13481273 (P.T.A.B. Oct. 28, 2016)

Ex Parte Jiang

Patent Trial and Appeal BoardOct 28, 2016

13481273 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/481,273 05/25/2012 77399 7590 11/01/2016 Leydig, Voit & Mayer, Ltd (for Huawei Technologies Co., Ltd) Two Prudential Plaza Suite 4900 180 North Stetson Avenue Chicago, IL 60601 FIRST NAMED INVENTOR Wu JIANG 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. HW710465 9361 EXAMINER P ALIW AL, YOGESH ART UNIT PAPER NUMBER 2435 NOTIFICATION DATE DELIVERY MODE 11/01/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): Chgpatent@leydig.com uspatent@huawei.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte WU JIANG Appeal2015-001103 Application 13/481,273 Technology Center 2400 Before JAMES R. HUGHES, CATHERINE SHIANG, and LINZY T. McCARTNEY, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant has requested rehearing of the decision entered June 15, 2016 ("Dec."), which affirmed the Examiner's decision to reject claims 1, 3, 4, 7, and 9-11under35 U.S.C. Â§ 103. We have considered Appellant's arguments, and such arguments have not persuaded us that we misapprehended or overlooked any matters in our decision. Therefore, Appellant's Request for Rehearing ("Req.") is denied. Appeal2015-001103 Application 13/481,273 DISCUSSION A request for rehearing "must state with particularity the points [of law or fact] believed to have been misapprehended or overlooked by the Board," and must comply with 37 C.F.R. Â§ 41.52(a)(l) (2012). Appellant argues the cited references do not collectively teach the claimed "source address." See Req. 1-9. In particular, Appellant cites paragraphs 27 and 24 of the Specification, and argues the "claimed source address is used to identify a networked source (e.g. a server) of suspicious code." Req. 4; see also Req. 6. Appellant contends: "Neither cited reference describes a physical 'source address' of a packet"; and under Appellant's construction of the term, "[n]either reference identifies a reason to record/send an 'address source."' Req. 6, 8 (boldface omitted). We disagree. Our decision addresses paragraphs 27 and 24 of the Specification cited by the Appellant, and Appellant has not persuasively shown the cited paragraphs require the claimed "source address" to identify a "networked source" (App. Br. 10-11) or "actual physical sources (i.e. servers)" (Reply Br. 4). See Dec. 4--5. In fact, Appellant does not point to any actual language in the cited paragraphs for supporting such arguments. See App. Br. 7-8, 10-11; Reply Br. 4. Instead, our decision explains the Examiner's interpretation of the claim term is consistent with the cited Specification paragraphs, as Gupta teaches an address that identifies the source. See Dec. 3-5. Further, Appellant's argument about a "physical 'source address"' (Req. 6 (boldface omitted)) underscores the issue here: the claim term "source address" itself does not require a physical source address. 2 Appeal2015-001103 Application 13/481,273 Because Appellant has not shown his construction of the "source address" is correct, his argument that under the narrow construction, "[n]either reference identifies a reason to record/send an 'address source'" (Req. 8) is unpersuasive. In any event, contrary to Appellant's argument, "[i]f the claim extends to what is obvious, it is invalid underÂ§ 103" and "the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418-19 (2007). We note Appellant is not precluded from amending the claims to further narrow the scope of the claim term "source address," such as by adding a narrowing wherein clause, provided the amendment is adequately supported by the Specification. Because the patentability of such amended claims is not before us, we do not express any opinion as to whether such amended claims are patentable over the cited references and/or other references. CONCLUSION For the reasons stated above, Appellant has not shown we misapprehended or overlooked any issue of fact or law in our decision. We have granted Appellant's Request for Rehearing to the extent that we have reconsidered our decision dated June 15, 2016. Appellant has not shown that we misapprehended or overlooked any issue of law or fact in reaching that decision. Accordingly, we deny Appellant's Request for Rehearing. 3 Appeal2015-001103 Application 13/481,273 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 41.50(Â±). DENIED 4