Case 2:08-cv-00264-DF-CE Document 492
`
`Filed 06/30/10 Page 18 of 23
`
`user action may prompt an automatic modification. As such, the court adopts the following
`
`construction: “a change by the system without a request or instruction to change from a user.”
`
`K.
`
`“location the user access”
`
`Claim 15 contains the term “location the user access”: “wherein the redirection server is
`
`configured to allow modification of at least a portion of the rule set as a function of some
`
`combination of time, data transmitted to or from the user, or location the user access.” This claim
`
`term is grammatically incorrect and may have a word missing. The specification explains that “a
`
`user may be periodically redirected to a location, based on the number of other factors, such as the
`
`number of locations accessed, the time spent at a location, the types of locations accessed, and other
`
`such factors.” (‘ 1 18 patent, 7:48-52). Linksmart argues that this term means “location or locations
`
`that the user accesses.” The defendants allege that “location the user access” is indefinite.
`
`The defendants assert that “location the user access” is ambiguous because it is susceptible
`
`to more than one meaning. According to the defendants, this term may mean “location that the user
`
`accesses,” “location the user attempts to access,” “location from which the user accesses,” “location
`99 ‘6
`
`the user is allowed to access,
`
`number of locations the user accessed,” and “types of locations the
`
`user accessed.” During reexamination, Linksmart filed an amendment to claim 15 that read,
`
`“location the user attempts to access.” (Dkt. No. 414, EX. 2, at 29).
`
`In addition, when accusing
`
`Cisco of infringement, Linksmart asserted that the term means “the location from which the user
`
`accesses the Accused Instrumentality.” (Dkt. No. 414, Ex. 2, at 53).
`
`A district court cannot correct errors in a patent if the proposed correction is subject to
`
`reasonable debate. Novo Indus. , 350 F.3d at 1357. In Novo Industries, the disputed claim term was
`
`“stop means formed on a rotatable with said support finger.” Id. at 1352. The plaintiff argued that
`
`18
`
`Panasonic-1009
`
`Page 501 of 1492
`
`Panasonic-1009
`Page 501 of 1492
`
`

`

`Case 2:08-cv-00264-DF-CE Document 492
`
`Filed 06/30/10 Page 19 of 23
`
`this term contained an obvious typographical error and proposed two different corrections: “stop
`
`means on said support finger” and “stop means formed on a rotatable support finger.” Id. The
`
`Federal Circuit held that the error was not amenable to correction by the court, partly because the
`
`plaintiff itself suggested two different corrections, and thus the proposed correction was subject to
`
`reasonable debate.
`
`Id. at 1357. Likewise, in this case, “location the user access” has an obvious
`
`typographical or grammatical error, and the correction is subject to reasonable debate. Linksmart
`
`has suggested one correction to this court, offered a different correction to the PTO, and asserted yet
`
`another theory to Cisco.1 Therefore, the term “location the user access” is insolubly ambiguous.
`
`As such, claim 15 is indefinite.
`
`L.
`
`“modifying at least a portion of the user’s rule set while the user’s rule set
`remains correlated to the temporarily assigned network address”
`
`The term “modifying at least a portion ofthe user’s rule set while the user’ 5 rule set remains
`
`correlated to the temporarily assigned network address” is found in claim 25. The plaintiff argues
`
`that no construction of this term is necessary in light of other constructions. Alternatively,
`
`Linksmart proposes the following construction: “changing at least one ofthe elements or conditions
`
`about the user’s session during the session.” The defendants contend that “modifying at least a
`
`portion ofthe user's rule set while the user’s rule set remains correlated to the temporarily assigned
`
`network address” means “changing at least one of the rules in the user’s rule set without ending the
`
`authorized session.”
`
`The primary difference between the parties’ proposed constructions is whether termination
`
` '
`
`Linksmart argues that its infringement contentions against Cisco are irrelevant for
`purposes of claim construction because they are litigation-related documents. But in Nova
`Industries, the Federal Circuit considered litigation-related positions in holding that the proposed
`correction was subject to reasonable debate. See id. (“lndeed, Novo itself suggested two
`different constructions to the district court .
`.
`. .”).
`
`19
`
`Panasonic-1009
`
`Page 502 of 1492
`
`Panasonic-1009
`Page 502 of 1492
`
`

