Ex Parte Wertenbruch et al

Board of Patent Appeals and Interferences

Sep 10, 2010

10664264 (B.P.A.I. Sep. 10, 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.
10/664,264 09/16/2003 Dirk Wertenbruch 50325-0778 3449
29989 7590 09/10/2010
HICKMAN PALERMO TRUONG & BECKER, LLP
2055 GATEWAY PLACE
SUITE 550
SAN JOSE, CA 95110
EXAMINER
TRAN, ELLEN C
ART UNIT PAPER NUMBER
2433
MAIL DATE DELIVERY MODE
09/10/2010 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 DIRK WERTENBRUCH and PETER FALK
____________________

Appeal 2009-006319
Application 10/664,2641
Technology Center 2400
____________________

Before JOHN A. JEFFERY, JAY P. LUCAS, and JAMES R. HUGHES,
Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed September 16, 2003. The real party in interest is Cisco
Systems, Inc. (App. Br. 1.)
2 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 2009-006319
Application 10/664,264

2
STATEMENT OF THE CASE
The Appellants appeal from the Examiner’s rejection of claims 1-41
under authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ Invention
Appellants invented a method and apparatus for identifying and
configuring a network device. (Spec. 8, ¶¶ [0024]-[0025].)3
Representative Claim
Independent claim 1 further illustrates the invention. It read as
follows:
1. A method of authenticating a network device,
comprising the computer-implemented steps of:
determining that a network link that uses a primary
signaling technology and a secondary signaling technology is
coupled to the network device;
obtaining, using the secondary signaling technology, a
unique link identifier that is associated with the network link
using the secondary signaling technology;
establishing the unique link identifier as a unique device
identifier; and
authenticating the network device to a service provider
by communicating the unique device identifier to the service

3 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed March 12, 2008; and Reply Brief (“Reply Br.”) filed July 3, 2008. We
also refer to the Examiner’s Answer (“Ans.”) mailed May 22, 2008; the
Advisory Action (“Adv. Action”) mailed October 19, 2007; and the Final
Office Action (“Fin. Rej.”) mailed August 6, 2007.
Appeal 2009-006319
Application 10/664,264

3
provider over the network link using the primary signaling
technology.

References
The Examiner relies on the following references as evidence of
unpatentability:
Li US 6,012,088 Jan. 4, 2000

Fijolek US 6,351,773 B1 Feb. 26, 2002

Rejection on Appeal
The Examiner rejects claims 1-41 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Li and Fijolek.

ISSUES
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us are as follows:
1. Does the Examiner err in finding the Li and Fijolek references
would have collectively taught or suggested obtaining, using a secondary
signaling technology, a unique link identifier that is associated with a
network link using a primary and the secondary signaling technology?
2. Does the Examiner err in finding the Li and Fijolek references
would have collectively taught or suggested obtaining, using an ISDN line,
an ISDN telephone number uniquely associated with the ISDN line?

Appeal 2009-006319
Application 10/664,264

4
FINDINGS OF FACT (FF)
Li Reference
1. Li describes a system and device for automatically configuring
a computing system for communication with a communications network
such as the Internet. (Abst.; col. 1, ll. 13-17; col. 3, ll. 24-30.) Li’s Internet
access device automatically configures a customer’s computer system to
access the Internet by connecting the customer’s system to a configuration
server of an Internet Service Provider (ISP), downloading the desired
configuration information, and configuring itself for the customer’s system
to access the Internet at the customer’s desired level of service. (Col. 3, ll.
39-61; col. 11, l. 54 to col. 12, l. 27.)
2. Li’s Internet access device initially connects to the Internet
through an ISP to access the ISP’s configuration server. The connection
utilizes a standard analog telephone line and a modem, which acts as a single
host computer using a dynamic Internet Protocol (IP) address as its address.
(Col. 3, ll. 46-49, 54-57; col. 11, ll. 18-26, col. 11, l. 56 to col. 12, l. 18; col.
12, ll. 38-43; 49-56; figs.8 & 11a.) Once connected to the ISP, the Internet
access device performs the automatic configuration process. The Internet
access device establishes a Point to Point Protocol (PPP) connection with a
Network Access Server (NAS) of the ISP, which “involves password
negotiations, exchange of addresses, and other standard handshaking” (col.
13, ll. 3-4). (Col. 12, ll. 14-27, 38-48, 66 to col. 13, l. 4; fig.11a.) Next, the
Internet access device provides the customer’s registration ID to the ISP,
which decodes the registration ID into an IP address for the configuration
server and a unique customer account ID. (Col. 13, ll. 11-28; see col. 10, ll.
26-65.) The ISP provides the Internet access device with access to the
Appeal 2009-006319
Application 10/664,264

