FORTINET, INC.

Patent Trials and Appeals Board

Feb 2, 2022

2020005548 (P.T.A.B. Feb. 2, 2022)

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. 14/697,868 04/28/2015 Michael Xie FORT-008110(14067) 8663 176502 7590 02/02/2022 Douglas M. Hamilton HDC Fortinet 224 S. Main Street, 114 Springville, UT 84663 EXAMINER KIM, TAE K ART UNIT PAPER NUMBER 2496 NOTIFICATION DATE DELIVERY MODE 02/02/2022 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): dhamilton@hdciplaw.com miquelchamilton@hamiltonshome.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL XIE ___________ Appeal 2020-005548 Application 14/697,868 Technology Center 2400 ____________ Before CARL W. WHITEHEAD JR., JEREMY J. CURCURI and NABEEL U. KHAN, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Appellant2 is appealing the final rejection of claims 1-22 under 35 U.S.C. § 134(a). See Appeal Brief 11. Claims 1 and 8 are independent. We have jurisdiction under 35 U.S.C. § 6(b). 1 Rather than reiterate Appellant’s arguments and the Examiner’s determinations, we refer to the Appeal Brief (filed November 1, 2019), the Final Action (mailed May 1, 2019) and the Answer (mailed February 21, 2020), for the respective details. 2 Appellant refers to “applicant” as defined in 37 C.F.R. 1.42(a). (“The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.”). Appellant identifies Fortinet, Inc. as the real party in interest. Appeal Brief 3. Appeal 2020-005548 Application 14/697,868 2 We affirm. Introduction According to Appellant, “Embodiments of the present invention generally relate to configuring network security devices and/or performing diagnostics on network security devices. In particular, embodiments of the present invention relate to performing initial diagnostics of a network security device using a hand-held computing device.” Specification ¶ 3. Representative Claim3 (disputed limitations emphasized) 1. A method comprising: connecting a hand-held computing device to a network security device via a connecting cable that is coupled to a management interface of the hand-held computing device, wherein the network security device protects an associated communication network other than the hand-held computing device against security threats by scanning packets transmitted within the associated communication network for existence of malicious content and providing features including one or more of network firewalling, intrusion prevention, content filtering, data leak prevention, and network access control; causing the network security device to initiate performance of one or more diagnostic tests on the network security device by responsive to receipt of an indication from a user of the hand-held computing device regarding a diagnostic command via a graphical user interface (GUI) or a command line interface (CLI) of a mobile 3 Appellant does not argue independent claims 1 and 8 individually. See Appeal Brief 18, 20 (“Regarding independent claim 8, it includes limitations similar to those discussed above with reference to independent claim 1”). Accordingly, we select independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (“When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone.”). Appeal 2020-005548 Application 14/697,868 3 application running on the hand-held computing device, sending by the mobile application, the diagnostic command via the connecting cable to the network security device; receiving, by the mobile application, results of the one or more diagnostic tests from the network security device via the connecting cable; and displaying, by the mobile application, the results of the one or more diagnostic tests via a display of the hand-held computing device. Appeal Brief 22 (Claims Appendix). References Name4 Reference Date Beverly US 2009/0024872 A1 January 22, 2009 Law US 2011/0072506 A1 March 24, 2011 McIntyre US 2012/0079100 A1 March 29, 2012 Reese US 2012/0140641 A1 June 7, 2012 Rejection on Appeal Claims 1-22 stand rejected under 35 U.S.C. § 103 as being unpatentable over Reese, Beverly, Law and McIntyre. Final Action 2-8. ANALYSIS Argument A (“The Examiner failed to make out a prima facie case of obviousness by proposing a combination of references that includes non- analogous art.”). Appeal Brief 14. Appellant contends that Law is non-analogous art and argues: Law relates to “process plant control systems and, more particularly, to a method and apparatus for network threat management in a 4 All reference citations are to the first named inventor only. Appeal 2020-005548 Application 14/697,868 4 process control or plant environment.” See Law at ¶ [0002]. Emphasis added. Notably, nowhere in Law is there any reference to or contemplation shown regarding performing diagnostics on a network security device. Appeal Brief 15. The Examiner finds: Appellant’s abstract states the application is for a “[p]rocess, equipment, and computer program product code for configuration of and/or performing diagnostics on a network security device” [Abstract (emphasis added by Examiner)]. The Appellant omits other passages within the specification that further emphasizes configuring of network security devices as part of the current application’s field of endeavor. For example, the specification’s description of the related art shows the use of network security devices, such as firewalls, to address the security threats and are configured based on required solutions and comprise a Unified Threat Management (UTM) solution [See Specification ¶¶ 3, 4 and 23]. Appellant’s invention is related to configuring network security devices, such as firewalls, to address security threats to a communication network. Answer 4. As the Federal Circuit has observed in In re Oetiker, 977 F.2d 1443, 1447 (Fed Cir 1992): In order to rely on a reference as a basis for rejection of the applicant’s invention, the reference must either be in the field of the applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned. See In re Deminski, 796 F.2d 436, 442, 230 USPQ 313, 315 (Fed.Cir.1986). Patent examination is necessarily conducted by hindsight, with complete knowledge of the applicant’s invention, and the courts have recognized the subjective aspects of determining whether an inventor would reasonably be motivated to go to the field in which the examiner found the reference, in order to solve the problem confronting the inventor. We have reminded ourselves and the PTO that it is necessary to consider “the reality of the circumstances”, In re Wood, 599 F.2d 1032, Appeal 2020-005548 Application 14/697,868 5 1036, 202 