Ex Parte Takahashi et al

Patent Trial and Appeal Board

May 29, 2014

10453430 (P.T.A.B. May. 29, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/453,430 06/03/2003 Naoki Takahashi JP920020107US1 1857
53493 7590 05/29/2014
LENOVO (US) IP Law
1009 Think Place
Building One, 4th Floor 4B6
Morrisville, NC 27560
EXAMINER
NGUYEN, THUONG
ART UNIT PAPER NUMBER
2453
MAIL DATE DELIVERY MODE
05/29/2014 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 NAOKI TAKAHASHI, TAKASHI INUI,
MASAHIKO NOMURA, and
MIZUHO TADOKORO
__________

Appeal 2012-001984
Application 10/453,430
Technology Center 2400
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-001984
Application 10/453,430

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STATEMENT OF THE CASE
Naoki Takahashi, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 27-32. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 27, the sole independent claim, reproduced below, is illustrative
of the subject matter on appeal.
27. A method for managing IP addresses, said method comprising:
receiving an IP address from a server by a control computer;
utilizing said IP address by said control computer to provide
network communications with another computer on a network;
in response to a halting process being initiated by said control
computer,
sending a message by said control computer to inform said
server that the usage of said IP address has been terminated
such that said IP address is available to be re-assigned by said
server; and
thereafter, completing said halting process to place said control
computer in a halt state.

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed May 27, 2011) and the Examiner’s Answer (“Ans.,” mailed Aug. 8,
2011).
Appeal 2012-001984
Application 10/453,430

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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Warchol
Sung
Bahl

US 5,652,837
US 2002/0038369 A1
US 6,957,276 B1
Jul. 29, 1997
Mar. 28, 2002
Oct. 18, 2005
The following rejections are before us for review:
1. Claims 27, 29, and 32 are rejected under 35 U.S.C. §102(e) as being
anticipated by Sung.
2. Claims 30 and 31 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Sung and Bahl.
3. Claim 28 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Sung, Bahl, and Warchol.

ISSUE
Did the Examiner err in rejecting claims 27, 29, 32 under §102 as
being anticipated by Sung?
There are no issues raised with respect to the §103 rejections as they
are not addressed in the brief.

