Ex Parte Le et al

Patent Trial and Appeal Board

Nov 8, 2012

10533083 (P.T.A.B. Nov. 8, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/533,083 04/28/2005 Thuy-Phuong Le 2002P03505WOUS 2307
28524 7590 11/09/2012
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
JAROENCHONWANIT, BUNJOB
ART UNIT PAPER NUMBER
2466
MAIL DATE DELIVERY MODE
11/09/2012 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 THUY-PHUONG LE, WERNER LINDERMAN,
NORBERT SCHONFELD
________________

Appeal 2010-004721
Application 10/533,083
Technology Center 2400
________________

Before SALLY C. MEDLEY, JONI Y. CHANG and GLENN J. PERRY,
Administrative Patent Judges.

PERRY, Administrative Patent Judge.

DECISION ON APPEAL
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I. STATEMENT OF THE CASE

Introduction
Appellants invoke1 our review under 35 U.S.C. § 134(a) from the
Examiner’s rejection2 of claims 8-23. Claims 1-7 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

Invention
Appellant describes the invention as exchanging data between an
external device (e.g. ISP) and applications installed on network elements
(e.g. PCs) of a packet-switching network by means of at least one tunnel
connection. Abstract.

Illustrative Claim with Examiner Mapping
Claim 8 is illustrative. It is reproduced below with added bracketed
references to claim limitations and italicized disputed limitations. Footnotes
in the claim indicate Examiner mappings of the claim language to
references.
8. A method for interchanging data between an external
device3 and applications installed on a plurality of network
elements4 of a packet-switching network5 using a tunnel

1 Notice of Appeal filed April 8, 2009.
2 Final Office Action mailed January 8, 2009.
3 “host system 430” shown in Chiles Figure 4. Ans. 3.
4 “client device having computer software that enables the client devices ...
to communicate with the host system." described in Chiles ¶ [0011]. Ans.
3.
5 A packet switching network is implied by the use of TCP/IP by the client
device described in ¶ [0060] of Chiles. Ans. 3.
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connection, 6 wherein each network element is connected to a
network node device,7 and wherein the network node device is
involved in the tunnel connection, 8 the method comprising:
[a] assigning to the network node device a globally
unique address9 so that the network node device forms a
network-end terminal point of the tunnel connection10 when a
plurality of network elements jointly use the tunnel connection;
11 and
[b] assigning to a network element a globally unique
address so that the network element forms a network-end
terminal point of the tunnel connection when the network
element requires a global address for executing an
application,12 and when the tunnel connection is exclusively
used by the network element,13
[c] wherein all data are routed through the network node
device, and wherein the network node device is a terminal point
or a data-routing entity14 of the tunnel connection.15
(App. Br. 17, Claims Appendix).

Evidence Considered
The Examiner relies on the following prior art in rejecting the claims:

6 A "communication tunnel" is described in Chiles’ Abstract and "Layer
Two Tunneling Protocol" is described in Chiles ¶ [0058]. Ans. 3.
7 “home gateway” described in Chiles Abstract. Ans. 3.
8 Chiles ¶ [0063]. Ans. 3.
9 “IP address from the host system” described in Chiles ¶ [0087], lines 17-
21 and ¶ [0088], lines 6-8. Ans. 3.
10 A NAT enabled router, as described by Chiles is known in the art to be a
terminal point of the tunnel connection from the point of view of an external
network. Ans. 4.
11 Chiles ¶ [0070], lines 13-16 and ¶ [0063], lines 4-10. Ans. 4.
12 Chiles ¶ [0096], lines 12-16. Ans. 4.
13 SGI Fig. 3.2 and associated explanation in accompanying text. Ans. 4.
14 SGI Figure 3.2 “Router 1” and “Router 2”. Ans. 4.
15 Chiles ¶ [0070], lines 13-16 and ¶ [0063], lines 4-10. Ans. 4.
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Chiles US201/0034759 A1 October 25, 2001

SGI, IRIX Admin: Networking and Mail, Techpubs Library, Chapter
3, document number: 007-2860-001, pp. 1-32 (Mar. 18, 1996).

