling protocol, even if converting the
signaling message is not performed on the condition that the second device
supports the first signaling protocol.2 Further, claim 45 does not recite
“forwarding the signaling message without converting the signaling message
to another signaling protocol if the first and second signaling protocols are
identical,” as the method in independent claim 33 requires. Accordingly, the
conversion protocol device recited in claim 45 need not necessarily perform
the forwarding without converting the message.

2 AMERICAN HERITAGE DICTIONARY 897 (3d ed. 1992) (defining “if . . . conj.
1.a. In the event that . . . b. Granting that . . . c. On the condition that”).
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Thus, under the broadest reasonable interpretation in light of
Appellants’ Specification, we agree that the Examiner’s interpretation of
converting the signaling message “if the second device does not support the
first signaling protocol” encompasses Raffali-Schreinemachers’ translating
the control information of the message into the format of the protocol in sub-
network 6 when forwarding the message to sub-network 6.
We, therefore, sustain the rejection of independent claim 45 and its
dependent claim 46, for which Appellants make the same arguments.
THE OBVIOUSNESS REJECTION OF
RAFFALI-SCHREINEMACHERS AND BELL
Claims 33-35, 37, 39-44
Regarding independent claim 33, the Examiner finds that Raffali-
Schreinemachers teaches all the recited limitations, except forwarding a
signaling message without converting the signaling message to another
signaling protocol if the first and second signaling protocols are identical,
for which Bell is cited. Ans. 6-11.
Bell describes a master node that is coupled between a local network
within a customer premises and a subscriber line. See Abstract. Bell’s
master node controls data band communications between the local network
and a remote service provider. See id. Bell’s master node determines
whether a data packet includes data targeted for a node within the local
network. See col. 7, ll. 33-35. In situations in which the internet data
transfer protocol is different from the data transfer protocol used by the local
network, Bell’s master node determines whether a protocol conversion is
required, and if so, converts from the internet protocol to the local protocol.
See col. 7, ll. 43-47. When no protocol conversion is required, or
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subsequent to a protocol conversion, the data is transferred to the local
network. See col. 7, ll. 47-50.
We are persuaded that this at least would have suggested to an
ordinarily skilled artisan forwarding a signaling message without converting
the signaling message to another signaling protocol if the first and second
signaling protocols are identical, as the Examiner finds (Ans. 9-10).
Appellants contend that Bell does not teach signaling messages but
relates to data transfer protocols, which operate at a different layer of a
communication stack. App. Br. 14 (citing RFC 264 Data Transfer Protocol
and RFC 3726 Requirements for Signaling Protocols). Here, Appellants
raise the issue of the broadest reasonable interpretation in light of
Appellants’ Specification of the “signaling message” or “signaling protocol”
recited in claim 33.
Appellants’ Specification indicates “signaling relates in particular to
instructions of the exchange of information, which relates to setting up,
taking down and controlling a connection” and “[a] signaling protocol is the
body of control methods and operating instructions according to which the
signaling between two or more functional units working together is carried
out.” Substitute Specification, ¶¶ 0004, 0005; see also App. Br. 8 (citing
same in arguing the rejection of claim 45). We also note that a
telecommunications dictionary does not define either “signaling message” or
“signaling protocol” but defines “signaling” as a signaling mechanism
required to set up and tear down the calls in a telephony system. NEWTON’S
TELECOM DICTIONARY 722 (19th ed. 2003); see also id. at 722-23. A
general purpose dictionary defines “signaling” as making a signal or relating
or makinge known by signals and defines a “signal” as an indicator that
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serves as a means of communication. AMERICAN HERITAGE DICTIONARY
1678-79 (3d ed. 1992).
Weighing Appellants’ arguments against the Examiner’s findings, on
balance, we conclude that the broadest reasonable interpretation, in light of
the specification as it would be interpreted by one of ordinary skill in the art,
of “signaling message” or “signaling protocol” is not limited to the specific
signaling protocol proffered by Appellants, but rather encompasses the
networking technology described by Bell. See Am. Acad. of Sci. Tech Ctr.,
367 F.3d at 1364.
Appellants also contend that to modify Bell to teach or suggest the
conversion of signaling message protocols, it would be necessary to alter the
fundamental principle of operation of Bell’s master node. App. Br. 14-15.
Appellants contend that such modification would make Bell’s invention
inoperable for its stated purpose of permitting different networks to utilize
the same copper wire links. App. Br. 15.
We are not persuaded that the Examiner’s proposed modification
would defeat Bell’s objective of bringing remote network technologies into a
small office/home environment by providing for a local area network that is
independent of, yet compatible with, the remote network without requiring
additional cabling or hardware. Bell, col. 2, ll. 6-10. Moreover, neither
Raffali-Schreinemachers nor Bell teaches away from the Examiner’s
proposed combination because neither reference criticizes, discredits, or
otherwise discourages such an arrangement. See In re Fulton, 391 F.3d
1195, 1200-01 (Fed. Cir. 2004).
We are not persuaded that the Examiner’s articulated reasoning (Ans.
10-11) lacks the requisite rational underpinning to justify the Examiner’s
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obviousness conclusion. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). The test for obviousness is “what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner relies on Bell for
the limited purpose of forwarding a signaling message without converting
the signaling message to another signaling protocol if the first and second
signaling protocols are identical. Ans. 9-10. We see no reason why
forwarding a signaling message without converting the signaling protocol if
the first and second signaling protocols are identical would have been
uniquely challenging or otherwise beyond the level of ordinarily skilled
artisans. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007).
We, therefore, sustain the rejection of independent claim 33 and its
dependent claims 34, 35, 37, and 39-44, not separately argued with
particularity (App. Br. 12, 15).
Claims 47-51
Regarding claims 47-50, Appellants repeat many of the same
arguments as discussed previously. App. Br. 19-21. Claim 51 is not
separately argued. Id.
Thus, for the reasons discussed previously, we sustain the rejection of
claims 47-51.
European Patent No. EP 1 535 477
Appellants assert, without elaboration, that European Patent
No. EP 1 535 477 has comparable claim scope and indicates the non-obvious
nature of the pending claims. App. Br. 21. We are not persuaded of
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Examiner error based on this European Patent, which was examined under
different legal standards than apply to this appeal.
THE REMAINING OBVIOUSNESS REJECTIONS
Appellants assert that claims 36 and 38 each are allowable because
they depend from claim 33, which is purportedly allowable, and that the
applied art does not teach or suggest the additional limitations recited in
claims 36 and 38. App. Br. 21.
We are not persuaded of error for the reasons discussed above with
respect to claim 33. Further, summarily asserting the applied references do
not teach or suggest elements does not persuasively show error in the
Examiner’s position. Cf. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(“[T]he Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).
CONCLUSION
The Examiner did not err in rejecting claims 45 and 46 under § 102 or
claims 33-44 and 47-51 under § 103.
ORDER
The Examiner’s decision rejecting claims 33-51 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).

AFFIRMED
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