`

`Case 2:08-cv-00264-DF-CE Document 492
`
`Filed 06/30/10 Page 20 of 23
`
`of the user’s session, which may be a form of a rule change, is covered by the patent term.
`
`According to the defendants, when the user’s session is terminated, the system breaks the correlation
`
`between the user’s rule set and the temporarily assigned network address. (See ‘ 1 18 patent, 3 :21 -26
`
`(“When the user terminates the connection with the network, .
`
`.
`
`. the authentication accounting
`
`server .
`
`.
`
`. sends a message to the redirection server telling it to remove any remaining filtering and
`
`redirection information for the terminated user’s temporary IP address”); 4267-524 (“When the
`
`redirection server [] receives information regarding a terminated session .
`
`.
`
`.
`
`, the redirection server
`
`[] removes any outstanding rule sets and information associated with the session.”)). But Linksma-rt
`
`argues that these quoted passages from the specification are preferred embodiments, and the claim
`
`should not be construed to exclude modifications that terminate the session.
`
`The court is persuaded by Linksmart’s argument. The system may first terminate the user’ 5
`
`session, then break the correlation between the temporarily assigned network address and the user’s
`
`rule set. The court therefore construes “modifying at least a portion of the user’s rule set while the
`
`user’s rule set remains correlated to the temporarily assigned network address” to mean “changing
`
`at least one of the elements or conditions in the ‘user’s rule set’ during the session.”
`
`M.
`
`“database”
`
`Claim 1 contains the term “database”: “a database with entries correlating each ofa plurality
`
`of user IDs with an individualized rule set.” The term “database” appears throughout the
`
`specification. The plaintiff asserts that no construction of“database” is necessary. If a construction
`
`is required, the plaintiff proposes “a structured set of data held in a computer.” In contrast, BWI
`
`contends that this term means a “relational database that stores data in a collection of records
`
`wherein each record has at least one field common to other records.”
`
`20
`
`Panasonic-1009
`
`Page 503 of 1492
`
`Panasonic-1009
`Page 503 of 1492
`
`

`

`Case 2:08-cv-00264-DF-CE Document 492
`
`Filed 06/30/10 Page 21 of 23
`
`BWI argues that “database” must be construed as a relational database.
`
`In support of its
`
`proposed construction, BWI quotes the following language from the specification: “The database
`
`206 is a relational database which stores the system data.” (‘1 l 8 patent, 4:33-34) (emphasis added).
`
`BWI contends that this language does not state that the database could be or may be a relational
`
`database; instead, it says that the database is a relational database. But the quoted sentence is
`
`located within the “Detailed Description of the Invention”; this section begins with “[i]n the
`
`following embodiments of the invention.” (‘118 patent, 3:45). Figure 2 and the “database 206,”
`
`discussed in the Detailed Description, illustrate embodiments of the claimed invention. Although
`
`relational databases are a preferred embodiment, nothing in the claims or specification exclude other
`
`forms of data storage, such as a flat file. Therefore, the court construes “database” to mean “a
`
`structured set of data held in a computer.”
`
`N.
`
`“entries”
`
`Claim 1 contains the term “entries”: “a database with entries correlating each of a plurality
`
`of user IDs with an individualized rule set.” The specification states that “[t]he present invention
`
`allows for creating and implementing dynamically changing rules, to allow the redirection, blocking,
`
`or allowing, of specific data traffic for specific users, as a function of database entries and the user’s
`
`activity.” Linksmart states that no construction is necessary, or alternatively, proposes “records in
`
`a database.” BWI asserts the following construction: “records in a database, each record including
`
`a user ID and a unique rule set individualized for the user ID.”
`
`According to BWI, the rule set must be unique and individualized for each user ID. But
`
`claim 7, which depends from claim 1, explains that the entries correlate a plurality of users” IDs with
`
`a common individualized rule set. As such, the term “entries” does not require the entries to
`
`21
`
`Panasonic-1009
`
`Page 504 of 1492
`
`Panasonic-1009
`Page 504 of 1492
`
`

