Ex Parte Falk et al

Patent Trial and Appeal Board

May 6, 2015

12310198 (P.T.A.B. May. 6, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAINER FALK, GUNTHER HORN, and DIRK KRÖSELBERG
____________

Appeal 2012-000335

Application 12/310,198
Technology Center 2400
____________

Before CAROLYN D. THOMAS, BRUCE R. WINSOR,
and CHARLES J. BOUDREAU, Administrative Patent Judges.

Opinion for the Board filed by, Administrative Patent Judge WINSOR.

Opinion dissenting-in-part filed by Administrative Patent Judge
THOMAS

WINSOR Administrative Patent Judge.

DECISION ON APPEAL
Appellants
1
appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 27–32 and 37–52, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing

1
The real party in interest identified by Appellants is SIEMENS
AKTIENGESELLSCHAFT. (App. Br. 1.)
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was held April 23, 2015. A transcript of the hearing will be placed in the
record in due course.
We affirm-in-part.

STATEMENT OF THE CASE
Appellants’ disclosed invention relates to “providing an access-
specific key for securing a data transfer between a mobile terminal and a
node of an access network.” (Spec. ¶ 2.)
2
Claim 27, which is illustrative,
reads as follows:
27. A method for providing an access-network-specific
key for securing a data transfer between a mobile terminal and a
node of an access network, comprising:
generating, during authentication of the mobile terminal
by an authentication server, a session key from which a base
key is derived;
transferring the base key from the authentication server
to an interworking proxy server;
deriving the access-network-specific key from the base
key by the interworking proxy server; and
providing the access-network-specific key from the
interworking proxy server to the node of the access network.
Claims 37–42 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.
(See Final Act. 4.)
Claims 27–32 and 39–52 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Faccin et al. (US 2002/0120844 A1; Aug. 28, 2002;

2
References herein to the Specification (“Spec.”) are to the “Marked-up
Substitute Specification,” filed February 17, 2009.
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hereinafter “Faccin”) and Patel et al. (US 7,475,241 B2; Jan. 6, 2009;
hereinafter “Patel”). (See Final Act. 5–12.)
Claims 37 and 38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Faccin, Patel, and Official Notice. (See Final Act. 12–13.)
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed June 19, 2012; “Reply Br.” filed Sept. 21, 2012
3
) for the positions
of Appellants and the Final Office Action (“Final Act.” mailed Jan. 19,
2012) and Answer (“Ans.” mailed July 26, 2012) for the positions of the
Examiner.

ISSUES
The issues presented by Appellants’ contentions are as follows:
Did the Examiner err in rejecting claims 37–42 as being indefinite for
failing to particularly point out and distinctly claim the subject matter which
Appellant regards as the invention?
Did the Examiner err in finding the combination of Faccin and Patel
teaches or suggests “transferring [a] base key from [an] authentication server
to an interworking proxy server[,] deriving [an] access-network-specific key
from the base key by the interworking proxy server[,] and providing the
access-network-specific key from the interworking proxy server to [a] node
of the access network” (emphases added), as recited in claim 27?

3
Exhibit A to the Reply Brief, bearing the designation “3GPP TS 29.161
V6.0.0 (2004–09),” is evidence first submitted after the filing of the Notice
of Appeal, and was not before the Examiner during prosecution.
Accordingly, its submission is untimely and it will not be considered. See
37 C.F.R. § 41.33(d)(2) (2013), see also id. § 41.30.

