Ex Parte 7617501 et al

Patent Trial and Appeal Board

Dec 5, 2013

95001458 (P.T.A.B. Dec. 5, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,458 09/30/2010 7617501 QSOFT.363X 8049
20995 7590 12/06/2013
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
NGUYEN, MINH DIEU T
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/06/2013 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 PATENT TRIAL AND APPEAL BOARD
________________

CENTRIFY CORPORATION
Requester

v.

QUEST SOFTWARE, INC.
Patent Owner
________________

Appeal 2013-005484
Reexamination Control 95/001,458
Patent 7,617,501 B21
Technology Center 3900
________________

Before STEPHEN C. SIU, STANLEY M. WEINBERG, and
JOHN A. EVANS, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent involved in this reexamination appeal proceeding (the “‘501
Patent”) issued to Matthew T. Peterson, et al. on November 10, 2009.
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A. STATEMENT OF THE CASE
Introduction
This reexamination proceeding arose from a third-party request for
inter partes reexamination filed on September 30, 2010 by Centrify
Corporation (Requester). Quest Software, Inc., the owner of the patent
under reexamination (Appellant),2 appeals under 35 U.S.C. §§ 134(b) and
315(a) from a Right of Appeal Notice (RAN) mailed on December 16, 2011
finally rejecting claims 1-40.3 An oral hearing was conducted on August 14,
2013. A transcript (Tr.) of the hearing was made of record on September 13,
2013.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a).
We reverse.
Related Proceeding
Appellant and Requester have informed us that the ‘501 Patent is the
subject of litigation in the U.S. District Court for the District of Utah,
Central Division in Quest Software, Inc. v. Centrify Corp, No. 2:10-CV-
00859-TS. They have also informed us that, as of the filing dates of their
respective briefs, the litigation has been stayed.
Requester has also informed us that there are no other appeals or
interferences that will directly affect, be directly affected by, or have a
bearing on the Board’s decision in this appeal.

2 See Patent Assignment Abstract of Title, Reel 023734 Frame 0413
recorded January 5, 2010 and entered into the record of this proceeding as
“Title Report” on October 13, 2010.
3 Appellant relies on its Appeal Brief (App. Br.) filed March 15, 2012 and
its Rebuttal Brief (Reb. Br.) filed October 24, 2012. Requester relies on its
Respondent Brief (Resp. Br.) filed April 12, 2012.
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The Invention
The invention relates to an apparatus, system, and method for
managing policies on a computer having a foreign operating system.
Policies on a first computer with a native operating system are translated
into configuration information usable on a second computer having a foreign
operating system. Abstract.
Claim 1 is illustrative of the appealed subject matter and is reproduced
below (App. Br, 30, Claims App’x):
1. (Original) A signal bearing medium tangibly embodying a
program of machine-readable instructions executable by a
digital processing apparatus to perform operations to manage
policies on a computer having a foreign operating system, the
operations comprising:
receiving a policy on a second computer having a foreign
operating system, the policy constructed on a first computer
having a native operating system according to a policy standard
developed for, and utilized by, the native operating system, and
wherein the foreign operating system does not directly utilize
the policy standard developed for, and utilized by, the native
operating system; and
executing a translator on the second computer, the
translator configured to execute under the foreign operating
system and translate the policy from the policy standard
developed for, and utilized by, the native operating system to
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configuration information usable by the foreign operating
system.
The Prior Art
Prager US 5,838,918 Nov. 17, 1998
Prabakaran US 2003/0009487 A1 Jan. 9, 2003
Dennis US 2003/0023587 A1 Jan. 30, 2003
Windows 2000 Active Directory, Chapters 8 and 9, pp. 177-245 (Jan. 2000)
(“WAD”)
The Rejections
Claims 1, 2, 4-20, and 22-40 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Dennis. RAN 4.
Claims 3 and 21 stand rejected under 35 U.S.C. § 103(a) as obvious
over Dennis in view of Prabakaran. RAN 12.
Claims 6, 7, 12, 16, 18, 23, 27, 29, 30, 32, and 36 stand rejected under
35 U.S.C. § 103(a) as obvious over Dennis in view of WAD. RAN 14.
Claims 1-4, 11, 12, 17, 19, 21, 23, 26-28, and 30-40 stand rejected
under 35 U.S.C. § 102(b) as anticipated by Prager. RAN 14.
Claims 2, 17, 18, 21, and 30 stand rejected under 35 U.S.C. § 103(a)
as obvious over Prager in view of Prabakaran. RAN 15.
B. ISSUE
Whether the claims are anticipated or obvious over Dennis or Prager.
C. ANALYSIS
The Rejection Of The Claims Over Dennis
Dennis relates to a system and method for implementing policy for
users and computers. Policy settings are placed into group policy objects,
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and each of the policy objects may be associated with one or more
containers, such as hierarchically-organized directory objects (containers).
Dennis ¶ 0007.
Dennis describes its invention in the general context of computer-
executable instructions, such as program modules, being executed by a
personal computer. Dennis’ invention may be practiced with other computer
system configuration, including hand-held devices, multi-processor systems,
microprocessor-based or programmable consumer electronics, network PCs,
minicomputers, mainframe computers and the like. The invention may also
be practiced in distributed computing environments where tasks are
performed by remote processing devices that are linked through a
communications network, including for example, computers, network
devices, and printers. Dennis ¶ 0026. A remote computer may be another
personal computer, a server, a router, a network PC, a peer device or other
common network node. Dennis ¶ 0029
Dennis’ “policy objects may be extended to include virtually any
desired information, as long as a client-side (or other) extension that uses the
policy object is capable of interpreting and/or handling the information
therein. . .[A] server-side process may act as the client and interpret the
policy, and pass the results to another client, e.g., a server-side extension
may receive and process one or more policy objects and transmit the results
of its processing to a router which then performs according to that policy.”
Dennis ¶ 0032.
A Policy Constructed On A First Computer Having a Native Operating
System According To A Policy Standard Developed For, And Utilized By,
The Native Operating System
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Appellant agrees that Dennis discloses a policy standard built for the
Windows operating system and that the Windows operating system
correlates to the claimed native operating system according to a policy
standard developed for, and utilized by, the native operating system. App.
Br. 11; Reb. Br. 5.
A Translator Configured To Execute Under The Foreign Operating System
And Translate The Policy From the Policy Standard Developed For, And
Utilized By, The Native Operating System To Configuration Information
Usable By the Foreign Operating System

