Ex Parte Nakamura et al

Patent Trial and Appeal Board

Dec 24, 2013

11908333 (P.T.A.B. Dec. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KEN NAKAMURA, TAKESHIGE AOYAMA,
and YUJI YAMAWAKI
____________________

Appeal 2011-009117
Application 11/908,333
Technology Center 2400
____________________

Before JEAN R. HOMERE, JEFFREY S. SMITH, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL1

1 An oral hearing for this appeal was held November 19, 2013.
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Application 11/908,333

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 13-33. Claims 1-12 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
Appellants’ invention relates to communication between relay devices
separated by a firewall, the relay devices transmit and receive User
Datagram Protocol (UDP) communication across the firewall. A relay
device behind a firewall communicates with another relay device located
outside the firewall, i.e., to traverse the firewall, without converting the UDP
data into data of another format. Spec. ¶ [0030].
Illustrative Claim
Independent claim 13 further illustrates the invention. It reads as
follows:
13. A relay device comprising:
a connection with a communication network, the network
connected to a plurality of relay devices outside firewalls;
a control unit for performing information processing
including a communication through said connection, the control
unit configured to forward and mediate a UDP communication
with said plurality of relay devices outside the firewalls by
using UDP communication packets in a global address space;
and
a relay processing unit for forwarding and mediating a
UDP communication performed with a communication address
local to a firewall by action of said control unit by transmitting
and receiving the UDP communication in a TCP simulated
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communication with a counterpart relay device across said
firewall.

Rejections on Appeal
The Examiner rejected claims 13-33 under 35 U.S.C. § 103(a) as
being unpatentable over Eisenberg (US 2003/0188001 A1, Oct. 2, 2003) and
Buck (US 2002/0186683 A1, Dec. 12, 2002). Ans. 15-19.

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 7-12, and the Reply Brief, pages 2-8.
Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in
finding that the combination of Eisenberg and Buck teaches or suggests a
control unit configured to forward and mediate a UDP communication with
said plurality of relay devices outside the firewalls by using UDP
communication packets in a global address space, as recited in claim 13?
Appellants argue that the proposed combination of references does not
teach or suggest the disputed limitations emphasized above. App. Br. 9-12;
Reply Br. 3-8. According to Appellants, Eisenberg discloses a tunneling
system for traversing firewalls, but Appellants argue that “on the Internet
side 40, Eisenberg uses TCP protocol, and for the tunneling, the data traffic
is encapsulated into a TCP/IP frame, so that a UDP packet will be passed
through the tunnel as a TCP/IP connection.” App. Br. 10-11 (emphasis
omitted). However, Appellants argue that in view of Buck’s disclosure of
sending and receiving UDP packets “one of ordinary skill in the relevant
telecom art would not be encouraged to follow the solution of Buck’s . . .
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where UDP communication is used to traverse his firewall 20,” and thereby
teaches away from the invention. App. Br. 11-12; Reply Br. 7-8.
In response, the Examiner finds that both Buck and Eisenberg teach
“sending data packets across the firewall.” Ans. 21 (citing Buck Fig 1 and
Eisenberg Fig 8). Rather, it would provide the ordinarily skilled artisan with
additional techniques for conveniently sending data packets through tunnel
connections created between devices on the opposite sides of the firewall.
Accordingly, such proposed combination does not teach away from the
invention. Ans. 21.
Based upon our review of the record before us, we find no error with
the Examiner’s obviousness rejection regarding claim 13. We note at the
outset that there is no material dispute as to the above teachings of Eisenberg
and Buck stipulated by both Appellants and the Examiner. Rather,
Appellants dispute the Examiner’s conclusion that one of ordinary skill in
the art would have found it obvious to combine Eisenberg’s teaching of a
tunneling system with Buck’s system of connecting a relay device to
multiple relay devices across the internet. Reply Br. 2-4. Therefore, the
pivotal issue before us turns on whether the combination of the afore-cited
teachings of Eisenberg and Buck as proposed the Examiner would be proper
within the context of obviousness. We answer this inquiry in the
affirmative.
The U.S. Supreme Court has held that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int'l Co. v. Teleflex, Inc.,
550 U.S. 398, 416 (2007). The Court further instructs that:
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[o]ften it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason for combining the known elements in a the fashion
claimed by the patent at issue.

Id. at 418.
Additionally, the Court instructs that:
[r]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness . . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. (citation and internal quotation marks omitted).
We find that the ordinarily skilled artisan, being a creative individual
would have been able to fit the teachings of Eisenberg and Buck (including
established knowledge in the art) together like pieces of a puzzle to
predictably result in the disputed limitations. In particular, we agree with
the Examiner that the proffered combination of Eisenberg with Buck would
predictably result in a system capable of transmitting and receiving voice,
video and other data over the internet and allowing the exchange of TCP /IP
and/or UDP type data packets through tunnel connections created between
devices on the opposite sides of the firewall. Ans. 21. In our view, such a
statement suffices as an articulated reason with a rational underpinning to
support the proffered combination. As noted above, the case law allows the
Examiner to look to the state of the prior art, including the knowledge of the
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ordinarily skilled artisan to arrive at such a reason for combining the known
elements of the prior art. Consequently, the Examiner’s reliance upon
widely available knowledge in order to arrive at an articulated reason with a
rational underpinning to support the proffered combination is proper.
We are also not persuaded by Appellants’ argument that no “global
address space” is used in Buck “because his firewall has to allow UDP
communication as a condition precedent to perform UDP packet transfer.”
App. Br. 10. Buck explicitly discloses transmission over the Internet (Ans.
20 (citing Buck ¶ [0033])) that corresponds to the global address space,
because claim 13 does not preclude such a reading of the global address
space.
Regarding Appellants’ argument about “only one pair of relay devices
needs to be provided on the caller client side” (Reply Br. 5), Appellants’
arguments are not commensurate with the scope of claim 13, because claim
13 does not recite only one pair of relay devices.
It follows that Appellants have not shown error in the Examiner
rejection of claim 13.
Regarding the rejection of claims 14-33, because Appellants have not
presented separate patentability arguments, claims 14-33 fall therewith. See
37 C.F.R. § 41.37(c)(1)(vii). Consequently, we find no error in the
Examiner’s rejection of claims 13-33.
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DECISION
We affirm the Examiner’s rejection of claims 13-33 as set forth above.

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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