Ex Parte Griffin et alDownload PDFPatent Trial and Appeal BoardApr 15, 201311192469 (P.T.A.B. Apr. 15, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JONATHAN GRIFFIN, ANDREW PATRICK NORMAN, and MATTHEW MURRAY WILLIAMSON ____________ Appeal 2010-010052 Application 11/192,469 Technology Center 2400 ____________ Before BRUCE R. WINSOR, JEREMY J. CURCURI, and GREGG I. ANDERSON, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-39, which constitute all the claims pending in this application. Claim 40 is cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Claim 1 is illustrative of the invention and reads as follows: Appeal 2010-010052 Application 11/192,469 2 1. Apparatus for monitoring from a first location in a computer network traffic emanating from a source at a second location in the network, the apparatus comprising: means embodied in a machine at the first location for detecting traffic emanating from the source and means embodied in the machine for monitoring the number, per unit time, of distinct destinations of the traffic that lie outside a first set specifying familiar destinations of the traffic. Claims 1-391 stand rejected under 35 U.S.C. § 102(b) as anticipated by Jamie Twycross and Matthew M. Williamson, Implementing and testing a virus throttle, Hewlett-Packard, published August 2003 (hereinafter Twycross). Ans. 3-6. Claims 1-39 stand rejected under 35 U.S.C. § 102(f) because Appellants did not invent the subject matter sought to be patented, as evidenced by Twycross. Ans. 3. A rejection of claims 1-39 under 35 U.S.C. § 101 as directed to non- statutory subject matter has been withdrawn by the Examiner. Ans. 2; see also App. Br. 5-7. Rather than repeat the arguments here, we refer to the Briefs (App. Br. filed Dec. 3, 2009; Reply Br. filed May 5, 2010) and the Answer (Ans. mailed Mar. 5, 2010; Supp. Ans. mailed March 25, 2010) for the respective positions of Appellants and the Examiner. Only those arguments actually made by Appellants have been considered in this decision. 1 The Answer, Ans. 3, incorrectly lists cancelled claim 40. This typographical error was corrected by the Supplemental Answer mailed March 25, 2010. Appeal 2010-010052 Application 11/192,469 3 ISSUE Appellants’ arguments regarding the rejection of claims 1-39 under 35 U.S.C. § 102(f) rely on the arguments made regarding the rejection under 35 U.S.C. § 102(b). App. Br. 11; Reply Br. 9-10. The Examiner’s rejection of, and Appellants’ arguments for the patentability of, claims 20-39 substantially parallel those made for claims 1-19. See Ans. 3-6; compare App. Br. 8-9 with App. Br. 9-11; compare Reply Br. 4-7 with Reply Br. 7-9. Accordingly, we will discuss the appeal by reference to the rejection of claim 1 under 35 U.S.C. § 102(b). The dispositive issue raised by Appellants’ contentions is as follows: Does Twycross disclose “monitoring the number, per unit time, of distinct destinations of the traffic that lie outside a first set specifying familiar destinations of the traffic,” as recited in claim 1?2 ANALYSIS The Examiner finds that Twycross discloses all of the elements of claim 1. Ans. 3-4 (citing Twycross, §§ 3.1, 4.1.1). In the Answer’s Response to Argument section, the Examiner explains, for what appears to be the first time in the record, as follows: Twycross further discusses the virus throttle implemented as a Linux kernel module (claimed “means embodied on a machine”) (Twycross, sec.3.2) which throttles rate of connection attempts, “the virus throttle is a program that limits the rate of outgoing connections to new machines that a host is able to make in a given time interval. . . [.] By controlling the number of SYN packets transmitted from the source machine 2 Appellants’ contentions raise additional issues. However, as the identified issue is dispositive, we do not reach the additional issues. Appeal 2010-010052 Application 11/192,469 4 we can control the number of connections it is able to make” (mapping to [the] claimed “monitoring the number, per unit time, of distinct destinations of the traffic that lie outside a first set specifying familiar destinations of the traffic”) (Twycross, sec.3.1). Ans. 8. Appellants contend, for the first time in the Reply Brief,3 that “the Twycross virus throttle fails to monitor the number, per unit time, of distinct destinations of traffic that lie outside a first set specifying familiar destinations of the traffic, as recited in claim 1.” Reply Br. 4. Appellants explain that: Twycross unequivocally states that “[i]n our implementation we make no attempt to differentiate initial SYN packets from retries, and count the retries as separate connection attempts.” Id. at § 3.1, [¶ 2] (emphasis added). In other words, the Twycross virus throttle treats each SYN packet as being associated with a separate connection attempt regardless of whether the SYN packet corresponds to an initial connection attempt to a new destination or a retry attempt to a familiar destination. Unlike the apparatus of claim 1 that monitors a number of distinct destinations of traffic, the Twycross virus throttle counts each connection attempt as a separate attempt, expressly not differentiating between initial connection attempts to new destinations and retry attempts to familiar destinations. Reply Br. 5. We agree with Appellants for the reasons stated by Appellants. Accordingly, we do not sustain the rejection under 35 U.S.C. § 102(b) of (1) claim 1; (2) independent claims 20 and 39, which incorporate limitations 3 Although we do not always consider arguments raised for the first time in the Reply Brief, see Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative), we exercise our discretion to do so here. Appeal 2010-010052 Application 11/192,469 5 substantially the same as we find not to be disclosed by Twycross; and (3) claims 2-19 and 21-38, which depend from claims 1 and 20 respectively. Because the Examiner has not shown that Twycross discloses the invention claimed by Appellants, we similarly do not sustain the rejection of claims 1- 39 under 35 U.S.C. § 102(f). ORDER The decision of the Examiner to reject claims 1-394 is reversed. REVERSED rwk 4 In the event of further prosecution of claim 39, or claims in similar form, we leave to the Examiner to determine if claim 39 encompasses a transitory signal that is non-statutory subject matter under 35 U.S.C. § 101. See In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007); see also MPEP § 2106(I) (8th ed. 2001, rev. 2012), and Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101: August 2012 Update, Office of Patent Legal Administration, United States Patent and Trademark Office, available at http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf. Copy with citationCopy as parenthetical citation