Ex Parte Fineberg

Patent Trial and Appeal Board

Mar 15, 2013

10121188 (P.T.A.B. Mar. 15, 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.
10/121,188 04/12/2002 Victoria Fineberg 129250-000897/US 3576
32498 7590 03/15/2013
CAPITOL PATENT & TRADEMARK LAW FIRM, PLLC
P.O. BOX 1995
VIENNA, VA 22183
EXAMINER
POPHAM, JEFFREY D
ART UNIT PAPER NUMBER
2491
MAIL DATE DELIVERY MODE
03/15/2013 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 VICTORIA FINEBERG
____________

Appeal 2010-005140
Application 10/121,188
Technology Center 2400
____________

Before MAHSHID D. SAADAT, DAVID M. KOHUT, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4, 7-10, and 19-24. Claims 2, 3, 5, 6, and 11-18 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to a system and method for remotely
connecting to an extranet without first connecting to the user's base
intranet by providing a remote user with a direct connection to an extranet.
(See Spec. 3: 9-12).
Exemplary independent claim 1 reads as follows:
1. A rapid authentication system for allowing a remote access
device in an extranet to communicate with a device in an intranet and
vice-versa, the system comprising:

a gateway node within a UMTS network associated with a
plurality of intranets and extranets operative to:

communicate with a first entity network associated with an
Internet Service Provider a (ISP);

communicate with a second entity network associated with the
ISP, wherein one of the first and second entity networks is an intranet
and the other is an extranet;

communicate with a first serving node for authenticating a first
device without passing traffic through a virtual private network (VPN)
associated with the first device to allow the first device to
communicate with the first and second entity networks; and

communicate with a second serving node for authenticating a
second device without passing traffic through a virtual private
network (VPN) associated with the first device during authentication
to allow the second device to communicate with the first and second
entity networks, wherein one of the first and second devices is a
remote device associated with an extranet and the other is a device
associated with an intranet.

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The Examiner’s Rejections
Claims 1, 4, 7-10 and 19-24 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1, 4, 7-10 and 19-24 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Shneyderman (Shneyderman et al., “Mobile
VPNs for Next Generation GPRS and UMTS Networks”, 2000) in view of
Forslow (US 2002/0069278 A1; Jun. 6, 2002, filed Dec. 5, 2000) and Peirce
(US 6,560,217 B1; May 6, 2003, filed Feb. 25, 1999)

ISSUES
Rejection under 35 U.S.C. § 112, first paragraph
Did the Examiner err in finding that the originally filed disclosure
does not provide support for a virtual private network (VPN)?

Rejection under 35 U.S.C. § 103(a) 1
Did the Examiner err in finding that Forslow teaches the use of the
same ISP to provide intranet-to-extranet and extranet-to-intranet
communications?

ANALYSIS
Rejection under 35 U.S.C. § 112, first paragraph
Claim 1 recites, in pertinent part:
[A] gateway node within a UMTS network associated with a
plurality of intranets and extranets operative to: communicate

1 Separate patentability is not argued for claims 4, 7-10, and 20-24. Except
for our ultimate decision, these claims are not discussed further herein.

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with a first entity network associated with an Internet Service
Provider a (ISP); communicate with a second entity network
associated with the ISP, wherein one of the first and second
entity networks is an intranet and the other is an extranet;
communicate with a first serving node for authenticating a first
device without passing traffic through a virtual private network
(VPN) associated with the first device to allow the first device to
communicate with the first and second entity networks.

(Emphasis added). Claim 19 recites similar subject matter.

The Examiner has taken the position (Ans. 4), that Appellant’s
disclosure lacks a written description of the step of “authenticating a first
device without passing traffic through a virtual private network (VPN)
associated with the first device,” as recited in independent claim
1. (Emphasis added). The Examiner states that, while page 7, ll. 26-28 of
Appellant’s Specification describes authenticating the users for each
company without passing the traffic to the user's VPN intranet first, no
support exists for “without passing traffic through a virtual private network
(VPN). . . .” (Id.)(Emphasis added). In particular, the Examiner finds that
“the application as originally filed refers to not passing traffic to an intranet,
which is a specific network, while the claims currently refer to not passing
traffic through a VPN, which is a virtual network, being a connection of
some type to some network, and not the network itself.” (Id.)(Emphasis
added). The Examiner further explains that:
One of ordinary skill in the art will readily note this distinction in that
an intranet is completely different from a VPN. A VPN is a logical
connection of some sort, secured in some fashion, thereby providing
the name virtual (logical) private (secured) network (connection). An
intranet, however, is a local network specific to an entity (e.g.
company or organization)… a VPN is the virtual network, designed to
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associate devices that aren't actually on the same network (such as a
device accessing an intranet through the Internet).

