Ex Parte Hyndman et al

Patent Trial and Appeal Board

Aug 22, 2016

13416142 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/416,142 03/09/2012
131442 7590 08/23/2016
RPX Clearinghouse, LLC
One Market Plaza, Steuart Tower
Suite 800
San Francisco, CA 94105
FIRST NAMED INVENTOR
Arn Hyndman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
16692ROUS02C 5524
EXAMINER
TRAN, ELLEN C
ART UNIT PAPER NUMBER
2433
MAILDATE DELIVERY MODE
08/23/2016 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
Ex parte ARN HYNDMAN and NOCHOLAS SAURIOL
Appeal2014-009862
Application 13/416,142
Technology Center 2400
Before BRUCE R. WINSOR, HUNG H. BUI, and AMBER L. HAGY,
Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
.6. .... ,1 .... ,....,-TTr'l.r-"\l\-1,....Al/'\.r'" , .. C- "1 • ,• Appeuants' appeal unaer j) u.~.L. s U4~aJ rrom me rma1 reJecuon
of claims 25--44, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b). Claims 1-24 are cancelled.
App. Br. 1.
We REVERSE and institute a NEW GROUND OF REJECTION
within the provisions of 37 C.F.R. § 41.50(b) (2013).
1 The real party in interest identified by Appellants is Rockstar Consortium
US LP. App. Br. 1.
Appeal2014-009862
Application 13/416,142
RELATED PROCEEDINGS2
The application which forms the basis on the present appeal is a
continuation of application No. 10/995,162, which was the subject of Appeal
No. 2009-014530, decided September 20, 2011.
STATEMENT OF THE CASE
Appellants' disclosed invention "relates to firewalls and, more
particularly, to ... control of traffic propagation through a network
firewall." Spec. i-f 1. Claims 25 and 35, which are illustrative, read as
follows:
25. A method of operating a distributed firewall
system, the distributed firewall system comprising a firewall, at
least one firewall agent associated with a host providing at least
one application, and a firewall component associated with a
VPN[3] server, the method comprising:
communicating, from at least one firewall agent
associated with the host to the firewall, information pertaining
to at least one of a user and an application requesting access to
a VPN service provided by the VPN server;
making a policy decision at the firewall based on the
communicated information pertaining to the at least one of a
user and an application;
communicating, from the firewall to the firewall
component associated with the VPN server, information
pertaining to implementation of the policy decision; and
2 Appellants assert there are no related appeals or interferences. App. Br. 1.
Appellants and their legal representatives are reminded of the obligation to
identify related appeals, interference, and trials in the appeal brief. See 3 7
C.F.R. § 41.37(c)(ii) (2013).
3 Virtual Private Network. Spec. i-f 58.
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Application 13/416,142
implementing at least a portion of the policy decision at
the VPN server based on the communicated information
pertaining to implementation of the policy decision.
3 5. A method of operating a firewall agent in a
distributed firewall system, the distributed firewall system
comprising a firewall, the firewall agent and a firewall
component associated with a VPN server, the firewall agent
being associated with a host providing at least one application,
the method comprising:
monitoring at least one user and at least one application
at the host; and
communicating to the firewall information pertaining to
at least one of a user and an application requesting access to a
VPN service provided by the VPN server.
Evidence Considered
The Examiner relies on the following prior art in rejecting the claims:
Eisenberg et al. US 2003/0188001 Al Oct. 2, 2003
("Eisenberg" or "'00 l ")
Hesselink et al. US 2003/0191848 Al Oct. 9, 2003
("Hesselink" or "' 848 ")
Hui et al. US 2004/0010712 Al Jan. 15,2004
("Hui" or "'712")
Iyer et al. US 6,944,183 Bl Sept. 13, 2005
("Iyer" or "' 183 ")
Morford US 7,324,447 Bl Jan.29,2008
("Morford or "' 44 7")
Examiner's Rejections
Claim 35 is stands rejected under 25 U.S.C. § 102(e) as being
anticipated by Hesselink. See Final Act. 14.
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Application 13/416,142
Claims 25, 26, 32-34, 36, 38--40, and 43--44 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Hesselink and Hui. See Final
Act. 15-20.
Claims 27, 29, 37, and 41 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hesselink, Hui, and Morford. See Final Act 20-21.
Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable Hesselink, Hui, and Iyer. See Final Act. 21-22.
Claims 31 and 42 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hesselink, Hui, and Eisenberg. See Final Act 22.
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed May 28, 2014; "Reply Br." filed Sept. 16, 2014) and the
Specification ("Spec." filed Mar. 9, 2012) for the positions of Appellants
and the (replacement) Final Office Action ("Final Act." mailed Oct. 29,
2013)4 and Answer ("Ans." mailed July 17, 2014) for the reasoning,
findings, and conclusions of the Examiner.
ISSUES
Appellants' contentions present the following dispositive issues: 5
Whether the Examiner errs in finding Hesselink discloses
"communicating to the firewall information pertaining to at least one of a
4 All references herein to the Final Office Action are to the replacement
Final Office Action, mailed October 29, 2013, which superseded the original
Final Office Action mailed August 6, 2013.
5 Appellants' contentions present additional issues. Because the identified
issues are dispositive of the claims and rejections on appeal, we do not reach
the additional issues.
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Application 13/416,142
user and an application requesting access to a VPN service provided by the
VPN server" (emphasis added), as recited in claim 35.
Whether the Examiner errs in finding the combination of Hesselink
and Hui teaches or suggests "communicating, from the firewall to the
firewall component associated with the VPN server, information pertaining
to implementation of the policy decision," as recited in claim 25.
ANALYSIS
Claim 35
In rejecting claim 35, the Examiner reasons that Hesselink's private
network is encompassed by the broadest reasonable interpretation of VPN.
See Ans. 9-10 ("[A] firewall on a private network, (i.e. associated with a
VPN server) can control or provide instructions to firewall components on
different networks. Note VPNs are known to provide a services [sic] to
users .... [A] private network is a VPN.") (citing Hesselink i-fi-15, 15).
Appellants contend the Examiner errs by construing VPN (i.e., Virtual
Private Network) unreasonably broadly, essentially reading "virtual" out of
the claim. We agree.
The ordinary meaning of "virtual private network" to those of
ordinary skill in the art is as follows:
virtual private network n. 1. Nodes on a public network such
as the Internet that communicate among themselves using
encryption technology so that their messages are as safe from
being intercepted and understood by unauthorized users as if the
nodes were connected by private lines. 2. A WAN (wide area
network) formed of permanent virtual circuits (PVCs) on another
network, especially a network using technologies such as A TM
or frame relay. Acronym: VPN.
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Application 13/416,142
MICROSOFT COMPUTER DICTIONARY 554 (Microsoft Press, 5th ed. 2002)
(underlining added). In other words, a virtual private network is a particular
kind of private network, i.e., one where the nodes are not connected by
private lines, but rather communicate over non-private lines using
encryption that emulates private lines. We find nothing in Appellants'
Specification or Hesselink that is inconsistent with the ordinary meaning of
"VPN." The embodiment of Hesselink relied upon to anticipate claim 3 5
(see Final Act. 14 (citing Hesselink i-fi-15-7, 15-16)) discloses private
networks, but does not disclose virtual private networks. Hesselink does
discuss VPN s as a background embodiment to the embodiments of
Hesselink's described invention (see Hesselink i13), but distinguishes VPNs
from the embodiments of Hesselink's invention (see id. i19). See
NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
"[I]t is not enough [for an anticipation rejection] that the prior art reference
... includes multiple, distinct teachings that the artisan might somehow
combine to achieve the claimed invention.").
Because the embodiment of Hesselink relied on by the Examiner does
not disclose a VPN service or VPN server, as those terms are understood in
the art, Hesselink does not disclose "communicating to the firewall
information pertaining to at least one of a user and an application requesting
access to a VPN service provided by the VPN server" (emphasis added), as
recited in claim 3 5.
For the foregoing reasons we do not sustain the rejection of claim 35
or of claims 36-38 which depend, directly or indirectly, from claim 35.
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Application 13/416,142
Claim 25
The Examiner maps the recited VPN server and recited firewall to
Hui's integrated VPN/firewall system and reasons "[s]ince the integrated
VPN/firewall system comprises a policy engine that enforces policies, the
policy decision is implemented at the VPN server." Ans. 13 (citing Hui
abstract, i-fi-f 12, 17-18, 62, 81.) Appellants contend as follows:
Hui['s integrated VPN server/firewall] does not ... teach
or suggest communicating, from the firewall to the firewall
component associated with the VPN server, information
pertaining to implementation of the policy decision; and
implementing at least a portion of the policy decision at the VPN
server based on the communicated information pertaining to
implementation of the policy decision.
