Ex Parte Xie et al

Patent Trial and Appeal Board

Mar 16, 2017

13649079 (P.T.A.B. Mar. 16, 2017)

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.
13/649,079 10/10/2012 Michael Xie FORT-008100 3121
64128 7590
MICHAEL A DESANCTIS
HAMILTON DESANCTIS & CHA LLP
FINANCIAL PLAZA AT UNION SQUARE
225 UNION BOULEVARD, SUITE 150
LAKEWOOD, CO 80228
EXAMINER
KU, SHIUH-HUEI P
ART UNIT PAPER NUMBER
2128
NOTIFICATION DATE DELIVERY MODE
03/20/2017 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
docket @ hdciplaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL XIE and KAI XU
Appeal 2016-000187
Application 13/649,079
Technology Center 2100
Before CARL W. WHITEHEAD JR., JEREMY J. CURCURI and
NABEEL U. KHAN, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the Examiner’s Final Rejection of claims 1—
27 under 35 U.S.C. § 134(a). Appeal Brief 5—6. We have jurisdiction under
35 U.S.C. § 6(b)(2012).
We reverse.
Introduction
The invention is directed to “configuring a network security device
using a hand-held device so as to enable the network security device to be
remotely managed via a network to which it is connected.” Appeal Brief 8.
Appeal 2016-000187
Application 13/649,079
Illustrative Claim (Disputed limitations emphasized)
1. A method comprising:
receiving, by a mobile application running on a hand-held
computing device, default initial settings for a network security
device, the default initial settings representing settings that allow
the network security device to be remotely managed via a
network to which the network security device is coupled;
displaying, by the mobile application, the default initial
settings to a network administrator via a display of the hand-held
computing device;
receiving, by the mobile application, revisions to or
acceptance of the default initial settings;
causing, by the mobile application, the network security
device to be configured with the revised or accepted default
initial settings by delivering information regarding the revised
or accepted default initial settings to the network security device
via a management interface to which the hand-held computing
device is coupled via a connecting cable.
Rejections on Appeal
Claims 1, 4, 6—8, 10, 13, 15—17, 19, 22, and 24—26 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Touboul (US Patent
Application Publication Number 2009/0249438 Al; published October 1,
2009) and Pappas (US Patent Application Publication Number
2011/0302647 Al; published December 8, 2011). Final Rejection 13—26.
Claims 2, 3, 11, 12, 20, and 21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Touboul, Pappas and Yeap (US Patent Number
8,001,223 B2; issued August 16, 2011). Final Rejection 26—31.
Claims 5, 14, and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Touboul, Pappas and Dare (US Patent Application
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Appeal 2016-000187
Application 13/649,079
Publication Number 2012/0032945 Al; published February 9, 2012). Final
Rejection 31—35.
Claims 9, 18, and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Touboul, Pappas and Delker (US Patent Number
8,479,266 Bl; issued July 2, 2013). Final Rejection 35—37.
Claims 1—3, 6, 8—12, 15, 17—21, 24, 26, and 27 stand rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the Cisco 3750
Switch (shown in “Getting Started Guide” and “Software Configuration
Guide,”) and Tablet PCs (as seen in HP Compaq Tablet PC TCI 100). Final
Rejection 38—39.
Claims 4, 13, and 22 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over the Cisco 3750 Switch, HP Compaq Tablet PC
TCI 100 and Cisco’s “Support and Documentation” and “Software Upgrade
Procedure.” Final Rejection 40-41.
Claims 1,7, 10, 16, 19, and 25 stand rejected under pre-AIA 35
U.S.C. §103(a) as being unpatentable over the Cisco 3750 Switch and Shen
et al. (US Patent Application Publication Number 2009/0244598 Al;
published October 1, 2009). Final Rejection 41.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed March 8, 2015), the Answer (mailed May
12, 2014) and the Final Rejection (mailed September 30, 2014) for the
respective details. We have considered in this decision only those
arguments Appellants actually raised in the Briefs.
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Appeal 2016-000187
Application 13/649,079
Appellants argue Touboul is silent in regard to teaching or suggesting
that the mobile device 310 “receives settings that are used to configure a
network security device so as to allow the network security device to be
remotely managed via a network.” Appeal Brief 24—25. Appellants contend
that Touboul instead teaches a mobile security system 345 that can be
configured by a system administrator via a wizard to protect the mobile
device 310. Appeal Brief 24—25.
The Examiner finds that Touboul does not teach receiving by a mobile
application running on a hand held computing device default initial settings
for a network security device. Final Rejection 15. The Examiner finds that
Pappas addresses the deficiency of Touboul by teaching “a mobile
application running on a hand-held computing device [having] default initial
settings for a network security device.” Final Rejection 15.
