Ex Parte Jorgensen et al

Patent Trial and Appeal Board

Aug 28, 2013

11192835 (P.T.A.B. Aug. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEVEN GLEN JORGENSEN and
JONATHAN EDWARD GREENLAW
____________________

Appeal 2011-003528
Application 11/192,835
Technology Center 2400
____________________

Before JOSEPH F. RUGGIERO, CAROLYN D. THOMAS, and
KALYAN K. DESHPANDE, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003528
Application 11/192,835

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STATEMENT OF CASE1
The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1, 4, 5, 7-13, 15, and 17-22, the only claims pending in
the application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.

The Appellants invented a technique for monitoring network packets.
Spec. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below:
1. A method of monitoring network traffic, the method
comprising:
receiving a network data packet;
extracting network address information from the network
data packet and creating a data value therefrom;
comparing the data value with a set of predetermined
network address information to determine whether the received
packet is associated with at least one of a set of specified
applications being monitored, wherein the set of predetermined
network address information includes a layer 4 port number for
each of the specified applications; and
if a determination is made that the received packet is
associated with the at least one of the set of specified
applications, determining based on a preselected sampling
technique whether said network data packet is to be mirrored.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed June 7, 2010) and Reply Brief (“Reply Br.,” filed Nov. 1, 2010),
and the Examiner’s Answer (“Ans.,” mailed Sep. 1, 2010), and Final
Rejection (“Final Rej.,” mailed Jan. 8, 2010).
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Application 11/192,835

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REFERENCES
The Examiner relies on the following prior art:
Duffield
Jungck
US 6,873,600 B1
US 7,032,031 B2
Mar. 29, 2005
Apr. 18, 2006
Bays US 2003/0204619 A1 Oct. 30, 2003

REJECTIONS
1. Claim 22 stands rejected under 35 U.S.C. §112 second
paragraph as being indefinite
2. Claims 1, 4, 5, 10-13, 15, and 20-22 stand rejected under 35
U.S.C. §103(a) as being unpatentable over Duffield and Jungck.
3. Claims 7-9 and 17-19 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Duffield, Jungck, and Bays.

ISSUES
1. Under § 112, second paragraph, did the Examiner err in finding
that the “means for determining” limitation as recited in claim 22, is
indefinite?
2. Under § 103, did the Examiner err in determining that the cited
combination of references would have taught or suggested extracting
network address information from the network data packet and creating a
data value therefrom, and comparing the data value with a set of
predetermined network address information to determine whether the
received packet is associated with at least one of a set of specified
applications being monitored, within the meaning of representative claim 1?
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Application 11/192,835

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ANALYSIS
§ 112, Second Paragraph
As stated above, claim 22 stands rejected under § 112, second
paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter which appellant regards as the invention.
Ans. 3. Specifically, the Examiner finds that the specification does not
include an algorithm for the “means of determining,” limitation of claim 22.
Id. We agree with the Examiner for the reasons discussed infra.
“[I]n a means-plus-function claim ‘in which the disclosed structure is a
computer, or microprocessor, programmed to carry out an algorithm, the
disclosed structure is not the general purpose computer, but rather the
special purpose computer programmed to perform the disclosed algorithm.’”
Aristocrat Tech. Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333
(Fed. Cir. 2008) (citing WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d
1339, 1349 (Fed. Cir. 1999)). The disclosure of the claimed invention must
disclose enough of an algorithm expressed in any understandable terms,
including a mathematical formula, in prose, as a flow chart, or in any other
manner that provides sufficient structure. Finisar Corp. v. The DirectTV
Group, 523 F.3d 1323, 1340 (Fed. Cir. 2008).
The Appellants contend that the sampling module 112 performs the
function of the “means for determining” because the sampling module
determines whether a packet is to be mirrored, as described in Appellants’
Specification. Reply Br. 4.
However, we agree with the Examiner that the description of the
sampling module 112, does not adequately describe the function of the
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sampling module recited in claim 22. In particular, the Appellants’
Specification does not describe that the network data packet is to be
mirrored based on a preselected sampling technique. Ans. 3. Instead,
module 112 merely describes performing pre-selected sampling techniques,
not mirroring based thereon (see Spec., 4).
Based on this record, we conclude that the Examiner did not err in
rejecting claim 22 under § 112, second paragraph. Accordingly, we affirm
the Examiner’s rejection of claim 22 under 35 U.S.C. § 112, second
paragraph.

§ 103 Rejections
Claims 1, 4, 5, 10-13, 15, and 20-22
The Appellants contend that the cited references fail to teach or
suggest “extracting network address information from the network data
packet and creating a data value therefrom” and “comparing the data value
with a set of predetermined network address information,” as recited in
independent claim 1. App. Br. 9. We disagree for the reasons discussed
infra.
We agree with the Examiner’s finding that Duffield describes
collecting data such as source ad destination address information from
sampled packets. The extracted information is used to create a label. Ans.
23; Duffield, col. 7, ll. 5-11. While we agree with the Appellants that
Duffield describes a comparison of packet labels (Duffield, col. 17, ll. 39-
42), we also find that Jungck teaches or suggests a comparison (matching) a
data value with a list of known DNS translation server addresses and
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indicating whether the network packet is associated with a particular
application. Ans. 24; Jungck, col. 19, ll. 1-6.
The Appellants further contend that the Examiner’s findings breaks
the claimed features into two parts and “treats them as if they are unrelated
to each other.” Reply Br. 9.
While we are fully aware that hindsight bias often plagues
determinations of obviousness, we are also mindful that the Supreme Court
has clearly stated that the “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 Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007).
This reasoning is applicable here. Given the breadth of Appellants’
claims, combining the respective familiar elements of the cited references in
the manner proffered by the Examiner was not “uniquely challenging or
difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Therefore, we find the Examiner’s proffered combination of
familiar prior art elements according to their established functions would
have conveyed a reasonable expectation of success to a person of ordinary
skill having common sense at the time of the invention.
As such, we conclude that collectively, the cited combination of
references would have taught or suggested the limitations at issue. Based on
this record, we conclude that the Examiner did not err in rejecting
representative claim 1. Accordingly, we affirm the Examiner’s rejection of
claim 1 and claims 4, 5, 10-13, 15, and 20-22 not argued with particularity.
App. Br. 15.
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Claims 7-9 and 17-19
As noted above, dependent claims 7-9 and 17-19 stand rejected under
a separate combination of references. The Appellants did not present
arguments for the patentability of claims 7-9 and 17-19 with particularity.
App. Br. 15. Accordingly, we affirm the Examiner’s rejection of claims 7-9
and 17-19 for the same reasons stated supra.

CONCLUSIONS
The Examiner did not err in rejecting claim 22 under 35 U.S.C. § 112,
second paragraph.
The Examiner did not err in rejecting claims 1, 4, 5, 7-13, 15, and 17-22
under 35 U.S.C. § 103(a).

DECISION
To summarize, our decision is as follows.
 The rejection of claim 22 under 35 U.S.C. § 112, second paragraph is
sustained.
 The rejections of claims 1, 4, 5, 7-13, 15, and 17-22 under 35 U.S.C.
§ 103(a) are sustained.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010).

Appeal 2011-003528
Application 11/192,835

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AFFIRMED

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