Ex Parte Grosse

Board of Patent Appeals and Interferences

Jun 30, 2010

10805889 (B.P.A.I. Jun. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ERIC HENRY GROSSE
____________________

Appeal 2009-005638
Application 10/805,8891
Technology Center 2100
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Decided: July 1, 2010
____________________

Before JOHN A. JEFFERY, JEAN R. HOMERE, and JAMES R. HUGHES,
Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed March 22, 2004. The real party in interest Lucent
Technologies, Inc. (Br. 1.)
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STATEMENT OF THE CASE
Appellant appeals from the Examiner’s rejection of claims 1-7, 12-19,
and 24 under authority of 35 U.S.C. § 134(a). Claims 8-11 and 20-23 have
been canceled. The Board of Patent Appeals and Interferences (BPAI) has
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appellant’s Invention
Appellant invented a communication apparatus and method for use in
a wireless LAN (Wi-Fi) system that eliminates dual authentication
requirements for users. (Spec. 1, ll. 6-10.) In one embodiment, the method
establishes a connection between a user terminal and an enterprise network
through a network access server that provides limited network access
without the user terminal having to provide any identification authentication
or any billing or payment information to the network access server. (Spec.
4, ll. 3-20.)2

Representative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method for establishing a connection from a user
terminal to a network through a network access server, the
method comprising the steps of:

2 We refer to Appellant’s Specification (“Spec.”) and Appeal Brief (“Br.”)
filed March 20, 2008. We also refer to the Examiner’s Answer (“Ans.”)
mailed July 1, 2008.
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receiving a request from the user terminal to access the
network with use of the network access server; and
providing limited network access to the user terminal
through the network access server, without the user terminal
having provided any authentication of an identity thereof to the
network access server, and without the user terminal having
directly provided any billing or payment information to the
network access server,
wherein providing said limited network access comprises
providing network connectivity through said network access
server between said user terminal and one or more
predetermined enterprise-authenticated hosts and not providing
network connectivity through said network access server
between said user terminal and network sites other than said
one or more predetermined enterprise-authenticated hosts,
wherein said network access server is operated by a
service provider, wherein said service provider has a pre-
existing relationship with each of one or more known
enterprises,
wherein said one or more enterprise-authenticated hosts
consists of one or more VPN gateways associated with each of
said one or more known enterprises, and
wherein each of said pre-existing relationships comprises
an agreement that said limited network access provided to said
user terminal incurs a charge billed by said service provider to a
corresponding one of said one or more known enterprises.

References
The Examiner relies on the following references as evidence of
unpatentability:
Deshpande US 2002/0176579 A1 Nov. 28, 2002

Juitt US 2003/0087629 A1 May 8, 2003

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Rejection on Appeal
The Examiner rejects claims 1-7, 12-19, and 24 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Juitt and Deshpande.

Grouping of the Claims
Appellant argues independent claim 1 as representative of
independent claim 13 and dependent claims 2-7, 12, 14-19, and 24. (Br. 8,
13.) Appellant does not separately argue any of the other appealed claims.
(Br. 13.) We accept Appellant’s grouping of the claims, and choose
independent claim 1 as representative of Appellant’s arguments and
groupings. Accordingly, we treat Appellant’s claims 2-7, 12-19, and 24 as
standing or falling with representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).

ISSUE
Based on our review of the administrative record, Appellant’s
contentions, and the findings and conclusions of the Examiner, the pivotal
issue before us is as follows:
Did the Examiner err in finding the Juitt and Deshpande references
would have taught or suggested to an ordinarily skilled artisan allowing un-
authorized and un-paid access by a user terminal only to a enterprise-
authenticated host VPN gateway of an enterprise’s VPN through a network
access server operated by a service provider having a pre-existing
relationship with the enterprise to bill the enterprise for the access?

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FINDINGS OF FACT (FF)
Juitt and Deshpande References
1. We adopt the Examiner’s findings regarding the Juitt and
Deshpande references as our own. (Ans. 3-4, 6-10.)

