Ex Parte Choo

Board of Patent Appeals and Interferences

Oct 13, 2009

09858483 (B.P.A.I. Oct. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TSE-HUONG CHOO
____________________

Appeal 2009-0008761
Application 09/858,483
Technology Center 2100
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Decided: October 14, 2009
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Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and STEPHEN
C. SIU, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed May 17, 2001. The real party in interest is Hewlett Packard
Development Company, L.P.
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1 through 10, and 12 through 20. Claim 11 has been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
Appellant invented method and system for accelerating an Internet
Key Exchange (IKE) to thereby reduce the time spent by remote users in
negotiating virtual private networks (VPNs). (Spec. 2: 1-5, 4: 9-23.) In
particular, as shown in Figure 2, the IKE Main Mode in hardware is
performed in parallel with system software loading. (Spec. 9: 18-23.)

Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
An Internet Key Exchange method, comprising performing an IKE
Main Mode in hardware in parallel with system software loading.

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Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:

Cousins 6,618,385 Sep. 9, 2003

Tuomenoksa 2002/0023210 A1 Feb. 21, 2002

Saito 2005/0216731 A1 Sep. 29, 2005

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1 through 7, 9, and 12 through 20 stand rejected as being
unpatentable over the combination of Cousins and Tuomenoksa.
2. Claims 8 and 10 stand rejected as being unpatentable over the
combination of Cousins, Tuomenoksa, and Saito.

Appellant’s Contentions
Appellant contends that the combination of Cousins and Tuomenoksa
does not teach performing the IKE Main Mode in hardware in parallel with
system software loading, as recited in independent claim 1. (App. Br. 8-13,
Reply Br. 6-8.) According to Appellant, Cousins discloses that, at boot up a
session key negotiation takes place. However, the reference fails to disclose
system software loading let alone a temporal relation between the session
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key negotiation and the system software loading. (App. Br. 9, Reply Br. 8.)
Further, Appellant argues that Tuomenoksa does not cure the deficiencies of
Cousins since it is limited to performing IKE as part of gateway daemon
subsequently to the system software loading, and not in parallel as required
by claim 1. (App. Br. 12, Reply Br. 8.)

Examiner’s Findings
The Examiner finds that Cousins discloses negotiating a session key
during a computer booting up process. (Ans. 10.) Further, the Examiner
finds that, at boot up, every computer system loads a BIOS software. (Id.)
The Examiner thus finds that since both the session key negotiation and the
system software loading are performed during the computer boot up,
Cousins thus teaches or suggests that both events take place in parallel when
a networked computer is booting up. (Id.)

II. ISSUE
Has Appellant shown that the Examiner erred in concluding that the
combination of Cousins and Tuomenoksa renders claim 1 unpatentable? In
particular, the issue turns on whether the proffered combination teaches or
suggests performing the IKE Main Mode in hardware in parallel with system
software loading.

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Cousins
1. Cousins discloses upon powering up a computer during a
network initialization process, negotiating a session key to decode encrypted
data messages. (Col. 7, ll. 66 - col. 8, l. 4.)
Tuomenoksa
2. Tuomenoksa discloses a system for configuring a VPN session
wherein an IKE is used to authenticate a gateway after the configuration of
the gateway using a program code. (Para. [0128], [ 0135], [0137].)
3. Tuomenoksa discloses using an IKE that complies with RFC-
2409 for authenticating or verifying the identity of a user computer.
(Para. [0111], [0137].)
IV. PRINCIPLES OF LAW
Obviousness
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
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Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art" and discussed circumstances in which a patent might be determined to
be obvious. Id. at 415 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)) (citation omitted). The Court reaffirmed principles based on its
precedent that "[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." Id. at 416. The operative question in this "functional approach" is
thus "whether the improvement is more than the predictable use of prior art
elements according to their established functions." Id. at 417.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 416).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
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evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art." Id. at 1162 (citing KSR, 550 U.S. at 418-
419).

