Ex Parte Lescuyer et al

Patent Trial and Appeal Board

Mar 27, 2014

11787498 (P.T.A.B. Mar. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PIERRE LESCUYER and THIERRY LUCIDARME
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Appeal 2012-000042
Application 11/787,498
Technology Center 2400
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Before JOHN A. JEFFERY, STEPHEN C. SIU, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

STATEMENT OF THE CASE
Appellants’ invention controls security in a communications system
that involves a node capable of routing traffic according to at least one
security algorithm. The node (1) estimates at least one safety degree relating
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to the node, and (2) selects and activates at least one security algorithm
depending on the estimated safety degree. See generally Abstract. Claim 1
is illustrative:
1. Method of controlling security in a communication system
comprising at least one node capable of routing traffic according to a
plurality of security algorithms with respective security levels, the method
comprising the following steps performed by the node:
- estimating at least one safety degree relating to said node;
- selecting at least one security algorithm of said plurality of security
algorithms, depending on said estimated safety degree; and
- activating said at least one security algorithm.

THE REJECTIONS
The Examiner rejected claims 15-30 under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Ans. 4-5.1
The Examiner rejected claims 1-3, 7-9, 11-17, 21-23, and 25-30 under
35 U.S.C. § 102(b) as anticipated by Haines (GB 2,411,544 A; published
Aug. 31, 2005). Ans. 6-8.
The Examiner rejected claims 4 and 18 under 35 U.S.C. § 103(a) as
obvious over Haines and Kammer (US 2003/0140246 A1; published July
24, 2003). Ans. 8.
The Examiner rejected claims 5, 6, 19, and 20 under 35 U.S.C.
§ 103(a) as obvious over Haines and Chiviendacz (US 2006/0156385 A1;
published July 13, 2006). Ans. 8-9.

1 Throughout this opinion, we refer to (1) the Appeal Brief filed May 9,
2011 (“App. Br.”); (2) the Examiner’s Answer mailed June 6, 2011
(“Ans.”); and (3) the Reply Brief filed August 16, 2011 (“Reply Br.”).
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The Examiner rejected claims 10 and 24 under 35 U.S.C. § 103(a) as
obvious over Haines and Bucher (US 2005/0058138 A1; published March
17, 2005). Ans. 9.

THE § 101 REJECTION
The Examiner finds that the nodes recited in independent claims 15
and 29 can be solely software and are, therefore, ineligible under § 101.
Ans. 5, 10. The Examiner adds that the computer program product stored on
a storage medium recited in independent claim 30 is likewise ineligible
under § 101 because it encompasses transitory signals. Ans. 5, 10-11.
Appellants argue that skilled artisans would interpret a node in a
communication system as combined hardware and software in light of the
Specification—not solely software. App. Br. 7-11; Reply Br. 1-4.

ISSUES
Under § 101, has the Examiner erred in rejecting claims 15-30 by
finding that (1) independent claims 15 and 29 encompass solely software,
and (2) independent claim 30 encompasses transitory media?