Citing Dennis ¶ 0026, the Examiner finds that Dennis discloses that its
invention may be practiced with other computer system configurations,
including hand-held devices, multi-processor systems, microprocessor-based
or programmable consumer electronics, network PCs, minicomputers,
mainframe computers, and the like. RAN 7. The Examiner also finds that
Dennis ¶ 0032 discloses “a translator (i.e. a client-side extension) that is
capable of interpreting and/or handling the information contained in the
policy.” RAN 7.
Appellant contends that Dennis’ statements that Dennis’ invention
could be implemented on different operating systems or practiced with other
computer system configurations do not teach translation of a policy from a
native operating system to a foreign operating system. App. Br. 12. At
most, Appellant contends, Dennis discloses that someone could implement
the identical policy standard on a different operating system or computer
system than the Windows desktop system disclosed in Dennis. Id.
Appellant also contends that Dennis’ ¶ 0026 only says that one could
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practice the disclosed policy standard with different computer
configurations, but it does not provide sufficient detail to enable a person of
ordinary skill in the art to actually implement the disclosed policy standard
on a non-Windows computer. App. Br. 14.
Appellant also contends that Dennis’ paragraph 0032 does not suggest
that Dennis’ client-side extensions translate a policy from a policy standard
used by a native operating system to configuration information usable by a
foreign operating system. App. Br. 16.
Requester emphasizes that Dennis’ ¶ 0026 discloses that Dennis’
invention can be practiced in distributed computing environments using non-
Windows machines such as minicomputers and mainframes (Resp. Br. 5)
and asks us to “reach agreement that mainframe computers at least in that
timeframe or mini computers in that timeframe were not running Windows,
were running different operating systems than personal computers.” Tr.
18:19-22. Neither Requester nor Appellant provides any expert evidence
regarding Requester’s contention that non-Windows operating systems run
on mainframes, miniframes, or routers. We assume without deciding,
nevertheless, that non-Windows operating systems do run on mainframes,
miniframes, and routers.
Requester also points out that Dennis’ ¶ 0032 teaches that “a client-
side (or other) extension that uses the policy object is capable of interpreting
and/or handling the information therein” and contends that “interpreting”
information is another way of saying “translating” information. Resp. Br. 8.
To support its contention that Dennis ¶ 0032 discloses translation to a non-
Windows operating system, Requester also contends that Dennis’ ¶ 0032
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“states that the Windows group policies after translation may be transmitted
to a router which then performs according to that policy. Again, routers are
computing devices which those skilled in the art know runs under non-
Windows operating systems.” Resp. Br. 8-9; Tr. 15:6-12. Appellant agrees
that a router is a form of a computer. Tr. 9:18.
We therefore assume, without deciding, that Dennis ¶ 0032 discloses a
translator that “translate[s] the policy from the policy standard developed
for, and utilized by, the native operating system to configuration information
usable by the foreign operating system.”
Executing A Translator On The Second Computer
In addition to reciting the function performed by the translator (“to . . .
translate the policy” from the native operating system’s policy standard to
configuration information usable by the foreign operating system), claim 1
recites where the translator actually performs its executing function:
“executing a translator on the second computer.” The dispositive issue is,
therefore, whether Dennis’ translator is “executing . . . on the second
computer.” Requester agrees that the claim requires that “the translation
does have to occur on the second computer.” Tr. 25:16-17.
Citing Dennis ¶ 0032, the Examiner finds that “a server-side process
may act as the client and interpret the policy, and pass the results to another
client, e.g., a server-side extension may receive and process one or more
policy objects and transmit the results of its processing to a router which
then performs according to that policy.” RAN 18. (emphasis added).
According to Appellant, this disclosure does not meet the claim language
because it does not disclose a second computer that translates the
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information. Tr. 8:23-9:2. More specifically, Appellant contends, “the
router is not receiving a policy and then translating that policy. . .[T]he
router is not performing any translation, which it would be required to do in
order to meet the claim limitation.” Tr. 9:5-9.
The Examiner only generally concludes that Dennis discloses
“executing a translator on the second computer” (RAN 7); but fails to point
to anything specific in Dennis to support the generally stated conclusion.
Specifically, the Examiner states:
the invention may be practiced with other computer system
configurations, including hand-held devices, multi-processor
systems, microprocessor-based or programmable consumer
electronics, network PCs, minicomputers, mainframe
computers and the like, Dennis: 0026. A translator (i.e. client-
side extension) that is capable of interpreting and/or handling
the information contained in the policy, Dennis: 0032.