5
configuration server utilizing the decoded IP address. (Col. 13, ll. 29-48;
figs.8 & 11a.) The Internet access device then requests from the
configuration server particular configuration information (a configuration
file or record) for the customer’s system utilizing the customer’s account ID,
and downloads the information utilizing the temporary (dynamic) IP address
for the Internet access device. The Internet access device then configures
itself. (Col. 13, l. 60 to col 14, l. 12; col 14, ll. 20-33; fig.11b; see col. 9, l.
26 to col. 10, l. 24; col. 14, l. 50 to col. 15, l. 9; col. 15, ll. 17-44; fig.12.)
Once Li’s Internet access device is properly configured, it acts as a router for
connecting to the Internet utilizing a static (permanent) IP address (or range
of IP addresses) and more complex, higher speed connections such as ISDN
or frame relay. (Col. 3, ll. 57-61; col. 11, ll. 27-45; col. 14, ll. 41-49; fig.9.)
3. Li describes utilizing an ISDN connection or a dial-up ISDN
line to access the Internet. (Col. 2, ll. 32-36; col. 3, ll. 49-53; col. 9, ll. 34-
37.) Li further describes that the configuration information for an ISDN
connection includes the customer’s ISDN directory number and a Service
Profile Identifier (SPID). (Col. 15, ll. 38-44.)
Fijolek Reference
4. Fijolek describes a data-over-cable system including a Cable
Modem (CM), a Telephone Remote Access Concentrator (TRAC), a Cable
Modem Termination System (CMTS) and a data network. The CM connects
to the CMTS through a downstream or (alternatively) bi-directional cable
network. In a system utilizing telephony return, the CM connects to the
TRAC utilizing an upstream connection to a Public Switched Telephone
Network (PSTN). The CMTS and TRAC connect to the data network
through network system interfaces. (Col. 5, l. 1 to col. 6, ll. 47; fig.1.)
Appeal 2009-006319
Application 10/664,264

6
While Fijolek describes upstream data communications utilizing the PSTN
and TRAC (telephony return), as well as upstream communications utilizing
the cable network and CMTS, these are alternative embodiments (i.e.,
mutually exclusive). (Col. 5, ll. 11-20; col. 6, ll. 45-47; col. 13, ll. 21-27.)
5. Fijolek describes a detailed method for establishing data
communication in its data-over-cable system between the CM and data
network utilizing upstream communications from the CM through the PSTN
and TRAC to the data network, and from the data network through the
CMTS and cable network to the CM. (Col. 11, l. 54 to col. 13, l. 27; col. 15,
l. 19 to col. 18, l. 67; figs.1, 2, 7A, 7B, 8 & 9.) Fijolek’s CM dials into the
TRAC and establishing a telephony PPP connection. The CM negotiates an
IP address with the TRAC for sending IP data packets (responses) to the data
network through the TRAC via the PPP. Then, the CM creates a virtual data
connection that allows the CM to receive data from data network through the
CMTS and cable network, and to send return data to data network through
the PSTN and TRAC. The CM creates the virtual connection using the
Dynamic Host Configuration Protocol (DHCP) layer (figure 2) to discover
network host interfaces available on the CMTS (the DHCP discovery
process). Fijolek’s Table 3 describes the exemplary data path (virtual
connection) in the system. An IP message from the data network for the CM
passes through the CMTS network interface to the CMTS. The CMTS
encodes the message in a cable data frame and passes it to the Medium
Access Control (MAC) layer which transmits it to the CM through the cable
network. The CM recognizes the encoded message in MAC layer of the
cable data frame and sends a response message in a PPP frame through the
PSTN to the TRAC. The TRAC decodes the return message and forwards it
Appeal 2009-006319
Application 10/664,264

