Ex Parte Kettlewell et al

Patent Trial and Appeal Board

Jul 28, 2014

10911378 (P.T.A.B. Jul. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL & APPEAL BOARD
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Ex parte PAUL KETTLEWELL, JULIAN MITCHELL, and
SUJATA ARAMBEPOLA
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Appeal 2011-012925
Application 10/911,378
Technology Center 2600
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Before: JENNIFER D. BAHR, CHARLES N. GREENHUT, and
JAMES P. CALVE, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1–3, 5–11, 13–21, and 23–31. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE
Appeal 2011-012925
Application 10/911,378

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The Claimed Subject Matter
Claim 1, reproduced below, with emphasis added, is illustrative of the
claimed subject matter:
1. A method of communicating operational information for use
in a network management system across a NAT or firewall
connecting a first and a second network, the method comprising
the steps of:
generating information indicating a detected operational
condition of a device or equipment in the first network;
inserting the generated information in a keep alive
message for maintaining a NAT bind or firewall pinhole in the
NAT or firewall; and
sending the keep alive message across the NAT or
firewall to an entity in the second network.

Rejections1
Claims 1–3, 5–11, 13–21, and 23–31 stand rejected under 35 U.S.C.
103(a) as being unpatentable over Afshar. Ans. 4.

OPINION
We reverse the Examiner’s rejection of claims 1–3, 5–11, 13–21, and
23–31 under 35 U.S.C. 103(a).
In rejecting each of the independent claims involved in this appeal, the
Examiner found that Afshar shows a “keep alive” message being sent across
the NAT or firewall because Afshar uses the Session Initiation Protocol
(SIP) for communication. Ans. 5. The Examiner specifically points to
Appellants’ Specification to attempt to establish that the mere transmission
of the REGISTER message in the SIP protocol constitutes a “keep alive”

1 The Examiner withdrew the rejection of claims 29–31 under 35 U.S.C.
§ 101.
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Application 10/911,378

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message. Ans. 14. The description of the standard usage of a REGISTER
message relied upon by the Examiner is as follows:
Registration creates bindings in a location service for a
particular domain that associates an address-of-record URI with
one or more contact addresses. Thus, when a proxy for that
domain receives a request whose Request-URI matches the
address-of-record, the proxy will forward the request to the
contact addresses registered to that address-of-record.
Generally, it only makes sense to register an address-of-record
at a domain's location service when requests for that address-of-
record would be routed to that domain. In most cases, this
means that the domain of the registration will need to match the
domain in the URI of the address-of-record.

There are many ways by which the contents of the location
service can be established. One way is administratively. In the
above example, Bob is known to be a member of the
engineering department through access to a corporate database.
However, SIP provides a mechanism for a UA to create a
binding explicitly. This mechanism is known as registration.
Ans. 14–15 (citing RFC 3261 at 56).
The REGISTER message as described is a function for creating
bindings and it is not suggested by the prior art that it might also be used as a
“keep alive” message or that it might be used in an algorithm designed to
maintain a NAT bind or firewall pinhole; moreover, as Appellants have
correctly pointed out, none of the fields in the specification for the
REGISTER message as described in the references cited by the Examiner
contain the operational condition of a device or equipment. The mere fact
that equipment receiving such a message might use it to infer such a status is
insufficient and we agree with Appellants that it is insufficient to establish
inherency. The use of Appellants’ Specification to establish that the
REGISTER message could be used in a context other than that for which it
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Application 10/911,378

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was designed, without further evidence that it has been used in such a
manner in the art, is impermissible hindsight reasoning. The Examiner has
failed to establish a prima facie case that Afshar renders obvious the subject
matter of independent claims 1, 5, 8, and 13.
Regarding independent claims 17, 23, 26, and 29, the Examiner
states that control commands are inserted into keep alive messages because
the “Session Initiation Protocol (SIP) also uses call admission control
commands employed through call control element (figure 1 element 118)
which enforces admission policies in relation to firewall and NAT bindings
to permit or deny calls from a device.” Ans. 18. We agree with Appellants
that, in addition to the deficiencies regarding claim 1, the Examiner’s
general assertion about SIP functionality does not specifically point out what
control command is being inserted into a message that is being used as a
“keep alive.” Appeal Br. 15. Therefore, the Examiner has not established a
prima facie case that Afshar renders obvious the subject matter of claims 17
and 23. For similar reasons, the Examiner fails to establish a prima facie
case that Afshar renders obvious the subject matter of claims 26 and 29.
Accordingly, we do not sustain the Examiner’s rejections of claims
1, 5, 8, 13, 17, 23, 26, and 29 and of their dependent claims 2, 3, 6, 7, 9–11,
14–16, 18–21, 24, 25, 27, 28, 30, and 31.
DECISION
For the above reasons, the Examiner’s decision is REVERSED.

REVERSED
Klh