ANALYSIS
Claims 15-29
We do not sustain the Examiner’s § 101 rejection of claims 15-29.
Appellants’ Specification indicates that “[t]he present invention takes place
in a communication system comprising at least one node, i.e. a
communication point capable of routing traffic.” Spec. 4:2-4 (emphases
added). This essential traffic-routing capability of nodes is also recited in
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the preambles of claims 15 and 29. Our emphasis of the term “i.e.” above
underscores Appellants’ intended definition of “node” as a communication
point capable of routing traffic. See Edward Lifesciences LLC v. Cook Inc.,
582 F.3d 1322, 1334 (Fed. Cir. 2009) (noting that the term “i.e.” in the
specification signals an intent to define the word to which it refers).
Although the routers and communication terminals noted on page 4, lines
10-12 of the Specification are non-limiting examples of nodes, nodes must
nevertheless be capable of routing traffic according to Appellants’
definition.
Despite the Examiner’s contentions to the contrary, we fail to see how
software alone is capable of routing traffic without some sort of hardware.
Although Appellants’ Specification on page 5, lines 29-30, indicates that
node 1 in Figure 1 comprises modules that can comprise software programs
as the Examiner indicates (Ans. 5, 10), that does not mean that the node
itself is purely software.
Lines of code alone cannot route traffic. Rather, to achieve this end,
the node must have some sort of hardware to receive traffic and route it to its
intended destination. Although a node may use software modules to route
traffic, the code itself cannot perform this function without associated
hardware. Accord Spec. 3:18-20 (noting that the disclosed method is carried
out when code instructions are loaded and executed in at least one node of a
communication system).
Therefore, we are persuaded that the Examiner erred in rejecting
under § 101 (1) independent claim 15; (2) independent claim 29 that recites
commensurate limitations; and (3) dependent claims 16-28 for similar
reasons.
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Claim 30
We do, however, sustain the Examiner’s § 101 rejection of
independent claim 30 as encompassing ineligible transitory media, such as
signals. On this record, Appellants do not show error in this particular
aspect of the Examiner’s position. See App. Br. 7-11; Reply Br 1-4. Accord
Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (holding
recited machine-readable storage medium ineligible under § 101 since it
encompassed transitory media). In any event, Appellants apparently
concede the claim’s encompassing transitory media in the Reply Brief. See
Reply Br. 4 (noting the filing of a clarifying amendment so that claim 30 is
directed to non-transitory subject matter). Therefore, we are unpersuaded of
error in the Examiner’s rejection of claim 30 under § 101.

THE ANTICIPATION REJECTION
The Examiner finds that Haines’ security controlling method has
every recited feature of claim 1 including a node that (1) estimates at least
one “safety degree” (security level data) relating to the node, and (2) selects
at least one security algorithm depending on the estimated safety degree.
Ans. 6, 11-12.
Appellants argue that Haines does not estimate a safety degree related
to a node, but rather determines a security level of a communication link and
allocates a score to memory resources. App. Br. 12-13; Reply Br. 3-6.
According to Appellants, Haines’ security level is directed to an application,
and not estimated related to a particular node. App. Br. 13; Reply Br. 6.
Appellants add that Haines does not disclose a node that selects a security
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algorithm depending on an estimated safety degree, but rather teaches
sending security level data between two different devices. App. Br. 14-15;
Reply Br. 7-8.

ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Haines discloses at least one node that (1) estimates at least one safety
degree relating to the node, and (2) selects at least one security algorithm
depending on the estimated safety degree?

ANALYSIS
Claims 1-3, 7-9, 11-17, 21-23, 25-28, and 30
We sustain the Examiner’s anticipation rejection of representative
claim 1. In Haines, a second communications device B’ sends a request for
a secure communications link along with security level data to a first
communications device A’ that uses this data to select an appropriate
encryption method. Haines Abstract; 5, 11-12; Fig. 2. The security level
data indicates the sensitivity of the data to be sent from the second device as
well as that device’s processing and memory capabilities, and can be used to
generate a corresponding parameter. Haines 5, ¶¶ 3-4.
Based on this functionality, we see no error in the Examiner’s position
that the two devices in Haines’ secure link are nodes, and that the first such
node (device A’) estimates at least one safety degree relating to the node.2

