Ex Parte Williams

Board of Patent Appeals and Interferences

Jan 15, 2009

09930612 (B.P.A.I. Jan. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte IAN C. WILLIAMS
____________

Appeal 2008-2670
Application 09/930,612
Technology Center 2400
____________

Decided: January 15, 2009
____________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and JAY P. LUCAS,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
A Patent Examiner rejected claims 1, 102-119, 125-161, 175-178, and
180-186. The Appellant appeals therefrom under 35 U.S.C. § 134(a). We
have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2008-2670
Application 09/930,612

A. INVENTION
The invention at issue on appeal relates to an apparatus, system,
method and computer program for enhancing the security of information
within a communications network. In particular, to improving the security
of sensitive information such as credit card details for an electronic
commerce environment using an open network such as the Internet. (Spec.
1.)

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A data processing system, comprising:
a first processing resource in the form of a web server
coupleable to an open communications network; and
a second processing resource in the form of a back end
server coupleable to said first processing resource;
said first processing resource and said second processing
resource being configured to establish a communications
relationship between them through a non- network connected
communications channel, whereby said second processing
resource is restricted to implementing an instruction
communicated from said first processing resource which only
performs a predetermined allowable operation, thereby
inhibiting compromise of said second processing resource.

C. REFERENCES
The Examiner relies on the following references as evidence:
Willmann US 5,521,923 May 28, 1996
Tanaka US 5,539,909 Jul. 23, 1996

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Raanan US 6,311,278 B1 Oct. 30, 2001
(filed Sep. 9, 1998)
Piccioni US 6,842,774 B1 Jan. 11, 2005
(filed Jun. 9, 2000)

RFC791, lnternet Protocol, DARPA Internet Program Protocol
Specification, (1981), available at http://rfc.net/rfc791.html.

OSTA, The Benefits of Writable Optical Storage, (1999), available at
http://web.archive.org/web/20000510215932/www.osta.org/html/benefits.ht
ml. 1-4.

D. REJECTIONS
The Examiner rejects the claims in this appeal as follows:
Claims 1, 102-105, 108, 109, 111, 125, 127, 132-135, 137-144, 148,
149, 151, 158, 175-177, 180, 181, 183, and 186 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Raanan.
Claims 106, 136, and 145 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Raanan in view of Piccioni.
Claims 107, 146, and 147 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Raanan in view of Tanaka.
Claims 110, 112-119, 126, 128-131,150, 152-157, and 159 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Raanan in
view of Willmann.
Claims 160, 161, 184, and 185 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Raanan in view of Willmann, further in
view of RFC791 ("lnternet Protocol, DARPA Internet Program Protocol
Specification", 9/1981, obtained from http://rfc.net/rfc791.html).
Claims 178 and 182 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Raanan in view of OSTA (OSTA, "The Benefits of
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Writable Optical Storage", 2/25/1999, pp. 1-4, obtained from
http://web.archive.org/web/20000510215932/www.osta.org/html/benefits.ht
ml).

ISSUES
Has Appellant shown error in the Examiner's initial showing of
anticipation? Has Appellant shown error in the Examiner's initial showing
of obviousness?

PRINCIPLES OF LAW
35 U.S.C. § 102
"[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . ." In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir.
1984)). "[A]bsence from the reference of any claimed element negates
anticipation." Kloster Speedsteel AB v. Crucible, Inc.,793 F.2d 1565, 1571
(Fed. Cir. 1986).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable
over the prior art under 35 U.S.C. § 102 begins with a determination of the
scope of the claim. We determine the scope of the claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction in light of the specification as
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it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly
interpreted claim must then be compared with the prior art.
Appellant has the opportunity on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).