`

`Case 2:08-cv-00264-DF-CE Document 492
`
`Filed 06/30/10 Page 22 of 23
`
`correlate a unique rule set to each user ID.2 BWI also asserts that each record must include a user
`
`ID and a rule set. BWI relies on a portion of the specification that illustrates a record containing a
`
`user ID and rule set.
`
`(‘118 patent, 6211-22). This portion of the specification describes an
`
`embodiment, however. The claim language states that the entries correlate, not include, the user
`
`IDs and rule sets. Nothing in the patent excludes a database with user IDs and rule sets stored in
`
`separate tables. Finally, the remainder ofBWI’s construction merely restates what is required in the
`
`claim language—the correlation of user IDs with rule sets. As such, the court construes “entries” to
`
`mean “records in a database.”
`
`VI.
`
`Conclusion
`
`The court adopts the constructions set forth in this opinion for the disputed terms of the ‘ 1 1 8
`
`patent. The parties are ordered that they may not refer, directly or indirectly, to each other’s claim
`
`construction positions in the presence of the jury. Likewise, the parties are ordered to refrain from
`
`mentioning any portion of this opinion, other than the actual definitions adopted by the court, in the
`
`presence of the jury. Any reference to claim construction proceedings is limited to informing the
`
`jury of the definitions adopted by the court.
`
` 2
`
`At the May 25, 2010 claim construction hearing, counsel for BWI appeared to argue that
`the court should not consider claim 7 when construing “entries” because “claim 7 hasn’t been
`asserted in this lawsuit.” A person of ordinary skill reading the ‘l 18 patent would discern,
`however, that claim 7 is intrinsic evidence regardless of whether Linksmart would later decline
`to assert that claim. See also Phillips, 415 F.3d at 1315 (“Other claims of the patent in question,
`both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of
`a claim term”).
`
`22
`
`Panasonic-1009
`
`Page 505 of 1492
`
`Panasonic-1009
`Page 505 of 1492
`
`

`

`Case 2:08-cv-00264-DF-CE Document 492
`
`Filed 06/30/10 Page 23 of 23
`
`SIGNED this 30th day of June, 2010.
`
` CHARLES EVERINGHA
`
`V
`
`UNITED STATES MAGIS RATE JUDGE
`
`23
`
`Panasonic-1009
`
`Page 506 of 1492
`
`Panasonic-1009
`Page 506 of 1492
`
`

`

`EXHIBIT C
`
`Panasonic-1009
`
`Page 507 of 1492
`
`Panasonic-1009
`Page 507 of 1492
`
`

`

`
`
`Applicant
`Application No.
`Filed
`
`Title
`Gerst.
`Examiner
`Docket No.
`
`: Koichiro Ikudome, et 81.
`:
`09/295,966
`: April 21, 1999
`
`: USER SPECIFIC AUTOMATIC
`REDIRECTION SYSTEM
`V
`:
`3621
`Pierre E. Elissa
`:
`:
`34503/WWM/A522
`
`-
`
`APPELLANT'S BRIEF
`
`Assistant Commissioner for Patents
`Washington, DC. 20231
`
`‘
`
`Commissioner:
`
`DATA
`
`‘
`
`fig
`08
`05
`/1/
`9’9 0675
`’
`.
`00,0 “304;
`”L J
`
`I}
`
`.
`
`Post Office Box 7068
`Pasadena, CA 91109-7068
`November 22, 2002
`
`This is an appeal from the Final Rejection, dated October 12, 2001, of‘the claims in the
`
`above-referenced application.
`
`1.
`
`2.
`
`3.
`
`REAL PARTY IN INTEREST
`
`The real party in interest is the assignee oftha subjacf. application, Auric Web Systems.
`RELATED APPEALS AND INTERFERENCES
`
`There are no relatecl appeals or interferences.
`STATUS OF CLAIMS
`
`Claims 1-29 are pending in the present application.
`
`Claims 1-29 have been rejected in a final rejection, dated October 12, 2001 under 35
`
`U.S.C. §102(b).
`
`IE/O‘l/EOOE CUfllll
`
`0000018.”: 09295966
`
`01 FC:B4OB
`
`180.00 0|"
`
`
`
`. PanaSohi -1009
`Page 508'
`1492
`
`Panasonic-1009
`Page 508 of 1492
`
`

