Ex Parte Chen et al

Board of Patent Appeals and Interferences

Apr 26, 2011

10281056 (B.P.A.I. Apr. 26, 2011)

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.usplo.gov

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/281,056 1012512002 Zesen Chen 3808
83417 7590 04/2612011
EXAMINER
AT&T Legal Department - HFZ
ATTN. Patent Docketing HIGA, BRENDAN Y
One AT&T Way
ART UNIT PAPER NUMBERRoom 2A-207

Bedminstor, NJ 07921 2441

MAIL DATE DELIVERY MODE
04126/2011 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 ZESEN CHEN and BRIAN GONSALVES
____________
Appeal 2009-007540
Application 10/281,0561
Technology Center 2400
____________

Before JEAN R. HOMERE, CAROLYN D. THOMAS, and
STEPHEN C. SIU, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on October 25, 2002. The real party in interest is AT&T Knowledge
Ventures, L.P. (Br. 2.)
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 20. (Br. 2.)2 We have
jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm.
Appellants’ Invention
Appellants invented a method and system for permitting
communications between remotely located computers over a virtual private
network (hereinafter “VPN”), such that the VPN communications minimize
the use of network resources. (Spec. 1, ¶ [0001].)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A method of communicating between remotely located
computers over a virtual private network connection, the
method comprising:

receiving a virtual private network query from a remotely
located computer connected to a public data network over a
communication line at a router connected to the public data
network over a communication line, the virtual private network
query directed to a public Internet protocol address associated
with the router;

configuring the router to map the public Internet protocol
address to a private Internet protocol address without using a
firewall; and

establishing a virtual private network connection over the
public data network and communicating between a host
computer associated with the private Internet protocol address

2 All references to the Brief are to the Brief filed on August 21, 2007, which
replaced the Brief filed on April 27, 2007.
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and the remotely located computer, wherein the host computer
is associated with the private Internet protocol address and is
accessible via the public Internet protocol address.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Kirch US 6,324,161 B1 Nov. 27, 2001
Akhtar US 6,418,139 B1 Jul. 9, 2002
Jabbarnezhad US 6,483,811 B1 Nov. 19, 2002
(filed Aug. 4, 1998)
Mahalingaiah US 6,654,346 B1 Nov. 25, 2003
(filed Jul. 19, 1999)
Hoke US 6,701,437 B1 Mar. 2, 2004
(filed Nov. 9, 1998)
Westfall US 6,976,087 B1 Dec. 13, 2005
(filed Nov. 21, 2001)

Netopia R5300 T1 Router, Complete Computer Solutions (1994-99),
http://www.iao.com/products/netopia/r5300_t1.htm (last visited June 13,
2002) (hereinafter “Netopia”).

Firewall VPN-Router, Telco Tech Security Competence Center,
http://www.microliss.de/icons/datenbladd.pdf> (last visited June 13, 2002)
(hereinafter “Firewall VPN-Router”).

R. Venkateswaran, Virtual Private Networks, IEEE Potentials Vol. 20,
Issue: 1, pp. 11-15 (Feb.-Mar. 2001) (hereinafter “Venkateswaran”).

Lisa Phifer, “The Trouble with NAT,” 3 The Internet Protocol J. Vol.
3, No. 4, pp. 1-12 (Dec. 2000) (discussing how to implement VPNs)
(hereinafter “Phifer”).

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
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Claims 1, 7, 13, 17, and 20 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over the combination of Hoke and Mahalingaiah.
Claims 2 through 5, 8 through 12, 15, 16, 18, and 19 stand rejected
under 35 U.S.C. 103(a) as being unpatentable over the combination of Hoke,
Mahalingaiah, and Applicants’ Admitted Prior Art (hereinafter “AAPA”). 3
Claims 6 and 14 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Hoke, Mahalingaiah, and Phifer.
Appellants’ Contentions
Appellants contend that Hoke’s disclosure of a VPN unit that assigns
a remote client a local Internet protocol (hereinafter “IP”) address does not