RAN 7. The above quotation, however, does not provide specific support
for the finding that Dennis executes a translator on the second computer.
Requester also does not persuasively demonstrate that a translator is
executing on the second computer. For example, the September 30, 2010
Request for Inter Partes Reexamination (Request) asserts that Dennis
teaches this limitation “by its various references to other system
configurations and examples . . . and the fact that it notes that the invention
may be practiced with other (other than personal computer) configurations
including minicomputers and mainframe computers which directly
demonstrate that Dennis el [sic] al includes foreign operating systems.”
Request 29-30. But, even though this discussion in the Request discusses
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the presence of other than personal computers, it does not persuasively
demonstrate that Dennis executes a translator on the second computer.
In fact, Requester agrees that translation does not take place on the
second computer: “Dennis et al. in paragraph [0032] states that the Windows
group policies after translation may be transmitted to the router which then
performs according to that policy.” Resp. Br. 8. Requester therefore admits
that Dennis performs translation before the policies are transmitted to the
router (the second computer),4 thereby failing to persuasively demonstrate
that the translator is executing on the router – i.e., on the second computer.
We are therefore persuaded that the Examiner erred in rejecting (1)
claim 1; (2) claims 19, 31, 34, and 38 having similar limitations; and (3)
dependent claims 2-18, 20-22, 32, 33, 35-36, 39, and 40 not argued with
particularity as anticipated by Dennis.
The Rejection Of the Claims Over Prager
Before discussing Prager in detail, we first analyze the requirements
of claim 1. First, the claim recites a “policy constructed on a first computer
having a native operating system according to a policy standard developed
for, and utilized by, the native operating system.” Second, the claim recites
that the aforesaid policy that is constructed on the first computer, is received
“on a second computer having a foreign operating system.” Third, “the
foreign operating system [on the second computer] does not directly utilize
the policy standard developed for, and utilized by, the native operating
system.” Fourth, a “translator [executes] on the second computer.” Fifth,

