Ex Parte Borchers et al

Patent Trial and Appeal Board

Mar 6, 2014

11395055 (P.T.A.B. Mar. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROGER BORCHERS and SHREE A. DANDEKAR
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Appeal 2011-012729
Application 11/395,055
Technology Center 2400
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Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a second rejection of
claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
According to Appellants, the invention relates to displaying customers
with real-time instantaneous feedback on firewall activity (Spec. 1, ll. 7-8).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method for providing a user with feedback of firewall
activity comprising:
determining when access to an application is attempted;
blocking access of the application to the Internet based
upon a blocked application list;
providing feedback to the user when access to an
application is blocked by the firewall every time access to the
application is blocked, the feedback comprising a notification
that the application was blocked from accessing the Internet.

C. REJECTION

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Freund US 5,987,611 Nov. 16, 1999

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Claims 1-18 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Freund.

II. ISSUE
The dispositive issue before us is whether Appellants have shown that
the Examiner erred in finding Freund teaches “providing feedback to the
user when access to an application is blocked by the firewall every time
access to the application is blocked” (claim 1).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Freund
1. Freund discloses a system working together with existing
firewalls that grants Internet access to certain clients while protecting against
outside intruders (col. 5, ll. 21-30).
2. If an application is not allowed to access the Internet or not
allowed to use the specific protocol, then access to the Internet by the
application is stopped and/or the user is warned (col. 5, ll. 61-64).

IV. ANALYSIS
In the second rejection from which Appellants appeal, the Examiner
provided a detailed finding that claims 1-18 are anticipated by Freund (Rej.
2-3). However, in the Appeal Brief, Appellants repeat the portion of Freund
cited by the Examiner (App. Br. 3), and then merely repeat the claim
language while asserting “nowhere within this portion of Freund (or
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anywhere else in Freund) is there any disclosure or suggestion . . .” of the
repeated claim language (App. Br. 4).
A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See 37
C.F.R. § 41.37(c)(1)(vii). Moreover, mere attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value. See also In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and Ex
parte Belinne, 2009 WL 2477843, at *3-4 (BPAI Aug. 10, 2009)
(informative). Appellants’ arguments fail to comply with 37 CFR 1.111(b)
because they amount to a general allegation that the claims define a
patentable invention without specifically pointing out how the language of
the claims patentably distinguishes them from the reference.
Nevertheless, we give the claim its broadest reasonable interpretation
consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997). However, we will not read limitations from the
Specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993).
We note that “method” claim 1 does not positively recite any step of
blocking by “the firewall” but rather merely recites “determining” when
access is attempted, “blocking access” by any entity, and “providing
feedback… when access… is blocked by the firewall every time access to the
application is blocked [by any entity]” (emphases added). We conclude “the
firewall” does not have clear antecedent basis in claim 1.
Furthermore, claim 1 merely recites that the feedback is provided
“when” a condition occurs, such as “when access to an application is
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blocked by the firewall.” That is, if the conditional situation does not occur,
the providing of feedback also does not occur, and the scope of claim 1 is
limited only by the recited determining and blocking access steps. Thus,
even if the firewall is positively recited in the claim, providing of feedback
need not be carried out. Cf. In re Johnston, 435 F.3d. 1381, 1384 (Fed. Cir.
2006) (“[O]ptional elements do not narrow the claim because they can
always be omitted.”). Based on such interpretation, the Examiner is not
required to find the disclosure of a step of providing a feedback in Freund.
See Ex Parte Gary M. Katz, 2011 WL 514314, *4 (BPAI 2011).
Furthermore, even if the claim requires providing of feedback, we find
no error with the Examiner’s broad but reasonable interpretation that
“[p]roviding feedback is interpreted to be sending response to a request” or
the Examiner’s finding that “Freund discloses it is the firewall that grants the
Internet access . . .” wherein “feedback is automated and free of possible
human errors” (Ans. 9-10). In particular, Freund discloses firewalls working
with the system that grant/block access to Internet applications (FF 1),
wherein the application is stopped or the user is warned when access is
blocked (FF 2). In view of the Examiner’s broad but reasonable
interpretation of “feedback” (Ans. 9), we find no error with the Examiner’s
finding that since there is feedback “with each attempt and denied of access,
the feedback would be ‘every time’” (Ans. 10).
Accordingly, we affirm the rejection of claim 1 over Freund.
Appellants do not provide arguments for independent claims 7 and 13 (and
claims 2-6, 8-12, and 14-18 depending respectively from claims 1, 7, and
13), separate from claim 1 (App. Br. 4). Thus, claims 2-18 fall with claim 1.

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IV. CONCLUSION AND DECISION
We affirm the Examiner’s rejection of claims 1-18 under 35 U.S.C. §
102(b).
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).

AFFIRMED

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