7
through the TRAC network interface to the data network. (Col. 13, ll. 28-
40, tbl.3.)
6. Fijolek (see fig.9) also describes a detailed method for
performing DHCP discovery in a system with telephony return (utilizing
upstream communications from the CM through the PSTN and TRAC).
(Col. 11, l. 54 to col. 13, l. 27; col. 15, l. 19 to col. 18, l. 67; figs.1, 2, 7A,
7B, 8 & 9.) Fijolek’s CM establishes an IP link to the TRAC using PPP, and
then initiates the DHCP discovery process by communicating with the
CMTS via the DHCP layer in order to complete the virtual IP connection
with the data network. The CM generates and sends a DHCP discover
message to the TRAC (via the PSTN). The fields of the DHCP discover
message include various addresses (CIADDR (client IP address - the CM’s
previously assigned IP address, if available), GIADDR (gateway IP address
- the downstream channel IP address of the CMTS), and CHADDR (client
hardware address - the CM’s 48-bit MAC address)). The TRAC broadcasts
the DHCP discover message to DHCP proxies within the TRAC’s local
network, which forward the DHCP discover message to the DHCP servers
associated with network host interfaces available to the CMTS. The DHCP
servers generate DHCP offer messages in response to the DHCP discover
message, and send the offer messages to the CMTS using the downstream
channel IP address of the CMTS (GIADDR). The fields of the DHCP offer
messages include configuration parameters and various addresses (YIADDR
(client (“your”) IP address - the address of the network host interface of the
CMTS used to receive data from the data network and send the data to the
CM (i.e., the CM’s IP address)) and CHADDR (the CM’s MAC address)).
(Col. 15, l. 39 to col. 17, l. 40.) The CMTS forwards the DHCP offer
Appeal 2009-006319
Application 10/664,264

8
messages to the CM via the cable network utilizing the MAC layer address
(CHADDR). The CM receives the DHCP offer messages, selects one of the
messages (an offer for IP service from one of the network host interfaces (IP
interfaces) available on the CMTS), and establishes (completes) the virtual
IP connection by acknowledging the selected network host interface with a
return DHCP message to the IP address of the selected network host
interface included in the DHCP offer message. (Col. 17, l. 41 to col. 18, l.
67.)
7. Fijolek describes the CM connected through the PSTN and the
TRAC for upstream communication with the data network. The PSTN
connection may comprise a standard telephone line connection, an
Integrated Services Digital Network (ISDN) connection, an Asymmetric
Digital Subscriber Line (ADSL) connection, or other telephony connection.
(Col. 5, ll. 52-55; see col. 5, ll. 43-57; col. 7, ll. 36-54.)
8. Fijolek describes providing restricted access to subscription
services for network devices (e.g., the CM), in the data-over-cable system.
The CM makes a connection request to the CMTS, and the CMTS checks its
associated databases for information about the CM. (Col. 31, l. 8 to col. 32,
l. 11.) The CM information may include “a subscription account number, a
calling party number, a MAC 44 address, or other information.” (Col. 32, ll.
7-11.) Alternately, a Remote Authentication Dial In User Server (RADIUS)
server may be used to check for information about the CM. Fijolek explains
that RADIUS servers are well known in the art for receiving and processing
user connection requests, authenticating a user, and providing configuration
information necessary for a client to deliver service to a user, and the
Appeal 2009-006319
Application 10/664,264

