Ex Parte Oberle et al

Patent Trial and Appeal Board

Feb 13, 2013

11233116 (P.T.A.B. Feb. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/233,116 09/23/2005 Karsten Oberle 29250S-000027/US 8672
30594 7590 02/13/2013
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
EXAMINER
DADA, BEEMNET W
ART UNIT PAPER NUMBER
2435
MAIL DATE DELIVERY MODE
02/13/2013 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 KARSTEN OBERLE and PETER DOMSCHITZ
_____________

Appeal 2010-009247
Application 11/233,116
Technology Center 2400
______________

Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and TREVOR M.
JEFFERSON, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009247
Application 11/233,116

2

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 15.

We affirm-in-part.
INVENTION
The invention is directed a method of routing bi-directional
communications in a communication network. See pages 2 through 4 of
Appellants’ Specification. Claim 1 is representative of the invention and
reproduced below:
1. A method for routing a bi-directional end-to-end
connection between an end subscriber terminal and the domain
of a service provider by means of a signaling protocol via an
interposed firewall with address transformation device, wherein
a security and tunnel device is located in the end-to-end
connection between the end subscriber terminal and the firewall
with address transformation device in the domain of the end
subscriber, and a session border controller is located in the end-
to-end connection in the domain of the service provider, the
method comprising:
setting up a tunnel between the security and tunnel device
and the session border controller;
performing a bi-directional data exchange via the tunnel
between the end subscriber terminal and the domain of the
service provider in the area between the security and tunnel
device and the session border controller by means of a tunnel
protocol, and
storing a correlation between a private address of the end
subscriber terminal and an address of the security and tunnel
device in the session border controller.

Appeal 2010-009247
Application 11/233,116

3

REJECTION AT ISSUE
The Examiner has rejected claims 1 through 15 under 35 U.S.C.
§ 103(a) as unpatentable over Eisenberg (U.S. 2003/0188001 A1) and
Landfeldt (U.S. 2006/0259625 A1). Answer 3-6.
1

ISSUES
Claims 1, 2, and 4 through 15
Appellants argue on pages 14-17 of the Appeal Brief and 4-5 of the
Reply Brief that the Examiner’s rejection of claims 1, 2, and 4 through 15 is
in error.
2
These arguments present us with the issue: did the Examiner err in
finding the combination of Eisenberg and Landfeldt teaches storing a
correlation between a private address and an address of the security and
tunnel device in the session border controller as recited in representative
claim 1?

Claim 3
Appellants’ arguments directed to the rejection of dependent claim 3
presents us with the additional issue: did the Examiner err in finding that the
combination of Eisenberg and Landfeldt teach encrypting data packets by
the session border controller as recited in claim 3?

1
Throughout this opinion we refer to the Examiner’s Answer mailed on
April 13, 2010.
2
Throughout this opinion we refer to Appellants’ Appeal Brief March 1,
2010, and the Reply Brief dated May 10, 2010.
Appeal 2010-009247
Application 11/233,116

4

ANALYSIS
Claims 1, 2, and 4 through 15
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to the Appellants’
arguments. We disagree with Appellants’ conclusion that the Examiner
erred in finding the combination of Eisenberg and Landfeldt teaches storing
a correlation between a private address and an address of the security and
tunnel device in the session border controller.
Appellants’ arguments focus on the Landfeldt reference and assert the
reference teaches a border gateway and not a border controller. App. Br. 14-
15. Further, Appellants argue that the border gateway of Landfeldt teaches
source and destination IP addresses and not the private address of a
subscriber terminal and an address of the security and tunnel device as
claimed. App. Br. 16.
The Examiner finds the border gateway of Landfeldt meets the
claimed border controller as it is a device which is located in the end-to-end
connection of a network that stores correlations as is claimed. Answer 6.
Further, the Examiner notes that many of the features of border controller
cited in Appellants’ arguments are not recited in the claims. Answer 7. We
concur with the Examiner. We note Appellants’ assertion that the argued
features are merely the ordinary and customary features associated with a
border controller, are not persuasive as there is insufficient evidence to
support the argument. Further the Examiner finds that Landfeldt teaches
storing a correlation between a private address and an address of the security
and tunnel device in that the subscriber device is correlated with a tunnel
device by uniquely mapping the tunnel with the devices. Answer 7. We
Appeal 2010-009247
Application 11/233,116

5

concur with the Examiner’s finding, the mapping of private addresses to
tunnels, which are associated with security and tunnel devices, meets the
claimed correlation. As such Appellants’ arguments have not persuaded us
that the Examiner erred in finding the combination of the references teaches
storing a correlation between a private address and an address of the security
and tunnel device in the session border controller as recited in representative
claim 1. Accordingly, we sustain the Examiner’s rejection of claims 1, 2,
and 4 through 15.

Claim 3
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to the Appellants’
arguments. We agree with Appellants’ conclusion that the Examiner erred
in finding the combination of Eisenberg and Landfeldt teach encrypting data
packets by the session border controller as recited in claim 3. The Examiner
cites to Landfeldt paragraph 51 as teaching this limitation. Appellants argue
that this paragraph discusses encapsulation of data packets and not
encrypting packets as claimed. Reply Br. 6. We concur with Appellants.
Accordingly, we will not sustain the Examiner’s rejection of claim 3.

ORDER
The decision of the Examiner to reject claims 1 through 15 is
affirmed-in-part.

Appeal 2010-009247
Application 11/233,116

6

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-IN-PART

ELD