35 U.S.C. § 103(a)
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art," Id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. KSR, 127 S. Ct. at 1739 (citing Graham v. John
Deere Co., 383 U.S. 1, 12 (1966)). The Court reaffirmed principles based
on its precedent that "[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results." Id. The operative question in this "functional
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approach" is thus "whether the improvement is more than the predictable use
of prior art elements according to their established functions." Id. at 1740.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 127 S. Ct. 1727,
1739 (2007)). The Federal Circuit relied in part on the fact that Leapfrog
had presented no evidence that the inclusion of a reader in the combined
device was “uniquely challenging or difficult for one of ordinary skill in the
art” or “represented an unobvious step over the prior art." Id. at 1162 (citing
KSR, 127 S. Ct. at 1740-41).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

ANALYSIS
With respect to independent claim 1, we agree with the Examiner's
claim interpretation at page 25 of the Answer wherein the Examiner notes
that the plain language of "non-network connected communications
channel" is an "oxymoron." Here, we note that a network may be as broad
as the interconnection of two computers(servers). Therefore, Appellant’s
non-network channel appears to be self-contradictory wherein the two
servers connected necessarily define a network. Thus, we will broadly, but
reasonably interpret the claimed invention. We note the claim does not
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recite any specific context for the first processing resource or the second
processing resource beyond a web server and back end server coupled and
that there is a "non-network connected communications channel."
Here, the Examiner has relied upon the teachings of Figure 2 and
Figure 3 of Raanan to teach a client 12 request to a filter 14 which would be
the first processing resource as a Web server coupleable to an open
communication network and a second processing backend server 10. The
security filter 14 is shown in Figure 3 to be made up of two separate and
distinct processing entities an external robot 26 and an internal robot 24
coupled together via a "dedicated secure communication bus 28." (Answer
4 and 25-26). Therefore, the external robot 26 is coupled both to the
backend server 10 and a secure channel 28.
Interpreting the claimed “non-network communications channel” in
light of Appellant’s disclosure, we note that pages 15-16 of Appellant’s
Specification describes Figure 3 wherein channel 50 is identified as a
dedicated communications channel … [p]referably, communications
channel 50 is a non-network connected communications channel. In
the present example, the dedicated communications channel is a serial
line, but may be a parallel connection. The communications channel
50 may comprise a twisted pair, optical fibre or wireless link, for
example, and other suitable communications channels may be
provided.