USPQ 171, 174 (CCPA 1979)-in other words, common sense-in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor. Appellant’s Specification describes the invention as generally relating “to configuring network security devices and/or performing diagnostics on network security devices.” Specification ¶ 3. We therefore determine that the field of endeavor of Appellant’s invention is related to network security. Law is directed to a “Unified Threat Management System (UTMS) for securing network traffic in a process control system [that] may comprise network devices configured to receive network traffic related to the process control system and including a ruleset received from an external source.” Law, Abstract. We therefore determine Law also relates to the field of network security. Accordingly, Appellant argument is not persuasive of Examiner error because Law is in the same field of endeavor, network security, as the claimed invention. See In re Kahn, 441 F.3d 977 (Fed. Cir. 2006). Argument B (“The Examiner failed to make out a prima facie case of obviousness by proposing a combination of Reese and Beverly that changes the principle of operation of Reese and Beverly.”). Appeal Brief 17. Appellant contends: Notably, in the context of Reese, the home network test server 150 performs testing of various aspects (e.g. cable connectivity, network performance, network operation, video quality, HPNA, DVR functionality, STB verification, RG verification, etc.) of a home network 105 by a technician controlling it via a home network test controller 190 via a wireless link between the home network test controller and the home network test server 150. Appeal Brief 18. Appeal 2020-005548 Application 14/697,868 6 The Examiner finds that Beverly “discloses that the data processing system can comprise of a network interface device that is controlled by an external diagnostic device to run tests within the data processing system” and therefore “Beverly indicates that a control component can be implemented within a data processing system.” Final Action 4 (citing Beverly ¶¶ 20-21, 32, Figure 1. The Examiner determines that, “[t]he incorporation of Beverly with Reese would allow the network security device to be implemented within a specific network device, such as the router/gateway device described in Reese (the network security device performs one or diagnostic tests on itself).” Final Action 4. Appellant argues: [T]he Examiner’s proposed modification of Reese based on Beverly so that the home network test server 150 performs one or more diagnostic tests on itself changes the operating principle of Reese as both Reese’s home network test controller 190 and home network test server 150 are specifically designed for testing various aspects ( e.g. cable connectivity, network performance, network operation, video quality, HPNA, DVR functionality, STB verification, RG verification, etc.) of an external environment (i.e., the home network 105). Appeal Brief 18; see Reese ¶ 58, Figure 1; MPEP §2143.01 VI. Appellant’s argument is not persuasive of Examiner error. As noted by the Examiner, Appellant provides no explanation or examples as to how the incorporation of Beverly’s features would change the principle functioning of Reese, and we do not agree that it would. See Answer 6 (“no explanation or examples are provided by the Appellant as to how a self-diagnostic routine or other features of Beverly would change the principle of Reese.”). Further, Appellant has not demonstrated that incorporating the features of Beverly within Reese’s home network test system would have been “uniquely Appeal 2020-005548 Application 14/697,868 7 challenging or difficult for one of ordinary skill in the art,” and we find the proposed modification would have been within the purview of the ordinarily skilled artisan. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)); see also KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Argument C (“The Examiner failed to make out a prima facie case of obviousness by proposing a modification of Reese based on McIntyre that would render Reese unsatisfactory for its intended purpose.”). Appeal Brief 19. Appellant contends, combining McIntyre with Reese would render Reese unsatisfactory of its intended purpose. Appeal Brief 19-20. Appellant argues: Limiting the technician’s movement to the length of a USB cable by requiring Reese’s home network test controller 190 to be connected to the home network test via a USB cable as suggested by McIntyre, would result in a testing system with the undesirable property of constrained movement around the customer premises and/or having to change the location of the home network test server 150 as the technician moved about the premises. Appeal Brief 20. The Examiner determines: While coupling the home network test controller with the home network test server may limit the ability of the technician to move around the customer premises, it does not prohibit the home network test controller from communicating with and signaling the home network test server to perform tests on the coupled home network, which is the intended purpose of Reese. Being able to move around the customer premises may be a benefit of using a wireless device, but it is not the intended purpose. Support for this rationale is found within Reese as it discloses remotely connecting to the home network test server via a cable or link without the technician being Appeal 2020-005548 Application 14/697,868 8 at the customer premises (not necessary for technician to move around customer premises). Answer 8 (emphasis added) (citing Reese ¶ 28). The Federal Circuit has recognized when a proposed modification of a reference may impede some of its functionality, a combination of references is still proper. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”). Accordingly, we agree with the Examiner’s determination and therefore Appellant’s argument is not persuasive of Examiner error. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Subsequently, we sustain the Examiner’s obviousness rejection of independent claims 1 and 8, not argued separately, as well as, dependent claims 2-7 and 9-22 not argued separately. See Appeal Brief 17, 18, and 20. CONCLUSION The Examiner’s decision to reject claims 1-22 is affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-22 103 Reese, Beverly, Law, McIntyre 1-22 Appeal 2020-005548 Application 14/697,868 9 TIME PERIOD FOR REPSONSE 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). See 37 C.F.R. § 1.136(a)(1)(v) (2019). AFFIRMED