`

`
`
`Application No. 09/295,966
`
`The claims on appealare claims 1-29.
`
`4.
`
`STATUS OF AMENDMENTS
`
`Appellants submitted additional'remarks in a response to the final rejection. This
`
`response did not amend any claims. The response was not deemed to overcome the rejections.
`
`See, Paper 14, dated October 22, 2002. There are no outstanding, unentered amendments.
`5.
`SUMMARY or INVENTION
`'
`The invention is an improved databaseisystem and method for redirecting and filtering
`Internet traffic. Appellants’ Specification (hereinafter “Specification”), 1:10-11 (passages are
`indicated by pagedine). One embodiment of the invention relates to a system and method
`including a database 2061 with entries correlating each of a plurality of user IDs with an
`
`individualized rule set. A dial-up network server 102 receives user IDs from users’ computers
`
`100, and a redirection server 208 is connected to the dial-up network server 102 and a public
`network 110. An authentication accounting server 204 is connected to the database 206, the
`dial-up network server 102 and the redirection server 208. The dial-up network server 102
`
`communicates a first user ID for one of the users’ computers 100 and temporarily assigned
`
`network address for the first user ID to the authentication accounting server 204. The
`
`authentication accounting server 204 accesses the database 206 and communicates the
`
`individualized rule set that correlates with the first user ID and the temporarily assigned
`
`Specification, 428-13. Data directed toward
`network address to the redirection server 208.
`the public network 110 from one of the users’ computers 100 are processed by the redirection
`
`server 208 according the individualized rule set. Specification, 8280-417.
`One embodiment of the invention also redirects the data to and from the users’ I
`computers as a function of the individualized rule set. Specification, 3:26-28.
`In another .
`
`embodiment, at least a portion of the rule set for a temporarily assigned network address is
`
`automatically modified or at least a portion of the rule set is modified while that rule set
`
`
`
`remains correlated 1x; the temporarily assigned network address. Specification, 3:28-30.
`
`lAll numerals refer to FIG. 2.
`
`Page'soe" f 149:
`
`Panasonic-1009
`Page 509 of 1492
`
`

`

`Application No. 09/295,966
`
`6.
`
`ISSUES
`
`(1) Whether claims 1-29 are unpatentable under 35 [1.8.0. 55 102(1)) over Horowitz, et a].
`(WO 96/05549).
`7.
`GROUPING OF CLAIMS
`
`For purposes ofthis appeal, the claims are grouped as follows and for the purposes of this
`
`appeal only, the claims within each group stand and fall together. The claims consist of four
`
`independent claims, claims 1, 8, 15, and 26. Claims 1 and 15 claim systems and claims 8 and
`
`26 claim methods corresponding to those systems. For determining anticipation Within the
`
`meaning of 35 U.S.C. § 102(b), the groups are:
`
`Group I - 1'-4, 7-11, 14
`
`Group II . 5-6, 12-13
`
`Group [11- 15-29
`8. ARGUMENT
`
`A.
`
`QEQLIP I
`
`Group I includes claims 1-4, 7-11 and 14.
`
`Independent claim 1 recites a system
`
`comprising a database with entries correlating each of a plurality of user 109 with an
`
`individualized rule set; a. dial-up network server that receives user IDs from users’ computers;
`a redirection server connected to the dial-up network server and a public network: and an
`
`authentication accounting server connected to the database, the dial-up network server and
`
`the redirection server, wherein the dial-up network server communicates a first user ID for
`
`one of the users’ computers and a temporarily assigned network address for the first user ID
`
`to the authentication accounting server, wherein the authentication accountingserver accesses
`the database and communicates the individualized rule set that correlates with the first user
`
`
`
`ID and the temporarily assigned network address to the redirection server, and wherein data -
`
`directed toward the public network from the one of the users’ computers are processed by the
`redirection server according to the individualized rule set.
`
`Page 510 f 1492
`
`Panasonic-1009
`Page 510 of 1492
`
`

