Ex Parte Brabenac

Board of Patent Appeals and Interferences

Jun 30, 2009

09746205 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES L. BRABENAC
____________

Appeal 2008-0029421
Application 09/746,205
Technology Center 2100
____________

Decided:2 June 30, 2009
____________

Before JEAN R. HOMERE, JOHN A. JEFFERY, and
ST. JOHN COURTENAY III, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed December 12, 2000. The real party in interest is Intel Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 2, 5, 9, 12, 13, and 15 through 38. Claims 1, 3, 4, 6 through 8, 10,
11, and 14 have been cancelled. We have jurisdiction under 35 U.S.C. §
6(b).
We affirm.
Appellant’s Invention
Appellant invented a method and apparatus for filtering network
packets based on associated ports. (Spec. 1: 4-5). As depicted in Figure 2,
upon receiving at a port filter (276) an incoming packet including a port
number, the port filter (276) determines whether the port number is
associated with an application (260) on a power-managed host computer
(110). If such an association exists, the port filter (276) sends a wake up
message to the host computer (110). Otherwise, it discards the packet.
(Spec. 8: 6-14, 11:16-23.)

Illustrative Claims
Independent claims 2 and 33 further illustrate the invention. They
read as follows:
2. A method, comprising:
receiving a packet at a port filter, wherein the packet comprises
a port number;
determining whether there is a host application associated with
the port number;
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when there is not a host application associated with the port
number, discarding the packet; and
when there is a host application assigned to the port number,
sending a wake-up message to a power-managed host computer that is
operable in either a power-managed state or an operational state.

33. An apparatus, comprising:
a first stage filter to:
receive a packet;
interrogate the packet as to whether the packet includes
data that matches selected data of a host computer; and
reject the packet when the packet does not include data
that matches selected data of the host computer;
a second stage filter to:
receive the packet comprising a port number;
determine whether there is a host application associated
with the port number; and
reject the packet when there is not a host application
associated with the port number,
wherein the apparatus further is to present the packet to
the host computer when there is a host application associated
with the port number and when the packet includes data that
matches the selected data of the host computer.

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Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
McKaughan 5,802,305 Sep. 1, 1998
Graham-Cumming 6,182,146 B1 Jan. 30, 2001
Novoa 6,493,824 B1 Dec. 10, 2002

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 2, 5, 9, 12, 13, and 15 through 30 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Graham-
Cumming and McKaughan.
2. Claims 31 through 38 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Novoa and Graham-
Cumming.

Appellant’s Contentions
1. Appellant contends that the Examiner erred in concluding that
the combination of Graham-Cumming and McKaughan renders independent
claim 2 unpatentable. (App. Br. 10-13.) In particular, Appellant argues that
the Examiner failed to provide a sufficient rationale, as well as a reasonable
expectation of success for the proffered combination to properly establish
the prima facie case of obviousness. (Id.) According to Appellant, because
the Graham-Cumming reference allegedly continues to attempt to identify an
application for a packet when no associated application has been found,
modifying the reference to pass the packet to a default application would
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defeat the purpose of the reference. (App. Br. 11-12.) Further, Appellant
contends that there is no evidence of record to substantiate that Graham-
Cumming’s host computer can operate in McKaughan’s low power mode to
analyze packets. (App. Br. 13.)
2. Appellant contends that the Examiner erred in concluding that
the combination of Novoa and Graham-Cumming renders independent claim
33 unpatentable. (App. Br. 14-17.) In particular, Appellant argues that the
Examiner failed to provide a sufficient rationale for the proffered
combination to properly establish the prima facie case of obviousness. (Id.)
According to Appellant, there is no evidence of record to indicate how
Graham-Cumming’s dynamic ports are be used for security purposes since
the reference does not disclose the asserted equivalency between the
dynamic mode and a filter. (App. Br. 14.) Further, Appellant argues that
there is no suggestion of record to substantiate that Novoa could be modified
with Graham-Cumming’s teachings, as proposed by the Examiner, to
improve the accuracy of traffic detection, accounting, and reporting. (App.
Br. 15-16.)

Examiner’s Findings and Conclusions
1. The Examiner avers that the disclosures of Graham-Cumming
and McKaughan are properly combined to render independent claim 2
unpatentable. In particular, the Examiner finds that McKaughan’s disclosure
of operating a computer system in a low power mode when not receiving
relevant packets, and waking up the computer upon receiving a relevant
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packet would result in conserving energy in any computer system including
Graham-Cumming’s. (Ans. 12-13.)
2. The Examiner finds that the disclosures of Novoa and Graham-
Cumming are properly combined to render independent claim 33
unpatentable. In particular, the Examiner finds that Graham-Cumming’s
disclosure of dynamically mapping application and ports to provide security
would improve the accuracy of traffic detection, accounting and reporting in
Novoa’s sytem. (Ans. 13-14.)