Microsoft TechNet, Microsoft Privacy Protected network Access:
Virtual Private Networking and Intranet Security, pp. 1-9 (May 13, 1999).

The Rejections
1. The Examiner rejected claims 8, 10-11, 13, 15 and 20-23 under
§ 103 based on Chiles and SGI. (Ans. 3).
2. The Examiner rejected claims 9, 12, 14 and 16-19 under § 103
based on Chiles, SGI and Microsoft TechNet. (Ans. 7).

Examiner’s Findings and Conclusions
The Examiner relies upon Chiles as teaching tunneling as described
by disputed claim limitation [a] and a portion of disputed claim limitation
[b] (Ans. 3-4), citing primarily to Chiles Fig. 4 and its accompanying
description. Chiles Fig. 4, reproduced below, describes a system in which a
plurality of network elements 405 (e.g. PCs, PDAs, etc.) are connected to a
host system 430 through a home gateway device 415 (e.g. router).
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Chiles Fig. 4.

The Examiner notes that a host assigned “independent” address (for
one of network elements 405) may function 1) as a local address for use on
the network connecting a client device (505 shown in Fig. 5) to a home
gateway (1315 shown in Fig. 13) and 2) as an external address for use
between the client device 505 and host system 530 (shown in Fig. 5). Ans.
3-4 (citing to Chiles ¶ [0096]).
The Examiner also finds that SGI Fig. 3.2 and its associated
instructions teach tunneling as described by disputed limitation [b] (Ans. 3-
4). According to the Examiner, SGI Fig. 3.2 and its accompanying text
establish that a tunnel is constructed for exclusively carrying data between a
node of Net A and a node of Net C. Ans. 11. SGI Fig. 3.2 is reproduced
below.
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SGI Fig. 3.2

Appellants’ Arguments and Contentions
Appellant argues that:
1. SGI Fig. 3.2 does not teach “the tunnel connection is exclusively
used by the network element.” App. Br. 8.16 This argument is repeated as to
claim 23. App. Br. 11.
2. SGI does not teach that a “router” as pictured in SGI Fig. 3.2 is
involved in the tunnel connection. App. Br. 8.
3. “[M]ulticast transmission” as described in SGI does not preclude
other network elements from jointly using the same tunnel connection. App.
Br. 9.
4. "[W]hile arguing that an exclusive tunnel connection exists
between hosts on NET A and NET B, the EXR cannot also find that these
same routers perform no other transmission while a tunnel exists between
the two hosts." App. Br. 8, 12.

16 All references to “App. Br.” refer to the Amended Appeal Brief filed
September 23, 2009.
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5. There is no prior art of record to support a Legacy System that the
Examiner used as a motivation to combine Chiles and SGI references in the
rejections. App. Br. 9 and 13.

II. ANALYSIS

Claim 8
The specification describes two types of tunneling that were known at
the time of invention. Spec. 1-8. The first kind of known tunneling is used
when a network node device (e.g. router) connects multiple network
elements (e.g. PCs) to a network (e.g. internet service provider (ISP)). The
router is assigned a globally unique address. All traffic intended for any PC
attached to the router is sent to that globally unique address. The router
distributes network traffic to/from individual PCs using a local address
known to the PC and router. Id. This type of tunneling is also illustrated by
Chiles Fig. 4.
The second known type of tunneling is used to connect a single
network element, having a globally unique address assigned to that network
element. For example, a PC may be directly connected to a MODEM which
has a data connection to an ISP. For a PC to run certain kinds of software,
its own globally unique address is required. Such software does not perform
properly when a router is translating a global address into a local address and
vice versa. Examples of such applications include “Microsoft Net Meeting”
and “active ftp.” Spec. 6. This type of tunneling is also illustrated by SGI
Fig. 3.2 and explained by its accompanying text. Appellant states that for
this second type of tunneling it was known to connect a PC directly to a
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modem rather than connecting it through a network node (router) serving
multiple network elements (PCs). Id. at 4.
Changing PC operation between these two different types of tunneling
requires manual unplugging and plugging, which is inconvenient. Spec. 8.
Appellant describes the invention as solving this problem by providing
structure associated with a network node device (e.g. router) that permits it
to establish either type of tunneling and to easily switch between them
without having to “recable.” Id. at 8a. An embodiment of such structure is
shown in Application Figures 3 and 4,17 reproduced below.