`

`
`
`Application No. 09/295,966
`
`The Examiner has rejected independent claim 1 under 35 U.S.C. §102(b) as being
`
`anticipated by Horowitz. Horowitz is directed to a local network2 remote access server.
`
`Horowitz, Abstract. Remote users, such as telecommnters, can dial directly into a remote
`
`access server” that checks the remote users‘ 'le and passwords against a database. Horowitz.
`
`3:15-28. The database also includes pre-programed access filters indicating to which of the
`
`known devices connected to the local network (e.g., other computers, printers, etc.) the user
`
`can have access. Horowitz, 3:32-4:5. The remote access server can then allow or block the
`
`user from access to a particular device.
`Similar packet filtering is discussed in the Appellants’ background section. Specifically, ,
`"packet filtering is very limited because it is static. Once packet filtering rule sets are
`
`programed into a firewall or other packet filter device, the rule set can only be changed by
`
`manually reprogramming the device." Specification, 2:30-34. However, this disadvantage can
`be largely irrelevant on a local netviork because the devices and networks‘ on which the access
`filters are based are relatively static and known by the network administrator. Horowitz
`
`teaches that the database is “maintained by a network manager who has central control of and
`responsibility for the network 14 and the maintenance thereof.” Horowitz, 8231-922. Such
`
`control over a constantly changing public network, such as the Internet, is not feasible.
`
`A single prior art reference will anticipate a claim only if' it expressly or inherently
`
`describes each and every limitation in the claim. Verdegaal Bros, Inc. 0. Union Oil 00.. 814
`
`F.2d 628, 681 (Fed. Cir. 1987). Horowitz neither expressly nor inherently discloses every
`
`limitation of claim 1. Specifically, Horowitz does not disclose the claim element, “wherein data
`directed toward the public network from the one ofthe users’ computers are processed by the
`redirection server according to the individualized rule set." The entirety of the Examiner’s .
`
`grounds for rejection with respect to this element is that the element is “disclosed by Horowitz,
`
`in the abstract, specifically wherein it is stated that the server also includes processing
`
`zSec, e.g., Horowitz, Abstract,71:5-10 and 3:1-7.
`
`flSee Horowitz, 4:6-23.
`
`“See Horowitz, 3:29-4:5.
`
`
`
`........--_... Wm—
`
`“
`
`Panasqn -1009
`""‘i’ig'g; 511
`f 1492
`
`Panasonic-1009
`Page 511 of 1492
`
`

`

`Application No. 09l295,966
`
`electronics which control the communication and network ports.” Sec'Final Office Action, p.
`
`8. In an advisory action,5 the Examiner essentially repeated this ground stating:
`
`Applicant’s representative argues that Horowitz does not [disclose] any about 'e
`system that control a user’s access to a public network’...However, the Examiner
`. respectfully disagrees because Horowitz in the Abstract, specifically wherein it is
`stated that processing [electronics] which control the communication...see office
`action mailed on 10/12/2001.
`
`For a finding of anticipation, "the identical invention must be shown in as complete detail as
`is contained in the ...claim." Richardson 2). SuzukiMotor Co., 868 F.2d 1226, 1236 (Fed. Cir'.
`
`1989). However, nothing in the reference’s passage from the Abstract cit‘edby the Examiner
`
`.5-
`
`discloses any data directed to a public network.
`
`Although not explicitly stated, the Examiner appears to be making an assumption that
`”communication and network ports” inherently direct data to a public network. First,
`
`Horowitz fails to inherently anticipate the claimed element. "Inherent anticipation requires
`
`that the missing descriptive material is ‘necessarily present,’ not merely prob ably or possibly
`present, in the prior art.” ’I‘rintec Indus, Inc. v. Top-USA. Corp, 295 F.3d 1292. 1295 (Fed.
`Cir. 2002). While it is true that it is possible to use "communication and network ports” to
`
`direct data to a public network, “communication and network ports" are often used in systems
`
`without directing data to a public network. For example, two stand alone computers directly
`
`connected over a telephone line with modems or two computers connected to each other in a
`
`simple LAN have “communication and network ports” controlledby processing electronics, but
`
`do not direct data towards public network. Appellants therefore submit that the missing
`description of “directing data toward a public network” falls far short of being “necessarily I
`
`present” in Horowitz, as is required by Trintec Indus, Inc. v. Top»U.S.A. Corp.
`
`Second, the specific ”communication and network ports” disclosed in Horowitz do not
`
`expressly teach or suggest anything about public networks or directing data to a public
`network. The “communication and network ports” in the Horowitz abstract cannot be read in
`
`5See, Paper No. 14, sent November 8, 2002.
`
`,......
`
`.......
`
`...-...
`
`..._..,
`
`i.........i...-.,._._. -....
`
`,. ...,
`
`. ”Page 51.7. f 1492
`
`Panasonic-1009
`Page 512 of 1492
`
`