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

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ANALYSIS
The rejection of claims 27, 29, and 32 under 35 U.S.C. §102(e) as being
anticipated by Sung.
Claim 27 is the sole independent claim. Appellants argue Claims 27,
29, 32 as a group. App. Br. 4. Therefore, we select claim 27 as the
representative claim and claims 29 and 32 stand or fall with claim 27. 37
C.F.R. 41.37(c)(1)(vii)(2011
The Appellants make three general arguments:
 “I. Sung’s providing Internet service is different from the claimed
providing network communications with another computer on a
network.” Br. 4.
 “II. Sung does not disclose the claimed sending step.” Br. 5.
 “III. Sung does not disclose placing the claimed control computer in a
halt state.” Br. 6.
In each case, the argument does not treat the Examiner’s position.
Throughout the brief, the Appellants argue that Sung’s mobile
terminal 10 is different from the control computer as claimed. See, e.g., Br.
6: “the termination of mobile terminal 10 is different from placing a control
computer in a halt state, as claimed.”
But, the Examiner has taken the position that Sung’s interface unit 1,
not Sung’s mobile terminal 10, equates to the claim control computer. See
e.g., Ans. 5 (emphasis added):
receiving an IP address from a server by a control computer (Sung,
figure 1; page 2, [¶ [0029]]; i.e., when receiving the connection
termination signal from the interface unit 1, central management
server 2, received the released the dynamic IP address).
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Sung’s ¶ [0029], that the Examiner cites to, describes Sung’s interface
unit receiving a dynamic IP address and utilizing that address to provide
internet service to a mobile unit.
In step S302, the interface unit I receiving the dynamic IP address
data and the usage authentication signal from the central management
server 2 allocates the received dynamic IP address to the connected
mobile terminal 10 of the user so that the mobile terminal 10 of the
user is provided with internet service by using the dynamic IP address
allocated from the lines connected by the interface unit 1 and the
central management server 2 (S303).
Sung ¶ [0029]. It is necessarily the case that in describing providing
“internet service” Sung inherently describes providing network
communications with another computer on a network; this is so because the
internet is a network of computers. Since Sung’s interface unit passes on the
dynamic IP address for usage with the internet, Sung necessarily describes
“‘utilizing said IP address . . . to provide network communications with
another computer on a network’” as claimed. Ans. 9. Accordingly, we are
not persuaded by Argument I. that the rejection is in error.
As to Argument II, the claim step at issue is “‘ . . . sending a message
by said control computer to inform said server that the usage of said IP
address has been terminated such that said IP address is available to be re-
assigned by said server.’” Br. 5
The Examiner takes the position that this is described at ¶ [0037] of
Sung.
sending a message by said control computer to inform said server that
the usage of said IP address has been terminated such that said IP
address is available to be re-assigned by said server (Sung, page 3,
[Para [0037]]; i.e., central management server 2 releases the allocation
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of the dynamic I P address allocated to the mobile terminal 10
according to the connection termination signal).
Ans. 5.
The Appellants argue
In paragraph 0037, lines 1-2, Sung teaches that when interface unit 1
receives a connection termination signal, interface unit 1 then
transmits the connection termination signal to central management
server 2. Thus, it is interface unit 1, and not mobile terminal 10
(which was previously re-characterized as the claimed control
computer by the Examiner), that sends a connection termination signal
to central management server 2. In addition, it is a “connection
termination signal” that’s sent to central management server 2, and the
“connection termination signal” does not convey the same meaning as
the claimed message of informing “said server that the usage of said
IP address has been terminated such that said IP address is available to
be reassigned by said server” (emphasis added).
Br. 5-6
We do not agree that the Examiner re-characterized the “mobile
terminal” as the control computer. We find that it is Sung’s interface unit
which is sending a connection termination signal. Reading Sung’s para
[0037] bears this out. “[T]he control unit 21 of the interface unit 1 transmits
usage time information, usage fee information, and a connection termination
signal to the central management server 2.” Para [0037], (emphasis added).
Paragraph [0037] also clearly states that the central server, after receiving
the connection termination signal, “releases the allocation of the dynamic IP
address allocated to the mobile terminal.” This release disassociates the
mobile terminal with the IP address and allows the server to
reassign/reallocate the IP address to another user. See ¶ [0029]. The
connection termination signal is an indication that the mobile device no
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longer requires the IP address and usage of the internet, i.e. shutoff of
internet service, power off of mobile terminal. Id. ¶ [0029]. Clearly, the
connection termination signal is a signal informing “said server that the
usage of said IP address has been terminated such that said IP address is
available to be reassigned by said server” as required by the claim step at
issue. Id. ¶ [0029].
For the foregoing reasons, we are not persuaded by Argument II, that
Sung does not expressly describe “sending a message by said control
computer to inform said server that the usage of said IP address has been
terminated such that said IP address is available to be re-assigned by said
server” as claim 27.
Lastly, Argument III. challenges the Examiner’s position that Sung
describes the claim step “thereafter, completing said halting process to place
said control computer in a halt state” (claim 27).
The Examiner’s position is that Sung describes said step at ¶ [0029] of
Sung.
thereafter, completing said halting process to place said control
computer in a halt state (Sung, page 2,[¶ [0029]]; i.e., terminates the
entire process after released the IP address).
Ans. 5.
The Appellants argue:
On page 3 of the Final Office Action, the Examiner asserts that
the claimed completing step is disclosed by Sung in [¶] [0029]. In [¶]
[0029], Sung teaches that the termination of communication so that
charges are transacted. However, Sung does not disclose “completing
said halting process to place said control computer in a halt state”
(emphasis added), as claimed.
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In addition, in ¶ [0036], Sung teaches various methods for
terminating mobile terminal 10 when a user wishes to terminate work
through interface unit 1 with mobile terminal 10. However, the
termination of mobile terminal 10 is different from placing a control
computer in a halt state, as claimed. Contrary to the Examiner's
assertion in the Advisory Action, a termination signal is not
equivalent to the claimed halting process because mobile terminal 10
simply terminates its work through interface unit 1, but mobile
terminal 10 is never placed in a halt state according to Sung.
Br. 6.
But, as we noted earlier, it appears that the Appellants are looking to
Sung’s “mobile terminal” when in fact the Examiner is pointing to Sung’s
“interface unit.”
As explained in para [0037] (see supra), Sung’s interface unit will
terminate the entire process for a particular IP address once the connection
termination messages have been sent, charge receipt provided, and the
central server releases the IP address. As the Examiner appears to explain,
this termination indicates the halting of the interface unit because the
interface unit (and the control unit inside the interface unit) no longer needs
to execute the process. In other words, the interface unit is in a halting state
with respect to the mobile terminal because the mobile terminal is no longer
interacting nor connecting with the interface unit.
For the foregoing reasons, we are not persuaded by Argument III that
Sung does not expressly describe “thereafter, completing said halting
process to place said control computer in a halt state” (claim 27) as claimed.
The rejection of claim 27, and claims 29 and 39 that stand or fall with
it, is sustained.
Appeal 2012-001984
Application 10/453,430

9

The rejection of claims 30 and 31 under 35 U.S.C. §103(a) as being
unpatentable over Sung and Bahl.
The rejection of claim 28 under 35 U.S.C. §103(a) as being unpatentable
over Sung, Bahl, and Warchol.
The brief does not address these rejections. Accordingly, they are
summarily sustained.

CONCLUSION
The rejection of claims 27, 29, and 32 under 35 U.S.C. §102(e) as
being anticipated by Sung is affirmed
The rejection of claims 30 and 31 under 35 U.S.C. §103(a) as being
unpatentable over Sung and Bahl is affirmed.
The rejection of claim 28 under 35 U.S.C. §103(a) as being
unpatentable over Sung, Bahl, and Warchol is affirmed.

DECISION
The decision of the Examiner to reject claims 27-32 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. §1.136(a).

AFFIRMED

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