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ANALYSIS
REJECTION FOR INDEFINITENESS
The Examiner finds claims 37–42 are indefinite because each claim
recites a protocol and “it is unclear which elements of the protocol are
required or which version of the protocol is contemplated.” (Final Act 4:16–
17.) The Examiner explains “as protocols evolve they typically change or
add features, without the specification of a particular version of a protocol,
the claim would be indefinite for not having a static definition.” (Final Act.
4:18–20.)
Appellants contend claims 37–42 are not indefinite because they
should be construed to refer to versions of the standards defining the recited
protocols that were in effect at the time Appellants’ priority application was
filed. (App. Br. 3–4, citing Ex parte McClary, Appeal No. 2009-001300
(BPAI May 17, 2010); Ex parte Ly, Appeal No. 2009-000357 (BPAI June
16, 2009); Ex parte Smith, Appeal No. 2008-4702 (BPAI Mar. 10, 2009); Ex
parte Fiala, Appeal No. 98-0024 (BPAI Sept. 4, 1998).)
We agree with Appellants. Compliance with the provisions of 35
U.S.C. § 112 is determined as of the filing date of the application. W.L.
Gore Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1556 (Fed. Cir. 1983).
“[T]he ordinary and customary meaning of a claim term is the meaning that
the term would have to a person of ordinary skill in the art in question at the
time of the invention, i.e., as of the effective filing date of the patent
application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
(en banc) (emphasis added) (quoted at MPEP § 2111.01.III (9th ed. 2014));
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see also MPEP § 2173.02.II (“Examiners should note that Office policy is
not to employ per se rules to make technical rejections.”).
Although the Examiner is correct that standards that define protocols
may change over time, just as the meaning of other terms used in claims may
change over time, we do not agree that this renders a claim reciting the
protocol indefinite. The meaning of such a claim, as understood by one of
ordinary skill in the art at the time of the invention, is tied to the version of
the protocol-defining standard in effect at the time of the invention, and is,
therefore, not indefinite. Accordingly, we do not sustain the rejection of
claims 37–42 under 35 U.S.C. § 112, second paragraph.
REJECTION OVER FACCIN AND PATEL
Claims 27–32, 37–44, 51, and 52
The Examiner maps the recited “interworking proxy server” to the
“home agent[s]” taught by both Patel and Faccin. (See Final Act. 6–8; citing
Faccin ¶¶ 36, 89, 92; Patel col. 2, l. 4 et seq.; col. 4, l. 40 et seq.; col. 5, l. 10
et seq.; col. 7, l. 45 et seq., l. 60 et seq.; col. 8, l. 30 et seq., l. 38.) The
Examiner explains as follows:
An ‘interworking proxy server’ is not a term of art nor is it
explicitly defined in Applicant’s specification. The mapping of
the interworking proxy server to Patel’s ‘home agent’ is
therefore not only within a broadest reasonable interpretation of
the claims but necessary as the Applicant has furnished no
competing definition.
(Final Act. 3:21–4:3; see also Ans. 16.) The Examiner further explains that:
[p]roxy servers are generally understood to be a system [sic]
that acts as an intermediary for requests between a client and a
server. The addition of the word interworking in this context is
merely redundant because all proxy servers are by their nature
‘interworking’ between a client and a server.
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(Ans. 16.)
Appellants contend “[t]he ‘interworking proxy server’ recited in claim
27 is a specific type of proxy server and one of ordinary skill in the art
would not find ‘an interworking proxy server to be equivalent to the ‘Home
Agent 604’ (e.g., Patel et al., column 6, line 47).” (App. Br. 6.) Appellants
further contend:
the terms “interworking” and “proxy server” are both
commonly used terms in the art . . ., and one of ordinary skill in
the art, even without reference to the specification, would
understand from the common definition of these terms, that an
“interworking proxy server” is not equivalent to a “home agent”
as that term is used in Patel et al.
(Reply Br. 3–4.) More particularly, Appellants contend “the term
‘interworking’ is commonly used to refer not to communication ‘between a
client and a server’, but rather to communication between networks of
different types.” (Reply Br. 4.)
A pertinent definition of “interworking” from a technical dictionary
is: “interworking The ability to seamless[ly] communicate between
devices supporting dissimilar protocols, such as frame relay and ATM, by
translating between the protocols, not through encapsulation.” Harry
