Ex Parte Rajsic

Board of Patent Appeals and Interferences

Dec 13, 2010

10814330 (B.P.A.I. Dec. 13, 2010)

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.
10/814,330 04/01/2004 Carl Rajsic ALC 3124 5344
7590 12/13/2010
KRAMER & AMADO, P.C.
1725 Duke Street, Suite 240
Alexandria, VA 22314
EXAMINER
MOORE JR, MICHAEL J
ART UNIT PAPER NUMBER
2467
MAIL DATE DELIVERY MODE
12/13/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARL RAJSIC
_____________

Appeal 2009-006982
Application 10/814,330
Technology Center 2400
____________

Before KENNETH W. HAIRSTON, THOMAS S. HAHN, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the “MAIL
DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic
delivery mode) shown on the PTOL-90A cover letter attached to this
decision.
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Application 10/814,330

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In a Decision dated August 31, 2010, the Board affirmed the
anticipation rejection of claims 1, 5, 7, and 9 to 13, and the obviousness
rejections of claims 2, 3, 6, and 8. In the Decision, the Board also reversed
the anticipation rejection of claim 4. Appellant has requested a rehearing of
our decision to affirm the anticipation and obviousness rejections of claims 1
to 3 and 5 to 13 (Req. Reh’g. 1, 5).2
In the Decision, we determined the following (see Dec. 10-11):
(1) Hall explicitly or inherently discloses multiservice switches and a
method, and computer program performing a method, for establishing a
secure Layer-3 connection across an ATM network, as set forth in claims 1
and 10 to 13. Hall discloses “anticipated security information” (independent
claims 1 and 10 to 13) and “configuring” (claim 1) or embedding an MSS
with such information (claims 10 to 13). See Dec. 8-9; FF 2, 3.
(2) Hall does not teach the interlock codes set forth in claim 4. See
Dec. 9-10; FF 4.
(3) Appellant has not shown the Examiner erred in rejecting claims 1,
5, 7, and 9 to 13 under 35 U.S.C. § 102(e) or claims 2, 3, 6, and 8 under 35
U.S.C. § 103(a). See Dec. 10-11.
(4) Appellant has shown the Examiner erred in rejecting claim 4 under
35 U.S.C. § 102(e). See Id.