II. ISSUES
1. Has Appellant shown that the Examiner erred in finding
sufficient rationale to combine Graham-Cumming and McKaughan to render
independent claim 2 unpatentable?
2. Has Appellant shown that the Examiner erred in finding
sufficient rationale to combine Novoa and Graham-Cumming to render
independent claim 33 unpatentable?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Graham-Cumming
1a. Graham-Cumming discloses a system for dynamically
determining network applications associated with ports that received data
packets. As shown in Figure 3, upon receiving a raw data packet including a
source port, a destination port, a packet header and a payload, a packet
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analysis module (100) forwards the packet to an application identifier
module (102), which identifies an application associated with the received
packet. (Col. 5, l. 59- col. 6, l. 21.)
1b. The application identifier module then processes the packet
until it identifies an appropriate application for handling the packet. (Col. 6,
ll. 62-65.) If it is unable to identify a suitable application, the application
identifier module forwards the packet to the application port mapping table
(104) to invoke an application for processing the packet. If, however, the
application port mapping table is also unable to locate a suitable application,
the packet is discarded or assigned a default application for unknown
packets. (Col. 7, ll. 46-54.)
1c. Graham-Cumming further discloses that dynamic ports are
frequently used for improved resource sharing, security to dynamically
handle network traffic. (Col. 1, ll. 60-63.)
McKaughan
2a. McKaughan discloses a system for remotely waking up a
sleeping computer from a power down state upon finding a match between
an incoming packet identifier and one of the packet identifiers stored in a
network interface card. (Col. 4, ll. 29-43.)
2b. Mckaughan discloses that operating the computer system in a
power down state offers the benefit of conserving energy in network
computing. (Col. 3, ll. 4-12.)
Novoa
3a. Novoa discloses a secure system for remotely waking up a
sleeping computer from a power down state upon finding (1) a match
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between the destination address of an incoming packet and that stored on a
list in a network interface card, and (2) a wake up pattern therein. (Col. 4, ll.
48-59.)
3b. The wake up pattern contains a security field, including an
encrypted value, which is decrypted and examined to validate the wake up
pattern. If the decrypted value matches an expected value, the wake up
value is deemed to be valid, and a signal is issued to awaken the computer.
Otherwise, the packet is discarded. (Col. 8, ll. 21-41.)

IV. PRINCIPLES OF LAW
Burden on Appeal
Appellant has the burden 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) (“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).

Obviousness
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007); Graham v. John Deere Co., 383 U.S. 1, 3 (1996).
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
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the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR, 550 U.S. at 406.
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham, 383 U.S. at 17-18. See also KSR, 550 U.S. at 407
(“While the sequence of these questions might be reordered in any particular
case, the [Graham] factors continue to define the inquiry that controls.”).
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,” and discussed circumstances in which a patent might be determined to
be obvious without an explicit application of the teaching, suggestion,
motivation test. KSR, 550 U.S. at 415-16.
In particular, the Supreme Court emphasized that “the principles laid
down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11
How. 248” (id. at 415 (citing Graham, 383 U.S. at 12)); and 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. at 416. The Court explained:
When a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same
field or a different one. If a person of ordinary skill can implement a
predictable variation, §103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
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improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.

Id. at 417. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
If the claimed subject matter cannot be fairly characterized as
involving a simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for
improvement, a holding of obviousness can be based on a showing that
“there was an apparent reason to combine the known elements in the fashion
claimed.” Id. at 418. Such a showing requires the Examiner provide “some
articulated reasoning” in the rejection, which possesses a “rational
underpinning to support the legal conclusion of obviousness.” Id. (quoting In
re Kahn, 441 F.3d at 988). The Supreme Court, citing Kahn, 441 F.3d at
988, stated that “rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR, 550 U.S. at 418. However, “the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id.
It is a basic principle that the question under 35 U.S.C. § 103 is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
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made. See Merck & Co. Inc., v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989).
Nor is it necessary that the suggestion or motivation be found within
the four corners of the references themselves. “The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference . . . . Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981). “The obviousness analysis cannot be confined by the formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of . . . the explicit content of issued
patents.” KSR, 550 U.S. at 419.
Consistent with KSR, 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). 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.

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V. CLAIMS GROUPING
Appellant argues claims 2, 5, 9, 12, 13, 15-30 as a single group.
Similarly, Appellant argues claims 31-38 as a single group. In accordance
with 37 C.F.R. § 41.37 (c)(1)(viii), claims 2, 5, 9, 12, 13, 15-30 stand and
fall with independent claim 2, and claims 31-38 stand or fall with
independent claim 33.

