Ex Parte Wu

Patent Trial and Appeal Board

Mar 22, 2018

13945104 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/945,104 07/18/2013
64128 7590 03/26/2018
MICHAEL A DESANCTIS
HAMILTON DESANCTIS & CHA LLP
12640 W. Cedar Drive, Suite 1
LAKEWOOD, CO 80228
FIRST NAMED INVENTOR
JianfengWu
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.
FORT-013000 1043
EXAMINER
SALEHI, HELAI
ART UNIT PAPER NUMBER
2433
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
mdesanctis@hdciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIANFENG WU
Appeal2017-008606
Application 13/945, 104
Technology Center 2400
Before ERIC B. CHEN, MICHAEL J. STRAUSS, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-34. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).
1 According to Appellant, the real party in interest is Fortinet, Inc. (Appeal
Br. 3.)
Appeal2017-008606
Application 13/945,104
THE INVENTION
The claims are directed to a remote wireless adapter. Spec., Title.
Claims 1 and 4, reproduced below, are illustrative of the claimed subject
matter:
1 A method comprising:
setting up a tunnel between a remote wireless adapter and
a network security device;
setting up a wide area network (WAN) connection, by the
remote wireless adapter, through a wireless modem associated
with the remote wireless adapter;
receiving, by the remote wireless adapter, via the tunnel
an outgoing data packet sent by the network security device;
writing, by the remote wireless adapter, the outgoing data
packet to the WAN connection;
receiving, by the remote wireless adapter, an incoming
data packet through the WAN connection; and
forwarding, by the remote wireless adapter, the incoming
data packet to the network security device through the tunnel.
4. The method of claim 1, wherein the tunnel comprises a
Control And Provisioning of Wireless Access Points (CAPW
AP) communication tunnel.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mikkelsen US 2008/0270186 Al Oct. 30, 2008
Sullivan US 2012/0151098 Al June 14, 2012
Wang US 2012/0275303 Al Nov. 1, 2012
Applicant's Admitted Prior Art, Fig. 1, Spec. i-fi-1 5---6 ("AAP A")
2
Appeal2017-008606
Application 13/945,104
REJECTIONS
The Examiner made the following rejections:
Claims 1, 7-9, 13-15, 17, 18, 24--26, 30-32, and 34 stand rejected
under 35 U.S.C. § 103 as being unpatentable over AAPA and Sullivan.
Final Act. 4--11.
Claims 2-5, 10-12, 19-22, and 27-29 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over AAPA, Sullivan, and Wang. Final Act.
11-17.
Claims 6, 16, 23, and 33 stand rejected under 35 U.S.C. § 103 as
being unpatentable over AAPA, Sullivan, and Mikkelsen. Final Act. 17-19.
APPELLANT'S CONTENTIONS
1. Appellant contends AAPA discloses "[ n ]etwork security device 120 and
remote wireless adapter 110 are connected through a cable", not using a
tunnel as required by the independent claims. App. Br. 12-16 (quoting
Spec. if 5).
2. Appellant contends the Examiner erred in combining AAPA, Sullivan and
Wang in rejecting dependent claims 2-5, 10-12, 19-22, and 27-29
because "[t]here is no teaching or reasonable suggestion in Wang that a
tunnel should be established between a remote wireless adapter and a
network security device as expressly required by independent claim 1."
App. Br. 17.
ANALYSIS
We agree with Appellant that the Examiner erred in relying on AAPA
for teaching or suggesting the disputed tunnel of claim 1. However,
3
Appeal2017-008606
Application 13/945,104
Appellant's argument in connection with dependent claims 2-5, 10-12, 19-
22, and 27-29 is not persuasive of Examiner error. In particular, we find
that Wang teaches or suggests establishing a CAPWAP communication
tunnel such that the combination of AAPA, Sullivan and Wang teaches or
suggests the disputed limitations of claim 4, and, thereby, the disputed
generic tunnel limitation of base claim 1. We highlight the following for
emphasis.
The Examiner finds AAPA configuration depicted in Figure 1 and
configurations according to the invention depicted in the subsequent Figures
"have same layout and same components that perform the same function of
forwarding data packets between Network Security Device and Remote
Wireless Adapter." Ans. 19. The Examiner reasons, although tunneling is
not specifically disclosed in haec verba, because AAPA has the same
components and layout as the invention, one skilled in the art would have
understood AAPA "has to do the same thing/functionality [as the invention]
and hence tunneling." Ans. 20.
Appellant argues, not only does AAPA fail to disclose a tunnel but, by
disclosing use of a cable connection between network security device 120
and remote wireless adapter 110 and thereby providing physical signal
security, "no encryption (and therefore no tunneling) is needed." App. Br.
14. According to Appellant, this is because "use of a tunnel (or 'tunneling')
allows for the secure movement of data from one network to another" which
is unnecessary when a physical cable connection is used with no intervening
devices. Id.
Although we disagree connectivity that does not require encryption
also means tunneling is also not needed, we agree with Appellant's
4
Appeal2017-008606
Application 13/945,104
conclusion that AAPA does not teach or suggest tunneling. One definition
provides:
tunneling n. A method of transmission over intemetworks
based on differing protocols. In tunneling, a packet based on
one protocol is wrapped, or encapsulated, in a second packet
based on whatever differing protocol is needed in order for it to
travel over an intermediary network. In effect, the second
wrapper "insulates" the original packet and creates the illusion
of a tunnel through which the wrapped packet travels across the
intermediary network. In real-life terms, tunneling is
comparable to "encapsulating" a present (the original packet) in
a box (the secondary wrapper) for delivery through the postal
system.
