Ex Parte Freed et al

Board of Patent Appeals and Interferences

Apr 19, 2010

09900494 (B.P.A.I. Apr. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MICHAEL FREED and ELANGO GANESEN
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Appeal 2009-003122
Application 09/900,494
Technology Center 2400
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Decided: April 19, 2010
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Before: JOHN A. JEFFERY, LANCE LEONARD BARRY, and
THU ANN DANG, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-28. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

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INVENTION
The Appellants describe the invention at issue on appeal as follows.
The present invention provides a unique system and method for
implementing SSL [i.e., Secure Sockets Layer] acceleration,
and indeed any encryption or decryption methodology, to
offload to the computational overhead required with the
methodology from a server or client. The invention is
particularly suited to offloading encryption and decryption tasks
from a server which is normally required to handle a multitude
of concurrent sessions. The system may include an SSL
acceleration device, which operates to intercept secure
communications between, for example, a Web based Internet
client such as a Web browser operating on a personal computer,
and a Web server. The SSL acceleration device will intercept
communications directed to the server and act as a proxy in
various embodiments of the invention.
(Spec. 9.)

ILLUSTRATIVE CLAIM
1. A load balancing acceleration device, comprising:
a processor, memory and communications interface;
a TCP communications manager capable of interacting
with a plurality of client devices and server devices
simultaneously via the communications interface;
a secure communications manager to negotiate a secure
communication session with one of the client devices;
an encryption and decryption engine instructing the
processor to decrypt data received via the secure
communication session and direct the decrypted data to one of
said server devices via a second communication session; and
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a load balancing engine associating each of said client
devices with a respective one of said server devices based on
calculated processing loads of each said server devices,
wherein the decryption engine and the load balancing
engine bypass an application layer of a network stack by
decrypting the data from the secure communication sessions of
the clients and outputting the decrypted data to the associated
server devices without processing the data with the application
layer of the network stack.

PRIOR ART

Gelman 6,415,329 B1 Jul. 2, 2002
Toporek 6,654,344 B1 Nov. 25, 2003
Abjanic 6,732,175 B1 May 4, 2004
Baskey 6,732,269 B1 May 4, 2004
Hankinson 6,799,202 B1 Sep. 28, 2004

REJECTIONS
Claims 1-28 are rejected under 35 U.S.C. § 112, first paragraph, as
lacking an adequate written description.1

Claims 1-7 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hankinson and Toporek.

1 Although the Examiner's statement of the rejection uses the phrase "as
failing to comply with the enablement requirement" (Answer 3), his
explanation of the rejection, e.g., that "the claim[s] ha[ve] been amended to
include the limitation" (id.) and that "[t]here is no support for this limitation
in the specification" (id. at 3-4), makes it clear that the rejection is based on
lack of an adequate written description.
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Claims 8-11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hankinson, Toporek, and Gelman.

Claims 12-15, 17-21, 23 and 24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Abjanic and Toporek.

Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Abjanic, Toporek, and Gelman.

Claims 25-28 are rejected under 35 U.S.C. § 103(a) as being unpatentable
over Baskey and Toporek.

WRITTEN DESCRIPTION REJECTION
The Examiner makes the following findings.
Regarding independent claim 1, the claim has been
amended to include the limitation "wherein the decryption
engine and the load balancing engine bypass an application
layer of a network stack by decrypting the data from the secure
communication sessions of the clients and outputting the
decrypted data to the associated server devices without
processing the data with the application layer of the network
stack". There is no support for this limitation in the
specification.
. . .
Regarding independent claims 12 and 25, both the claims
have been amended to include the limitation "without
processing the data packets with an application layer of a
network stack". There is no support for this limitation in the
specification.
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(Ans. 3-4.) The “Appellants direct the Board's attention to the network stack
shown in the SSL accelerator of Figure 3 . . . .” (App. Br. 13.)

ISSUE
Therefore, the issue before us is whether the Appellants have shown
error in the Examiner's finding that the originally filed written description
fails to reasonably convey to the artisan that the Appellants had possession
at that time of the later claimed subject matter.