ANALYSIS
The Examiner finds that the Juitt and Deshpande references describe
each feature of Appellant’s independent claim 1, and maintains that the
claim is properly rejected as obvious over the reference combination. (Ans.
3-4, 6-10.)3 Appellant, on the other hand, contends that “[n]either Juitt nor
Deshpande, either alone or in combination, teach or suggest all of the
limitations of either independent claim 1 or 13, . . . [i]n particular, neither of
these references . . . teach or suggest allowing un-authenticated and un-paid
access by a user terminal only to an enterprise’s VPN through a network
access server operated by a service provider.” (Br. 8.) Appellant also
contends that Deshpande does not teach or suggest “that ‘said service
provider has a pre-existing relationship with each of one or more known
enterprises . . . , and wherein each of said pre-existing relationships
comprises an agreement that said limited network access provided to said
user terminal incurs a charge billed by said service provider to a
corresponding one of said one or more known enterprises.’” (Br. 10-11,
quoting Fin. Rej. at 5.) Appellant further contends that Juitt teaches away
from Appellant’s invention (Br. 8, 12), and that “one of ordinary skill in the
art would not have any basis for combining [the references] in the manner

3 The pages of the Examiner’s Answer are not numbered, we therefore refer
to the pages in the order in which they appear in the record for clarity.
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the Examiner suggests at the time the invention was made” (Br. 12).
Accordingly, we decide the question of whether the Examiner erred in
finding the Juitt and Deshpande references would have taught allowing un-
authorized and un-paid access by a user terminal only to a enterprise-
authenticated host VPN gateway of an enterprise’s VPN through a network
access server operated by a service provider having a pre-existing
relationship with the enterprise to bill the enterprise for the access.
After reviewing the record on appeal, we agree with the Examiner’s
findings with respect to the Juitt and Deshpande references, as well as the
Examiner’s conclusion of obviousness, and we find that the references
describe the disputed features of Appellant’s claim 1. We begin our analysis
by construing Appellant’s disputed claim limitations.
We adopt Appellant’s proffered interpretation of the disputed claim
limitations. Specifically, we find Appellant’s claim, as construed by
Appellant, recites allowing un-authorized and un-paid access by a user
terminal only to a enterprise-authenticated host VPN gateway of an
enterprise’s VPN through a network access server operated by a service
provider having a pre-existing relationship with the enterprise to bill the
enterprise for the access. (Br. 8-13.)
We find that Deshpande describes users accessing a free WLAN
hotspot (at no-charge) and accessing services and/or information from the
hotspot (hotspot service provider) without providing authentication (identity
or billing information) – “certain users/devices may be able to connect with
and request or accept services from the hotspot service provider network
without identification and/or authentication such as no-charge Internet
access or location-based services supported by advertisements” (Ans. 7;
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Deshpande ¶ [0025]). (Ans. 4, 7; Deshpande ¶¶ [0025], [0026], [0028].)
Deshpande also describes users accessing an authentication server through
the WLAN hotspot, and allowing access to additional services for
authenticated users. (Deshpande ¶¶ [0020]-[0022], [0025]-[0028].)
Deshpande further describes accessing a corporate (enterprise) private
network (VPN) through the hotspot service provider network, and the
business entity (enterprise) being billed for usage services by the hotspot
service provider. (Ans. 4, 7; Deshpande ¶¶ [0025], [0026].)
We find that the Juitt reference describes network access by a user
through a server (local gateway server) to an authentication server providing
an authentication web page (i.e., an enterprise-authenticated host or VPN
gateway). The access by the user is limited – limited only to accessing the
authentication web page and/or server – “[t]he local gateway server 120
redirects all requests from the mobile device 100 . . . to the authentication
web page” (Ans. 6-7; Juitt ¶ [0059]). (Ans. 3, 6-7; Juitt ¶¶ [0003], [0037],
[0051], [0059], [0068], [0071], [0075], Fig. 1A.)
Thus, we find that the combination of the Juitt and Deshpande
references describes each feature of Appellant’s claim 1. The reference
combination describes allowing user terminal access to a no-charge WLAN
hotspot without providing identity or billing information, limiting such
access only to an authentication server authentication web page (VPN
gateway) through a local gateway (network access) server, and accessing a
corporate VPN through the hotspot service provider network where the
