Ex Parte Brabson et alDownload PDFPatent Trial and Appeal BoardApr 30, 201410007582 (P.T.A.B. Apr. 30, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROY F. BRABSON and LINWOOD HUGH OVERBY JR. ____________ Appeal 2013-006273 Application 10/007,582 Technology Center 2400 ____________ Before ALLEN R. MacDONALD, ERIC B. CHEN, and MICHAEL R. ZECHER, Administrative Patent Judges. ZECHER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-006273 Application 10/007,582 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-5, 8-15, 17, and 21-24. App. Br. 2.1 Claims 6, 7, 16, and 18-20 were cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Invention Appellants invented a method, system, and computer program product for improving the security in a network environment by performing secure protocol functions in the kernel of a computer system. Spec. 2:2-5. In particular, the disclosed invention includes an embodiment relating to improved offloading of security processing, which, according to Appellants, provides processing efficiencies over prior art offloading techniques. Abstract; see also Spec. 19:6-20:7, fig. 2F. Related Appeal We previously decided an appeal in the present application on June 29, 2011. See Ex parte Brabson, No. 2009-012977, 2011 WL 2596421 (BPAI 2011) (affirming the Examiner’s anticipation rejection). Illustrative Claim Claims 1, 12, and 13 are independent claims. Claims 2-5, 8-11, and 21-24 depend directly or indirectly from independent claim 1, and claims 14, 15, and 17 depend directly from independent claim 12. Independent claim 1 is illustrative of the disclosed invention and is reproduced below: 1 All references to the Appeal Brief refer to the Appeal Brief filed on December 4, 2012. Appeal 2013-006273 Application 10/007,582 3 1. A method of improving security processing in a computing network, comprising: executing an application program; and executing control functions during execution of the application program to selectably direct a security offload component to secure a communication of the application program, wherein the security offload component is external to an operating system kernel and performs security processing, the control functions are within the operating system kernel, direct operation of the security offload component, and inform protocol layers of the operating system kernel to modify outbound data from the application program to the security offload component, and the modification comprises reserving space in the outbound data for a security header and/or trailer. Prior Art Relied Upon Campbell US 5,197,128 Mar. 23, 1993 Anand US 6,370,599 B1 Apr. 9, 2002 (effectively filed June 12, 1998) Freed US 7,149,892 B2 Dec. 12, 2006 (filed July 6, 2001) Rejections on Appeal Claim 13 was rejected under 35 U.S.C. § 101 as being directed to non- statutory subject matter. Fin. Rej. 2-4.2 Claims 1, 2, 4, 5, 9, 11-14, and 17 were rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Anand and Campbell. Id. at 4-9. 2 All references to the Final Rejection refer to the Final Rejection mailed on July 5, 2012. Appeal 2013-006273 Application 10/007,582 4 Claims 3, 8, 10, 15, and 21-24 were rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Anand, Campbell, and Freed. Id. at 9-11. Examiner’s Findings and Conclusions 1. The Examiner finds that the specification of the present application is silent as to what constitutes “a computer-usable storage medium,” as recited in independent claim 13. Fin. Rej. 3-4. The Examiner finds that the broadest reasonable interpretation of a claim drawn to “a computer-usable storage medium” typically covers both statutory and non- statutory subject matter under § 101. Id. at 3. The Examiner finds that, because the broadest reasonable interpretation encompasses a signal per se, independent claim 13 is directed to non-statutory subject matter under § 101. Id. 2. The Examiner finds that Anand teaches all the claim limitations recited in independent claim 1, except “reserving space in the outbound data for a security header and/or trailer.” Fin. Rej. 4-6. The Examiner finds that Campbell teaches this claim feature. Id. at 6 (citing Campbell, 9:36-44, fig. 11). In addition, the Examiner provides a rationale to combine Anand and Campbell. Id. (citing Anand, 11:31-34; Campbell, 9:36-44, fig. 11); see also Ans. 9 (citing Campbell, 9:32-35). 3 Appellants’ Contentions 1. Appellants disagree with the Examiner’s position that the “computer-usable storage medium” recited in independent claim 13 is directed to non-statutory subject matter under §101. App. Br. 5-24; Reply 3 All references to the Examiner’s Answer refer to the Answer mailed on February 14, 2013. Appeal 2013-006273 Application 10/007,582 5 Br. 2-4.4 Appellants present numerous arguments, each of which is premised on one of the following underlying notions: (1) the Examiner applied the incorrect standard when determining that independent claim 13 is directed to non-statutory subject matter under § 101; (2) the Examiner improperly construed the claimed “computer-usable storage medium”; and (3) maintaining the rejection of independent claim 13 as being directed to non-statutory subject matter under § 101 would be in violation of the Administrative Procedure Act. Id. 2. Appellants disagree with the Examiner’s position that Anand’s disclosure of a data packet with encryption is a security data packet, as required by independent claim 1. App. Br. 35. Appellants further contend that neither Anand nor Campbell teaches “a security header and/or trailer,” as claimed. Id. at 36. Appellants also argue that the Examiner does not provide a sufficient rationale to combine Anand and Campbell. App. Br. 39- 40; Reply Br. 6-8. II. ISSUES 1. Has the Examiner erred in determining that independent claim 13 is directed to non-statutory subject matter under § 101? In particular, the issue turns on whether “a computer-usable storage medium” encompasses a transitory, propagating signal. 