Ex Parte 5826014 et al

Board of Patent Appeals and Interferences

Jan 19, 2012

90009179 (B.P.A.I. Jan. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/009,179 06/06/2008 5826014 159291-0010 7720
28661 7590 01/19/2012
LEWIS AND ROCA LLP
1663 Hwy 395, Suite 201
Minden, NV 89423
EXAMINER
STEELMAN, MARY J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/19/2012 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 GraphOn, Inc.
____________________

Appeal 2012-000300
Reexamination Control 90/009,179
Patent 5,826,0141
Technology Center 3900
____________________

Before JAMESON LEE, RAE LYNN P. GUEST, and JOSIAH C. COCKS,
Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent undergoing reexamination (hereinafter the “‘014 Patent”)
issued to Coley et al. on October 20, 1998 from Application 595,957 filed
February 6, 1996.
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A. STATEMENT OF THE CASE
This reexamination proceeding arose from a request by Juniper
Networks US, Inc. for ex parte reexamination filed June 6, 2008. GraphOn,
Inc. (“GraphOn”), the owner of the ‘014 Patent under reexamination,
appeals under 35 U.S.C. §§ 134(b) and 306 from a final rejection of claims
2, 6-20, 23-34, 40, 44, 48, and 502.
An oral hearing was conducted on December 21, 2011. A transcript
of that hearing was made of record on January 13, 2012.
Pursuant to 35 U.S.C. §§ 134(b) and 306, we have jurisdiction in
resolving this appeal. We affirm-in-part and reverse-in-part.

References Relied on by the Examiner
Baehr et al. (“Baehr”) 5,802,320 Sep. 1, 1998

Chapman Chapman, D. Brent and Elizabeth D. Zwicky,
Building Internet Firewalls. California: O’Reilly
& Associates, Inc., 1995.

2 See Appeal Brief filed July 21, 2010 (“App. Br.”) and Reply Brief
filed July 18, 2011 (“Reply Br.”) In an amendment filed July 21, 2010,
GraphOn requested cancellation of claims 1, 3-5, 21, 22, 35-39, 41-43, 45-
47, 49, and 51 and amendment of the claims 2, 6-20, 23-34, 40, 44, 48, and
50 eliminating their status as multiple dependent claims. The Examiner’s
Answer mailed May 16, 2011 (“Ans.”) indicates that the amendment was
entered. Claims 2, 6-20, 23-34, 40, 44, 48, and 50 as they appear in the
Claims Appendix of the Appeal Brief correspond to the claims as presented
in the entered July 21, 2010 amendment and stand as the claims that are
rejected and on appeal.
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The Rejections on Appeal
The Examiner rejected claims 2 and 7-20 under 35 U.S.C. § 102(a) as
anticipated by Chapman.
The Examiner rejected claims 6, 23-34, 40, 44, 48, and 50 under 35
U.S.C. § 103(a) as unpatentable over Chapman and Baehr.

The Invention
The invention relates to a firewall system for isolating network
elements from a publicly accessible network. (‘014 Patent Abstract.)
Claims 2, 6, 40, 44, 48, and 50 are independent claims. Claim 2 is
reproduced below (App. Br. 25, Claims App’x.) (underlining and deletions
have not been reproduced):
2. A firewall system for protecting a network element from access
over a network to which the network element is attached, the firewall
system comprising:

a firewall box comprising a stand alone computing platform;

a first connection connecting the firewall box to the network
element; and

a second connection connecting the firewall box to a public
network; and

at least one proxy agent running on the firewall box for
verifying that an access request packet received over the [first] second
connection is authorized to access the network element, the at least
one proxy agent initiating a connection to the network element on
behalf of the access request if the access request is authorized;

wherein the at least one proxy agent performs a Changeroot
command prior to processing an incoming access request.
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B. ISSUES
1. Did the Examiner adequately establish that Chapman discloses
all the features of claims 2 and 7-20 arranged as recited in those claims?
2. Did the Examiner adequately establish a prima facie basis for
rejecting claims 6, 23-34, 40, 44, 48, and 50 as obvious based on the prior
art?
C. PRINCIPLES OF LAW
During reexamination proceedings, claim terms must be given their
broadest reasonable interpretation consistent with the specification of the
reexamined patent. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).
“Because the hallmark of anticipation is prior invention, the prior art
reference - in order to anticipate under 35 U.S.C. § 102 - must not only
disclose all elements of the claim within the four corners of the document,
but must also disclose those elements ‘arranged as in the claim.’” Net
MoneyIn, Inc. v. VeriSign Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
Once a prima facie case of obviousness is established, the burden
shifts to the appellant to show evidence of secondary considerations of non-
obviousness. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996).
D. FINDINGS AND ANALYSIS
The Examiner rejected claims 2 and 7-20 as anticipated by Chapman
and claims 6, 23-34, 40, 44, 48, and 50 as unpatentable over Chapman and
Baehr.
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The Anticipation Rejection
Claim 2 is an independent claim and is directed to a firewall system.
The system incorporates a firewall box with (App. Br. 25 Claims App’x.)
(underlining and deletions removed):
at least one proxy agent running on the firewall box for
verifying that an access request packet received over the second
connection is authorized to access the network element, the at least
one proxy agent initiating a connection to the network element on
behalf of the access request if the access request is authorized;
wherein the at least one proxy agent performs a Changeroot
command prior to processing an incoming access request.