`

`
`
`Application .No; 09/295,966
`
`a vacuum. They must be read in the context of the Horowitz disclosure.
`
`Horowitz that discusses these ports is as follows:
`
`Referring now to FIG. 4, in one embodiment, the remote access server 16 includes
`electronics 38, a plurality of serial communication ports 40,—40N, and a plurality of
`network ports 421-42“ The server 16 also can include a plurality of internal modems
`441-4411- The serial ports 40 and the network ports 42 are controlled by the electronics
`38.
`
`The electronics 38 include, in some embodiments, a powerful J'B‘MHz 88130020
`microprocessor and memory such as up to 1 megabyte of battery backed-up static
`random access memory (SRAM) and possible 64 kilobytes in an erasable programmable
`read only memory (EPROM).
`Each of the serial communication ports 40 is for coupling with a communication
`device (e g., the modem 26 of FIG 1), or for coupling directly with the telephone lines
`22, to provide for communication with a remote computer (e.g.., the remote computer 12
`of FIGS 1 and 2) over the telephone lines 22 A connecting cable canbe used to ocuple 2
`a serial port 40 with the communication device or with the telephone lines Each of the
`serial ports 40 can simultaneously be coupled to a different one of the plurality of
`remote computers so as to provide simultaneous access to a local computer network for
`each ofthe remote computers, even 1feach of the remote computers employs a different
`protocol (e. g., IPX. TCP/IP, Apple'l‘alk, NetBDUl or 802. 2/LLC)
`Each of the network ports 42is for coupling with a Zocal computer network (e.g., the
`network 14 ofFIGS. 1 and 2), via a connecting cable, to provide for communication with
`the network...ln some embodiments. the server 16 includes three network ports 42, one
`for 10Base'l‘ Ethernet. one for Thin Ethernet, and one for ’l‘hick Ethernet.
`In some
`other embodiments, the server 16 includes a single network port 42 for Token Ring.
`In some other embodiments, the server 16 includes a single network port 42 for use
`with Apple LocalTalk
`
`The entirety of
`
`Horowitz, 16:24-17:14, 17224-1821 (emphasis added). As indicated in the emphasized portion
`of this disclosure, the “communications ports” provide communication with remote computers
`
`used to remotely access the network that includes the communication ports, not a public
`
`network. Similarly, the "network ports" are coupled to a local computer network, not :21 public
`network. Nowhere in this discussion is there any teaching or suggestion of a public network .
`or the “communication and'network ports” being connected to one, and, in fact, the entire
`disclosure is expressly directed to only a private network.
`
`Panason-
`
`Page 513 ‘ f 1492
`
`
`
`Panasonic-1009
`Page 513 of 1492
`
`

