Ex Parte Thommana et al

Patent Trial and Appeal Board

Apr 17, 2013

11205419 (P.T.A.B. Apr. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN V. THOMMANA and LIZY PAUL
____________

Appeal 2010-004206
Application 11/205,419
Technology Center 2600
____________

Before BRUCE R. WINSOR, DAVID C. MCKONE,
and GEORGIANNA W. BRADEN, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-6 and 16-22, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b). Claims 7-15 are
cancelled.
We affirm-in-part.

1 The real party in interest is Freescale Semiconductor, Inc. App. Br. 1.
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STATEMENT OF THE CASE
Appellants’ invention relates to “network based communications and
more specifically to management of security features in a communication
network.” Spec. ¶ [0001]. Claims 1 and 22, which are illustrative of the
invention, read as follows:
1. A method of operation for a communication device
comprising:
receiving at a communications intermediary a
communication from a first communication device,
the communication targeted to a second
communication device, wherein the first
communication device and the second
communication device are endpoints of an end-to-
end communication link;
detecting, based on the communication, a first end-to-end
security feature associated with the end-to-end
communication link, the first end-to-end security
feature provided from the first communications
device and provided for the second communication
device; and
while maintaining the first end-to-end security feature,
managing a second security feature in
communications from the communications
intermediary in response to detecting the first end-
to-end security feature.
22. A method of operation for a communication device
comprising:
receiving at a communications intermediary a
communication from a first communication device,
the communication targeted to a second
communication device, wherein the first
communication device and the second
communication device are endpoints of an end-to-
end communication link;
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detecting, based on the communication, a first end-to-end
security feature associated with the end-to-end
communication link, the first end-to-end security
feature provided from the first communications
device and provided for the second communication
device; and
while maintaining the first end-to-end security feature,
activating a second security feature in
communications from the communications
intermediary in response to detecting the first end-
to-end security feature.
The Examiner relies on the following prior art in rejecting the claims:
Raivisto US 6,081,601 June 27, 2000
Bhagwat US 6,651,105 B1 Nov. 18, 2003
Shah US 2006/0026688 Al Feb. 2, 2006
(filed Aug. 2, 2004)
Beachem US 2006/0094400 A1 May 4, 2006
(filed July 7, 2005)
Koodli US 2006/0248337 A1 Nov. 2, 2006
(filed June 23, 2005)
Kim US 2006/0253701 A1 Nov. 9, 2006
(filed May 3, 2005)
Claims 1, 5, 6, 16, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kim and Bhagwat. Ans. 4-5.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Kim, Bhagwat, and Raivisto. Ans. 5-6.
Claims 2 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kim, Bhagwat, and Koodli. Ans. 6-7.
Claims 4, 17, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kim, Bhagwat, and Beachem. Ans. 7-9.
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Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kim, Bhagwat, and Shah. Ans. 9-10.
Rather than repeat the arguments here, we refer to the Briefs (App. Br.
filed Feb. 12, 2009; Reply Br. filed July 29, 2009, supplemented Jan. 5,
2010) and the Answer (Ans. mailed Nov. 5, 2009)2 for the respective
positions of Appellants and the Examiner. Only those arguments actually
made by Appellants have been considered in this decision. Arguments that
Appellants did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2010).
Appellants argue the patentability of claims 1, 4, and 22 separately.
See App. Br. 6-10, 14-15, 16-18. Appellants’ arguments for the patentability
of claims 2, 3, 5, 6, and 16-21 principally rely, directly or indirectly, on
arguments made for the patentability of claims 1 or 22. See App. Br. 10-13,
15-16. Accordingly, we will discuss the appeal by reference to claims 1, 4,
and 22.

CLAIM 1
Issues
The issues presented by Appellants’ contentions are as follows:
Does the combination of Kim and Bhagwat teach or suggest
“detecting, based on [a] communication, a first end-to-end security feature
. . . and while maintaining the first end-to-end security feature, managing a
second security feature . . . in response to detecting the first end-to-end
security feature,” as recited in claim 1?

2 We have not considered the Answer mailed May 29, 2009, as it is deemed
to have been superseded by the Answer mailed November 5, 2009.
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Would the combination of Kim and Bhagwat render the method of
Kim unsuitable for its intended purpose?