LAW
"[T]he test for sufficiency of support . . . is whether the disclosure of
the application relied upon 'reasonably conveys to the artisan that the
inventor had possession at that time of the later claimed subject matter.'"
Ralston Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570, 1575 (Fed. Cir.
1985) (quoting In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983)).

FINDINGS OF FACT ("FFS")
The Appellants' Figure 2B, which was part of their original disclosure,
follows.

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More specifically "Figure 2B is a block diagram illustrating the
computational exercise of SSL accelerator [in] accordance with the prior
art." (Spec. 8.)

The Appellants' Figure 3, which was also part of their original
disclosure, follows.

More specifically, "Figure 3 shows how the system of the [Appellants']
invention differs in general from that of the prior art, and illustrates the
manner in which the SSL encryption and decryption proxy is implemented."
(Id. at 10.)

ANALYSIS
We agree with the Appellants that in "the network stack shown in the
SSL accelerator of Figure 3 . . . , in contrast to the prior art device of Figure
2B, the application layer (e.g., the HTTP [i.e., HyperText Transfer Protocol]
protocol) of the network stack is noticeably absent when compared with the
prior art accelerator shown in Figure 2B." (Appeal Br. 13.) We further
agree with their following argument.
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Figure 3 clearly shows that . . . Appellants' SSL accelerator
does not process the secure data received from the web client at
the application layer (e.g., HTTP) prior to forwarding the
packets to the web server. Rather, . . . the accelerator shown in
Figure 3 intercepts data destined for the web server and, rather
than the transmitting packets up and down the TCP/IP [i.e.,
Transmission Control Protocol/Internet Protocol] stack as
shown in Figure 2B, will perform the SSL encryption and
decryption at the packet level before forwarding the packet on
to its destination.
(Id.) Emphasis original.

CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellants have shown error in the Examiner's finding that the originally
filed written description fails to reasonably convey to the artisan that the
Appellants had possession at that time of the later claimed subject matter.

OBVIOUSNESS REJECTIONS
Based on the Appellants' arguments, we will decide the appeal of
claims 1-11 and 22; 12-21, 23, and 24; and 25-28 based on the independent
claims 1, 12, and 25 alone. See 37 C.F.R. § 41.37(c)(1)(vii).

The Examiner makes the following admissions.
Hankinson et al does not teach that the decryption engine
and the load balancing engine bypass an application layer of a
network stack by decrypting the data from the secure
communication sessions of the clients and outputting the
decrypted data to the associated server devices without
processing the data with the application layer of the network
stack.
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(Ans. 6.) "Abjanic does not teach without processing the data packets with
an application layer of a network stack." (Id at 9.) "Baskey et al does not
teach without processing the data packets with an application layer of a
network stack." (Id. at 12.) Finding that "Toporek et al teaches bypassing
an application layer of a network stack [column 11, lines 22-33]" (id. at 6, 9,
and 12), however, he concludes that it would have been obvious to modify
Hankinson, Abjanic, and Baskey to bypass an application layer of a network
stack without processing the reference's data within the application layer of
the network stack "because it allows the network layer to communicate
directly with the physical layer [column 11, lines 22- 33]." (Id.) The
Appellants argue that "the combination of references still provides no
teaching as to how the application-layer (which is above both the network
layer and the physical layer) could be avoided for functions . . . that
traditionally require the application-layer." (App. Br. 18.)

ISSUE
Therefore, the issue before us is whether the Appellants have shown
error in the Examiner's combining of teachings from Toporek with those of
Hankinson, Abjanic, and Baskey.

LAW
The presence or absence of a reason "to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000). "A rejection based on section 103 clearly
must rest on a factual basis. . . ." In re Warner, 379 F.2d 1011, 1017 (CCPA
1967). "The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not . . . resort to speculation, unfounded assumptions
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or hindsight reconstruction to supply deficiencies in its factual basis." (Id.)
"It is impermissible to use the claimed invention as an instruction manual or
'template' to piece together the teachings of the prior art so that the claimed
invention is rendered obvious." In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir.
1992) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)).
Furthermore, the U.S. Court of Appeals for the Federal Circuit "has
previously found a proposed modification inappropriate for an obviousness
inquiry when the modification rendered the prior art reference inoperable for
its intended purpose." Fritch, 972 F.2d at 1266 n.12 (citing In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984)). A reason to
combine teachings from the prior art, however, "may be found in explicit or
implicit teachings within the references themselves, from the ordinary
knowledge of those skilled in the art, or from the nature of the problem to be
solved." WMS Gaming Inc. v. Int'l Game Tech., 184 F.3d 1339, 1355 (Fed.
Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).

