Ex Parte Ernst et al

Board of Patent Appeals and Interferences

Jul 7, 2011

10539506 (B.P.A.I. Jul. 7, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MATTHIAS ERNST, TOBIAS STOTTER, and STEFAN ELBS
____________

Appeal 2009-006764
Application 10/539,506
Technology Center 2400
____________

Before DENISE M. POTHIER, GREGORY J. GONSALVES, and ERIC B.
CHEN, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-006764
Application 10/539,506

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-23. (App. Br. 1.) We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The Disclosed Invention
The disclosed invention includes “a method for automatically
identifying an access right to protected areas of networks, in particular in the
interconnection of networks that constitute the internet . . . .” (Spec. p. 1.)
Exemplary claim 1 follows:
1. Method for automatically identifying an access right
to protected areas in a first network using a unique connection
identifier of a second network, comprising the following
procedural steps:
dynamic or static assignment of a unique identifier of the
first network for a terminal, during or prior to the latter’s
connection to the first network by means of the second
network;
storage of a combination of at least the unique connection
identifier of the second network by means of which the
connection was made, and the unique identifier of the first
network in an authentication unit;
a provider of the protected area requesting the
authentication unit to determine the unique connection
identifier of the second network using the unique identifier of
the first network when the terminal would like access to the
protected area;
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authenticating the unique connection identifier of the
second network and/or communicating the unique connection
identifier of the second network to the provider of the protected
area by means of the authentication unit; and
checking whether an access right for the protected area
exists for the unique connection identifier of the second
network.

The Examiner rejected claims 1-23 as anticipated under 35 U.S.C.
§ 102(e) by Nakajima (U.S. Patent Publication No. 2003/0169714).

ISSUES
Appellants’ responses to the Examiner’s positions present the
following issues:
1) Did the Examiner establish that Nakajima discloses “a provider of
the protected area requesting the authentication unit to determine the unique
connection identifier of the second network using the unique identifier of the
first network when the terminal would like access to the protected area,” as
recited in claim 1?
2) Did the Examiner establish that Nakajima discloses “provision of
at least one unique identifier respectively from at least two different
networks while a connection to both networks exists,” as recited in claim
16?
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Application 10/539,506

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FINDINGS OF FACT (FF)
Nakajima
1. Nakajima discloses “a device and method for providing
communication services, such as a wireless LAN connection and a cable TV
service, via a network.” (¶ [0001].)
2. A mobile terminal requesting communication services transmits a
service request to a subscriber system containing:
a service delivery point identification code identifying a service
delivery point through which a service using the Internet is
provided, specifically, ID (ZZZZ) and an IP address
(XXX.XXX.XXX.XXX.) of service terminal 101; and also
identification information of mobile terminal 105, specifically,
a network identification code (A) and a telephone number (B)
of the mobile terminal.
(¶ [0037].)
3. An identification unit receives the service request via a
communication unit of the subscriber system and determines “whether
mobile terminal 105 is under management of the subscriber system (step
S303) by determining whether the network identification code (A) and the
telephone number (B) included in the service request are stored in a
subscriber database 210D.” (¶ [0038].) If a determination is made that the
mobile terminal is under management of the subscriber system, the
authentication unit “sends a service permission notification including the
service delivery point identification to service gateway 102 (step S304).” (¶
[0039].)

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PRINCIPLES OF LAW
The Examiner bears an initial burden of factually supporting an
articulated rejection. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“It is axiomatic that anticipation of a claim under § 102 can be found if the
prior art reference discloses every element of the claim . . . .” In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986).

ANALYSIS
Issue 1- Claims 1-15 and 22-23
Appellants assert that Nakajima does not “disclose or suggest the
claimed ‘a provider of the protected area requesting the authentication unit
to determine the unique connection identifier of the second network using
the unique identifier of the first network when the terminal would like access
to the protected area,’ recited in claim 1.” (App. Br. 6.) The Examiner
reasons that “[i]n paragraphs 0038-0040 of Nakijima reference, these
portions point out that the authentication unit determines the telephone
number of the mobile terminal using the IP address embedded in the service
request when the mobile terminal requests access to the protected area.”
(Ans. 10.) But these paragraphs of Nakajima do not disclose the
determination of the mobile’s telephone number (e.g., the second network’s
unique connection identifier) by the authentication unit from the IP address
(e.g., the first network’s unique identifier) embedded in the service request.
(Reply 2-4; accord FF 3.) Rather, the mobile’s telephone number is also in
the service request and therefore, need not be determined by the
authentication unit. (Reply 2; accord FF 2.)
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Therefore, we will not sustain the Examiner’s rejection of independent
claim 1, and claims 2-15 and 22-23 dependent therefrom.

Issue 2- Claims 16-21
Appellants assert that Nakajima does not that disclose “provision of at
least one unique identifier respectively from at least two different networks
while a connection to both networks exists,” as recited in claim 16. (App.
Br. 12; Reply 7.) The Examiner reasons that “Nakajima further discloses the
stored combination of identifiers comes from different networks.” (Ans.
12.) But Nakajima does not necessarily disclose that the identifiers are
provided “while a connection to both networks exists.” (See Reply 7.) That
is, Nakajima discloses the mobile terminal within one network and the
service terminal within a second network are first connected to each other so
that the service terminal can send a service terminal’s ID and IP address to
the mobile terminal. (See Nakajima, ¶ 0036.) However, Nakajima does not
necessarily state that these devices, and thus their respective networks,
remain connected when service request, providing an unique identifier (e.g.,
a service terminal’s IP address, mobile terminal’s phone number) from two
different networks (see FF 2), is made to the subscriber system (see FF 3),
which is required to anticipate claim 16.
Therefore, we will not sustain the Examiner’s rejection of independent
claim 16, and claims 17-21 dependent therefrom.

DECISION
We reverse the Examiner’s decision rejecting claims 1-23.

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REVERSED

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