9
RADIUS server may be associated with either the TRAC or the CMTS.
(Col. 32, ll. 16-31.)
9. Fijolek describes changing a restricted network connection to
an unrestricted connection between the CM and the data-over-cable system.
Specifically, the CMTS collects (obtains) information from the CM that
uniquely identifies the CM on the data-over-cable system, and the CMTS
stores the information in a database. (Col. 33, l. 29 to col. 34, l. 10.) The
information may include “account verification information, such as a credit
card number and corresponding approval/denial information, local
connection information, such as area code or other local numbers, a class-of-
service or a quality-of-service for connections to the data-over-cable system,
device configuration information, a MAC 44 address, and other
information.” (Col. 34, ll. 4-10.)

ANALYSIS
Issue 1: Rejection of Claims 1-9 and 14-41 under § 103
Appellants contend that the combination of the Li and Fijolek
references does not disclose, teach, or suggest “obtaining, using the
secondary signaling technology, a unique link identifier that is associated
with the network link using the secondary signaling technology,” as recited
in Claim 1. (App. Br. 7-8; Reply Br. 2-4.) The Examiner, on the other hand,
finds that the Li and Fijolek references teach the disputed features. (Ans. 3,
7-9; Fin. Rej. 2-4.) Specifically, the Examiner finds in the Final Office
Action that: “Li teaches two signaling technologies” – a standard telephone
line and an ISDN connection – and a user entering “a local telephone
number;” and that the Fijolek reference “teaches that the unique identifier
Appeal 2009-006319
Application 10/664,264

10
can be obtained from a secondary signaling technology, such as from a
database.” (Fin. Rej. 3.) The Examiner also finds that Li does not explicitly
teach the “obtaining” step, but Fijolek “teaches that a parameter could be the
calling party’s phone number.” (Fin. Rej. 4.) The Examiner additionally
finds that “Fijolek teaches that multiple secondary signaling methods can be
used for communication,” and that the “secondary signaling means can be
wireless, satellite, or a connection with other technologies to send data
upstream[, and] [t]he ‘link identifier’ is know to be attached to any message
sent using the signaling technology.” (Adv. Action 2.)
In the Answer, the Examiner reiterates the previous findings (Ans. 3,
7), and also finds that “[a] unique link identifier is interpreted to be any of
the following: registration identification number, as described in Li or a
subscription account number, a calling party number, a MAC address as
described in Fijolek.” (Ans. 7.) The Examiner additionally finds Fijolek
teaches that “data can be sent from customer premise equipment over cable
networks via cable as well as secondary signaling method such as a
telephony network, wireless connection, satellite, or connection via other
technologies” (Ans. 8); and “the Cable Modem Termination System
(CMTS) checks one or more databases for information . . . . includ[ing] a
subscription account number, a calling party number, a MAC address, or
other information . . . . [which] is obviously a ‘unique identifier’ . . . .
included in the connection request, i.e. obtained using a secondary signaling
technology” (Ans. 8-9).
We agree with Appellants that the Li and Fijolek references do not
teach the disputed “obtaining” step of claim 1 for essentially the reasons
espoused by Appellants. The dispute before us hinges on the disagreement
Appeal 2009-006319
Application 10/664,264