FINDINGS OF FACT
Hankinson teaches that "[a] server implementing the Federated OS
[i.e., operating system] can be scaled up to handle . . . encryption/decryption
(for example, secure sockets layer (SSL) transactions used for e-commerce) .
. . ." (Col. 3, ll. 16-19.)

In Abjanic "[a] network apparatus is provided between a network and
a plurality of processing nodes or servers. The network apparatus includes a
content based message director (e.g., XML [i.e., Extensible Markup
Language] director) to route or direct messages received from the network to
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one of the processing nodes based upon the application data . . . ." (Abstract,
ll. 1-6.) More specifically, "[t]he application data is provided after the
HTTP header, and in this example is provided as XML data." (Col. 6, ll. 4-
6.)

Baskey "utilizes a modified SSL proxy server 40 to provide scalable
secure communications between a client application 10 or 10' and a
transaction server 50." (Col. 5, ll. 21-24.) "Furthermore, a single SSL proxy
server 40 may have persistent secure connections to more than one
transaction server 50. In such a case the routing function would also
determine the destination of a communication from a client and route the
communication to the corresponding persistent secure connection." (Col. 6,
ll. 30-35.) The latter reference's "format function may be incorporated into a
protocol stack between the Secure Socket Layer and the application layer of
the protocol stack." (Col. 10, ll. 9-11.)

ANALYSIS
Hankinson teaches that a server may handle encryption/decryption for
SSL transactions. It is uncontested that "[t]here is no teaching or suggestion
that [the reference's] SSL is supported in a manner that is different from the
prior art, i.e., where application data is reassembled via the application layer
for decryption (see Figure 2B of Appellants' Background)." (Appeal Br.
17.) Even if Toporek's teaching of bypassing an application layer of a
network stack was combined with the teachings of Hankinson, therefore, we
agree with the Appellants that "[t]here is no teaching in Hankinson in view
of Toporek as to how a device could decrypt secure data using a process that
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bypasses the application layer." (Id. at 18.) To relocate the
encryption/decryption of Hankinson to a lower layer in the stack would
require impermissible hindsight, i.e., use of the claimed invention as an
instruction manual or template to piece together the teachings of the prior art
so that the claimed invention is rendered obvious.

For its part, Abjanic provides an XML director to route or direct
messages received from a network to a processing node based upon
application data. The application data are provided after an HTTP header as
XML data. It is uncontested that "HTTP headers and XML data are only
available at the application layer." (Appeal Br. 21.) We agree with the
Appellants that "a modification so as to bypass the application layer, as
proposed by the Examiner, would likely render the Abjanic device
inoperable or defeat its essential purpose since no XML data would be
identified." (Id. at 21-22.)

For its part, Baskey discloses a modified SSL proxy server that
provides secure communications between a client application and a plurality
of transaction servers. In contrast to Hankinson and Abjanic, Baskey
teaches incorporating its functions into a protocol stack below the
application layer. It also teaches an SSL layer separate from the application
layer. Therefore, the reference would have suggested a combination with
Toporek's teaching of bypassing an application layer of a network stack.
Such a modification, moreover, would not likely render the SSL proxy
server inoperable or defeat its essential purpose.

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CONCLUSION
Based on the aforementioned facts and analysis, we conclude that the
Appellants have shown error in the Examiner's combining of teachings from
Toporek with those of Hankinson and Abjanic. We also conclude, however,
that they have shown no error his combining of teachings from Toporek with
those of Baskey.

DECISION
We reverse the rejection of claims 1-28 under 112, first paragraph,
and the rejections of claims 1-7 12-15, and 17-24 under 103(a). In contrast,
we affirm the rejection of claims 25-28 under 103(a).
No time for taking any action connected 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).

AFFIRMED-IN-PART

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