Ex Parte Cho

Patent Trial and Appeal Board

Apr 19, 2016

11705067 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111705,067 02/12/2007
58027 7590 04/21/2016
RC PARK & ASSOCIATES, PLC
1894 PRESTON WHITE DRIVE
RESTON, VA 20191
FIRST NAMED INVENTOR
Soung-Su Cho
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.
P3288USOO 5398
EXAMINER
DAVIS, ZACHARY A
ART UNIT PAPER NUMBER
2492
NOTIFICATION DATE DELIVERY MODE
04/21/2016 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):
PATENT@PARK-LAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SOUNG-SU CHO
Appeal2014-003854
Application 11/705,067
Technology Center 2400
Before CARL W. WHITEHEAD JR., DANIEL N. FISHMAN, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-3, 5-11, 13, 14, and 17-19, which constitute all
the claims pending in this application. App. Br. 3. Claims 4, 12, 15, and 16
have been cancelled. App. Br. 24--28. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 According to the Appellant, the real party in interest is Samsung
Electronics Co. Ltd. App. Br. 3.
Appeal2014-003854
Application 11/705,067
THE INVENTION
Appellant's invention relates to an apparatus and method for
performing dynamic security in an Internet Protocol (IP) system, and more
particularly, to an apparatus and method for performing dynamic security in
an IP system that is capable of implementing more dynamic access to a
specific resource when Network Address Translation (NAT) or a firewall
function is provided in the IP system. Spec. i-f 2.
Exemplary independent claim 1 is reproduced below.
1. A server computer to perform dynamic security in an
Internet Protocol (IP) system, the server computer comprising:
a resource pool to store authentication information and
resource information on a resource related to IP services; and
a security module processor, coupled to the resource pool,
to receive a request to use the resource related to the IP services,
to determine if the resource information is stored in the resource
pool in response to receiving the request to use the resource, to
request address translation in response to determining that the
resource information is stored in the resource pool, to request
resource reservation for the address translation or operation of a
firewall, and to request interruption of use of the resource when
use of the IP services is terminated,
wherein the security module processor is configured to
perform a process of authenticating the requested resource using
an authentication method and an authentication key, and to store
information on the authenticated resource in the resource pool.
REFERENCES and REJECTIONS
1. Claims 9-11, 13, 14, and 17-19 stand rejected under 35 U.S.C.
§ 112, second paragraph as indefinite.
2. Claims 1-3, 5-11, 13, 14, and 17-19 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Li et al. (US 7,380,011 B2; May 27,
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2008) ("Li"), Kung et al. (US 7,760,711 Bl; July 20, 2010) ("Kung"), and
Sastry et al. (US 7,721,322 B2; May 18, 2010) ("Sastry").
ANALYSIS
I. Section 112, second paragraph Rejection
A. Claim 9
The Examiner finds the claim 9 limitations "a Network Address
Translation (NAT) module to receive a request ... and to perform address
translation" and "a firewall module to receive a request ... and to perform
packet forwarding" are means-plus-function limitations that invoke 35
U.S.C. § 112, sixth paragraph. Final Act. 7. The Examiner further finds that
the written description fails to disclose the corresponding structure, material,
or acts for the associated functions of the above two modules and that,
therefore, claim 9 is indefinite under 35 U.S.C. § 112, second paragraph.
See Final Act. 6-7.
Appellant argues "since Appellant's claim 9 does not recite the
phrases 'means for' or 'step for', there should be a strong presumption that
§ 112, i-f 6 does not apply." App. Br. 13; see also App. Br. 8-10 (citing Flo
Healthcare v. Kappas and Rioux Vision, 697 F.3d 1367 (Fed. Cir. 2012) and
Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir.
2004) for the proposition that the presumption flowing from the absence of
the term "means" is a strong one that is not readily overcome.). Moreover,
Appellant argues "'module' ... has been frequently recognized in the art,
and, in particular in the telecommunications field, as a term that denotes
sufficient structure." App. Br. 13. According to the Appellant "[a] 'NAT
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module' and 'firewall module', as recited in claim 9, would similarly
connote sufficient structure, and may, for example, be understood by a
PH OSIT A as referring to any class of hardware and/ or software components
.... " App. Br. 14.