The Microsoft Press Computer Dictionary, Fifth Edition, 2002, Microsoft
Press, page 532. ISBN 0-7356-1495-4. This definition is consistent with
that proffered by Appellant (App. Br. 14, fn. 30). Both definitions require
wrapping or encapsulating packets in different protocols (although neither
definition requires encryption of the data transported as argued). Thus, in
the absence of a disclosure of tunneling or the equivalent data or packet
encapsulation technique, we agree AAPA fails to teach or suggest the
disputed step of setting up a tunnel between a remote wireless adapter and a
network security device. Accordingly, we do not sustain the Examiner's
rejection of claims 1, 7-9, 13-15, 17, 18, 24---6, 30-32, and 34 under 35
U.S.C. § 103 as over AAPA and Sullivan or the rejection of claims 6, 16, 23,
and 33 over AAP A, Sullivan, and Mikkelsen.
In connection with claims 2-5, 10-12, 19-22, and 27-29, the
Examiner relies on Wang's terminal device that initiates an access request
through a wireless network adapter to the wireless termination point (WTP)
establishing a CAPWAP control communications tunnel for teaching or
5
Appeal2017-008606
Application 13/945,104
suggesting the CAPWAP communications tunnel of claim 4. Final Act. 15.
Appellant argues "[ t ]here is no teaching or reasonable suggestion in Wang
that a tunnel should be established between a remote wireless adapter and a
network security device as expressly required by independent claim 1."
App. Br. 17.
Appellant's argument does not persuade us the rejection of claims 2-
5, 10-12, 19-22, and 27-29 is improper. The alleged tunnel deficiency in
connection with the argued dependent claims, i.e., that AAPA fails to
disclose setting up a tunnel, is cured by the application of Wang for teaching
a CAPWAP control tunnel. Appellant's argument that Wang fails to disclose
establishing a tunnel specifically between a remote wireless adapter and a
network security device fails to consider the combination of AAP A and
Wang and, instead, attacks the individual references. ''Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references." In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller,
642 F.2d 413, 425 (CCPA 1981)).
Figure 1 depicting AAPA discloses remote wireless adapter 110
connected to network security device 120. See also Final Act. 4, Ans. 19,
and App. Br. Wang discloses use of a CAPWAP control tunnel. E.g., Wang
Abstract. Thus the combination of AAPA and Wang teaches or suggests the
disputed tunnel between a remote wireless adapter and a network security
device. It would have been obvious to one skilled in the art at the time of
the invention to incorporate Wang's CAPWAP communication tunnel
between AAPA's remote wireless adapter and network security device for
the reasons articulated by the Examiner, i.e., for "allowing the system of
6
Appeal2017-008606
Application 13/945,104
Applicant['s] admitted prior art and Sullivan to process large volume of data
when a large number of terminals access the Internet therefore maximizing
the connection of networks thru the Internet." Final Act. 15 (citing Wang
ii 21 ).
For the reasons discussed above, we affirm the rejection of claims 2-
5, 10-12, 19-22, and 27-29 under 35 U.S.C. § 103 as being unpatentable
over AAPA, Sullivan, and Wang. However, because we apply Wang rather
than AAPA for teaching the disputed tunnel, our reasoning differs from that
of the Examiner. Therefore, to afford Appellant a full opportunity to
respond, we designate this rejection as based on a new ground pursuant to
our authority under 37 C.F.R. § 41.50(b ).
NEW GROUND OF REJECTION
In addition to designating the rejection of claims 2-5, 10-12, 19-22,
and 27-29 as based on a new ground, we further reject claims 1, 6-9, 13-18,
24--26, and 30-34 under 35 U.S.C. § 103 based on a new ground pursuant to
our authority under 37 C.F.R. § 41.50(b ). In particular, although we agree
with Appellant that AAP A fails to teach setting up a tunnel between a
remote wireless adapter and a network security device, this deficiency is
cured by Wang for the reasons discussed above. Thus, for the reasons set
forth by the Examiner at pages 4--11 of the Final Action, the combination of
AAPA and Sullivan further in view of Wang's CAPWAP control tunnel, as
applied above, teaches or suggests the subject matter of claims 1, 7-9, 13-
15, 17, 18, 24--26, 30-32, and 34, thereby rendering these claims obvious
under 35 U.S.C. § 103. Similarly, for the reasons set forth by the Examiner
at pages 17-19 of the Final Action, the combination of AAPA, Sullivan, and
7
Appeal2017-008606
Application 13/945,104
Mikkelsen further in view of Wang's CAPW AP control tunnel, as applied
above, teaches or suggests the subject matter of claims 6, 16, 23, and 33
thereby rendering these claims obvious under 35 U.S.C. § 103.
DECISION
We reverse the Examiner's decision to reject claims 1, 6-9, 13-18,
24--26, and 30-34 under 35 U.S.C. § 103.
We affirm the Examiner's decision to reject claims 2-5, 10-12, 19-
22, and 27-29 under 35 U.S.C. § 103(a) and designate our affirmance as
based on a new ground pursuant to 37 C.F.R. § 41.50(b).
Claims 1, 7-9, 13-15, 17, 18, 24--26, 30-32, and 34 are newly
rejected under 35 U.S.C. § 103 as being unpatentable over AAPA, Wang,
and Sullivan.
Claims 6, 16, 23, and 33 are newly rejected under 35 U.S.C. § 103 as
being unpatentable over AAPA, Wang, Sullivan, and Mikkelsen.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, Appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground[s] of rejection to avoid
termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground[s] of rejection [are]
8
Appeal2017-008606
Application 13/945,104
binding upon the Examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground[ s] of rejection
designated in [this] decision. Should the examiner reject the
claims, [A ]ppellant may again appeal to the Board pursuant to
this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
9