Thus, as characterized by GraphOn, a proxy agent of the firewall
system in claim 2 must perform the following four functions (Reply Br.
10:1-5):
(1) Be operable on the firewall;
(2) verify that an access request is authorized to access the network
element, and, if so;
(3) form a connection to the network element on behalf of the access
request; and
(4) perform a Changeroot command prior to processing an incoming
access request.

In rejecting claim 2 as anticipated, the Examiner relied on the
disclosure of Chapman, which is a 455 page textbook, describing the
building of various types or forms of internet firewalls. In accounting for
the above-noted features of claim 2, the Examiner pointed to various
separate sections and chapters of Chapman. (Ans. 9-10.) GraphOn does not
dispute the Examiner’s findings that Chapman discloses each of the
particular functions set forth in claim 2. Indeed, at the oral hearing on
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December 21, 2011, counsel for GraphOn expressed agreement that each of
those functions was known in the art. (Oral Hr’g Tr. 21:9-11.) Rather, the
basis of GraphOn’s challenge to the anticipation rejection is that the
individual functions required by claim 2 are disclosed only in “disparate
sections” of the textbook, which GraphOn analogizes to “different
embodiments,” describing the operation of different possible proxy
programs available for application in a firewall system. (App. Br. 13:8-14:2;
Reply Br. 12:6-21.) Citing to Net MoneyIN, Inc., GraphOn contends that the
Examiner has not adequately established that the required elements of claim
2 are “arranged as in the claim” as is necessary in an anticipation rejection.
(App. Br. 13:8-14:2.)
In response to GraphOn’s contentions, the Examiner expresses
disagreement with GraphOn’s characterization of the cited portions of
Chapman as constituting different embodiments. In particular, the Examiner
states (Ans. 31:14-19):
Examiner notes that the Chapman reference is a book with 455 pages,
where only selected pages were submitted as prior art in the
reexamination. The title “Building Internet Firewalls” is an indication
of the disclosure, in the many sections of the book, of what was
known in the art at the time of the claimed invention. Selective
teachings related to protecting a network by way of a firewall, from
within the book, anticipate the claim language and do not represent
different embodiments.