Additionally, Appellant described communications channel 58 as "a private
or dedicated . . . channel[s],... may be any suitable form of communications
channel, such as described above in relation to communications channel 50."
(Spec., 16, ll. 24-27). Additionally, Appellant’s Figure 11 discloses a "serial
link 50" at page 30, line 12, of the Specification. Therefore, we find that
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Appellant has not identified a specific definition in the Specification for the
claim terminology "non-network connected communications channel."
Appellant argues at pages 2-5 of the Reply Brief that there are
structural differences between the claimed subject matter and the cited
reference to Raanan. Appellant argues that the gateway 14/14a of Raanan is
not a server as defined in McGraw-Hill dictionary since a gateway is defined
in the McGraw-Hill dictionary as a "point of entry and exit ...." Here, we
disagree with Appellant’s narrow interpretation of the teachings of Raanan.
At pages 6-7 of the Reply Brief, Appellant identifies that Raanan identifies
US Patent to Reshef (6,321,337), and that Reshef also does not disclose at
least one of the servers required by independent claim 1. We disagree with
Appellant. We find that at column 13 of the Reshef reference teaches that
the outgoing communications from the internal robot 24 are discussed, and
Reshef identifies that Web server 13 can also be called a "gateway" in ll. 37-
38 and relaying the data to the "gateway (web-server)" is discussed at l. 38.
Therefore, Appellant’s narrow reading of the teachings of Raanan is not
persuasive of error in the Examiner's initial showing of anticipation.
Furthermore, Appellant has not identified any express definitions in
Appellant's originally filed Specification with which to interpret the present
claimed invention. Therefore, we give these terms of the claimed invention
their ordinary and customary meaning. Here, we find the Examiner's
interpretation to be reasonable in light of the broad teachings in Appellant's
Specification. Therefore, we find that Appellant has not shown error in the
Examiner's interpretation of the teachings of Raanan.
Furthermore, we find that many structural elements in a processor-
based communication system may be given different labels for different
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functions in the various transmission, reception, and routing steps depending
on the specific function being carried out at a specific point in time.
Therefore, we find the Examiner’s interpretation of the teachings of Raanan
to be reasonable. Here, we find no specific field of use or specific
functionality recited in the language of independent claim 1 to put the claim
into a specific context rather than the generalized "data processing system"
of independent claim 1. Therefore, we find Appellant's argument to be
unpersuasive of error in the Examiner's initial showing of anticipation.
Appellant’s second contention is whether Raanan discloses "said first
processing resource and said second processing resource being configured to
establish a communications relationship between them through a non-
network connected communication channel." (App. Br. 7-12). While
Appellant does not admit that the "dedicated, secure communication bus 28"
of Raanan is "a non-network connected communication channel," Appellant
relies upon the above discussed distinction with the first and second
processing resources being servers. (Reply Br. 7-9). As discussed above,
we find Appellant's argument unpersuasive with regard to the first and
second processing resources being servers since we find the Gateway of
Raanan to be a "server," as claimed.
At pages 9-11 of the Reply Brief, Appellant attempts to differentiate
between the teachings of Raanan and independent claim 1 with regards to
protocols. We do not find Appellant's distinctions to be relevant to the
claimed invention since no specific network-protocol-based limitations are
expressly recited in the language of independent claim 1. Therefore,
Appellant's arguments to unclaimed subject matter are not persuasive of
error in the Examiner's initial showing of anticipation.
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With respect to representative dependent claim 108, Appellant argues
that Appellant cannot find in Raanan disclosure of the subject matter in
claim 108. (App. Br. 14). The Examiner clarifies that the command is the
name of the procedure performed by the application/program. Therefore, we
find Appellant's argument does not to show error in the Examiner's initial
showing of anticipation.
With respect to representative dependent claim 109, Appellant argues
that there does not appear to be any reply message in Raanan. The Examiner
maintains that the combination of rejections in parent claim 102 with the
discussion with regards to dependent claim 109 at pages 27-28 of the
Answer teaches that if a request is allowable, the filter module 14 passes the
request along to the server, showing that the instructions satisfied the
predetermined criterion. We agree with the Examiner's interpretation and
find Appellant’s argument unpersuasive of error in the Examiner's initial
showing of anticipation.
With respect to dependent claim 158, Appellant argues that the cited
portions of Raanan does not disclose including sensitive information in the
message. (App. Br. 17-18). At page 28 of the Answer, the Examiner
maintains that "any data sent from a client can be considered sensitive." We
agree with the Examiner's line of reasoning and find that the offer definition
for sensitive information in the Specification on page 8 to be merely
exemplary and not a restrictive definition. Therefore, we find Appellant's
argument to be unpersuasive of error in the Examiner's initial showing of
anticipation, and we will sustain the rejection of dependent claim 158.
With respect to representative dependent claim 183, Appellant argues
that Appellant can find no disclosure in case that of a command code that
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allows commands to be transmitted from the second processing resource to
the first processing resource. (App. Br. 18). The Examiner maintains that
column 3 of Raanan teaches parsing messages to identify commands, fields,
or other user selectable options contained in the message. The Examiner
maintains that this teaches that the gateway receives commands from the
server. We agree with the Examiner's interpretation and further find that the
singular mode is merely a label without further functionality or multiple
