Ex Parte Kamboh et alDownload PDFPatent Trial and Appeal BoardJun 8, 201612966733 (P.T.A.B. Jun. 8, 2016) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/966,733 12/13/2010 Ameel Kamboh 17620BAUS03C 9355 131442 7590 06/09/2016 RPX Clearinghouse, LLC One Market Plaza, Steuart Tower Suite 800 San Francisco, CA 94105 EXAMINER ROBERTS, BRIAN S ART UNIT PAPER NUMBER 2466 MAIL DATE DELIVERY MODE 06/09/2016 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 AMEEL KAMBOH and DAVID TSANG ____________________ Appeal 2014-005889 Application 12/966,733 Technology Center 2400 ____________________ Before JOSEPH L. DIXON, ERIC S. FRAHM, CARL L. SILVERMAN, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 20-33. Claims 1-19 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Disclosed Invention Appellants’ disclosed invention relates to data communications using network elements (Spec. ¶¶ 2 and 3) that can be configured to have multiple processors (Spec. ¶ 10), and more specifically a virtual private network (VPN) system and a method of operating a VPN where an internet protocol Appeal 2014-005889 Application 12/966,733 2 (IP) can be terminated to balance processor work-load distribution using steering policies that control packets flowing over the VPN (Spec. ¶¶ 10 and 11; Abst.; claims 20 and 27). Exemplary Claims Exemplary independent claims 20 and 27 under appeal, with emphases added, read as follows: 20. A network system, comprising: Virtual Private Network (VPN) routing control logic configured to implement a VPN routing entity; application control logic configured to implement an application process to execute in the context of the VPN with access to packet flows over the VPN, the application process being configured to generate steering policies associated with packet flows; and steering policy management control logic configured to receive steering policies generated by the application control logic and configured to pass steering policies to at least one steering policy agent, the steering policy agent being configured to enable packets in the packet flows to be affected by the policies, so that the application process associated with the VPN may obtain access to the packet flows over the VPN even though it is instantiated in the application control logic rather than being instantiated in the VPN routing control logic. 27. A method of operating a network system, comprising: generating, in an application process configured to execute in the context of a Virtual Private Network (VPN), at least one steering policy associated with packet flows, the application process not being instantiated in VPN routing control logic configured to control the VPN but having access to packet flows over the VPN; Appeal 2014-005889 Application 12/966,733 3 passing the policy to a steering policy agent; and operating the steering policy agent to direct packets meeting the policy to the application process to enable packets in the packet flows to be affected by the policy. The Examiner’s Rejections (1) The Examiner rejected claims 20-26 as being unpatentable under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. Final Rej. 3-5. The Examiner determines (Final Rej. 4) that (i) the terms “VPN routing control,” “application control,” and “steering policy management control” are not structural modifiers; and (ii) therefore, the terms “logic” recited in independent claim 20 (e.g., “VPN routing control logic,” “application control logic,” and “steering policy management control logic”) are non-structural and are coupled with functional language without reciting sufficient structure to achieve the functions recited. The Examiner interprets the terms “VPN routing control logic,” “application control logic,” and “steering policy management control logic” under 35 U.S.C. § 112, sixth paragraph (see Final Act. 6-7), and concludes that the written description supporting these claim limitations fail to clearly link or associate the disclosed structure, material, or acts to the claimed functions such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed functions (Ans. 6). (2) The Examiner rejected claims 20-33 based on the judicially created doctrine of non-statutory obviousness-type double patenting, over Appeal 2014-005889 Application 12/966,733 4 claims 1-14 of Kamboh (US 7,869,442 B1; issued Jan. 11, 2011).1 Final Rej. 2-3. ISSUE Based on Appellants’ arguments in the Appeal Brief (App. Br. 4-11) and the Reply Brief (Reply Br. 1-4), the following issue is presented: Did the Examiner err in rejecting claims 20-26 based on determining that the limitations “VPN routing control logic,” “application control logic,” and “steering policy management control logic” recited in independent claim 20 are indefinite for failing to particularly point out and distinctly claim the subject matter, which Appellants regard as the invention? ANALYSIS We have reviewed the Examiner’s rejections (Final Act. 2-5) in light of Appellants’ contentions in the Appeal Brief (App. Br. 4-11) and Reply Brief (Reply Br. 1-4) that the Examiner has erred, as well as the Examiner’s response to Appellants’ arguments in the Appeal Brief (Ans. 2-6). With regard to the indefiniteness rejection of claims 20-26, we disagree with Appellants’ conclusions and concur with the conclusions reached by the Examiner. 