3 We note that while a number of references relied upon by the Examiner in
the rejections do not appear in the statement of the rejection (Ans. 9), they
are actually relied upon in the body of the rejection. (Id. at 9-12.) Further,
based on both the corpus of the rejection and the statements made by the
Examiner in the Response to Arguments section (id at 20-21), we find that
Appellants had sufficient notice that the claims on appeal stand rejected as
follows: 1) claims 2, 3, 5, 8, and 18 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over the combination of Hoke, Mahalingaiah, and
Firewall VPN-Router; 2) claims 4, 11, and 12 stand rejected under 35 U.S.C.
103(a) as being unpatentable over the combination of Hoke, Mahalingaiah,
Firewall VPN-Router, and Phifer; 3) claim 9 stands rejected under 35 U.S.C.
103(a) as being unpatentable over the combination of Hoke, Mahalingaiah,
and Venkateswaran; 4) claim 10 stands rejected under 35 U.S.C. 103(a) as
being unpatentable over the combination of Hoke, Mahalingaiah, and
Netopia; 5) claims 15 and 16 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over the combination of Hoke and Mahalingaiah; and 6) claim
19 stands rejected under 35 U.S.C. 103(a) as being unpatentable over the
combination of Hoke, Mahalingaiah, and Phifer. Therefore, we treat the
Examiner’s incorrect statement of the rejections as mere harmless error.
Moreover, we note that Appellants did not file a Reply Brief rebutting the
Examiner’s position in regards to the numerous references (i.e., Firewall
VPN-Router, Venkateswaran, Netopia, etc.). Therefore, Appellants have
waived any such arguments on appeal. See In re Watts, 354 F.3d 1362, 1367
(Fed. Cir. 2004).
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teach or fairly suggest a router configured to map the public IP address to a
private IP address without using a firewall, let alone a router in
communication with a host computer associated with the private IP address,
as recited in independent claim 1. (Br. 4-5.) Further, Appellants argue that
Mahalingaiah’s disclosure of an improved, non-conventional firewall that
can be utilized to provide network security in VPN configurations teaches
away from eliminating the firewall, as claimed. (Id. at 5.) Additionally,
Appellants allege that there is insufficient rationale for the proffered
combination. (Id. at 6.)
Examiner’s Findings and Conclusions
The Examiner finds that Hoke’s VPN unit functions as the claimed
“router” because it interconnects two computer networks that use a single
layer procedure, but may use different Data Link Layer and Physical Layer
procedures. (Ans. 13.) The Examiner also finds that combining the
functionality of Hoke’s VPN unit and router into one integral system would
have been an obvious engineering choice. (Id. at 14; see also Manual of
Patent Examining Procedure § 2144.04(v)(B), 8th ed., Rev. 7, July 2008.)
Further, the Examiner finds that Mahalingaiah’s disclosure of a network that
does not require the overhead of conventional firewalls at least suggests to
an ordinarily skilled artisan that Hoke’s VPN unit could operate without the
use of a firewall. (Id. at 14-15.) Additionally, the Examiner finds that there
is sufficient rationale for the proffered combination. (Id. at 15.)

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II. ISSUE
Have Appellants shown that the Examiner erred in concluding that the
combination of Hoke and Mahalingaiah renders independent claim 1
unpatentable? In particular, the issue turns on whether:
(a) the proffered combination teaches or fairly suggests
“configuring the router to map the public Internet protocol address to a
private Internet protocol address without using a firewall,” as recited in
independent claim 1;
(b) the proffered combination teaches or fairly suggests
“establishing a virtual private network connection over the public data
network and communicating between a host computer associated with the
private Internet protocol address and the remotely located computer,” as
recited in independent claim 1;
(c) Mahalingaiah teaches away from the claimed invention;
(d) there is sufficient rationale for the proffered combination.

III. FINDINGS OF FACT
The following Findings of Fact (hereinafter “FF”) are shown by a
preponderance of the evidence.
Hoke
FF 1. Hoke discloses that VPN service units translate or exchange
data packets between the public network and the organization’s private Wide
Area Network (hereinafter “WAN”) or Local Area Network (hereinafter
“LAN”). (Col. 2, ll. 35-37.)
FF 2. Hoke’s figure 1 depicts a public network (100) that includes
VPN units (115, 125, 135, 145, & 155) operating under the control of VPN
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management station (160). (Col. 5, ll. 59-62.) In particular, Hoke discloses
that VPN unit (115) is coupled to the connection between router (114) and
LAN (110). (Col. 6, ll. 1-2.)
FF 3. Hoke discloses that the VPN units (115, 125, 135, 145, & 155)
use address translation rules to translate the same local addresses into
different public network addresses. (Col. 16, ll. 11-13.) Hoke also discloses
that the address translation rules facilitate mapping local addresses to a
single public network address. (Id. at 13-15.)
Mahalingaiah
FF 4. According to Mahalingaiah, it would be beneficial to secure a
network without requiring the overhead of conventional firewalls. (Col. 2,
ll. 23-24.)
FF 5. Mahalingaiah’s figure 6 depicts routing a packet through a
structured, hierarchical network. (Col. 14, ll. 40-41.) In particular,
Mahalingaiah discloses translating the source address, or the address of
termination device (14a), within the entry module (16a) to an address of
module (16a). (Col. 15, ll. 17-20.)
FF 6. Mahalingaiah discloses providing security services that
augment any conventional addressing scheme without using typical firewall
security devices. (Col. 24, ll. 37-41.)