We are unpersuaded by Appellant's arguments. In a recent en bane
decision, the Federal Circuit addressed the standard under which§ 112, sixth
paragraph applies to a claim. Williamson v. Citrix Online, LLC, 792 F.3d
1339 (Fed. Cir. 2015). "The use of the word 'means' in a claim element
creates a rebuttable presumption that § 112, para. 6 applies ... [while] the
failure to use the word 'means' ... creates a rebuttable presumption ... that
§ 112, para. 6 does not apply." Id. at 1348. In some of its previous
decisions, including the decisions relied upon by the Appellant, the Federal
Circuit characterized the presumption that§ 112, sixth paragraph does not
apply to a limitation lacking the word "means" as "strong." See Lighting
World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir.
2004); see also, Flo Healthcare v. Kappas and Rioux Vision, 697 F.3d 1367,
1374 (Fed. Cir. 2012). In Williamson, however, the Federal Circuit
expressly overruled such a heightened burden and concluded that
characterizing this presumption as 'strong' is unjustified. Williamson at
1349. Instead, "[t]he standard is whether the words of the claim are
understood by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure." Id. at 1349.
As in Williamson, the limitations at issue here are written in
traditional means-plus-function form except with the word "means" replaced
by "module." "'Module' is a well-known nonce word that can operate as a
substitute for 'means' in the context of§ 112, para. 6." Id. at 1350. "[T]he
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Application 11/705,067
word 'module' does not provide any indication of structure because it sets
forth the same black box recitation of structure for providing the same
specified functions if the term 'means' had been used." Id. And as the
Examiner finds, the terms "Network Address Translation" and "firewall"
also do not describe sufficient structure because they "only describe
functionality in addition to the claimed functions of receiving requests and
performing address translation or packet forwarding." Ans. 4. Finally,
Appellant's argument that a person of ordinary skill in the art would
understand a NAT module or firewall module as referring to "any class of
hardware and/or software components," (App. Br. 14), only serves to
emphasize that the terms are simply generic terms that do not connote
sufficient structure. For these reasons, we conclude that the NAT module
and firewall module limitations fail to recite sufficiently definite structure
and that, therefore, the presumption against invoking§ 112, sixth paragraph
is rebutted.
Because the claim limitations invoke § 112, sixth paragraph, the
specification must disclose sufficient structure that corresponds to the
claimed function, otherwise the means-plus-function limitation is deemed
indefinite under 35 U.S.C. § 112, second paragraph. Noah Sys., Inc. v. Intuit
Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012). For computer-implemented
inventions, such disclosure must include an algorithm for performing the
claimed functions. Aristocrat Techs. Aust!. Pty Ltd. V. Int 'l Game Tech.,
521F.3d1328, 1333 (Fed. Cir 2008). The Examiner finds, and we agree,
that such an algorithm, or any such corresponding structure, is not disclosed
in the specification. Ans. 5. Moreover, Appellant does not present evidence
rebutting the Examiner's findings that such structure (in the form of an
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algorithm or otherwise) is not found in the specification, and instead relies
on the terms "NAT module" and "firewall module" themselves to impart the
required structure. See App. Br. 16.
Because we agree that the NAT module and firewall module
limitations invoke§ 112, sixth paragraph and that Appellant's specification
does not disclose the requisite structure corresponding to the claimed
functions, we sustain the Examiner's rejection of claim 9 as indefinite under
§ 112, second paragraph. We also sustain the Examiner's rejection of claims
10 and 11, which depend from claim 9.
B. Claims 13 and 19
Claims 13 and 19 recite "performing a process of authenticating the
requested resource using an authentication method and an authentication key
with respect to the resource." App. Br. 27 and 29 (Claims App'x). The
Examiner finds the claims indefinite because of the phrase "with respect to
the resource." Ans. 6. In particular, the Examiner finds that claim 9
includes a similar limitation but without the addition of the phrase "with
respect to the resource" and, therefore, that phrase must indicate that the two
limitations must not have identical scope. Ans. 6. The Examiner finds
"because the claim limitations already recite 'performing a process of
authenticating the requested resource', it is not clear what additional
limitation on this authentication the addition of the phrase 'with respect to
the resource' places on the process of authentication." Ans. 6. Because
authentication of the requested resource is already recited in the claim the
Examiner finds the phrase "'with respect to the resource' is either redundant
or is otherwise missing further language to clarify the manner in which the
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phrase 'with respect to the resource' is intended to further limit the claims."
Ans. 6-7.