11
of Examiner and Appellants as to what constitutes “obtaining,” “a unique
link identifier,” “associated with the network link,” “using the secondary
signaling technology,” and the interpretation of the terms in the disputed
feature is critical to resolving this dispute. We broadly but reasonably (see
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004))
construe Appellants’ disputed claim limitation to mean gaining possession of
(obtaining) a unique identifier for a network connection (connecting element
or link) that utilizes two different signaling technologies – a primary and a
secondary signaling technology – using the secondary signaling technology
to obtain the unique identifier for an undetermined entity.
As detailed in the Findings of Fact section supra, Li describes two
signaling technologies – analog telephone and ISDN. (FF 1-3.) We,
however, do not find Li to describe using these technologies in the same
connection. Rather, Li describes using a different more complex connection
(ISDN or frame relay) after the system is configured. (FF 2-3.) Even if we
interpret these separate connections as a link using primary (ISDN) and
secondary (analog telephone) signaling technologies, Li still does not
explicitly describe transferring a unique identifier for the link, either from
the Internet access device to the ISP or from the ISP to the Internet access
device – i.e., the ISP obtaining the identifier or the Internet access device
obtaining the identifier.
We agree with Appellants that Li’s telephone number cannot
represent a unique identifier for the link. Li’s registration number also does
not represent a unique identifier for the link. The registration number
represents the customer/user and/or the user equipment, not the link – Li
uses the decoded customer ID to retrieve the Internet access device
Appeal 2009-006319
Application 10/664,264

12
configuration, but does not describe any relationship between the customer
ID and the telephone connection (secondary signaling technology). (FF 2.)
Although Li describes negotiating, sending, and receiving IP
addresses (dynamic and static IP addresses) for the Internet access device
(FF 2), Li does not provide a detailed explanation of negotiating, sending,
and receiving the IP addresses. Neither the Examiner nor Appellants
address this aspect of Li.
Fijolek describes a data-over-cable system that provides restricted and
unrestricted network connections between a CM and a data network. (FF 4-
6, 8-9.) Fijolek describes the data-over-cable system and its basic operation
(see FF 4-6) separately from the system’s functionality of providing
restricted/unrestricted access (see FF 8-9). The Examiner addresses
Fijolek’s functionality of providing restricted access – finding Fijolek’s
CMTS checks databases for information concerning a particular CM
including a subscription account number, a calling party number, and/or a
MAC address, which the Examiner finds to be a “unique identifier.” The
Examiner, however, sidesteps any detailed discussion of the data-over-cable
system and its operation – simply finding that Fijolek teaches secondary
signaling technologies to send data upstream, that the data may include
messages or connection requests, and that an identifier for the link may be
included in the messages or connection requests.
Although we understand Fijolek to describe transferring messages
including identifiers, Fijolek does not transfer the identifiers for a link that
utilizes both primary and secondary signaling technologies using the
secondary signaling technology. Fijolek transfers (sends and receives)
messages (DHCP discover and DHCP offer messages) between the CM and
Appeal 2009-006319
Application 10/664,264

13
CMTS. (FF 4-6.) The DHCP discover messages contain information
uniquely identifying the CM (a MAC address of the CM), and the DHCP
offer messages contain information uniquely identifying the CM (the IP
address for the CM and the CM’s MAC address). (FF 6.) Fijolek also
describes the CMTS checking databases for information identifying the CM
– such as a MAC address – and the CM providing identifying information to
the CMTS – such as a MAC address. (FF 8-9.) Fijolek, however, also
describes two separate and distinct connections or links between the CM and
the network (CMTS, TRAC, and data network) – an upstream telephone
(PSTN) connection and a downstream cable network connection.
Consequently, Fijolek does not describe a link using both primary and
secondary signaling technologies. Thus, Fijolek also does not teach
obtaining a unique identifier for a network link that utilizes both a primary
and a secondary signaling technology using the secondary signaling
technology.
The Examiner, in combining Li and Fijolek, merely states that:
It would have been obvious to one of ordinary skill in the
art at the time of a method for automatic configuration for
[I]nternet access devices taught in [Li] to include a means
utilize the number of the customer premises as a configuration
parameter. One of ordinary skill in the art would have been
motivated to perform such a modification to protect the access
to a network [(See Fijolek column] 2, lines 53 et seq.).
(Fin. Rej. 4.) The Examiner fails to explain how an ordinarily skilled
artisan would have understood Li’s and Fijolek’s separate network links to
be a single network link utilizing both primary and secondary signaling
technologies; or how or why an ordinarily skilled artisan would have utilized
Fijolek’s messages including identifiers in Li’s configuration system.
Appeal 2009-006319
Application 10/664,264