Newton, NEWTON’S TELECOM DICTIONARY 366 (17th ed. 2001). Another
technical dictionary is consistent with this definition: “interworking unit
(IWU) A unit that provides the functions needed to allow interworking
between a PSN and another network, e.g., interworking between a PSN and
an ITU-T X.25 packet-switched public data network (PSPDN).” IEEE 100-
2000 — THE AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS 585
(7th ed. 2000). These definitions are both consistent with how the term
“interworking” is used in Appellants’ Specification. (See, e.g., Spec. ¶¶ 34–
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36.) Accordingly, we conclude the broadest reasonable interpretation of
“interworking proxy server” is a proxy server that provides the capability to
communicate between devices supporting dissimilar protocols.
It is well settled that “[a]ll words in a claim must be considered in
judging the patentability of that claim against the prior art.” In re Wilson,
424 F.2d 1382, 1385 (CCPA 1970). The Examiner’s claim construction,
which effectively reads “interworking” out of the claim, is erroneous. The
Examiner has made no showing, nor do we find any evidence in the record,
that the home agent taught by either Patel or Faccin provides the capability
to communicate between devices supporting different protocols, i.e., that
either Patel or Faccin teaches an “interworking proxy server.”
Appellants’ arguments persuade us of error in the rejection of claim
27. Accordingly, we are constrained by this record to not sustain the
rejection of (1) independent claim 27; (2) independent claim 51, which,
similar to claim 27, recites limitations including the term “interworking”
(see App. Br. 6–7) and were rejected on substantially the same basis as claim
27 (see Final Act. 5–8); and (3) claims 28–32, 37–44, and 52 which
variously depend, directly or indirectly, from claims 27 and 51.
Claims 45–50
Appellants rely on the arguments presented for claim 27 to argue the
patentability of claims 45–50, and do not argue claims 45–50 separately with
particularity. (See App. Br. 6–7.) Appellants’ arguments regarding claim
27, discussed supra, do not persuade us of error in the rejection of claims
45–50 over Faccin and Patel.
Regarding independent claim 45, the “interworking proxy server” is
not an element of the “authentication server” to which independent claim 45
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is directed, and claim 45 does not recite any structural or functional feature
of the “programmed processor” that provides a “base key” to an
“interworking proxy server,” as distinguished from providing the “base key”
to any other proxy server. While features of an apparatus may be recited
either structurally or functionally, claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function. In
re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997). See also In re
Casey, 370 F.2d 576 (CCPA 1967) (“[T]he manner or method in which such
machine is to be utilized is not germane to the issue of patentability of the
machine itself.”); In re Otto, 312 F.2d 937, 940 (CCPA 1963) (“Inclusion of
material or article worked upon by a structure being claimed does not impart
patentability to the claims.”); Ex parte Wyatt, Appeal No. 2009-014267, slip
op. at 9–10 (BPAI 2011) (“Unlike claim 1, which is a method, [the]
apparatus [of claim 15] is defined structurally, and thus the actual steps
performed are not part of the claim boundaries.”) Accordingly, we sustain
the rejection of claim 45, and claims 46 and 47, which depend from claim 45
and were not separately argued.
Regarding independent claim 48, the phrase “interworking proxy” is
only recited in the preamble of claim 48, and does not add anything to the
limitations set forth in the body of the claim.
If . . . the body of the claim fully and intrinsically sets forth the
complete invention, including all of its limitations, and the
preamble offers no distinct definition of any of the claimed
invention’s limitations, but rather merely states, for example,
the purpose or intended use of the invention, then the preamble
is of no significance to claim construction because it cannot be
said to constitute or explain a claim limitation.
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Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999). See IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434
(Fed. Cir. 2000) (“The phrase ‘control apparatus’ in the preamble merely
gives a descriptive name to the set of limitations in the body of the claim that
completely set forth the invention.”). Accordingly, we sustain the rejection
of claim 48 and claims 49 and 50, which depend from claim 48 and were not
separately argued.