IV. ANALYSIS
Claim 1
Independent claim 1 recites, in relevant part:
1) configuring the router to map the public Internet protocol
address to a private Internet protocol address without using a
firewall; and 2) establishing a virtual private network
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connection over the public data network and communicating
between a host computer associated with the private Internet
protocol address and the remotely located computer.

As detailed in the Findings of Fact section above, Hoke discloses a
computer system for processing communications in a VPN. (FF 2.) In
particular, Hoke discloses a VPN unit coupled to a router, an organization’s
LAN, and a public network. (Id.) Hoke discloses that the VPN unit
translates or exchanges data packets between the remote clients and stations
connected to the public network, such as the Internet, and the clients or
stations connected to the organization’s LAN. (FF 1.) Further, Hoke
discloses that the VPN unit utilizes translation rules to map local addresses
to a single public network address. (FF 3.)
We agree with the Examiner that Hoke’s disclosure teaches a VPN
unit that works in conjunction with a router to translate and forward data
packets between a remote client connected to a public network and a client
or station connected to a private LAN. (See Ans. 13.) Further, we agree
with the Examiner that an ordinarily skilled artisan would have appreciated
that combining the functionalities of Hoke’s VPN unit and router into one
integral system amounts to an obvious engineering choice. (Seeid 14; see
also In re Larson 340 F.2d 965, 968 (CCPA 1965).) Moreover, since
Hoke’s VPN unit translates and forwards data packets by utilizing
translation rules to map local addresses (i.e., private IP addresses) to a single
public IP address, we find that an ordinarily skilled artisan would have
understood that Hoke’s VPN unit/router configuration also possesses the
capability of mapping a public IP address to a private IP address.
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Next, Mahalingaiah discloses routing data packets through a network
by translating a source address of a termination device to an address of an
entry module within such module. (FF 5.) Further, Mahalingaiah discloses
providing security services that strengthen the security of conventional
address schemes without using a typical firewall. (FF 6.)
We find that Mahalingaiah’s disclosure teaches routing packets
through a network without using a firewall. In summary, we find that an
ordinarily skilled artisan would have readily appreciated that Hoke’s VPN
unit/router configuration is capable of translating and forwarding data
packets by mapping a public IP address to a private IP address without
utilizing a firewall, as disclosed in Mahalingaiah. Thus, we find that the
combination of Hoke and Mahalingaiah teaches or fairly suggests
“configuring the router to map the public Internet protocol address to a
private Internet protocol address without using a firewall,” as recited in
independent claim 1. Moreover, we find that an ordinarily skilled artisan
would have also appreciated that Hoke’s VPN unit/router configuration is
capable of establishing a VPN connection over the public network. That is,
we find that an ordinarily skilled artisan would have understood that a
remote client or station associated with the public IP address (i.e., connected
to a public network or Internet) is capable of communicating with a client or
station associated with the private IP address (i.e., connected to the
organization’s LAN or private LAN). Thus, we find that the combination of
Hoke and Mahalingaiah teaches or fairly suggests “establishing a virtual
private network connection over the public data network and communicating
between a host computer associated with the private Internet protocol
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address and the remotely located computer,” as recited in independent
claim 1.