1 Appellants do not present separate patentability arguments for claims 20- 33 rejected based on the judicially created doctrine of non-statutory obviousness-type double patenting, or otherwise rebut the Examiner’s prima facie case in regards to the obviousness-type double patenting rejections of claims 20-33 (see generally App. Br. 4-11; Reply Br. 1-4). Thus, no issue is presented by Appellants as to this rejection, and we sustain the obviousness-type double patenting rejection of claims 20-33 pro forma. Appeal 2014-005889 Application 12/966,733 5 We agree with the Examiner that one of ordinary skill in the art would not be able to ascertain the structure needed to perform the functions recited in the claims (e.g., the functions of “VPN routing,” “application control,” and “steering policy management control”). See Ans. 3-5. Such limitations render the scope of claims 20-26 unascertainable. The Specification fails to provide a sufficient structure or algorithm that performs the claimed functions of “VPN routing,” “application control,” and “steering policy management control” (see claim 20). Because the structure corresponding to the claimed logic is not described, the Specification does not “‘permit one of ordinary skill in the art to know and understand what structure corresponds to the means limitation’ so that he may ‘perceive the bounds of the invention.”’ In re Aoyama, 656 F.3d 1293, 1298 (Fed. Cir. 2011). Appellants’ Figure 2 shows a network element 20 having a central processing unit (CPU) 28 including a VPN routing entity 32, a steering policy manager 36, and steering policy agents 38, and CPUs 28 and 48 IP including applications 34 (Fig. 2; ¶¶ 23, 24, and 29). Appellants’ Specification defines the steering policy manager 36, steering policy agents 38, VPN routing entity 32 and applications 34 (i.e., “other logical entities”) in paragraph 60 as follows: [0060] The steering policy manager, steering policy agents, and other logical entities described herein, may be embodied as one or more software programs implemented in control logic on a processor on the network element 20. The control logic in this embodiment may be implemented as a set of program instructions that are stored in a computer readable memory within the network element and executed on a microprocessor on the network element. However, in this embodiment as with Appeal 2014-005889 Application 12/966,733 6 the previous embodiments, it will be apparent to a skilled artisan that all logic described herein can be embodied using discrete components, integrated circuitry such as an Application Specific Integrated Circuit (ASIC), programmable logic used in conjunction with a programmable logic device such as a Field Programmable Gate Array (FPGA) or microprocessor, or any other device including any combination thereof. Programmable logic can be fixed temporarily or permanently in a tangible medium such as a read-only memory chip, a computer memory, a disk, or other storage medium. All such embodiments are intended to fall within the scope of the present invention. Spec. ¶ 60 (emphasis added). Appellants’ Specification describes the functions of the various logics recited in claim 20 (e.g., “VPN routing control logic,” “application control logic,” and “steering policy management control logic”) as capable of being performed by software known in the art: [0059] It should be understood that all functional statements made herein describing the functions to be performed by the methods of the invention may be performed by software programs implemented utilizing subroutines and other programming techniques known to those of ordinary skill in the art. Alternatively, these functions may be implemented in hardware, firmware, or a combination of hardware, software, and firmware. The invention is thus not limited to a particular implementation. Spec. ¶ 59 (emphasis added).2 In this light, one of ordinary skill in the art would understand elements 32, 36, and 38 in Figure 2 to be software components, modules, or logic that are stored in CPUs 28 and 48. 