VI. ANALYSIS
Claim 2
Independent claim 2 recites, in relevant parts, (1) upon determining
that a packet received at a port filter is associated with a host application,
sending a wake up message to the host computer; (2) otherwise, discarding
the packet. As set forth in the Findings of Fact section, Graham-Cumming
discloses a system for dynamically mapping data packets received at a filter
port to corresponding computer host applications capable of processing the
received packets. (FF. 1a.) Further, Graham-Cumming discloses that a
received packet is discarded or assigned a default application if a suitable
application cannot be identified. (FF. 1b.) McKaughan complements
Graham-Cumming by disclosing a system for sending a wake up signal to a
sleeping host computer on a network upon finding that the identifier of a
received packet matches a packet identifier stored in a network interface
card. (FF. 2a.) We find that Graham-Cumming and McKaughan disclose
prior art elements that perform their ordinary functions to predictably result
in a system that dynamically examines data packets received in a network to
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only forward authorized ones to a host computer system. See KSR, 550 U.S.
at 417. Therefore, we find the Examiner’s proffered combination is proper.
Assuming that the Examiner must articulate some additional
reasoning for combining the references, we find that the Examiner has
provided ample reasoning to justify the proffered combination. In particular,
the Examiner explained that it would have been obvious to one of skill in the
art at the time of the invention to incorporate McKaughan’s method of
waking up a host computer in a sleeping mode upon receiving an authorized
packet into Graham-Cumming’s dynamic mapping of received packets to
host applications. (Ans. 5.) The Examiner also explained that the
incorporation of McKaughan’s teachings into Graham-Cumming’s would
provide the advantage of conserving energy in the host computer system.
(Ans. 12.) We find that Graham-Cumming’s disclosed advantage of
enhancing security in a network by forwarding only authorized packets to a
host computer (FF. 1c), and McKaughan’s disclosed advantage of
conserving energy in the network by forwarding only relevant packets (FF.
2b) to wake up the host computer would complement each other. We
therefore find that the Examiner has provided a sufficient motivation to
warrant the proffered combination. It follows that Appellant has not shown
that the Examiner erred in concluding that the ordinarily skilled artisan
would have found sufficient motivation to combine the teachings of
Graham-Cumming and McKaughan to render claim 2 unpatentable.

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Claim 33
Independent claim 33 recites, in relevant parts, (1) a first stage filter to
discard a received packet if data included therein does not match that at a
host computer, and (2) a second stage filter to discard a received packet if
data therein is not associated with a host application. As set forth in the
Findings of Fact section, Novoa discloses a system that remotely wakes up a
sleeping computer upon determining that host computer data in a received
packet matches data in a list stored on a network interface card of the
computer. (FF. 3a.) Otherwise, it discards the packet. (FF. 3b.) Further,
Graham-Cumming complements Novoa’s system by disclosing that a
received packet is discarded or assigned a default application if a suitable
application cannot be identified. (FF. 1b.) We find that, similarly to the
combination discussed above, Novoa and Graham-Cumming disclose prior
art elements that perform their ordinary functions to predictably result in a
system that dynamically examines data packets received in a network to only
forward authorized ones to a host computer system. See KSR, 550 U.S. at
417. Therefore, we find the Examiner’s proffered combination is proper.
Assuming that the Examiner must articulate some additional
reasoning for combining the references, we find that the Examiner has
provided ample reasoning to justify the proffered combination. In particular,
the Examiner explained that it would have been obvious to one of skill in the
art at the time of the invention to incorporate Graham-Cumming’s dynamic
mapping of received packets to host applications into Novoa’s method of
waking up a host computer in a sleeping mode upon receiving an authorized
packet. (Ans. 10.) The Examiner also explained that the incorporation of
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Graham-Cumming’s teachings into Novoa’s would provide the advantage of
enhancing the ability to monitor network traffic and enhance security
thereon. (Ans. 13-14.) We find that Graham-Cumming’s disclosed
advantage of enhancing security in a network by forwarding only authorized
packets to a host computer and Novoa’s disclosed advantage of conserving
energy in the network by forwarding only relevant packets to wake up the
host computer would complement each other. We therefore find that the
Examiner has provided a sufficient motivation to warrant the proffered
combination. It follows that Appellant has not shown that the Examiner
erred in concluding that the ordinarily skilled artisan would have found
sufficient motivation to combine the teachings of Novoa and Graham-
Cumming to render claim 33 unpatentable.

VI. CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in concluding that
claims 2, 5, 9, 12, 13, and 15 through 38 are unpatentable as set forth above.

VII. DECISION
We affirm the Examiner’s decision to reject claims 2, 5, 9, 12, 13, and
15 through 38.

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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