(Ans. 10-11).
Appellant responds by specifically pointing to their disclosure on
pages 2, 6, 7, and 10 for the description of the claimed subject matter (Reply
Br. 2-5). The Appellant explains how pages 8 and 10 of their
disclosure describe the claimed gateway node. (Id.). The Appellant further
describes that claim 1 recites a VPN associated with the first device
instead of “some generalized VPN or generalized VPN intranet,” and thus
Appellant contends that the Specification describes “one example of a VPN
associated with a first device [that] is a VPN intranet associated with the first
device.” (Id.). In this regard, Appellant also points to page 2 of the
Specification which describes “that when an employee of Company A (first
user) is interested in accessing a VPN operated by its employer, such a VPN
is referred to as an ‘intranet’. However, when the same user wishes to access
a VPN operated by another company, Company B that has its own
employees (second user), such a VPN is referred to as an ‘extranet’. (Id.).
The function of the written description requirement of the first
paragraph of 35 U.S.C. § 112 is to ensure that the inventor has possession, as
of the filing date of the application relied on, of the specific subject matter
later claimed by him. In re Wertheim, 541 F.2d 257, 262 (CCPA 1976);
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). In
establishing a basis for a rejection under the written description requirement
of the statute, the Examiner has the initial burden of presenting evidence or
reasons why persons skilled in the art would not recognize in an applicant’s
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disclosure a description of the invention defined by the claims. Wertheim,
541 F.2d at 265.
Based on a review of Appellant’s Specification, we agree with
Appellant that Appellant’s description of the VPN intranet associated with
the first device would have been recognized by one of ordinary skill in the
art as authenticating a first device without passing traffic through a virtual
private network (VPN). We specifically find that Appellant’s Specification
provides sufficient description of the gateway node for authenticating a first
device without passing traffic through a VPN associated with the first device
to allow the first device to communicate with the first and second entity
networks (Spec. 2:3-21).
In view of the above discussion and considering the presented facts
and the arguments made by Appellant and the Examiner, we find that
Appellant’s disclosure indicates that Appellant was in possession of the
claimed subject matter at the time of filing of the application. Therefore, the
rejection of claims 1, 4, 7-10, and 19-24 under the first paragraph of 35
U.S.C. § 112 cannot be sustained.

Rejection under 35 U.S.C. § 103
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken and (2) the
reasons set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Appeal Brief. We concur with the conclusions reached by the
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Examiner. We highlight and address specific findings and arguments for
emphasis as follows.
Claim 1 recites, interalia, “communicate with a first entity network
associated with an Internet Service Provider a (ISP); communicate with a
second entity network associated with the ISP”. Claim 19 recites similar
subject matter.
Appellant contends that the Examiner erred in rejecting claim 1 as
obvious over Shneyderman, Forslow, and Peirce because the proposed
combination does not teach or suggest “the use of the same ISP to provide
intranet-to-extranet and extranet-to-internet communications.” (App. Br. 5-
6). In particular, Appellant contends that Forslow does not “discuss the use
of the same ISP to provide intranet-to-extranet and extranet-to-intranet
communications.” (Id.)(Emphasis added).
The Examiner finds that Forslow “discloses that the first and second
entity networks are associated with the same ISP and authenticating devices
to communicate with the entity networks” (Ans. 6, citing to Forslow Fig 3,
paragraphs 93, 113, and 126-128). We agree with the Examiner’s finding
because paragraph [0113] of Forslow explicitly states “[N]ote that having
only one single administrative authority, in the form of an Internet Service
Provider, which controls resources for both companies in one mobile service
manager 22, can also solve an extranet service.” Accordingly, we find that
the ISP in Forslow that communicates with the networks in both companies
corresponds to using the same ISP to communicate with the first and second
entity network. As such, we sustain the Examiner’s rejection of claims 1 and
19 and claims 4, 7-10, and 20-24 since Appellant does not argue any of the
other claims.
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CONCLUSION
We do not sustain the Examiner’s rejection of claim 1, 4, 7-10, and
19-24 under 35 U.S.C. § 112.
We sustain the Examiner’s rejection of claims 1, 4, 7-10, and 19-24
under 35 U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claims 1, 4, 7-10, and 19-24 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)(2011).

AFFIRMED

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