V. CLAIM GROUPING
Appellant argues the patentability of claims 1, 5 through 7, and 8 as
three separate groups. In accordance with 37 C.F.R. § 41.37(c)(1)(vii), we
will consider claims 1 through 10, and 12 through 20 as standing and falling
with representative claims 1, 5 through 7, and 8.

VI. ANALYSIS
Claim 1
Independent claim 1 requires, in relevant part, performing the IKE
Main Mode in hardware in parallel with system software loading. As set
forth in the Findings of Facts section, Cousins discloses performing a
session key negotiation upon powering up a computer system to participate
in a network communication. (FF. 1.) Further, Tuomenoksa complements
Cousins by disclosing performing an Internet Key Exchange after loading
the system program software during the network initialization process.
(FF. 2.)
While Cousins does not indicate that system software is loaded upon
powering up the computer, we agree with the Examiner that one of ordinary
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skill would readily recognize that loading a BIOS program is an integral part
of the boot up process in any computer system. Further, we find that
Tuomenoksa’s disclosure explicitly discloses such a limitation. We do not,
however, agree with the Examiner’s finding that because Cousins discloses
that, upon powering up the computer, a session key is negotiated and a
system software is loaded, these two events necessarily occur in parallel.
While the two events do take place during boot up, Cousins is simply silent
as to whether these events occur sequentially or concurrently. We find
nonetheless that given the limited amount of available options (i.e.
sequentially or concurrently) for performing these two events, the ordinarily
skilled artisan would have found it obvious to try these two known options
to achieve a predictable result.
In KSR, the Supreme Court stated that an invention may be
found obvious if it would have been obvious to a person having
ordinary skill to try a course of conduct:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue the
known options within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of innovation but of
ordinary skill and common sense. In that instance the fact that a
combination was obvious to try might show that it was obvious under
§103. 550 U.S. at 421.

Bayer Schering Pharma AG v. Barr Laboratories Inc., 91 USPQ2d 1569,
1572-73 (Fed. Cir. 2009.)

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In the present case, we find that the ordinarily skilled artisan, facing
the limited options of performing either concurrently or sequentially system
software loading and Internet Key Exchange during network initialization,
would have found it obvious to try both options to thereby ascertain which
one provides the desired result. Furthermore, we find that the ordinarily
skilled artisan would be apprised of the fact that performing the two events
in parallel would predictably result in an accelerated initialization whereas
the sequential performance of these events would predictably result in a
slower initialization. Consequently, it would be reasonable for the ordinarily
skilled artisan to select the concurrent execution of the system software
performance and the Internet Key Exchange in order to predictably achieve a
faster network initialization. It follows that Appellant has not shown that the
Examiner erred in concluding that the combination of Cousins and
Tuomenoksa renders independent claim 1 unpatentable.

Claims 5-7
Appellant argues that the combination of Cousins and Tuomenoksa
does not teach or suggest identifying a payload type that comprises a
machine identity type. (App. Br. 13-14.) We do not agree. As detailed in
the Findings of Fact above, Tuomenoksa discloses using an IKE that
complies with RFC-2409 or any other approaches to verify the identity of a
user computer. (FF. 3) We find that Tuomenoksa’s verification of a user
computer first entails the determination of the identity type of the user
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computer from the initialization of an IKE peer computer. It follows that
Appellant has not shown that the Examiner erred in concluding that the
suggested combination renders claim 5 unpatentable.

Claim 8
Appellant argues that Saito does not cure the deficiencies of the
Cousins - Tuomenoksa combination as argued with respect to claim 1. As
discussed above, we find no such deficiencies in the cited combination for
Saito to cure. It follows that Appellant has not shown that the Examiner
erred in concluding that the suggested combination renders claim 8
unpatentable.

VII. CONCLUSION OF LAW
Appellant has not established that the Examiner erred in rejecting
claims 1 through 10, and 12 through 20 as being unpatentable under
35 U.S.C. § 103(a).

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VIII. DECISION
We affirm the Examiner's rejections under § 103 of claims 1 through
10 and 12 through 20.
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

dal

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