NICIRA, INC.

Patent Trials and Appeals Board

Jul 27, 2020

15050478 - (D) (P.T.A.B. Jul. 27, 2020)

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.
15/050,478 02/23/2016 Donghai HAN N225.02 1146
109858 7590 07/27/2020
ADELI LLP
11859 Wilshire Blvd.
Suite 408
Los Angeles, CA 90025
EXAMINER
CHAMPAKESAN, BADRI NARAYANAN
ART UNIT PAPER NUMBER
2438
NOTIFICATION DATE DELIVERY MODE
07/27/2020 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):
ipadmin@vmware.com
mail@adelillp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DONGHAI HAN
____________________

Appeal 2019-002910
Application 15/050,478
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, JASON V. MORGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a final
rejection of claims 1–21. Appeal Br. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.2

1 Appellant identifies VMware, Inc., and Nicira, Inc., as the real parties in
interest. Appeal Br. 2.
2 This appeal is related to appeal number 2019-003102 (application number
15/050,477). Appellant failed to identify this appeal as being related. See
Appeal Br. 2. The two applications are based on the same disclosures by the
Appeal 2019-002910
Application 15/050,478

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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
1. A method for a computing device to implement a distributed
firewall in a virtualized computing environment that includes the
computing device, a source host and a destination host, the
method comprising:
[A.] the computing device retrieving a first firewall rule that is
applicable at the destination host to an ingress packet
destined for a destination virtualized computing instance
supported by the destination host, wherein the first firewall
rule is applicable at the destination host to drop the ingress
packet having a set of packet fields;
[B.] based on the first firewall rule, the computing device
generating a second firewall rule that is applicable at the
source host to an egress packet destined for the destination
virtualized computing instance, wherein the second firewall
rule is generated in addition to the first firewall rule, and
applicable at the source host to drop the egress packet having
the set of packet fields; and

same inventor. The rejected claims are similar. The arguments, although
directed to different prior art, are similar. The patent practitioner filing the
appeals is the same. The real parties in interest are the same. And the
Notice of Appeal and Appeal Brief filings in both applications fall within the
same three-month period. Appellant and Appellant’s counsel are reminded
of the duty to identify
all other prior . . . appeals . . . which satisfy all of the following
conditions: involve an application . . . owned by the appellant
or assignee, are known to appellant, the appellant’s legal
representative, or assignee, and may be related to, directly
affect . . . or have a bearing on the Board’s decision in the
pending appeal.
37 C.F.R. § 41.37(c)(1)(ii) (2018).
Appeal 2019-002910
Application 15/050,478

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[C.] the computing device instructing the source host to apply the
second firewall rule to, in response to the source host
detecting the egress packet having the set of packet fields,
drop the egress packet such that the egress packet is not sent
from the source host to the destination host.
REFERENCES3
The Examiner relies on the following references:
Name Reference Date
Basak US 9,621,516 B2 Apr. 11, 2017
Lee US 9,634,990 B2 Apr. 25, 2017
Arramreddy US 2017/0118173 A1 Apr. 27, 2017

REJECTIONS
The Examiner rejects claims 1–4, 7–11, 14–18, and 21 under
35 U.S.C. § 103 as being unpatentable over the combination of Lee and
Basak. Final Act. 3–19. We select claim 1 as the representative claim for
this rejection. The contentions discussed herein as to claim 1 are
determinative as to this rejection.
The Examiner rejects claims 5, 6, 12, 13, 19, and 20 under 35 U.S.C.
§ 103 as being unpatentable over the combination of Lee, Basak, and
Arramreddy. Final Act. 19–25. The contentions discussed herein as to
claim 1 are also determinative as to this rejection.
Therefore, except for our ultimate decision, we do not address claims
2–21 further herein.

3 All citations herein to the references are by reference to the first named
inventor/author only.
Appeal 2019-002910
Application 15/050,478

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OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Appellant’s contentions we discuss
are determinative as to the rejections on appeal. Therefore, Appellant’s
other contentions are not discussed in detail herein.
A.
In rejecting claim 1, the Examiner finds:
[T]he analogous art Basak teaches based on the first firewall rule,
the computing device generating a second firewall rule that is
applicable at the source host to an egress packet destined for the
destination virtualized computing instance.
Final Act. 5 (emphasis omitted).
B.
Appellant contends that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103 because:
The Office Action misinterpreted a limitation of the independent
claims and failed to address the actual limitation recited in the
claims. Specifically, the Office Action cites to references that
disclose converting a firewall policy into a firewall rule as
disclosing generating a second firewall rule from a first firewall
rule.
Appeal Br. 7.
[B]oth Lee and Basak are concerned with generating firewall
rules based on application profiles (Lee) or policy rules (Basak)
that are defined by attributes other than those used to apply the
rules to network traffic. Specifically, the policy rules of Fig. 4
include a policy that traffic from a source machine executing a
particular operating system to a particular application executing
on a destination machine should be denied (dropped). This
policy cannot be applied, without transformation, at a destination
Appeal 2019-002910
Application 15/050,478

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host to drop an ingress packet having a set of packet fields
because an ingress packet does not include, in a set of packet
fields, information about the operating system of its source or an
application executing on the destination machine.
Appeal Br. 11.
C.
The Examiner responds by determining:
Basak clearly discloses that “The set of firewall rules (that
includes first, second etc firewall rules) in Fig. 5 are generated
(in other words, derived) from the first firewall rules in Fig. 4.
Also, C2L53-56: The policy rules are transformed to firewall
rules that include machine identifiers of machines having
attributes from among the machine attributes that satisfy the
attribute dependent policy rules through either a push or a pull
process.
Ans. 4.
D.
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis[.]” In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id. We conclude the Examiner’s
analysis fails to meet this standard because the rejection does not adequately
explain the Examiner’s findings of fact.
Appeal 2019-002910
Application 15/050,478

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Particularly, we agree with Appellant that the language of claim 1
requires “based on [a] first firewall rule . . . generating a second firewall
rule,” and we disagree with the Examiner’s reasoning that “transforming
policy rules to firewall rules” as in Basak, without more, is sufficient to
show the argued claim limitation. We conclude, consistent with Appellant’s
arguments that there is insufficient articulated reasoning to support the
Examiner’s finding that Basak renders obvious the argued claim limitation.
Therefore, we conclude that there is insufficient articulated reasoning
to support the Examiner’s final conclusion that claim 1 would have been
obvious to one of ordinary skill in the art at the time of Appellant’s
invention.

CONCLUSION
Appellant has demonstrated the Examiner erred in rejecting claims 1–
21 as being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejections of claims 1–21 as being unpatentable under
35 U.S.C. § 103 are reversed.
Appeal 2019-002910
Application 15/050,478

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 7–11,
14–18, 21
103 Lee, Basak 1–4, 7–
11, 14–
18, 21
5, 6, 12, 13,
19, 20
103 Lee, Basak,
Arramreddy
5, 6, 12,
13, 19, 20
Overall
Outcome

1–21

REVERSED