2. Has the Examiner erred in determining that the combination of Anand and Campbell renders independent claim 1 unpatentable? In particular, the issue turns on whether: 4 All references to the Reply Brief refer to the Reply Brief filed on April 11, 2013. Appeal 2013-006273 Application 10/007,582 6 (a) the combination of Anand and Campbell collectively teaches “reserving space in the outbound data for a security header and/or trailer,” as recited in independent claim 1; and (b) the Examiner provides an articulated reason with a rational underpinning to combine Anand and Campbell. III. ANALYSIS § 101 Rejection Claim 13 Based on the record before us, we do not discern error in the Examiner’s rejection of independent claim 13 as being directed to non- statutory subject matter under § 101. We begin our analysis by noting that is well settled that transitory, propagating signals are not directed to one of the four enumerated categories of statutory subject matter under § 101. In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007). According to United States Patent & Trademark Office (USPTO) guidelines: A claim that covers both statutory and non-statutory embodiments . . . embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter. . . . For example, a claim to a computer readable medium that can be a compact disc or a carrier wave covers a non-statutory embodiment and therefore should be rejected under § 101 as being directed to non-statutory subject matter. USPTO, Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 2009, at 2, available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08- 25_interim_101_instructions.pdf. Appeal 2013-006273 Application 10/007,582 7 The USPTO also provides the following guidance: The broadest reasonable interpretation of a claim drawn to a computer readable medium . . . typically covers forms of non- transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (citation omitted). See also Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential) (holding recited machine-readable storage medium ineligible under § 101 because it encompasses transitory media). Independent claim 13 recites, in relevant part, “a computer-usable storage medium.” Upon reviewing Appellants’ specification, we agree with the Examiner that there is no support for what constitutes the claimed “computer-usable storage medium.” Fin. Rej. 3; Ans. 3-4. We also agree with the Examiner that, because Appellants’ specification is silent in that regard, the claimed “computer-usable storage medium” may be broadly, but reasonably construed to encompass both non-transitory, tangible media and transitory, propagating signals per se. Id. Given that independent claim 13 covers both statutory and non-statutory embodiments, we conclude that it embraces subject matter that is not eligible for patent protection and, therefore, is directed to non-statutory subject matter under § 101. It follows that the Examiner has not erred in determining that independent claim 13 is directed to non-statutory subject matter under § 101. Appeal 2013-006273 Application 10/007,582 8 § 103(a) Rejection—Combination of Anand and Campbell Claim 1 Based on the record before us, we do not discern error in the Examiner’s obviousness rejection of independent claim 1, which recites, inter alia, “reserving space in the outbound data for a security header and/or trailer.” We are not persuaded by Appellants’ argument that Anand’s disclosure of a data packet with encryption is not a security data packet, as required by independent claim 1. App. Br. 35. We agree with the Examiner’s position that Anand teaches a security data packet because it discloses that packet extension 150 includes encryption/decryption for security purposes. Ans. 6-7 (citing Anand, 11:31-34, fig. 4). Anand discloses appending packet extension 150 to data packet 142 to identify tasks that can be offloaded and performed by a network interface card. Anand, 3:54-60, 11:13-26. Anand discloses that each task is identified by the information included within packet extension 150, such as information relating to encryption/decryption. Anand 11:30-33. In our view, Anand’s data packet 142 and corresponding packet extension 150, which may include information necessary to perform the task of encryption/decryption, teaches a security packet, as required by independent claim 1. Next, we are not persuaded by Appellants’ argument that neither Anand nor Campbell teaches “a security header and/or trailer,” as claimed. App. Br. 36. When assessing an obviousness rejection, the test is what the combined teachings of the references would have suggested to one with ordinary skill in the art. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). Here, the argument presented by Appellants is predicated on the notion that Appeal 2013-006273 Application 10/007,582 9 the Examiner only alleges that Campbell teaches “headers and trailers”—not a security header and trailer. App. Br. 36. However, the Examiner’s position is based on the combined teachings of Anand and Campbell. Ans. 6-7 (citing Anand, 11:31-34, fig. 4; Campbell, 9:36-44, fig. 11). As we explained above, we agree with the Examiner that Anand teaches a security data packet. The Examiner also takes the position that Campbell teaches reserving space in an outgoing data packet for the insertion of a header and trailer. Ans. 7 (citing Campbell, 9:36-44, fig. 11). Based on these teachings in Anand and Campbell, one with ordinary skill in the art would have recognized that Anand’s security data packet is capable of being modified to reserve space for the insertion of a header and trailer, as taught by Campbell. As such, the Examiner has presented sufficient evidence to support a finding that Anand and Campbell collectively teach “reserving space in the outbound data for a security header and/or trailer,” as recited in independent claim 1. Rationale to Combine We are not persuaded by Appellants’ argument that the Examiner does not provide a sufficient rationale to combine Anand and Campbell. App. Br. 39-40; Reply Br. 6-8. The U.S. Supreme Court has held that “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Instead, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of Appeal 2013-006273 Application 10/007,582 10 obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). We conclude that the Examiner’s rationale for combining Anand and Campbell suffices as an articulated reason with a rational underpinning to justify the legal conclusion of obviousness. That is, one with ordinary skill in the art, at the time of the claimed invention, would have modified Anand’s security data packet (Anand, 3:54-60, 11:13-26, 30-33, fig. 4) to include the reservation of space for the insertion of a header and trailer, as taught by Campbell (Campbell, 9:36-44, fig. 11). This proffered combination would predictably allow Anand’s computer system to perform automatic functions (Campbell, 9:32-35), such as automatically inserting information into the header and trailer that is necessary to direct the security data packet to the proper offloading component. See Fin. Rej. 6; Ans. 9. It follows that the Examiner has not erred in determining that the combination of Anand and Campbell renders independent claim 1 unpatentable. Claims 2, 4, 5, 9, 11-14, and 17 Appellants do not provide separate and distinct arguments for patentability with respect to claims 2, 4, 5, 9, 11-14, and 17. We accept Appellants’ grouping of independent claims 12, and 33, and dependent claims 2, 4, 5, 11, 14, and 17, with independent claim 1. App. Br. 29. We also group dependent claim 9 with independent claim 1 because it was not argued separately. Consequently, claims 2, 4, 5, 9, 11-14, and 17 fall with independent claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2013-006273 Application 10/007,582 11 § 103(a) Rejection—Combination of Anand, Campbell, and Freed Claims 3, 8, and 10 Appellants simply reiterate the Examiner’s positions regarding dependent claims 3, 8, and 10, and then generally assert that the cited prior art reference do not teach the claimed features recited therein. App. Br. 41- 44; Reply Br. 8-12. Merely pointing out what a claim recites and nakedly asserting that the cited prior art references do not teach the corresponding claim feature does not amount to a separate patentability argument. See 37 C.F.R. § 41.37(c)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). It follows that the Examiner has not erred in determining that the combination of Anand, Campbell, and Freed renders dependent claims 3, 8, and 10 unpatentable. Claims 15 and 21-24 Appellants do not provide separate and distinct arguments for patentability with respect to dependent claims 15 and 21-24. We accept Appellants’ grouping of claims 21-24 with independent claim 1. App. Br. 40. Even though Appellants indicate that dependent claim 15 stands or falls alone (id.), we group dependent claim 15 with its underlying base claim— Appeal 2013-006273 Application 10/007,582 12 independent claim 12—because it was not argued separately. Consequently, dependent claims 15 and 21-24 fall with independent claims 1 and 12, respectively. See 37 C.F.R. § 41.37(c)(1)(iv). IV. CONCLUSIONS For the foregoing reasons, the Examiner has not erred in rejecting: (1) claim 13 as being directed to non-statutory subject matter under § 101; and (2) claims 1-5, 8-15, 17, and 21-24 as being unpatentable under § 103(a). V. DECISION We affirm the Examiner’s decision to reject claims 1-5, 8-15, 17, and 21-24. 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 msc Copy with citationCopy as parenthetical citation