Application Fig. 3 shows a tunneled connection which connects the router to
the Internet service provider via a modem. Fig. 4 shows a tunneled
connection which is connected between the network element and the
Internet service provider via the router. Spec. 9-10.

The Fig. 3 arrangement illustrates tunneling of the type described in
disputed limitation [a], namely - assigning a globally unique address to a
router allowing it to become a terminal of a tunnel that can communicate the
tunnel with a plurality of PCs that are locally addressed by the router using
PPP protocol. Setup and cleardown of this PPP connection are controlled by

17 Claim 8 describes a method carried out by the illustrated structure.
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a connection control device CC.18 Spec. 11.
Application Fig. 4 illustrates tunneling of the type described by
disputed limitation [b] in which a tunnel is formed from one particular PC to
an ISP without local addressing. A globally unique address is assigned to a
particular PC, making it a tunnel end and bypassing local addressing. The
CC has the ability to assign two different globally unique addresses so that
either type of tunneling described in the method of claim 8 can be easily
carried out without making and breaking physical connections and setup
configuration. Spec. 11-12. Essentially, the invention amounts to putting
both types of tunneling in the same box.
Appellant argues that SGI Fig. 3.2 does not teach “the tunnel
connection is exclusively used by the network element.” App. Br. 8. This
argument is repeated as to claim 23. App. Br. 11. The disputed claim
limitation reads:
[b] assigning to a network element a globally unique
address so that the network element forms a network-end
terminal point of the tunnel connection when the network
element requires a global address for executing an
application,19 and when the tunnel connection is exclusively
used by the network element,20

We construe this claim limitation, using the standard of the broadest
reasonable interpretation consistent with the specification, to require that
whenever it is desired that one end of a tunnel is to be formed by a network
element (such that all data flowing through the tunnel flows to that network