Appellant argues the Specification provides an explanation of the
authentication method. Further, the Appellant argues there is no
requirement to recite how the authentication method and key are used with
respect to the resource as long as a person of ordinary skill in the art
understands the bounds of the claims, (App. Br. 16), nor is there a
requirement to indicate what the claim limitation is intended to add, (App.
Br. 17).
We agree with Appellant and are persuaded of error. The claim
limitations are fairly clear on their face, indicating that an authentication
method and authentication key are used in relation to the resource that is
being authenticated. Although there may be some amount of redundancy
between phrases and terms within the claim, this does not render the claim
indefinite.
Accordingly we do not sustain the Examiner's rejection of claims 13
and 19 as indefinite. We also do not sustain the rejection of claims 14, 17,
and 18, which were rejected based on their dependence from claim 13. Final
Act. 9.
II. Section 103(a) Rejection
Appellant argues2 Kung does not teach or suggest "to determine if the
resource information is stored in the resource pool in response to receiving
the request to use the resource." App. Br. 19.
2 Appellant argues, for the first time in the Reply Brief, that "Sastry fails to
supply the claimed, 'wherein the security module processor is configured to
perform a process of authenticating the requested using an authentication
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The Examiner finds Kung teaches this limitation by disclosing a call
manager that polls a broadband residential gateway for terminal
configuration information to determine whether adequate resources are
available to carry out a call. Ans. 8 (citing Kung 13:30-36, 28:66-29:23,
and 31 :48---62).
Appellant argues "[a] PHOSITA can readily appreciate that
determining whether resources are available by comparing requirements or
polling BR Gs does not teach or suggest determining if resource information
is stored in a resource pool." App. Br. 19. According to the Appellant,
"polling a BRG for configuration information relies on the inherent
assumption that the configuration information is stored in the device being
polled, and one would not have to determine whether the configuration
information is stored in the device being polled." App. Br. 20. Appellant
further argues that "[i]nformation regarding the bandwidth or networking
conditions does not have to be stored, rather the available real-time
conditions may just be checked to see if a call can be completed." App. Br.
20. Finally, Appellant argues that "even if Kung disclosed 'to determine if
the resource information is stored in the resource pool' ... Kung still does
not teach that the determination is done 'in response to receiving the request
to use the resource."' App. Br. 21.
method and an authentication key, and to store information on the
authenticated resource in the resource pool."' Reply Br. 4--5. Because this
argument was not made in the Appeal Brief, we deem this argument waived.
See 37 CPR § 41.41 (b )(2)(2012) ("Any argument raised in the reply brief
which was not raised in the appeal brief, or is not responsive to an argument
raised in the examiner's answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the present
appeal, unless good cause is shown.").
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Application 11/705,067
We are unpersuaded by Appellant's arguments. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer (on pages 7-12) and in the Action from which this
appeal was taken (on pages 9-11). In particular, we agree with the
Examiner "that determining whether adequate network resources are
available ... requires determining whether information regarding those
resources is in the resource pool." Ans. 10. We also agree with the
Examiner that "by determining whether the resources are available it is
checked whether the information describing those resources is in the pool,
corresponding to the claimed limitation of determining if resource
information is stored." Id.
Appellant's argument that Kung' s resource information could be
checked in real-time, rather than be stored, is unpersuasive. Kung teaches
that terminal configuration information is retrieved from the BRG (Kung
29:8-12 and 31 :25-28) which indicates that this information is indeed stored
rather than calculated in real-time.
As to Appellant's argument that Kung does not teach that the
determination is done "in response to receiving the request to use the
resource," we agree with the Examiner that polling the BRG for
configuration information is done in response to a request to add a party to a
call and, thus, "in response to receiving a request to use the resource." Ans.
12 (citing Kung 13:30-36 and 31:37--47).
Accordingly, we sustain the Examiner's rejection of claim 1.
Appellant does not present any additional arguments for independent claims
9, 13, and 19, (App. Br. 22-23) and does not separately argue dependent
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claims 2, 3, 5-8, 10, 11, 14, 17, and 18, (App. Br. 22-23). Accordingly, we
also sustain the Examiner's rejection of these claims.
DECISION
The Examiner's rejection of claims 9-11 under 35 U.S.C. § 112,
second paragraph is affirmed.
The Examiner's rejection of claims 13, 14, and 17-19 under 35 U.S.C.
§ 112, second paragraph is reversed.
The Examiner's rejection of claims 1-3, 5-11, 13, 14, and 17-19
under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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