Teaching Away
We are not persuaded by Appellants’ argument that Mahalingaiah
teaches away from the claimed invention. (Br. 5.) “What the prior art
teaches and whether it teaches toward or away from the claimed invention
… is a determination of fact.” Para-Ordnance Mfg., Inc. v. SGS Importers
Int'l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995). “A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Teaching an
alternative or equivalent method, however, does not teach away from the use
of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965).
We begin our analysis by noting that Appellants’ reference to
Mahalingaiah disclosing an improved and non-conventional firewall that can
be utilized to provide network security in VPN configurations is a
mischaracterization of what Mahalingaiah actually discloses. Based on the
citations provided by Appellants in the Brief (see Br. 5), we fail to see where
Mahalingaiah discloses such a firewall. Rather, as set forth above, we find
that Mahalingaiah’s disclosure teaches routing packets through a network
without using a firewall. Further, Appellants have not pointed to an explicit
disclosure within Mahalingaiah that acts to “criticize, discredit, or otherwise
discourage” the elimination of a firewall. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Instead, we find that Mahalingaiah’s disclosure of routing
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packets through a network without using a firewall is an alternative or
equivalent teaching to eliminating the firewall, as claimed. Therefore,
Appellants’ have not shown that Mahalingaiah’s disclosure teaches away
from the claimed invention.
Rationale to Combine
We are not persuaded by Appellants’ argument that there is
insufficient rationale for the proffered combination. (Br. 6.) The U.S.
Supreme Court has held that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007). The Court further instructs that:
[o]ften it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . 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 for combining the known elements in a the fashion
claimed by the patent at issue.

Id. at 418. Additionally, the Court instructs that:
‘rejections 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’… however, the analysis need not
seek out precise teachings directed to the specific subject matter
of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in
the art would employ.

Id. (citation omitted).
Upon reviewing the record before us, we find that the Examiner’s
suggestion for the proposed modification in the prior art suffices as an
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articulated reason to establish the prima facie case of obviousness. In
summary, we find that an ordinarily skilled artisan in the art of network
communications, at the time of the claimed invention, would have combined
Hoke’s VPN unit/router configuration that is capable of translating and
forwarding data packets by mapping a public IP address to a private IP
address (FFs 1-3), with Mahalingaiah’s disclosure of routing packets
through a network without using a firewall (FFs 5-6). This proffered
combination would result in avoiding the overhead associated with
conventional firewalls. (FF 4.)
Further, as prescribed by the controlling case law, while it is often
necessary for an Examiner to identify a reason for combining the familiar
elements obtained from the prior art in establishing a prima facie case of
obviousness, the identification of such a reason is not a sine qua non
requirement. So long as the Examiner provides an articulated reasoning
with some kind of a rational underpinning to substantiate the obviousness
rejection, such a conclusion is proper. In this case, the Examiner provided
more than just a mere conclusory statement. The Examiner noted that at the
time of the claimed invention, an ordinarily skilled artisan would have been
motivated to perform the mapping from private to public addresses without
using a firewall in order to avoid the overhead of conventional firewalls
(Mahalingaiah: see col. 2, ll. 23-33). (Ans. 5 & 15.) In our view, such a
statement suffices as an articulated reason with a rational underpinning to
support the proffered combination. As noted above, the case law allows the
Examiner to look to the state of the prior art, including the knowledge of the
ordinarily skilled artisan, to surmise such a reason for combining the known
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elements of the prior art. Consequently, the Examiner’s reliance upon Hoke
and Mahalingaiah in order to arrive at an articulated reason with a rational
underpinning to support the proffered combination is proper. It follows that
Appellants have not shown that the Examiner erred in concluding that the
combination of Hoke and Mahalingaiah renders independent claim 1
unpatentable.
Claims 7 and 17
Appellants offer the same arguments set forth in response to the
obviousness rejection of independent claim 1 to rebut the obviousness
rejections of independent claims 7 and 17. (Br. 6-9.) We have already
addressed these arguments in our discussion of independent claim 1, and we
found them unpersuasive. Consequently, Appellants have not shown that
the Examiner erred in concluding that the combination of Hoke and
Mahalingaiah renders independent claims 7 and 17 unpatentable.
Claims 2 through 6, 8 through 16, and 18 through 20
Appellants do not provide separate and distinct arguments for
patentability with respect to dependent claims 2 through 6, 8 through 16, and
18 through 20. (Id at 10-11.) Therefore, we select independent claims 1, 7,
and 17 as representative of the cited claims. Consequently, Appellants have
not shown error in the Examiner’s rejection of dependent claims 2 through 6,
8 through 16, and 18 through 20 for the reasons set forth in our discussion of
independent claims 1, 7, and 17. See 37 C.F.R. § 41.37(c)(1)(vii).

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V. CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1 through 20 as being unpatentable under 35 U.S.C. § 103(a).

VI. DECISION
We affirm the Examiner’s decision to reject claims 1 through 20 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)(1)(iv).

AFFIRMED

Vsh