2 See Ans. 11 (“The processing and memory resources of the apparatus are
related to the apparatus/node.” (emphases added) (emphasis omitted)); see
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Although the second such node (device B’) generates and sends security
level data to the first “node,” the first “node” can also determine security
level data. See Haines 5, ¶ 2 (“Alternatively or additionally this [security
level data] could be determined by an agent associated with the first device .
. . , and in some implementations the first device as well.” (emphasis
added)). Accord Ans. 12 (quoting this passage).
Nor do we find error in the Examiner’s somewhat broader alternative
interpretation of “node” as constituting multiple devices, such as Haines’
devices A’ and B’ that can also collectively constitute a “node,” particularly
in view of Appellants’ Specification that indicates that a node “can comprise
several devices by itself.” See Ans. 11-12 (citing Spec. 4:10-12); see also
Ans. 12 (“[T]he device where the determination is made in Haines is part of
the ‘one node’ claimed.” (emphasis added)).
Appellants’ contention that Haines determines the security level of a
communications link and not of a node (App. Br. 12; Reply Br. 5) is
unavailing, for this argument is not commensurate with the scope of the
claim that merely requires estimating at least one safety degree relating to
the node that does not preclude the Examiner’s interpretation. Ans. 11.
Appellants’ arguments regarding Haines’ score allocation (App. Br. 13;
Reply Br. 6) are likewise unavailing and not commensurate with the scope
of the claim. Moreover, Appellants’ contention that Haines allegedly
teaches away from the claimed invention (id.) is inapposite where, as here,
the rejection is based on anticipation. See Leggett & Platt, Inc. v. VUTEk,

also id. (referring to “one or both apparatus party to the link” and “the link
between the nodes” (emphases added)).
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Inc., 537 F.3d 1349, 1356 (Fed. Cir. 2008) (“‘[T]eaching away’ is irrelevant
to anticipation.”).
Based on the functionality of Haines’ device A’ noted above, we also
find that Haines discloses a node that also selects at least one security
algorithm depending on the estimated safety degree as claimed. Appellants’
arguments to the contrary (App. Br. 14-15; Reply Br. 7-8) are unavailing and
not commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 2, 3, 7-9, 11-17, 21-23, 25-28, and 30 not
argued separately with particularity.

Claim 29
We do not, however, sustain the Examiner’s anticipation rejection of
independent claim 29 reciting, in pertinent part, plural nodes each (1)
capable of routing traffic, and (2) comprising estimation, selection, and
activation modules, where each node is connected to at least another such
node. As Appellants indicate, this embodiment is shown in Appellants’
Figure 2. App. Br. 4.
Although both devices A’ and B’ in Haines constitute nodes (and
collectively constitute a node) as noted above, only one such device or node
selects and activates security algorithms based on a safety degree, namely
device A’. See Haines 12, ¶¶ 1-2 (discussing device A’s selector 2). So
regardless of which interpretation is used by the Examiner (node is one or
both devices), only one such node comprises the recited modules—not plural
nodes as claimed.
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Accordingly, we find that Appellants’ questioning the Examiner’s
interpretation regarding the plural nodes of independent claim 29 (App. Br.
15; Reply Br. 8) persuasive in this regard, despite the Examiner’s reasonable
basis for rejecting the other claims based on Haines as noted previously. To
the extent that the plural node features of claim 29 would have been obvious
is not a question before us, nor will we speculate in that regard here in the
first instance on appeal. What we can say is that the Examiner’s articulated
position regarding anticipation of claim 29 is untenable on this record.

THE OBVIOUSNESS REJECTIONS
We sustain the Examiner’s obviousness rejections of claims 4-6, 10,
18-20, and 24. Ans. 8-9. Despite nominally arguing these claims separately,
Appellants reiterate similar arguments made previously and allege that the
additional cited references fail to cure those purported deficiencies. App.
Br. 15; Reply Br. 8. We are not persuaded by these arguments, however, for
the reasons previously discussed.

CONCLUSION
Under § 101, the Examiner erred in rejecting claims 15-29, but did not
err in rejecting claim 30.
Under § 102, the Examiner erred in rejecting claim 29, but did not err
in rejecting claims 1-3, 7-9, 11-17, 21-23, 25-28, and 30.
Under § 103, the Examiner did not err in rejecting claims 4-6, 10, 18-
20, and 24.

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ORDER
The Examiner’s decision rejecting claims 1-30 is affirmed-in-part.
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-IN-PART

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