`

`
`
`
`
`Application No. 09/295,966 _
`
`As discussed above. the differencesbetweenpublic and private networks are important.
`
`In private networks, such as in Horowitz, all of the resources and services are known. Private
`
`- networks are “maintained by a network manager who has central control of and responsibility
`for the network 14 and the maintenance thereof." Horowitz, 8:31-92. All ofthe resources and
`
`services are known. Additionally, since these networks are “private,” they are not accessible
`
`to the public.
`
`In a public netWork, the available resources and services are unknown and
`
`constantly changing. Horowitz states that an object of its access filter is to provide "security
`
`features” and "restrict access to the network on a monster basis.” Public networks are not -
`
`secure and access is unrestricted. Because Horowitz fails to disclose the cited limitations
`
`either expressly or inherently, Appellants respectfully submit that claim 1 is not anticipated
`/
`by Horowitz.
`
`Independent claim 8 recites a method that correspondsto the system recited in claim
`1. Appellants respectfully submit that claim 8 and its dependent claims 9-14 are therefore
`
`patentable over Horowitz. Appellants respectfully request that the rejections to claims 8-14
`be withdrawn.
`
`For all of the reasons stated above, Appellants respectfully submit'tbat claim 1, its
`dependent claims 2-7, claim 8 and its dependent claims 9- 14 are patentable over Horowitz and
`
`respectfully request that the rejection under §102 be withdrawn.
`
`B.
`
`QgOUP II.
`
`Group II includes claims 5-6 and 12-13. Claims 6-6 and 1243 recite systems and
`methods that redirect data to and from the users’ computers via the redirection server as a »
`
`function ofthe individualized rule set. The passages in Horowitz cited by the Examiner do not
`teach or suggest this limitation. Instead, these passages relate to only blocking or allowing
`access to the private network, or particular devices on the private network. Horowitz,
`Abstract, 9:20-29. The Appellants can find no teaching or suggestion anywhere in Horowitz
`of directing the data to or from the user to an alternate location based on the individualized
`
`rule set and the Examiner has not identified such teaching or suggestion.
`
`.
`
`Panaso : c-10(l9
`Page 514; £1492
`
`Panasonic-1009
`Page 514 of 1492
`
`

`

`Application No. 09/295,966
`
`Appellants include an extensive discussion regarding redirection of data in their
`
`specification. Specification, 1:29-2:16. Redirection involves the server "directing” the user to
`
`another area ofthe network. If the user chooses on its own to try to access another; allowable
`
`area of the network, this is clearly not redirection by the server. Horowitz, therefore, does not
`
`disclose any server that redirects date, but rather only passivelyblocks or allows data. As this
`
`limitation is neither expressly or inherently present in Horowitz, Appellants respectfully
`
`request that the rejections to Group H be withdrawn. Additionally, Appellants submit that
`
`claims 5-6 and 12-13 are dependent on patentable independent claims 1 and 8, respectively.
`and should therefore be allowed. The difference between passive blocking and allowing data
`
`and the redirection in this group ot'cleims also makes these claims patentably distinct from
`
`the claims in Group I, because the claims in Group I would cover passive blocking and allowing
`data.
`
`.3.
`
`C.
`
`GROUP 111.
`
`Group III includes claims 15-29. Independent claim 15 recites a system comprising a
`redirection server programed with a user’s rule set correlated to a temporarily assigned
`
`network address; wherein the rule set contains at least one of a plurality of functions used to
`control passing between the user and a public netwurk; and wherein the redirection server is
`
`configured to allow automated modification of at least a portion of the rule set correlated to
`the temporarily assigned network address.
`
`The Examiner has rejected independentclaim 16 under 35 U.S.C. §102(b) as being
`anticipated by Horowitz) As discussed in relation to Group 1, above, Horowitz contains no .
`express or inherent teaching or suggestion of a public network, or a rule set with functions
`used to control passing between the user and a public network. Appellants therefore
`respectfully submit that claim 15 and its dependent claims 16-25 are allowable and request
`
`that their rejections be with drawn.
`
`Additionally, Horowitz contains no teaching or Suggestion of “automated modification
`
`of at least a portion of the rule set correlated to the temporarily assigned network address.”
`Although Appellant brought the absence of this element to the Examiner’s attention in every
`
`
`
`..
`
`,
`
`-
`
`Page 515 f1492
`
`Panasonic-1009
`Page 515 of 1492
`
`