14
Thus, we are constrained by the record before us to find that neither
Li, nor does Fijolek individually disclose, nor does the combination teach or
suggest the disputed feature of obtaining a unique identifier for a network
link that utilizes both a primary and a secondary signaling technology using
the secondary signaling technology. The Examiner has failed to set forth a
prima facie obviousness rejection. It follows that Appellants have persuaded
us to find error in the Examiner’s obviousness rejection of Appellants’
independent claim 1.
Appellants’ independent claims 14, 15, 24, and 33 each include a
limitation similar in scope to the disputed limitation of claim 1. It follows,
for the reasons discussed supra, that the Li and Fijolek references do not
render obvious Appellants’ independent claims 14, 15, 24, and 33.
Appellants’ dependent claims 2-9 (depend on claim 1), 16-23 (depend on
claim 15), 25-32 (depend on claim 24), and 34-41 (depend on claim 33)
depend on their respective base independent claims. Therefore, based on the
record before us, we find that the Examiner err in finding the Li and Fijolek
references would have collectively taught or suggested obtaining, using a
secondary signaling technology, a unique link identifier that is associated
with a network link using a primary and the secondary signaling technology,
as recited in Appellants’ claims 1-9 and 14-41. Accordingly, we reverse the
Examiner’s obviousness rejection of claims 1-9 and 14-41.
Issue 2: Rejection of Claims 10-13 under § 103
Based on the record before us, we find also find error in the
Examiner’s obviousness rejection of Appellants’ independent claim 10
which calls for, in pertinent part, “an ISDN line that supports ADSL over
ISDN” and “obtaining, using the ISDN line, an ISDN telephone number
Appeal 2009-006319
Application 10/664,264

15
uniquely associated with the ISDN line” (claim 10). Although we agree
with the Examiner that both Li (FF 2-3) and Fijolek (FF 7) teach using ISDN
and ADSL signaling technologies (see Ans. 5, 9-10), neither Li, nor Fijolek
provide an explicit description of ADSL over ISDN. Neither the Examiner,
nor Appellants address this deficiency of the cited references. We decline to
speculate whether the cited references might describe an ISDN line utilizing
ISDN and ADSL over ISDN signaling technologies. Consequently, the
cited references do not teach obtaining (transmitting) an ISDN telephone
number that uniquely identifies an ISDN line that utilizes both ISDN and
ADSL over the ISDN line.
As we explained with respect to claim 1 supra, the Examiner has
failed to provide a sufficient explanation as to how one would have
understood Li’s and Fijolek’s separate network links to be a single network
link utilizing ADSL over ISDN and ISDN signaling technologies.
Consequently, we are constrained by the record before us to find that the
combination of the Li and Fijolek references does not collectively teach or
suggest the disputed limitation of Appellants’ claim 10. It follows that
Appellants have persuaded us to find error in the Examiner’s obviousness
rejection of independent claim 10. Claims 11-13 are dependent on
independent claim 10. Therefore, based on the record before us, we find that
the Examiner err in finding the Li and Fijolek references would have
collectively taught or suggested obtaining, using an ISDN line, an ISDN
telephone number uniquely associated with the ISDN line, as recited in
Appellants’ claims 10-13. Accordingly, we reverse the Examiner’s
obviousness rejection of claims 10-13.

Appeal 2009-006319
Application 10/664,264

16
CONCLUSIONS OF LAW
Appellants have shown that the Examiner erred in rejecting claims 1-
41 under 35 U.S.C. § 103(a).

DECISION
We reverse the Examiner’s rejection of claims 1-41 under 35 U.S.C.
§ 103(a).

REVERSED

llw

Hickman Palermo Truong & Becker, LLP
2055 Gateway Place
Suite 550
San Jose, CA 95110