2 Notably, since Appellants’ Specification states that the functional statements “describing the functions to be performed by the methods of the invention [e.g., the functional statements recited in claim 20] may be performed by software programs implemented utilizing subroutines and Appeal 2014-005889 Application 12/966,733 7 Figures 2-6 of Appellants’ Drawings do not show, and the accompanying textual disclosure (Spec. ¶¶ 22-58) does not describe or disclose, any definite structure or algorithm for accomplishing the recited functions of VPN routing, application control, and steering policy management control. Because there is no underlying support in the Specification for the terms “VPN routing control logic,” “application control logic,” and “steering policy management control logic,” claim 20, as well as claims 21-26 depending therefrom, do not particularly point out and distinctly claim the subject matter, which Appellants regard as the invention. Furthermore, those skilled in the art would not understand what is claimed when the claim is read in light of the specification. Orthokinetics, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). The indefiniteness inquiry is concerned with whether the bounds of the invention are sufficiently demarcated, not with whether one of ordinary skill in the art may find a way to practice the invention. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1337 (Fed. Cir. 2008). To assess whether a claim is indefinite, therefore, we do not “look to the knowledge of one skilled in the art apart from and unconnected to the disclosure of the patent.” Id. (quoting Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1212 (Fed. Cir. 2003)). We rather “look at the disclosure of the patent and determine if one of skill in the art would have understood that disclosure to encompass [the required structure].” other programming techniques known to those of ordinary skill in the art” (Spec. ¶ 59) (emphases added), Appellants admit that each of the functions performed by the “VPN routing control logic,” “application control logic,” and “steering policy management control logic” of the network system recited in claim 20 are known to those of ordinary skill in the art. Appeal 2014-005889 Application 12/966,733 8 Aristocrat, 521 F.3d at 1337 (quoting Med. Instrumentation, 344 F.3d at 1212). Here, the Specification does not disclose any specific structure or algorithm that is responsible for VPN routing control, application control, and steering policy management control. There is therefore nothing in the Specification to help cabin the scope of the functional language recited in claims 20-26. Network system claims 20-26 are therefore indefinite. The problem in the instant case is not the adequacy of the substance or form of the disclosure, but the absence of any disclosure at all. See also Aristocrat, 521 F.3d at 1337 (“The question . . . is not whether the algorithm that was disclosed was described with sufficient specificity, but whether an algorithm was disclosed at all.”). In view of the foregoing, we need not reach the issue of whether or not the terms recited in claim 20 (“VPN routing control logic,” “application control logic,” and “steering policy management control logic”) are (i) in means-plus-function format; and/or (ii) contain nonce words. Claims 20-26 are indefinite because the bounds of the invention are not sufficiently demarcated such that one of ordinary skill in the art may find a way to practice the invention. See Aristocrat, 521 F.3d at 1337. Accordingly, we sustain the Examiner’s indefiniteness rejection of claims 20-26 under § 112, second paragraph. CONCLUSIONS (1) The Examiner did not err in rejecting claims 20-26 under 35 U.S.C. § 112, second paragraph, as being indefinite for lack of clarity with regards to the algorithm or structure used to control VPN routing, Appeal 2014-005889 Application 12/966,733 9 applications, and/or steering policy management because a person of ordinary skill in the art would not understand the metes and bounds of the logic used to perform the recited functions. The terms used in claims 20-26 (“VPN routing control logic,” “application control logic,” and “steering policy management control logic”) are indefinite. (2) Appellants have not shown that the Examiner erred in rejecting claims 20-33 based on the judicially created doctrine of non-statutory obviousness-type double patenting. DECISION (1) The Examiner’s rejection of claims 20-26 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention, is affirmed. (2) The Examiner’s rejection of claims 20-33 based on the judicially created doctrine of non-statutory obviousness-type double patenting, over claims 1-14 of US Patent No. 7,869,442, is affirmed, pro forma. 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 Copy with citationCopy as parenthetical citation