Analysis
Appellants contend that “Bhagwat does not disclose or suggest that
end-to-end security is turned on based on a communication between
endpoints.” App. Br. 7. Appellants’ contention is not commensurate with
the scope of the claim, which does not recite turning on end-to-end security.
Accordingly, Appellants’ contention is unpersuasive.
Appellants further contend that “Bhagwat does not disclose or render
obvious detecting the end-to-end security based on the communications.
That is, Bhagwat nowhere discloses detecting the end-to-end security based
on the data going over the wireless link.” App. Br. 8; see also Reply Br. 2.
However, the Examiner relies on Kim rather than Bhagwat, as teaching
detecting whether the first end-to-end security feature is turned on based on
the communication. See Ans. 4 (citing Kim ¶ [0083]). Bhagwat is relied on
to teach or suggest that, in response to detecting that a first security feature is
turned on, managing a second security feature. See Ans. 5 (citing Bhagwat
col. 5, ll. 34-36). We note that under the broadest reasonable interpretation
of “managing,” managing the second security feature encompasses, inter
alia, turning the second security feature on or off, i.e., activating or
deactivating the second security feature.
We find the Examiner’s findings to be reasonable and not
persuasively rebutted by Appellants’ contentions. Further, Appellants’
contentions address Bhagwat individually, rather that the combination of
Kim and Bhagwat articulated by the Examiner. The contentions are,
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therefore, not commensurate with the ground of rejection, and are
unpersuasive for this further reason. See In re Keller, 642 F.2d 413, 426
(CCPA 1981) (“[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.”).
Appellants cite In re Gordon, 733 F.2d 900 (Fed. Cir. 1984) and
MPEP § 2143.01 in support of a contention that combining Bhagwat’s
turning off of the encryption is response to detecting the presence of end-to-
end security would render Kim unsuitable for its intended purpose. See
App. Br. 8-9. Appellants argue:
[T]he stated purpose of Kim is to provide “a method for
providing end-to-end security service in an IPv6 network
having an NAT-PT function using IPsec.” Kim, [0018]. As
explained by Kim, IPsec provides a framework for
authentication and communication of encryption information.
Id., [0014]. Thus, for Kim to fulfill its intended purpose, it
must provide a framework for authentication and
communication of encryption information. In other words, any
proposed combination with Kim that results in a failure to
provide authentication and communication of encryption
information would render Kim unsuitable for its intended
purpose, and is therefore a combination that would not be made
by one skilled in the art.
App. Br. 8.
The Examiner explains that Appellants take an overly narrow view of
Kim’s purpose. See Ans. 11. We agree. We find that, as stated by the
Examiner, Kim’s overall purpose is to provide end-to-end security in an
IPv6 network. Id. (citing Kim, ¶ [0040]). As pointed out by Appellants,
App. Br. 8 (citing Kim, ¶ [0014]), and the Examiner, Ans. 18 (also citing
Kim, ¶ [0014]), IPsec is a framework that supports both authentication and
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encryption. The Examiner points to evidence in the record that Kim
envisions the possibility of using encryption and authentication in the
alternative. Ans. 11 (citing Kim ¶ [0041] (“In other words, the NAT-PT
node and the IPv4 node perform a procedure for determining a framework
(security association (SA)) for encryption or authentication (e.g., an
encryption algorithm).” (emphasis added))).
Appellants point to evidence that Kim also envisions the use of
encryption and authentication together, Reply Br. 3-4, (citing Kim, ¶¶ [0042-
0045]), and make the following conclusory statement:
If either of these services is turned off (as would be the case
under the Office’s proposed combination of Kim and Bhagwat),
then Kim would no longer be suitable for its intended purpose
of “providing end-to-end security service in an IPv6 network
having an NAT-PT function using IPsec.” Id., pargraph [sic]
18. Accordingly, one skilled in the art would not combine the
references as proposed.
Reply Br. 4. However, Appellants do not identify any evidence in the record
that persuasively indicates that Kim’s method would be rendered unsuitable
for its intended purpose, as distinct from missing a desirable feature, by
operating in an encryption-only or authentication-only mode. See
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A]
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine.”). Further,
Appellants do not point to any persuasive evidence in the record to indicate
that the IPsec framework of Kim is incapable of such single mode operation.
For the foregoing reasons, on this record Appellants have not
persuaded us of error in the rejection of claim 1. Accordingly, we sustain
the rejection of (1) claim 1; (2) claim 16, which was argued in reliance on
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the arguments for claim 1, App. Br. 10-11; and (3) dependent claims 2, 3, 6,
and 17-21, which were argued in reliance on the arguments for claim 1 or
16, or were not separately argued with particularity, App. Br. 13, 15-16.