However, while it is one necessary requirement that Chapman
disclose each of the known proxy agent functions of claim 2, simply that,
without more, is insufficient to establish anticipation. In particular, “the
hallmark of anticipation is prior invention” which means that, to anticipate a
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claim, a reference must not only disclose all the elements of the claim but
also must disclose those elements “arranged as in the claim.” Net MoneyIN,
Inc., 545 F.3d at 1369. Here, although the various sections of Chapman
relied on by the Examiner describe the application of proxy services
associated with variations of firewall systems, it is not evident from the
record before us how those sections convey that Chapman itself sets forth a
proxy agent arranged as in claim 2 for performing all the specified functions
within a particular firewall system. While one of ordinary skill in the art
may be able to use Chapman’s teachings as a guide in combining the various
identified components and selecting the separate functionalities of different
firewall systems to arrive at the invention required by the claim, that is
insufficient to establish anticipation. See id. at 1371 (For anticipation, “it is
not enough that the prior art reference discloses part of the claimed
invention, which an ordinary artisan might supplement to make the whole, or
that it includes multiple, distinct teachings that the artisan might somehow
combine to achieve the claimed invention.”)
We conclude that the Examiner’s citation to various separate sections
of a textbook which does not itself describe incorporating the teachings
appearing therein as a part of a common firewall system does not constitute
sufficient evidence of anticipation. Accordingly, we do not sustain the
Examiner’s anticipation rejection of claim 2 based on Chapman.
Claims 7-20 are ultimately dependent on, and include all the
limitations of, claim 2. We also do not sustain the anticipation rejection of
those claims.
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The Obviousness Rejection
The Examiner rejected claims 6, 23-34, 40, 44, 48, and 50 as
unpatentable over Chapman and Baehr. Each of claims 6, 40, 44, 48, and 50
is an independent claim. Claims 23-34 depend on claim 6. GraphOn does
not argue the patentability of the dependent claims apart from claim 6.
Claims 6, 40, and 44 are directed either to a “firewall system” or a
“firewall method” operating on a firewall system for protecting a network
element from unauthorized access over a network. (App. Br. 25, 31.)
Claims 48 and 50 are each drawn to an “article of manufacture comprising a
machine-readable memory medium…for causing a computing platform to
perform method of protecting a network element from unauthorized access
over a network to which the network element is attached.” (Id. at 32, 33.)
All of claims 6, 40, 44, 48, and 50 include recitation of a “proxy agent”
performing particular functions.
According to GraphOn, the term “proxy agent” in its claims is limited
solely to “a single software program.” (E.g., App. Br. 20:15-16.) The
Examiner disagrees with GraphOn that the claimed “proxy agent” must be
interpreted as a single software program. (Ans. 30:6-20.) In support of her
position, the Examiner makes reference to a prior Board decision in
connection with related Application 90/009,059 mailed October 21, 2010,
involving the reexamination of U.S. Patent No. 6,061,798 (“Patent ‘798”) in
which the term “proxy agent” was construed as not limited to a single
software program. (Id. at 31:1-13.)
At the outset, we do not discern how the claim language itself conveys
that the term “proxy agent” can only mean a single software program to the
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exclusion of multiple software programs operating as a proxy agent in
performing the designated functions of the claims. GraphOn’s assertion that
the claims require a proxy agent as a “single software program” because
they do not recite “a group or programs” or “a number of related
programmatical entities” as a proxy agent (Reply Br. 10:8-10) is misplaced.
At issue is the scope of the particular term “proxy agent.” That the claims
do not specifically identify a “group” or “number” of programs functioning
as a “proxy agent” does not itself somehow operate to exclude that term
from encompassing multiple programs. By that same erroneous logic, the
claims, in not specifically referencing “a single software program” as a
proxy agent, would thus apparently also exclude a single program. We
reject GraphOn’s position in that regard.
GraphOn also points to its specification at column 4, lines 13-46 and
column 7, lines 37-65 as establishing a meaning of “proxy agent” as a single
software program. (Id. at 10:10-15.) However, neither of those portions of
the specification refers to a “proxy agent” as strictly a “single” program.
Indeed, in referencing “programs,” the above-noted sections of the
specification simply describe that “proxy agents” refer to “a variety of
access request validation programs.” (Spec. 7:35-37.) That the term “proxy
agents” may generally refer to a “variety of…programs” does not mean the
singular usage of “proxy agent” can only be a single program. At oral
argument, counsel for GraphOn was asked to identify where in the
specification of the ‘014 Patent was the “best” description establishing the
meaning of “proxy agent” as only a single software program. (Oral Hr’g Tr.
18:6-9.) In response, counsel identified column 6, line 5 through line 20.
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(Id. at 18:110-19.) We have reviewed that portion of the specification but do
not discern that it provides any better support for GraphOn’s proposition that
the term “proxy agent” is only a “single software program” or which
disavows a “proxy agent” as being formed as multiple software programs.
With respect to the prior Board decision identified by the Examiner in
connection with the ‘798 Patent, we observe that but for only minor
variations, the underlying specification of that patent is the same as that of
the ‘014 Patent at issue in this Appeal. Based on the specification of the
‘798 Patent, the panel in that prior decision construed the term “proxy agent”
as not limited to a “single software program.” Ex Parte GraphOn, Inc.,
Appeal No. 2010-009566 (BPAI Oct. 21, 2010), p. 6. At oral argument,
GraphOn’s counsel could not, when asked, offer a reason why the panel in
the present Appeal should interpret the common term “proxy agent” in a
manner different than that of the panel in the above-noted prior decision.