4 According to Requester, “routers are computing devices which those
skilled in the art know runs under non-Windows operating systems.” Resp.
Br. 8-9.
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the translator that is executing on the second computer “translate[s] the
policy from the policy standard developed for, and utilized by, the native
operating system to configuration information usable by the foreign
operating system.”
Accordingly, the policy that is constructed on the first computer is the
same policy that is received on the second computer. Also, the policy that is
received on the second computer is constructed “according to a policy
standard developed for, and utilized by, the native operating system” on the
first computer.
In Prager, information from a stand-alone template and central
configuration database is stored in a platform-independent format, where it
remains until it is provided as input to an application-specific and platform-
specific agent. From there, the data is converted into a platform-dependent
format so that it can be written to the end-point’s actual system files. Prager,
col. 11, ll-59. See Reb. Br. 12-13. Based on this Prager citation, the
Examiner finds that Prager discloses translation from a policy constructed
for use by a native operating system to configuration information usable by a
foreign operating system. RAN 15. According to the Examiner, Prager
performs these functions by transferring “configuration information for one
operating system (i.e., the native operating system) to a platform
independent form (i.e., the native policy related file data) and then
converting (i.e., translating) this to a platform-dependent form (i.e. usable by
the foreign operating system).” Id.
Requester “agrees that Prager et al. relies upon a platform -
independent template which is then translated to configuration information
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usable by a foreign operating system.” Resp. Br. 11. That is, “[t]he
translation is being done . . . partially on the Windows computer to put it
into platform independent form, and then it’s being completed on the second
computer from the platform independent form to the platform dependent
form.” Tr. 20:10-13. Stated a little differently, Requester says that “Prager
teaches a translation first to policy independent form . . . and then on the
second computer taking the policy independent form and putting it into a
policy dependent form.” Tr. 22:12-15.
Requester further agrees that “there is a technical difference between a
platform independent version being translated . . . and the same version
being translated.” Tr. 20:18-20. But, Requester contends, it does not matter
because, “look[ing] at the big picture of what’s really happening here . . .
[Prager is] doing pretty much the same thing. . .from the high level
standpoint. [It’s] taking policy developed on one [and] translating it into a
form that can be used by a second operating system.” Tr. 25:3-8.
Appellant contends that the policy received by the second computer
must be constructed according to a policy standard that is both developed for
the native operating system and utilized by the native operating system.
App. Br. 22. Instead, Appellant contends, Prager’s platform-independent
policy is not constructed according to a policy standard developed for any
native operating system. App. Br. 25, citing Prager col. 6, ll. 57-63.
We agree with Requester that Prager’s “big picture” is translation of
policy information between computers having different operating systems.
But, we are constrained by the claim language which requires a specific way
of making the translation: the second computer receives “the policy
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constructed on [the] first computer . . . according to a policy standard
developed for, and utilized by, the native operating system” on the first
computer. We are not persuaded that Prager’s platform-independent
standard is a standard that is “constructed on [the] first computer. .
.according to a policy standard developed for, and utilized by, the native
operating system” on the first computer.
We are therefore persuaded that the Examiner erred in rejecting (1)
claim 1; (2) claims 19, 31, 34, and 38 having similar limitations; and (3)
dependent claims 2-18, 20-22, 32, 33, 35-36, 39, and 40 not argued with
particularity as anticipated by Prager.
CONCLUSIONS
The Examiner erred in rejecting claims 1-40.
DECISION
The Examiner’s decision rejecting claims 1-40 is reversed.
Requests for extensions of time in this proceeding are governed by 37
C.F.R. §§ 1.956 and 41.79(e).

REVERSED

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PATENT OWNER:

TED M. CANNON, ESQUIRE
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET, 14TH FLOOR
IRVINE, CA 92614

THIRD PARTY REQUESTER:

ERIC S. HYMAN
BLAKELEY SOKOLOFF TAYLOR & ZAFMAN, LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040