CLAIM 4
Issue
The issue raised by Appellants’ contentions is as follows: Does the
combination of Kim, Bhagwat, and Beachem teach or suggest that
“managing [as recited in claim 1] further comprises deactivating the
second security feature,” as recited in claim 4?

Analysis
Appellants’ contentions regarding claim 4 that refer to the arguments
made for claim 1 are unpersuasive for the reasons set forth supra.
Appellants further contend that “Beachem fails to disclose
deactivating a second security feature in response to detecting a first
security feature.” App. Br. 15. However, the rejection of claim 4 is based
on a combination of Kim, Bhagwat, and Beachem, not Beachem alone. See
Keller, 642 F.2d at 426. As admitted by Appellants, “Bhagwat discloses that
it is desirable to deactivate encryption in response to detecting end-to-end
security.” App. Br. 17. The Examiner relies on Beachem to teach, inter
alia, “applying the appropriate policies automatically as the user moves
about or different security features are activated or deactivated ([Beachem,]
paragraph 27).” Ans. 12. Therefore, we find that Kim, Bhagwat, and
Beachem together teach deactivating the second security feature when the
first security feature is detected.
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On this record, Appellants have failed to persuade us of error in the
rejection of claim 4. Accordingly, we sustain the rejection of claim 4.

CLAIM 22
Issue
The dispositive issue raised by Appellants’ contentions is as follows:
Does the combination of Kim and Bhagwat teach or suggest “detecting,
based on [a] communication, a first end-to-end security feature . . . and while
maintaining the first end-to-end security feature, activating a second security
feature. . . in response to detecting the first end-to-end security feature,” as
recited in claim 22?

Analysis
Claim 22 is substantially similar to claim 1, except that the word
“managing” in claim 1 is replaced with “activating” in claim 22. The
Examiner relies on Bhagwat to teach or suggest activating the second
security feature. Ans. 5 (citing Bhagwat, col. 5, ll. 34-36); see also Ans. 11-
12. We note that the Examiner relies on the same passage of Bhagwat when
discussing similar recitations in claim 5. Ans. 5. Appellants contend that
“Bhagwat discloses that it is desirable to deactivate encryption in response
to detecting end-to-end security.” App. Br. 17. We agree with Appellants.
The passage of Bhagwat relied on by the Examiner states that “[i]t is
desirable to be able to detect if end-to-end security is turned on, and to
provide encryption only if it is not turned on.” Bhagwat, col. 5, ll. 34-36
(emphasis added). The Examiner does not direct us to any passage of
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Bhagwat or Kim that teaches or suggests providing (i.e., “activating”)
encryption if it is detected that end-to-end security is turned on.
We are persuaded of error in the rejection of claim 22 and we do not
sustain the rejection of claim 22 or of claim 5, which includes substantially
the same recitation as claim 22 and was argued based on the argument made
for claim 22, App. Br. 11-12.

ORDER
The decision of the Examiner to reject claims 1, 6, and 16 under
35 U.S.C. § 103(a) as unpatentable over Kim and Bhagwat is affirmed.
The decision of the Examiner to reject claim 3 under 35 U.S.C.
§ 103(a) as unpatentable over Kim, Bhagwat, and Raivisto is affirmed.
The decision of the Examiner to reject claims 2 and 18 under
35 U.S.C. § 103(a) as unpatentable over Kim, Bhagwat, and Koodli is
affirmed.
The decision of the Examiner to reject claims 4, 17, and 19 under
35 U.S.C. § 103(a) as unpatentable over Kim, Bhagwat, and Beachem is
affirmed.
The decision of the Examiner to reject claims 20 and 21 under
35 U.S.C. § 103(a) as unpatentable over Kim, Bhagwat, and Shah is
affirmed.
The decision of the Examiner to reject claims 5 and 22 under
35 U.S.C. § 103(a) as unpatentable over Kim and Bhagwat is reversed. 3

3 We note that claims 5 and 22 appear to have the same scope. We leave to
the Examiner and Appellants to resolve the apparent duplicate claiming. See
MPEP § 706.03(k) (8th ed. 2008; Rev. 9, Aug. 2012).
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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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