2 Appellant requests rehearing of the anticipation rejection of claims 1, 4, 5,
7, and 9 to 13 (Req. Reh’g. 1), and asks the Board to “reconsider its decision
to affirm the rejections of claims 1-13” (Req. Reh’g. 5). Since our Decision
reversed the anticipation rejection of claim 4 (Dec. 11), we will reconsider
our Decision with regard to the anticipation rejection of claims 1, 5, 7, and 9
to 13, and the obviousness rejections of claims 2, 3, 6, and 8.
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We have reconsidered our Decision of August 31, 2010, in light of
Appellant’s comments in the Request, and we find no errors therein. We
therefore decline to change our prior decision for at least the following
reasons.
In the decision, the Board provided some elucidation of the portions
of Appellant’s Specification related to the claimed “anticipated security
information” and the configuring of the terminating MSS with that
information:
Appellant describes a method for securely establishing a
Layer-3 connection using an ATM network 12 including
originating multiservice switches (MSSs) (Spec. ¶¶ [01] and
[02]). A setup message including security information is sent
from an originating MSS 18 over an ATM network 12 to a
terminating MSS 24 (Fig. 1). The security information may
include a closed user group interlock code (Spec. ¶ [14). The
terminating MSS 24 is configured with anticipated security
information which can be a closed user group interlock code
(Spec. ¶¶ [16], [17]; originally filed claim 1).
(Dec. 5; FF 1). Although the Board found in the original decision that Hall
teaches away from using interlock codes as recited in claim 4 (Dec. 9),
Hall’s closed user group identifiers serve the recited function of “anticipated
security information” as set forth in claims 1 to 3 and 5 to 13.
Appellant contends that the Decision misapprehends Appellant’s
argument that Hall fails to disclose “‘configuring the terminating MSS with
anticipated security information’” (Req. Reh’g. 2), because “Hall does not
make use of, and is therefore not configured with, any anticipated security
information” because “Hall retrieves all closed group identifiers” (Req.
Reh’g. 3). We disagree, and note that Appellant admits “the Decision
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correctly notes that the phrase ‘only’ does not occur in claims 1, 5, 7, and 9-
13” (Req. Reh’g. 2).
As stated in the original Decision:
The phrase “only” does not occur in claims 1, 5, 7, and 9
to 13, nor do these claims limit operations to just a subset or
part of the security information. In our view, independent
claims 1, and 10 to 13 do not encompass the concept of
operating on only part of the security information. Inasmuch as
Appellant’s arguments in this regard are not commensurate
with the language of the claims, this line of reasoning is not
persuasive.
We find that Hall discloses anticipated security
information and embedded security information inasmuch as
Hall’s security information (i.e., closed user group identifiers
for called parties and calling parties) performs the same
function as Appellant’s security information used for call setup
and authorization for a Layer-3 connection in a closed user
group over an ATM network (compare FF 1 with FF 2 and 3).
The security information recited in claim 1 would be reasonably
understood by one of ordinary skill in the art to encompass
Hall’s closed user group identifiers for called and calling parties
because a call is authorized and established based on a check of
the closed user group identifiers (FF 2 and 3).
(Dec. 8).
Similarly, Appellant’s argument that Hall’s closed group identifiers
cannot be characterized as anticipated security information “because a call
may be set up regardless of whether a matching pair of closed group
identifiers is found” is unpersuasive (Req. Reh’g. 3) because Hall’s blocks
526 and 530 in Figure 5 provide conditions where a call is not set up when
no match of security information is found. In other words, Appellant’s
assertion that “a call may be set up even if matching closed group identifiers
are not present” (Req. Reh’g. 3 (emphasis omitted) (citing Hall, Fig. 5,
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reference characters 508, 512, and 522-532)) is incorrect, because Hall
discloses at blocks 526 and 530 conditions upon which a call set up fails and
is rejected when no closed user group identifier match is found.
Appellant also contends that the Decision misapprehends Hall’s
disclosure because the claimed subject matter performs a different function
than Hall’s closed group identifiers (Req. Reh’g. 4). Appellant asserts that
the recited “anticipated security information” is used to verify received
security information, thereby ensuring that a secure connection is being
established and allowing for detection of possible security breaches (Req.
Reh’g. 4). This line of reasoning is unpersuasive inasmuch as independent
claims 1 and 10 to 13 do not recite verification, or ensuring against possible
security breaches. Instead, we find that the claims at issue describe
“configuring the terminating MSS with anticipated security information”
(claim 1 (emphasis added)), determining whether embedded security
information matches the anticipated security information (claim 1),
comparing the embedded security information with the anticipated security
information (claims 10 and 11), storing anticipated security information
(claim 12), and retrieving anticipated security information (claim 13).
In our original decision, we found that Hall describes a method for
establishing an SVC over an ATM network with closed user groups in the
flowchart of Figure 5 (col. 18, l. 32 through col. 21, l. 37). Dec. 5; FF 2.
Hall describes “using a database” to store the closed user group identifiers
(col. 19, l. 50). We found that Hall describes retrieving closed user group
identifiers to determine a match (e.g., when a closed user group identifier
common to both the called and calling party is found in block 508) (Dec. 6;
FF 3). Thus, Hall establishes a secure connection by configuring, storing,
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retrieving, and matching closed user group identifiers (i.e., anticipated
security information).
We have carefully considered the arguments raised by Appellant in
the Request, but none of these arguments is persuasive that the original
decision was in error. We find that Appellant has not shown the Board erred
in finding that (i) claims 1, 5, 7, and 9 to 13 are anticipated by Hall, (ii) Hall
discloses anticipated security information inasmuch as Hall’s closed user
group identifiers perform the same function as Appellant’s security
information, and (iii) the combination of Hall and the applied secondary
references teaches or suggests “configuring the terminating MSS with
anticipated security information” in sustaining the rejections of claims 2, 3,
6, and 8 under 35 U.S.C. § 103.
In summary, Appellant’s request for rehearing has been granted to the
extent that our decision has been reconsidered, but such request is denied
with respect to making any modifications to the Decision.

REHEARING
DENIED

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