App. Br. 12. Appellants further contend as follows:
[T]he fact that these two systems [i.e., VPN server and firewall]
are physically implemented on a single device does not teach or
suggest, to a person of ordinary skill in the art, that the firewall
should communicate information pertaining to implementation
of the policy decision to a firewall component associated with
the VPN server or that the VPN server should implement at least
a portion of the policy decision.
Reply Br. 6.
We agree with the Examiner, for the reasons explained by the
Examiner, that Hui teaches or suggests implementing policy decisions at the
VPN server. See Ans. 13. Because Hui teaches an integrated VPN
server/firewall, steps performed by Hui's firewall can be characterized as
being performed by Hui's VPN server as well. However, we agree with
Appellants that the Examiner has not established that the cited passages of
Hui teach or suggest "communicating, from the firewall to the firewall
component associated with the VPN server, information pertaining to
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Application 13/416,142
implementation of the policy decision," as recited in claim 35. The
Examiner does not identify in Hui the "firewall component associated with
the VPN server" with which Hui's "firewall" communicates. Indeed,
because Hui's firewall itself is included in Hui's integrated VPN
server/firewall, we can identify no "firewall component associated with the
VPN server" except for the firewall itself, so that there is no separate
identifiable "firewall component associated with the VPN server" for the
firewall to communicate with.
For the foregoing reasons we do not sustain the rejection of
(1) independent claim 25; (2) independent claims 39 and 40, which similarly
recite communication of information regarding a policy decision from the
firewall to the VPN server; and (3) claims 26-34 and 41--44, which depend,
directly or indirectly, from claims 25 and 40, respectively.
NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Claim 35 is rejected on a new ground of rejection under 35 U.S.C.
§ 103(a) as being unpatentable over Hesselink. As an initial matter, we note
that we give patentable weight to the recitations of the preamble to the extent
they give life, meaning, and vitality to the steps positively recited in the
claim. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305
(Fed. Cir. 1999); see also MPEP § 2111.02(II). But where the recitations of
the preamble do not affect, or are not affected by, any manipulative act
positively recited in the claim, we treat those recitations as mere statements
of intended use. We construe "a firewall agent in a distributed firewall
system ... associated with a host providing at least one application" to
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Application 13/416,142
encompass any functional elements that perform monitoring and
communicating steps as recited in claim 3 5.
We adopt as our own the Examiner's findings (Final Act. 14) and
explanations (Ans. 9-13) regarding claim 35, except that we do not adopt
the Examiner's finding that Hesselink anticipates claim 35. Hesselink
further teaches that dedicated private networks and dedicated virtual private
networks (VPN) function similarly, each having a dedicated server within
the network to provide for communication with the Internet. Hesselink i-f 3.
In the case of a VPN, this dedicated server falls within the broadest
reasonable interpretation of a VPN server. Thus, Hesselink teaches the
interchangeability of dedicated private networks and dedicated VPNs.
Accordingly, it would have been obvious to one of ordinary skill in the art to
replace the server of the private network relied upon by the Examiner with a
VPN server. One of ordinary skill in the art would have understood that
accessing a network via a VPN server constitutes a request to access a VPN
service. Such a modification would be no more than no more than "the
simple substitution of one known element for another." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
Dependent Claims
We have entered new grounds of rejection for independent claim 3 5.
We leave to the Examiner to consider the patentability of dependent claims
36-38 in light of our findings and conclusions supra regarding claim 35,
from which they depend. The fact that we did not enter new grounds of
rejection for the dependent claims should not be construed to mean that we
consider the dependent claims to be patentable over the prior art of record.
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DECISION
The decision of the Examiner to reject claims 25--44 is reversed.
We enter a new ground of rejection for claim 35 under 35 U.S.C.
§ 103(a).
Section 41.50(b) provides that "[a] new ground of rejection ... shall
not be considered final for judicial review."
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record.
37 C.F.R. § 41.50(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)(l). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
REVERSED
37 C.F.R. § 41.50(b)
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