(Oral Hr’g Tr. 26:10-27:8.)
During reexamination proceedings, claim terms must be given their
broadest reasonable interpretation consistent with the specification of the
reexamined patent. In re Yamamoto, 740 F.2d at 1571. We have reviewed
the content of the record before us, including the specification of the ‘014
Patent and the language of the pertinent claims. For the reasons discussed
above, we conclude that the record does not support GraphOn’s contention
that the claim term “proxy agent” refers solely to a single software program.
The broadest reasonable interpretation of that term that is consistent with the
specification of the ‘014 Patent does not exclude a “proxy agent” composed
of multiple software programs.
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In any event, even assuming that GraphOn’s claims do require that the
term “proxy agent” is limited to a single software program, we are not
persuaded that the involved claims 6, 23-34, 40, 44, 48, and 50 are not
readily viewed as obvious based on the teachings of the prior art. There is
no dispute that the disclosed prior art teaches firewall systems in which
software components of the systems operate to perform all of the functions
of the proxy agent set forth in those claims. However, GraphOn is evidently
of the view that a single software program performing those functions
necessarily establishes non-obviousness of that software configuration as
compared with other configurations.
GraphOn characterizes Chapman as disclosing a conventional firewall
system in which a computer’s operating systems functions to perform some
of the functions set forth in the claims rather than having all the functions
performed by a single software program. (App. Br. 20-22; Reply Br. 14-16.)
The specification of the ‘014 Patent describes that conventional firewalls
include a “proxy system” which forms part of a computing platform’s
operating system. (‘014 Patent 3:58-62.) Those conventional firewalls are
characterized as being “inefficient” in handling certain types of attacks
affecting the operation of a computer system, such as a “denial of service
attack.” (Id. at 3:62-4:56.) According to GraphOn, use of a single software
program as the proxy agent provides a system that is more effective in
repelling or resisting denial of service attacks. (App. Br. 21:1-11; Reply Br.
14:20-15:7.) GraphOn thus contends that that apparent resulting advantage
“mandates a finding of non-obviousness” of its claims. (Id.)
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We do not agree with GraphOn’s contention. That a single software
program performing all the functions set forth in the claims may provide an
advantage or a benefit does not itself “mandate” a determination of non-
obviousness. GraphOn does not submit that the alleged advantages are a
result that is anything unexpected. Indeed, at oral argument, GraphOn’s
counsel acknowledged that it did not advance any argument in connection
with unexpected results arising from its claimed invention or present
evidence in that regard. (Oral Hr’g. Tr. 23:21-24:10.)
Even a cursory review of Chapman reveals that, as a 455 page
textbook focused on building firewalls, it provides substantial detail in
conjunction with a variety of different considerations that a person of
ordinary skill in the art must take into account in designing and constructing
any particular firewall system. We note, in particular, that contained in
Chapman is a discussion of network security concerns in developing a
firewall, including recognition and consideration of the threat of specific
types of attacks such as “denial of service attacks.” (See, e.g., Chapman, part
I - “Network Security” p. 7.) Chapman also discloses that “proxy services”
are generally “specialized application or server programs” which run on a
firewall host. (Id. at p. 61.) Although Chapman may, as is urged by
GraphOn, disclose firewall systems in which an operating system operates
in-part as a software program performing some of the proxy agent functions
set forth in claims 6, 23-34, 40, 44, 48, and 50, GraphOn does not explain
why a person of ordinary skill in the art, who is also one of ordinary
creativity, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), would
have viewed Chapman’s teachings as somehow limited solely to such a
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configuration. The record as a whole reflects that the level of ordinary skill
in the art is such that one with ordinary skill would not reasonably have
viewed the functionalities of a firewall system as being limited to any
particular type or number of software programs or excluding one particular
arrangement involving a single software program.
The Examiner has sufficiently demonstrated that the functions
described in GraphOn’s involved claims 6, 23-34, 40, 44, 48, and 50 as a
part of the operation of a “proxy agent” are known in the art and are
performed by software of firewall systems. The record does not reflect that
any particular configuration of the software, such as an arrangement
involving a single software program, would have been viewed from the
teachings of the art as unworkable, or as providing any result that is
unexpected. Accordingly, we conclude that the Examiner adequately
established a prima facie basis for rejecting claims 6, 23-34, 40, 44, 48, and
50 as obvious over the prior art.
Once a prima facie case of obviousness is established, the burden
shifts to the appellant to show evidence of secondary considerations of non-
obviousness. In re Huang, 100 F.3d at 139. Here, GraphOn has not come
forward with evidence of such considerations.
For the foregoing reasons, we are not persuaded of any error in the
Examiner’s rejections of claims 6, 23-34, 40, 44, 48, and 50 as obvious over
Chapman and Baehr. Accordingly, we sustain the rejection of those claims.
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E. CONCLUSION
1. The Examiner did not adequately establish that Chapman
discloses all the features of claims 2 and 7-20 arranged as recited in those
claims.
2. The Examiner did adequately establish a prima facie basis for
rejecting claims 6, 23-34, 40, 44, 48, and 50 as obvious based on the prior
art.
F. ORDER
The rejection of claims 2 and 7-20 under 35 U.S.C. § 102(a) as
anticipated by Chapman is reversed.
The rejection of claims 6, 23-34, 40, 44, 48, and 50 under 35 U.S.C.
§ 103(a) as unpatentable over Chapman and Baehr is affirmed.

TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART; REVERSED-IN-PART

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