18 “CC” in Application Figures 3 and 4.
19 Chiles ¶ [0096], lines 12-16. Ans. 4.
20 SGI Fig. 3.2 and associated explanation in accompanying text. Ans. 4.
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element), that network element should be assigned a globally unique
address. Our construction encompasses the SGI disclosure.
SGI Fig. 3.2 would suggest to the ordinarily skilled artisan that a
tunnel is being formed between a “host” (network element) on “Net A” and
a “host” (network element) on “Net C.” That tunnel utilizes a physical route
through “Router 1” and “Router 2.” As pictured, the network elements at
the two ends of the tunnel are each labeled “Host.”
Appellant argues that SGI does not teach that a “router” as pictured in
SGI Fig. 3.2 is involved in the tunnel connection. App. Br. 8. We disagree.
The Examiner correctly infers at Ans. 11 that SGI Fig. 3.2 shows “Router 2”
as a physical gateway to network Net A and “Router 1” as a physical
gateway to network Net C. To emphasize that the routers were part of the
tunnel connection, the Examiner notes that SGI creates the tunnel in order to
accommodate the incompatible routers so that packets can be sent through
such routers as shown. See SGI ¶ before figure 3.2 on page 11/32.
Appellant then argues that “multicast transmission” as described in
SGI does not preclude other network elements from jointly using the same
tunnel connection. This argument is not commensurate in scope with claim
8, as construed above. The SGI tunnel connection is created when the
routers do not support multicast routing as an example of a particular
protocol not supported by the routers. Ans. 11-12 (citing to SGI pages 11-
12). In the cited example the tunnel is created for the exclusive use of the
two hosts to communicate in a protocol not otherwise supported.
Appellant argues that "while arguing that an exclusive tunnel
connection exists between hosts on NET A and NET B,” the Examiner
cannot also find that these same routers perform no other transmission while
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a tunnel exists between the two hosts. App. Br. 8 and 12. That is not the
Examiner’s position. The Examiner found that the text instructions
associated with SGI Fig. 3.2, along with SGI Fig. 3.2 itself, teach how to
establish a tunnel between network elements (“Host”) on Net A and Net C.
This tunnel is only used for communication between these hosts. Ans. 11.
That is what the claim, as written, requires. The claim does not preclude
other types of communication taking place.
An ordinarily skilled artisan would have been motivated to combine
the teachings of Chiles and SGI. Chiles itself recognizes an advantage in
supporting two-types of addressing and tunneling. As described in Chiles ¶
[0096]: “The host-assigned independent address may function as both a
local address for use on the network (510 from FIG. 5) between the client
device 505 and the home gateway device 1315, and as an external address
for use between the client device 505 and the host system 530.” Appellant
confirms the advantage of such flexibility in noting the inconvenience of
having to “recable” in order to switch between tunneling modes. Spec. 8-8a.
This Appellant stated problem is not part of the described invention, but
rather an acknowledgement of a situation that existed prior to Appellant
describing the invention. Taking into account the problem noted by
Appellant, and statements within Chiles, there is ample motivation to
combine the teachings of Chiles and SGI. “A person of ordinary skill is also
a person of ordinary creativity, not an automaton.” KSR Int'l Co. v. Teleflex,
Inc., 550 U.S. 398 (2007). The Examiner’s reference to “Legacy Systems”
was not for the purpose of combining Chiles with a “legacy system” but
rather to support the Examiner’s interpretation of what SGI teaches. It
teaches a point to point tunneling in order to support legacy system protocols
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(e.g. “multicast routing”) that may no longer be supported by a new protocol
on which the hosts operate. Ans. 12.
For the above reasons we sustain the rejection of claims 9-22.

Claim 23
Claim 23 requires “the network node device forms the network-end
terminal point of the tunnel connection if a plurality of network elements
jointly use the tunnel connection,” and “if a network element requires a
global address for executing an application, the network element forms the
network-end terminal point of the tunnel connection when the tunnel
connection is exclusively used by the network element.”
Appellant advances the same argument regarding “exclusively used”
as advanced with respect to claim 8. We sustain the rejection of claim 23.

Claims 13-15
Claims 13-15 are separately argued. App. Br. 14. However, they are
argued based on a requirement of claim 8. We sustain the rejection of
claims 13-15.

Claim 20
Claim 20 is separately argued. App. Br. 14-15. Claim 20 requires
that a network node device is alternately a terminal point or a data routing
entity of the tunnel connection. Given that both types of tunneling and how
to establish each were known at the time of the invention, it would have
been apparent to the ordinarily skilled artisan to fabricate a circuit
arrangement as set forth in the Fig. 3 and Fig. 4 embodiments to accomplish
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either type of tunneling at will. We sustain the rejection of claim 20.

Claim 21
Claim 21 is also separately argued. App. Br. 15. Claim 21 requires
that a network node device is simultaneously a terminal point and a data
routing entity of the tunnel connection. As with claim 20, given that it was
known how to establish both types of tunneling at the time of the invention,
it would have been apparent to the ordinarily skilled artisan to fabricate a
circuit arrangement as set forth in the Fig. 3 and Fig. 4 embodiments. We
sustain the rejection of claim 21.

III. CONCLUSION
For the forgoing reasons, the rejections of claims 8-23 under § 103 are
sustained.

IV. DECISION
We affirm the Examiner’s decision to reject claims 8-23.
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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