Ex Parte Rajsic

Board of Patent Appeals and Interferences

Aug 31, 2010

10814330 (B.P.A.I. Aug. 31, 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 08/31/2010
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
08/31/2010 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 APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, 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.

Appeal 2009-006982
Application 10/814,330

Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1 to 13. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appellant’s invention relates to multiservice switches (MSS) and a
method for securely establishing Layer-3 switched virtual circuit (SVC) or
soft permanent virtual circuit (SPVC) connections to carry internet protocol
(IP) traffic over an asynchronous transfer mode (ATM) (Fig.1; Abstract;
Spec. ¶¶ [01] and [02]). More specifically, Appellant discloses and claims
configuring an MSS with security information to be sent in a setup message,
analyzing the security information, and then establishing a Layer-3
connection depending on the outcome of the analysis (Abstract; Spec. ¶¶
[10], [14]-[17]; claims 1, 10 to 13). The MSSs provide customer premises
equipment with access to the ATM network (Spec. ¶ [03]).
Claims 1 is representative of the claimed invention and reads as
follows:
1. A method of establishing a secure Layer-3 connection across an
ATM network, the Layer-3 connection having a first endpoint at an egress
port of an originating multiservice switch (MSS) and a second endpoint at an
ingress port of a terminating MSS, the method comprising the steps of:
configuring the terminating MSS with anticipated security
information;
at the originating MSS, generating a setup message including
embedded security information;
sending the setup message to the terminating MSS;
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at the terminating MSS, extracting the embedded security information
from the setup message;
determining whether the embedded security information matches the
anticipated security information; and
if the embedded security information matches the anticipated security
information, establishing the Layer-3 connection.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Shirakawa US 2002/0064159 A1 May 30, 2002
Bi US 6,757,278 B1 Jun. 29, 2004
(filed Nov. 6, 2000)
Hall, Jr. (Hall) US 7,130,393 B2 Oct. 31, 2006
(filed Jan. 20, 2000)

(i) The Examiner rejected claims 1, 4, 5, 7, and 9 to 13 under 35
U.S.C. § 102(e) as anticipated by Hall.
(ii) The Examiner rejected claims 2 and 3 under 35 U.S.C. § 103(a)
based upon the teachings of Hall and Shirakawa.
(iii) The Examiner rejected claims 6 and 8 under 35 U.S.C. § 103(a)
based upon the teachings of Hall and Bi.
With regard to the anticipation rejection of claims 1, 4, 5, 7, and 9 to
13, as well as the obviousness rejections of claims 2, 3, 6, and 8, the
Examiner relies on Hall (see col. 8, ll. 2-9 and 21-24; col. 10, l. 23 to col. 11,
l. 4; housing 10 and lens 28) as teaching the recited limitation of configuring
an MSS with security information (Ans. 3-4 and 10-13). The Examiner
finds that Hall’s called party user group identifiers are equivalent to
Appellant’s recited “anticipated security information” (Ans. 10-11) and that
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Hall teaches configuring an MSS with security information at column 19,
lines 57-59 (Ans. 3, 12).
Appellant argues, inter alia (App. Br. 6-11; Reply Br. 4-5), that Hall
(i) selects and operates on all closed user group identifiers instead of only
the anticipated closed user group identifiers, (ii) fails to disclose the recited
“anticipated security information,” (iii) does not configure an MSS with
anticipated security information but simply retrieves and makes the
information readily available, and (iv) fails to disclose using closed user
group interlock codes as recited in claim 4.
Based on Appellant’s arguments, the issues presented are:
(i) Does the broadest reasonable interpretation of claims 1 and
10 to 13 encompass operating on only anticipated security
information, as opposed to all security information?
(ii) Does Hall disclose “anticipated security information,” as set
forth in claims 1 and 10 to 13?
(iii) Does Hall disclose “configuring” an MSS with anticipated
security information, as set forth in claim 1?
(iv) Does Hall disclose using closed user group interlock codes,
as set forth in claim 4?
Because Appellant has not disputed the merits of the obviousness
rejections of claims 2, 3, 6, and 8 other than to contend that (i) these claims
are allowable for the same reasons as given for claim 1, (ii) these claims
contain separately patentable subject matter that is not argued with
particularity, and (iii) Shirakawa and Bi fail to cure argued deficiencies of
Hall (see App. Br. 12), we will resolve the obviousness rejections of claims
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2, 3, 6, and 8 for similar reasons provided infra with regard to the
anticipation rejection of claim 1.

FINDINGS OF FACT (FF)
1. 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).
2. Hall describes an ATM network having closed user groups that
authorizes calls using closed user group identifiers for a calling party
and a receiving party (Abstract). Hall uses “various signaling or ATM
messages” in the ATM network to setup and establish a switched
virtual circuit connection between a calling party and a called party
(col. 2, ll. 47-50), including an ATM setup message (col. 12, ll. 29-36;
col. 14, ll. 10-17). 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).
3. With regard to Figure 5, Hall states that ATM setup messages have
certain information extracted from them and provided to the called
party’s switch (MSCP 44) “for analysis and closed user group service
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processing” (col. 19, ll. 40-48; step 504 in Fig. 5). “All closed user
group identifiers for the calling party, or calling user, are retrieved”
(col. 19, ll. 48-50). Then, “all of the closed user group identifiers
associated with the called party are retrieved or are made readily
available” at step 506 (col. 19, ll. 57-59; step 506 in Fig. 5). In step
508 “a closed user group identifier that is common to both the calling
party and the called party is found or located” (col. 20, ll. 1-3; step
508 in Fig. 5). At step 520, the call is authorized for the closed user
group and a connection is established (col. 20, ll. 61-64; step 520 in
Fig. 5).
4. With regard to the use of interlocking codes to authorize closed user
group calls over an ATM network, Hall states that “the present
invention provides advanced closed user group functionality, without
the need or requirement of an interlocking code” (col. 19, ll. 34-36).
Hall states that “the capability to provide interlock code functionality
does not exist in ATM” (col. 3, ll. 46-48), and that interlock codes are
not defined in ATM (col. 3, ll. 36-38).