business entity is billed for usage services by the hotspot service provider.
Accordingly, we find Appellant’s claim 1 reads on the Juitt-Deshpande
reference combination. We conclude, based on these findings, that
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combining Deshpande’s teaching of provide VPN access through a free
WLAN hotspot with Juitt’s limited access network is tantamount to the
predictable use of prior art elements according to their established functions
– an obvious improvement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007).
We are not persuaded by Appellant’s arguments against the
combinability of the Juitt and Deshpande references. In particular,
Appellant asserts that there is no rationale for combining Juitt and
Deshpande – that “one of ordinary skill in the art would not have any basis
for combining [the references] in the manner the Examiner suggests at the
time the invention was made” (Br. 12). But, Appellant does not explain how
or why a skilled artisan would be dissuaded from the combination. Contrary
to Appellant’s position (and assertions), the Examiner provides a detailed
rationale for combining the Juitt and Deshpande references. (Ans. 4.)
Specifically, that modifying Juitt’s limited access network in order to
provide VPN access through a free WLAN hotspot as taught by Deshpande
“would have been obvious to one of ordinary skill in the art at the time the
invention was made” because such an access mode would have been “useful
to business employees that need access to a hotspot service provider’s
services for a business purpose without having to establish an individual
subscription with that hotspot service provider” – i.e., that the additional
functionality would have improved efficiency (avoiding individual
subscriptions to the hotspot service provider, and billing services directly to
the business entity rather than to the individual.) (Ans. 4.) Thus, we find
that the Examiner articulates a rationale for combining the Juitt and
Deshpande references based on “some rational underpinning to support the
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legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
We are also not persuaded by Appellant’s argument that the Juitt
reference “teaches away” from Appellant’s invention. (Br. 8, 12.) We find
that skilled artisans would not have been discouraged from following the
path set out in Juitt and Deshpande, nor would they be led in a direction
divergent from the path that was taken by Appellant. See Kahn, 441 F.3d at
990.
Whether a reference teaches away from a claimed invention is a
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). A
reference may be said to teach away from the invention if the reference
criticizes, discredits, or otherwise discourages modifying a reference to
arrive at the claimed invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004); In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001); In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “[W]hen the prior art teaches
away from combining certain known elements, discovery of a successful
means of combining them is more likely to be nonobvious.” KSR, 550 U.S.
at 416 (citing United States v. Adams, 383 U.S. 39, 51-52 (1966)). We will
not, however “read into a reference a teaching away from a process where
no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland
KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
Moreover, the Examiner provides detailed findings and conclusions
with respect to the Juitt and Deshpande references. (Ans. 3-4, 6-10.)
Appellant did not file a Reply Brief, nor did Appellant provide any
persuasive evidence supporting the assertions of alleged error in the
Examiner’s positions. Accordingly, Appellant has not persuaded us to find
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error in the Examiner’s obviousness rejection of independent claim 1. As
we explain supra, Appellant does not separately argue independent claim 13
or dependent claims 2-7, 12-19, and 24, and these claims fall with
representative claim 1. Therefore, we affirm the Examiner’s obviousness
rejection of claims 1-7, 12-19, and 24.

CONCLUSIONS OF LAW
On the record before us, we find the Examiner did not err in finding
the Juitt and Deshpande references would have taught or suggested to a
skilled artisan allowing un-authorized and un-paid access by a user terminal
only to a enterprise-authenticated host VPN gateway of an enterprise’s VPN
through a network access server operated by a service provider having a pre-
existing relationship with the enterprise to bill the enterprise for the access.
Thus, on the record before us, we find the Examiner did not err in rejecting
claims 1-7, 12-19, and 24 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1-7, 12-19, and 24
under 35 U.S.C. § 103(a).

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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)(iv).

AFFIRMED

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