CONCLUSION
We do not sustain the Examiner’s rejection of claims 37–42 under 35
U.S.C. § 112, second paragraph.
We do not sustain the Examiner’s rejection of claims 27–32, 37–44,
51, and 52 under 35 U.S.C. § 103(a).
We sustain the Examiner’s rejection of claims 45–50 under 35 U.S.C.
§ 103(a).

DECISION
4

The decision of the Examiner to reject claims 45–50 is affirmed.
The decision of the Examiner to reject claims 27–32, 37–44, 51, and
52 is reversed.

4
In the event of further prosecution, including any review for allowance, the
Examiner may wish to consider whether claims 45–52 are indefinite under
35 U.S.C. § 112, second paragraph, by virtue of reciting process steps in a
claim ostensibly directed to a machine. See IPXL Holdings, L.L.C. v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), citing Ex Parte
Lyell, 17 USPQ2d 1548 (BPAI 1990); see also MPEP § 2173.05(p)(II).
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAINER FALK, GUNTHER HORN, and DIRK KRÖSELBERG
____________

Appeal 2012-000335

Application 12/310,198
Technology Center 2400
____________

Before CAROLYN D. THOMAS, BRUCE R. WINSOR,
and CHARLES J. BOUDREAU, Administrative Patent Judges.

THOMAS, Administrative Patent Judge, Dissenting-In-Part

I respectfully dissent from the Majority’s decision to reverse the
obviousness rejection of claims 27–32, 37–44, 51, and 52. However, I
concur in their reversal of the § 112, second paragraph rejection of claims
37–42 and concur in their affirmance of the 103(a) rejection of claims 45–
50.
Regarding the reversal of claims 27–32, 37–44, 51, and 52, I do not
share the view of my colleagues supra that the Examiner’s claim
construction, which effectively reads “interworking” out of the claim, is
erroneous. During prosecution, the claims are given their broadest
reasonable interpretation consistent with the specification, and limitations
appearing in the specification are not to be read into the claims. In re Etter,
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756 F.2d 852, 858 (Fed. Cir. 1985). Here, I believe the majority is reading
limitations appearing in the specification into the claims, i.e., dissimilar
protocols. As identified by the Examiner, the Specification does not
explicitly define “interworking proxy server” (Ans. 16). Furthermore, I
believe the intrinsic evidence fails to support Appellants’ contention that
claim 27, for example, requires “support[ing] mobility management” (App.
Br. 5–6). In fact, the plain language of claim 27 does not specify that the
claimed networks, i.e., access network and authentication server, necessarily
support dissimilar protocols, and the Specification only discloses utilizing
different networks as preferred embodiments, instead of requirements to
realizing the claimed invention. I decline to read such networks with
dissimilar protocols from the specification into the claim. Limitations
appearing in the specification, but not recited in the claim, are not read into
the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed.
Cir. 2003) (claims must be interpreted “in view of the specification” without
importing limitations from the specification into the claims unnecessarily
(citation omitted)).
In other words, I believe Appellants’ argument is based on an
additional element not recited or required by the claims, i.e., the capability to
communicate between devices supporting dissimilar protocols, as the
claimed devices are not noted as having dissimilar protocols. As such, I
believe the absence of any “dissimilar protocols” in the claim broadens the
scope of the recited “interworking proxy server” to be consistent with Patel’s
“home agent” as identified by the Examiner (Ans. 16), as these
functionalities are not recited nor required in claim 27. See Phillips v. AWH
Corp., 415 F.3d 1303, 1326–27 (Fed. Cir. 2005) (“The fact that the written
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description of the '798 patent sets forth multiple objectives to be served by
the baffles recited in the claims confirms that the term ‘baffles’ should not
be read restrictively to require that the baffles in each case serve all of the
recited functions.”). Here, although Appellants and the Majority contend
that the objective of the claimed “interworking proxy server” is to support
dissimilar protocols, in this case it seems inappropriate to restrict the
claimed interworking proxy server to serve unrecited functions. Those
functions actually recited in the claim, i.e., generating and transferring a key,
are indeed shown in the cited art. It is an unrecited feature, i.e., dissimilar
protocols that the Majority is basing their reversal on.
I am not inclined to read this functionality into the claim, which calls
for supporting dissimilar protocols. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”) Here, the
claim language is quite broader than the preferred embodiments in the
Specification. It is the Appellants' burden to precisely define the invention,
not the PTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
Appellants always have the opportunity to amend the claims during
prosecution, and broad interpretation by the Examiner reduces the possibility
that the claim, once issued, will be interpreted more broadly than is justified.
In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). See In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004).
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A claim under examination is given its broadest reasonable
interpretation consistent with the underlying specification. In re American
Acad. of Science Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the
absence of an express definition of a claim term in the specification or a
clear disclaimer of scope, the claim term is interpreted as broadly as the
ordinary usage of the term by one of ordinary skill in the art would permit.
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Properties of preferred
embodiments described in the specification which are not recited in a claim
do not limit the reasonable scope of the claim. E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). I believe elements recited in a
claim presented for examination are not limited to those components capable
of performing particular unrecited functions or achieving particular results
merely because the underlying specification describes those functions or
results as desirable. In other words, in the absence of the claimed necessity
to work with dissimilar protocols, I believe the Examiner interpreted the
claim term, i.e., interworking, as broadly as the ordinary usage of the term
by one of ordinary skill in the art would permit.
I therefore, respectfully dissent from the Majority Decision reversing
the rejection of claims 27–32, 37–44, 51, and 52.

ELD