PRINCIPLES OF LAW
Claim Construction
“During examination, ‘claims … are to be given their broadest
reasonable interpretation consistent with the specification, and … claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048,
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1053-54 (Fed. Cir. 1997). “[T]he specification ‘is always highly relevant to
the claim construction analysis. Usually, it is dispositive; it is the single best
guide to the meaning of a disputed term.’” Phillips v. AWH Corp., 415 F.3d
1303, 1315 (Fed. Cir. 2005) (citation omitted).
Anticipation
Anticipation is established when a single prior art reference discloses,
expressly or under the principles of inherency, each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir.
1994).
Obviousness
The Examiner’s articulated reasoning for an obviousness rejection
must possess a rational underpinning to support the legal conclusion of
obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

ANALYSIS
We agree with all of the Examiner’s findings with regard to the
anticipation rejection of claims 1, 5, 7, and 9 to 13, as well as the
obviousness rejections of claims 2, 3, 6, and 8 (Ans. 3-12). With the
exception of claim 4, we adopt the Examiner’s findings of fact and
conclusions of obviousness as our own. Because we agree with Appellant
that Hall specifically teaches away from the use of interlock codes (see FF
4), we will not sustain the anticipation rejection of claim 4. We will sustain
the Examiner’s rejections of (i) claims 1, 5, 7, and 9 to 13 based upon the
teachings of Hall; (ii) claims 2 and 3 based upon the teachings of Hall and
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Shirakawa; and (iii) claims 6 and 8 based upon the teachings of Hall and Bi,
for the reasons that follow.
Turning first to the anticipation rejection of claims 1, 5, 7, and 9 to 13,
we are not persuaded by Appellant’s arguments (App. Br. 7-10; Reply Br. 4-
5) that Hall fails to select, compare, or operate on only anticipated security
information, as opposed to all security information. Broadly interpreted, the
recitations of claims 1, 5, 7, and 9 to 13 are met by Hall’s operations on all
of the closed user group identifiers (see FF 3). Am. Acad. of Sci. Tech Ctr.,
367 F.3d at 1364.
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).
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With regard to the “configuring . . . ” limitation of claim 1, we find
that Appellant’s originally filed Specification and claims (see FF1) do not
define the phrase “configuring” or otherwise describe this term. We find
that Hall discloses using setup messages for closed user groups in ATM
networks, and that the setup messages include closed user group identifiers
for called parties that “are retrieved or made readily available” (FF 3
(emphasis added)). Therefore, we determine that Hall discloses
“configuring” an MSS (MSCP 44) with anticipated security information as
set forth in original claim 1 and as defined by paragraphs [16] and [17] of
the Specification.
Thus, we find no error in the Examiner’s reliance on Hall as teaching
the configuring limitation, at least to the extent this feature is broadly recited
in claim 1 and defined in the Specification. See Am. Acad. of Sci. Tech Ctr.,
367 F.3d at 1364; Phillips, 415 F.3d at 1315. Appellant has not shown that
the Examiner erred in determining that Hall discloses an MSS with
configuring anticipated security information, as set forth in claim 1 and
claims 5, 7, and 9 that depend therefrom.
With regard to claim 4, Appellant’s argument (App. Br. 10-11) that
Hall fails to disclose using closed user group interlock codes as recited in
claim 4 is convincing. While Hall describes the use of interlocking codes to
authorize closed user group calls over an ATM network, Hall’s disclosed
invention does so “without the need or requirement of an interlocking code”
(col. 19, ll. 34-36; FF 4). Hall teaches away from the use of interlock codes
in ATM networks (see FF 4), and instead uses identifiers to provide closed
user group functionality in an ATM network (FF 3 and 4). Because Hall
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fails to disclose each and every limitation of the claimed invention, we will
not sustain the anticipation rejection of claim 4. Atlas Powder Co., 190 F.3d
at 1347; Paulsen, 30 F.3d at 1478-79.
Turning next to the obviousness rejections of claims 2, 3, 6, and 8,
Appellant does not separately argue with particularity the limitations of
these claims apart from merely asserting that these claims recite further
features that are not taught or suggested by cited prior art (App. Br. 12).
Such conclusory assertions without supporting explanation or analysis
particularly pointing out errors in the Examiner’s reasoning fall well short of
persuasively rebutting the Examiner's prima facie case of obviousness. See
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Accordingly, we will
sustain the obviousness rejections of claims 2, 3, 6, and 8 for similar reasons
provided supra with regard to the anticipation rejection of claim 1.

CONCLUSIONS
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).
Hall does not teach the interlock codes set forth in claim 4.
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
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U.S.C. § 103(a). Appellant has shown the Examiner erred in rejecting claim
4 under 35 U.S.C. § 102(e).

ORDER
The decision of the Examiner rejecting claims 1 to 3 and 5 to 13 is
affirmed. The decision of the Examiner rejecting claim 4 is reversed.
Accordingly, the decision of the Examiner is affirmed-in-part.
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)(v).

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AFFIRMED-IN-PART

ELD

KRAMER & AMADO, P.C.
1725 DUKE STREET, SUITE 240
ALEXANDRIA, VA 22314

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