`

`Application No. 09/295,966
`
`comnumication,8 the Examiner has failed to cite any teaching or suggestion in Horowitz that
`
`meets this element or respond to Appellants’ argument in any way. Appellant respectfully
`
`submits that the Examiner has failed to show that claims 15-25 are expressly or inherently
`
`anticipated by Horowitz, and therefore requests that the rejections to these claims be
`
`withdrawn. The automated modification element also distinguishes the claims of Group Hi
`from the claims of Group I as even ifthe claims of Group I were anticipatedby Horowitz, there
`
`would be no anticipation ofthe Group III claims because Horowitz does not disclose or suggest
`the automated modification element.
`
`Independent claim 26 recites a methodthat corresponds generallyto the system recited
`
`in claim 15. Appellants respectfully submit that claim 26 and its dependent claims 27-29 are
`
`therefore patentable over Horowitz. Specifically, the Examiner has not cited‘any portion "of
`Horwitz as disclosing "modifying at least a portion of the user’s rule set while the user‘s rule
`
`set remains correlated to the temporarily assigned network address.” Appellants respectfully
`request that the rejections to Group in be withdrawn.
`’
`
`'D.
`
`QQNCLUSION.
`
`A single prior art reference will anticipate a claim only if it expressly or inherently,
`describes each and every limitation in the claim. Verdegaal Bros., Inc. 1). Union Oil 00., 814
`F.2d 628, 631 (Fed. Cir. 1987). Regarding Group I, the reference cited by the Examiner in
`
`support of his 35 U.S.C. §102(b) rejection fails to expressly or inherently teach or suggest
`"wherein data directed toward the public netwéork from the one of the users' computers are
`processed by the redirection server according to the individualized rule set.” Horowitz, in fact,
`
`contains no teaching or suggestion of a public networkat all, and is expressly related to only
`
`a private network. Regarding Group II, the Examiner has failed to show any teaching or
`
`suggestion in Horowitz of “redirection of data to or from a user." Finally, regarding Group III,
`
`the Examiner has failed to show any teaching or suggestion in Horowitz of “modification of a
`
`6See, Response to Office Action sent July 30, 2001 p. 7, Telephone conference ofOctober 10,
`2002, and Response to Office Action sent October 22, 2002 p. 3.
`
`.9.
`
`
`
`Panaso c-lOO:
`Page 516 f 1492
`
`Panasonic-1009
`Page 516 of 1492
`
`

`

`
`
`Afiplication No. 09/295,966
`
`rule set. correlated to a temporarily assigned network address.” In fact, the Examiner has
`
`offered no argument or reference related to this claim element. Accordingly, the Examiner has
`failed to make out aprima facie case of anticipation and the issuance of a notice of allowance
`
`is appropriate.
`
`Respectfillly submitted,
`
`CHRISTIE, PARKER & HALE, LLP
`
` Wesley . Monroe
`
`Reg. No. 39,778
`626/795-9900 .
`
`.10.
`
`
`
`Page 517 f1492
`
`Panasonic-1009
`Page 517 of 1492
`
`

`

`
`
`Application No. 09/295,966
`
`9.
`
`APPENDIX OF CLAIMS INVOLVED IN THE APPEAL
`
`1.
`
`A system comprising:
`
`a database with entries correlating each of a plurality of user ’IDs with an
`individualized rule set;
`
`a dial-up network server that receives user IDs from users' computers;
`
`a redirection server connected to the dial-up network server and a public network, and
`
`an authentication accounting server connected to the database, the‘dial-up network
`server and the redirection server;
`
`wherein the dial-up network server communicates a first user ID for one of the users
`computers and a temporarily assigned network address for the first user ID to the
`
`authentication accounting server;
`
`wherein the authentication accounting server accesses the database and communicates
`
`the individualized rule set that correlates with the first user ID and the temporarily assigned
`network address to the redirection serve