modes being recited. Therefore, we agree with the Examiner's interpretation
and find Appellant’s argument unpersuasive of error in the Examiner's initial
showing of anticipation, and we will sustain the rejection of representative
dependent claim 183 and dependent claim 186 grouped therewith by
Appellant.
With respect to dependent claim 106 (Issue B), Appellant argues that
there is no reason in Raanan for server 10 to send a failure message from
server 10 to the protocol extraction module 18 since protocol extraction
module 18 intercepts those messages. (App. Br. 19-20). Here, Appellant
merely argues the claim language with respect to Raanan alone. Here, the
rejection is over the combination and not merely Raanan alone. Therefore,
we do not find Appellant’s argument persuasive of the error in the
combination of Raanan and Piccioni.
At pages 11-12 of the Reply Brief, Appellant contends, with respect to
independent (sic, dependent) claim 106, that the teachings of Piccioni with
respect to a failure message when a subscriber has no access to a requested
page does not teach or suggest the claimed transmission of an "instruction
fail message to the first processing resource...." We disagree with Appellant,
and find that the teaching of providing a failure notice with respect to any
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action would have fairly suggested a failure notice of the instructions as
taught in by Raanan. Therefore, we sustain the rejection of representative
claim 106 and claims 136 and 145 group therewith by Appellant.
With respect to representative dependent claim 107 (Issue C),
Appellant argues that the Examiner has reversed the application of the prior
art teachings to the claimed intention from independent claim 1. (App. Br.
20-22). The Examiner, at pages 30-31 of the Answer, clarifies that the
application of the prior art has not been reversed and that the gateway would
include the database of allowable functionality. We agree with the
application and clarification of the prior art. Therefore, we do not find
Appellant's argument persuasive of error in the Examiner's initial showing of
obviousness of representative claim 107 and claim 146 grouped therewith by
Appellant.
With respect to dependent claim 147, Appellant merely reiterates the
language of claims 146 and 147, and again asserts the Examiner has reversed
the application of the prior art from claim 1. (App. Br. 22-23). As discussed
above, we do not find Appellant’s argument persuasive of the error in the
Examiner's initial showing of obviousness.
With respect to representative claim 110 (Issue D), Appellant argues
that Raanan does not teach a queue and that there is no motivation to
combine the teachings of Willmann with Raanan. We disagree with
Appellant, and find that the Examiner has set forth a reasoned motivation
statement at page 13 of the Answer. Appellant’s assertion that there is no
motivation does not show error in the Examiner's stated motivation and does
not show error in the initial showing of obviousness. Therefore, we will
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sustain the rejection of representative dependent claim 110 and those claims
grouped therewith by Appellant.
With respect to representative dependent claim 113, Appellant argues
that Appellant's Specification discloses an "action code" at pages 8 and 20
and that the priority of Willmann is not an "action code." We disagree with
Appellant's interpretation and find that the cited portions of the Specification
are not expressed definitions of the claim terminology. Therefore, we find
Appellant’s argument unpersuasive of error in the Examiner's initial
showing of obviousness. Therefore, we sustain the rejection of
representative claim 113 and those claims grouped therewith by Appellant.
With respect to representative dependent claim 114, Appellant relies
upon the same argument as advanced with respect to claims 110 and 113,
which we found unpersuasive of error. Therefore, we sustain the rejection
of dependent claim 114 and dependent claim 129 grouped therewith by
Appellant.
With respect to representative claim 117, Appellant, again, looks to
rely upon the Specification to interpret "sensitive information" (App. Br. 25-
26), but again, we do not find that the Specification defines "sensitive
information." Therefore, Appellant's reliance thereon is unpersuasive of
error in the Examiner's initial showing of obviousness. Therefore, we
sustain the rejection of dependent claim 117 and dependent claims grouped
therewith by Appellant.
With respect to dependent claim 131, Appellant argues that Willmann
deletes the entire packet and that there is no disclosure or implication to
discard the sensitive information by "remov[ing] at least that part of said
communication comprising said sensitive information from said first
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processing resource." (App. Br. 26-27). We disagree with Appellant and
find that the open language of dependent claim 131 is met by the deletion of
the packet since the "at least..." limitation has been met. Therefore,
Appellant's reliance thereon is unpersuasive of error in the Examiner's initial
showing of obviousness. Therefore, we sustain the rejection of dependent
claim 131.
With respect to representative claim 160 (Issue E), Appellant relies
upon prior arguments which were found unpersuasive and Appellant's argue
that the RFC791 reference is inapplicable to a processing resource to discard
sensitive information. Appellant provides no additional line of reasoning to
support the above contention. Therefore, Appellant's reliance thereon is
unpersuasive of error in the Examiner's initial showing of obviousness.
Therefore, we sustain the rejection of representative dependent claim 160
and dependent claims grouped therewith by Appellant.
With respect to representative dependent claim 178 (Issue F),
Appellant relies upon the arguments advanced with respect to independent
claims 175 and 180 which we found unpersuasive of error in the Examiner's
initial showing.
CONCLUSION
For the aforementioned reasons, Appellant has not shown error in the
Examiner's initial showing of anticipation and obviousness.

ORDER
We affirm the anticipation rejection of claims 1, 102-105, 108, 109,
111, 125, 127, 132-135, 137-144, 148, 149, 151, 158, 175-177, 180, 181,
183, and 186 and the obviousness rejections of claims 106, 107, 110, 112-
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119, 126, 128-131, 136, 145-147, 150, 152-157, 159-161, 178, 182, 184, and
185.
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

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