Ex Parte Iyer

Board of Patent Appeals and Interferences

Aug 14, 2009

10262436 (B.P.A.I. Aug. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PRAKASH N. IYER
__________

Appeal 2008-005453
Application 10/262,436
Technology Center 2400
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Decided: August 14, 2009
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Before JOSEPH L. DIXON, JOHN A. JEFFERY, and STEPHEN C. SIU,
Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-25. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
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Invention
The invention relates to the field of addressing mobile nodes for
communication in different data networks and more particularly to
integrating mobility agents to provide data services inside and outside virtual
private networks to mobile terminals moving between different wired and
wireless data networks (Spec. ¶ [0001]).
Independent claim 1 is illustrative:
1. A method comprising:
registering a mobile device with a home agent (HA);
once the registering has occurred, receiving at the mobile
device a home internet protocol (IP) address assignment from the HA;
assigning the home IP address to the mobile device as an inner
IP address;
mapping the inner IP address to a physical point-of-attachment
of the mobile device;
assigning an outer IP address directly to the mobile device from
the HA;
tunneling of packets between the mobile device and the HA
using the inner and outer IP address; and
delivering packets to the mobile device at the point-of-
attachment.
References
The Examiner relies upon the following references as evidence in
support of the rejections:
Magret US 6,856,624 B2 Feb. 15, 2005
Forslow US 6,954,790 B2 Oct. 11, 2005
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Rejections1
Claims 1-8 and 10-24 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Magret.
Claims 9 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Magret and Forslow.
ISSUE
Appellant argues that the Examiner erred in finding that Magret
discloses or suggests “directly assigning an outer IP [Internet Protocol]
address directly to a mobile device” (App. Br. 13). The Examiner maintains
that this limitation is shown in Figure 1 of Magret, which depicts mobile
nodes directly connected to home agents (Ans. 12). Appellant argues that
the Examiner relies on a different scenario described in Magret—the
scenario in which the mobile nodes have roamed outside of their home
sites—to teach the other limitations of the claimed invention (Reply Br. 3).
Appellant contends that in this second scenario, assignment of an outer IP
address would typically come from a foreign agent, not the home agent (id.).
Issue: Has Appellant shown that the Examiner erred in finding that
Magret teaches assigning an outer IP address directly to a mobile device
from a home agent?

1 The Examiner withdrew the rejections of claims 1, 14, and 23 under 35
U.S.C. § 112, first paragraph and 35 U.S.C. § 112, second paragraph (Ans.
3)
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FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
1. Magret depicts mobile nodes in two scenarios: (1) where the
mobile nodes are connected directly to home agents at the
mobile nodes’ home sites and (2) where the mobile nodes have
moved away from their home sites to a foreign site (Fig. 1;
col. 5, ll. 9-13).
2. Magret teaches that “[h]ome agents 28, 30 preferably support
the functions of mobile IP at the home site 10 by tunneling to
the foreign agent 32 data packets addressed to the mobile nodes
12, 16 when the mobile nodes are away from home” (col. 5,
ll. 17-20).
3. Magret teaches that “[t]he foreign agent 32 preferably supports
the functions of mobile IP at the foreign site by receiving the
tunneled packets from the home agents 28, 30, and forwarding
them to the appropriate mobile node 12, 16” (col. 5, ll. 27-30).
4. Magret teaches that “[w]hen home agent 30 receives a packet
addressed to mobile node 16, it preferably creates two tunnels
to forward the packet to the node. An outer tunnel is created
using a care-of address associated with the foreign agent 32”
(col. 6, ll. 10-13).
5. Magret teaches that in certain circumstances “[t]he foreign
agent 32 . . . sends a registration reply, requesting mobile node
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16 to use a temporary address. This temporary address is sent
along with the registration request to its home agent 30” (col. 6,
ll. 6-9).
PRINCIPLES OF LAW
Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted). In relying
on a purportedly inherent teaching, care must be taken because “[i]nherency
. . . may not be established by probabilities or possibilities. The mere fact
that a certain thing may result from a given set of circumstances is not
sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation
omitted).
ANALYSIS
In the Final Rejection, the Examiner relied on Magret to show the
teaching of “an apparatus comprising: a mobility client . . . assign an outer
IP address” (Fin. Rej. 3), but the Examiner did not explicitly use Magret to
show the limitation of “assigning an outer IP address directly to the mobile
device from the HA [home agent]” (Claims Appx. i, claim 1) (emphasis
added). Instead, the Examiner challenged this limitation under the best
mode requirement of 35 U.S.C. § 112, first paragraph (Fin. Rej. 2).
However, the § 112 rejections have all been withdrawn (Ans. 9-10). Thus,
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the only remaining issue is whether Appellant has demonstrated error in the
Examiner’s finding that Magret teaches assigning an outer IP address
directly to a mobile device from a home agent.
While it is undisputed that Magret discloses a scenario in which
mobile nodes in their home site communicate directly with their home agent
(FF 1), Appellant challenges the relevance of this teaching to the rejection
(Reply Br. 3). Appellant claims that the Examiner has not shown that
Magret teaches the claimed tunneling of packets using inner and outer IP
addresses in this scenario (id.).
Magret only discusses tunneling in the context of communications
involving both a home agent and a foreign agent (FF 2-3). These
communications occur in a second scenario disclosed by Magret in which a
mobile node moving to a foreign site (FF 1). Therefore, we find that the
Examiner has not shown that Magret teaches tunneling of packets using
inner and outer IP addresses when a mobile node is located in its home site.
We also find that the Examiner has not shown that Magret teaches
assignment of an outer IP address directly to a mobile device from a home
agent when the mobile device is located at a foreign site. Magret teaches
that when a mobile node moves into a foreign site, a care-of address
associated with the foreign agent is used to create an outer tunnel (FF 4) and
a temporary address may be assigned by the foreign agent (FF 5). These
teachings give credence to Appellant’s contention that assignment of an
outer IP address would typically come from the foreign agent, not the home
agent (Reply Br. 3). Therefore, the Examiner has not shown that Magret
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either expressly or inherently (established beyond probably or possibility,
see In re Robertson, 169 F.3d at 745) teaches assignment of an outer IP
address to a mobile device from a home agent when the mobile device is
located at a foreign site.
Because the Examiner has not demonstrated the relevance of the first
scenario of Magret to Appellant’s claimed invention, and because the
Examiner has not demonstrated that the second scenario of Magret teaches
all of the limitations of Appellant’s claimed invention, we can not sustain the
Examiner’s rejection. Accordingly, we find Appellant has met the burden of
showing that the Examiner erred in rejecting independent claim 1, and
claims 2-13 which depend therefrom. Furthermore, because the language of
claim 1 is similar to the language of independent claims 14, 19, and 23, we
find Appellant has also met the burden of showing that the Examiner erred
in rejecting independent claims 14, 19, and 23, as well as claims 15-18, 20-
22, 24, and 25 which depend therefrom.
CONCLUSION
Based on the findings of facts and analysis above, we find Appellant
has demonstrated that the Examiner erred in finding that Magret teaches
assigning an outer IP address directly to a mobile device from a home agent.
DECISION
We reverse the Examiner’s decision rejecting claims 1-25.

REVERSED

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Application 10/262,436

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