11040265 (B.P.A.I. Feb. 14, 2012)

Ex Parte Jennings et al

Board of Patent Appeals and InterferencesFeb 14, 2012

11040265 (B.P.A.I. Feb. 14, 2012)

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. 11/040,265 01/21/2005 Jeffery Bart Jennings RPS920040236US1 4043 50594 7590 02/15/2012 CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 2022 BOCA RATON, FL 33487 EXAMINER LE, CANH ART UNIT PAPER NUMBER 2439 MAIL DATE DELIVERY MODE 02/15/2012 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 JEFFERY BART and KOFI KEKESSIE ____________ Appeal 2009-010760 Application 11/040,265 Technology Center 2400 ____________ Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and ST. JOHN COURTENAY III, Administrative Patent Judges. PER CURIAM DECISION ON APPEAL STATEMENT OF THE CASE The Patent Examiner rejected claims 1-20. The Appellants appeal therefrom under 35 U.S.C. Â§ 134(a). We have jurisdiction under 35 U.S.C. Â§ 6(b). Appeal 2009-010760 Application 11/040,265 2 INVENTION The Appellants describe the invention at issue on appeal as "allowing a server to authenticate a client without initially permitting direct communication between these devices." (Spec. Â¶ 0001.) Claim 7, reproduced below, is illustrative of the claimed subject matter: 7. A method for authenticating a communication request sent from a client computing device, the method comprising: initially blocking the communication request from delivery to a server; creating a first logging event corresponding to the communication request; storing the communication request and the logging event in a firewall; notifying the server of the first logging event; authenticating the communication request corresponding to the first logging event; and enabling a port in the firewall if the communication request is authenticated. REJECTION(S) Claims 1, 7, and 14 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over U.S. Patent Application Pub. No. 2004/0088409 A1 ("Braemer") and U.S. Patent Application Pub. No. 2004/0181664 A1 ("Hoefelmeyer"). Claims 2, 8, and 15 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Braemer; Hoefelmeyer; and U.S. Patent Application Pub. No. 2005/0213582 A1 ("Wakumoto"). Claims 3, 9, and 16 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Braemer; Hoefelmeyer; Wakumoto; and U.S. Patent No. 5,757,795 ("Schnell"). Appeal 2009-010760 Application 11/040,265 3 Claims 4-6, 10-12, and 17-19 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Braemer; Hoefelmeyer; Wakumoto; Schnell; and U.S. Patent No. 5,602,918 ("Chen"). Claims 13 and 20 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Braemer; Hoefelmeyer; Wakumoto; Schnell; Chen; and U.S. Patent Application Pub. No. 2004/0190715 A1 ("Nimura"). DISCUSSION Based on the Appellants' arguments, we will decide the appeal of claims 1-20 on the basis of claim 7. See 37 C.F.R. Â§ 41.37(c)(1)(vii). Rather than arguing the obviousness rejections of claims 2-6, 8-13, and 15- 20 separately, the Appellants rely on their arguments for the independent claims. The question of obviousness is "based on underlying factual determinations including . . . what th[e] prior art teaches explicitly and inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citations omitted). "The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art." In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Of course, "'[e]very patent application and reference relies to some extent upon knowledge of persons skilled in the art to complement that disclosed . . . .'" In re Bode, 550 F.2d 656, 660 (CCPA 1977) (quoting In re Wiggins, 488 F.2d 538, 543 (CCPA 1973)). Those persons "must be presumed to know something" about the art Appeal 2009-010760 Application 11/040,265 4 "apart from what the references disclose." In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). Here, we find that, on the record, the preponderance of the evidence supports the Examinerâ€™s finding that the combined teachings of Braemer and Hoefelmeyer, supplemented by the knowledge of persons skilled in the art, would have suggested the limitations of representative claim 7 for the reasons explained by the Examiner with the following three additional explanations. Firstly, we find that in Braemer, as a "[a] client request . . . is transmitted from a client computer through a first firewall" (Â¶ 0014), the request is stored, at least temporarily, in the first firewall. Secondly, assuming arguendo, that the port through which the reference's client request passes to reach the server is "always open" as argued by the Appellants (Reply Br. 11), we find that Braemer would still have suggested the claimed "enabling a port in the firewall if the communication request is authenticated." If the port is always open, it would enable a port in the firewall if the communication request is authenticated (and if the request is not authenticated). This is within the scope of the claim, which does not recite enabling a port only if the communication request is authenticated and is open-ended. Thirdly, "[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l v. Teleflex Inc., 550 U.S. 398, 416 (2007). More specifically, "when a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is Appeal 2009-010760 Application 11/040,265 5 obvious." Id. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). Here, we find that combining the teachings of Braemer's network architecture with Hoefelmeyer's teaching of a "server 301 record[ing] events generated from a firewall 303" (Â¶ 0037), would have amounted to an obvious arrangement of old elements, with each performing the same function it had been known to perform and yielding no more than one would expect from such an arrangement. DECISION We affirm the rejection of claim 7 and those of claims 1-6 and 8-20, which fall therewith. No time for taking any action connected with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(1). See 37 C.F.R. Â§ 1.136(a)(1)(iv). AFFIRMED tkl