Appellants argue that Pappas fails to disclose a mobile application
receiving default initial settings for a network security device because
Pappas’ mobile application is a time tracking application that is not
associated with the configuration of a network security device. Appeal Brief
26.
We find Appellants’ arguments persuasive. The Examiner cites bulk
portions of Pappas to support the finding of obviousness without specifically
indicating the teaching relied upon to address Touboul’s deficiency. The
Examiner cites to Pappas column 7, lines 50 to column 8, line 31 and Figure
3 to support the findings that Pappas addresses Touboul’s deficiency
however the bulk citations makes it difficult to ascertain the actual teachings
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Appeal 2016-000187
Application 13/649,079
in regard to the claimed invention.1 See Final Rejection 15. Further, in the
Answer, the Examiner finds Pappas discloses that “the present invention also
contemplates that the individual time attendance records created over the
course of a day could be wirelessly transmitted over a network or the like to
a central computer” and therefore “Pappas disclosure is directed towards
hand-held electronic device/software application/network.” Answer 5
(citing Pappas, column 8, lines 51—67); 7. We agree with the Examiner’s
findings that Pappas disclosure is directed to a hand held device, however it
is still not evident that Pappas discloses receiving default initial settings for a
network security device as claimed. We, therefore, find Appellants’
arguments persuasive because the Examiner has not satisfied the burden of
presenting a prima facie case of obviousness. We reverse the Examiner’s
rejection of independent claims 1,10, and 19, as well as dependent claims
1 37 C.F.R. § 1.104(c)(2) (In rejecting claims for want of novelty or for
obviousness, the examiner must cite the best references at his or her
command. When a reference is complex or shows or describes inventions
other than that claimed by the applicant, the particular part relied on must be
designated as nearly as practicable. The pertinence of each reference, if not
apparent, must be clearly explained and each rejected claim specified.) The
procedural burden of establishing a prima facie case is carried when the
rejection satisfies 35 U.S.C. § 132, in “notifying] the applicant. . . [by]
stating the reasons for [its] rejection, or objection or requirement, together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.” 35 U.S.C. §
132. This section “‘is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.’” In re Jung 637 F.3d 1356, 1362 (Fed. Cir. 2011) citing
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
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Appeal 2016-000187
Application 13/649,079
2—9, 11—18 and 20—27 because Yeap, Dare and Delker fail to address the
deficiency of the Touboul/Pappas combination.
Appellants also argue that the Examiner’s obviousness rejection based
upon the Cisco 3750Switch and HP TC 1100 references is improper. Appeal
Brief 3 0—31. The Examiner finds:
A person of ordinary skill in the art at the time of invention would
have configured the commonly known, sold, and used Cisco
3750 network switch with an HP Compaq Tablet by utilizing the
tablet and the USB port therein to connect to the switch. It would
have been obvious to one of ordinary skill in the art at the time
of invention to use the HP Compaq Tablet to configure the switch
when the switch is deployed in a rack in which it is inconvenient
to physically co-locate a desktop computer; thereby taking
advantage of the compact form factor of the tablet.
Final Rejection 38—39.
The Appellants contend:
Since the initial configuration of the Cisco switch is conducted
through a PC that is connected to the Cisco switch with an
Ethernet cable, contrary to the Examiner’s assertion, there is no
teaching or suggestion in Cisco 3750 Switch that default initial
settings should be conducted on a tablet PC that is connected to
the Cisco switch through a USB cable, for example.
Appeal Brief 31.
We find Appellants’ arguments persuasive. The Examiner fails to
indicate the specific teachings of cited references that teaches the claimed
limitations. The Examiner finds, “It should be apparent that every element of
claim 1 besides those mentioned above is an inherent feature of configuring
a switch.” Final Rejection 38. It is not evident how the inherent features of
a switch teaches claim 1 limitations or the limitations of independent claims
10 and 19. We reverse the Examiner’s obviousness rejections of
independent claims 1,10 and 19, as well as, dependent claims 2—9, 11—18
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Appeal 2016-000187
Application 13/649,079
and 20-27 because the Cisco’s Support and Documentation and Software
Upgrade Procedure, as well as, the Using a Customized HTTP Interface for
Router Management references fail to address the deficiency of the Cisco
3750Switch/HP TC 1100 combination.
DECISION
The Examiner’s obviousness rejections of claims 1—27 are reversed.
REVERSED
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