Ex Parte Chokshi et al

Patent Trial and Appeal Board

Apr 20, 2016

12910140 (P.T.A.B. Apr. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/910,140 10/22/2010
35525 7590 04/22/2016
IBM CORP (YA)
C/O YEE & AS SOCIA TES PC
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
ShaivalJ. Chokshi
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.
AUS920100397US1 7425
EXAMINER
AMBA YE, SAMUEL
ART UNIT PAPER NUMBER
2433
NOTIFICATION DATE DELIVERY MODE
04/22/2016 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAIV AL J. CHOKSHI, XIAOHAN QIN, and
RAKESH SHARMA
Appeal2014-005162
Application 12/910, 140
Technology Center 2400
Before JOHNNY A. KUMAR, CATHERINE SHIANG, and
JOYCE CRAIG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
STATEMENT OF THE CASE
According to the Specification, the present invention relates to
securing computer systems from network communication attacks. See
generally Spec. 1. Claim 1 is exemplary:
1. A method of enabling secure network communications with logical
partitions, which comprises:
Appeal2014-005162
Application 12/910, 140
receiving a packet at a gateway between a physical network adapter
and at least one virtual network adapter;
tagging said packet, by the gateway, with an indication of an origin of
said packet;
delivering, by the gateway, said tagged packet to an intrusion
prevention system;
receiving, by the gateway, said tagged packet from said intrusion
prevention system; and,
forwarding, by the gateway, said tagged packet received from said
intrusion prevention system according to said indication of origin of said
tagged packet.
References and Rejection
Claims 1-24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goyal (US 7,562,389 Bl, issued July 14, 2009) and
Brown (US 2006/0123204 Al, published June 8, 2006).
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejection, the Examiner's response to Appellants' arguments,
and the evidence of record. We concur with Appellants' conclusion that the
Examiner erred in finding Goyal and Brown collectively teach "forwarding,
by the gateway, said tagged packet received from said intrusion prevention
system according to said indication of origin of said tagged packet," as
recited in independent claim 1 (emphasis added). 1 See App. Br. 19-21.
The Examiner finds:
Goyal in col. 3, lines 37-43 teaches Security conditions 120 are
policies that determine whether a packet may be forwarded
from external network 104 to protected network 106. In one
1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
2
Appeal2014-005162
Application 12/910, 140
embodiment, a security condition 120 comprises an attack
signature, i.e., a pattern of information that indicates that an
incoming packet represents a hostile action directed at protected
network 106, but silent on forwarding by the gateway said
tagged packet; [citing Brown for forwarding by the gateway
said tagged packet] (emphasis added).
Final Act. 6-7 (emphasis added); see also Ans. 10.
Therefore, the Examiner maps the claim element "according to said
indication of origin of said tagged packet " to Goyal' s according to security
conditions 120. See Final Act. 6-7; Ans. 10. However, the Examiner's
mapping is contradictory to the existing mapping, as the Examiner has
already mapped Goyal's first VLAN [virtual local area network] identifier-
not Goyal's security conditions 120-to the claimed "indication of origin of
said tagged packet." See Final Act. 4. It is unreasonable to map the same
claim element to Goyal' s two separate and different entities in order to read
on the claim. Further, the Examiner does not provide sufficient evidence or
reasonable explanation to sho\'l/ ho\'l/ the cited references collectively teach
"forwarding, by the gateway, said tagged packet received from said intrusion
prevention system according to said indication of origin of said tagged
packet," (emphasis added), when the italicized claim element is correctly
mapped to Goyal's first VLAN identifier. As a result, the Examiner fails to
adequately show Goyal and Brown collectively teach the italicized claim
limitation, as required by claim 1.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner's rejection of claim 1, and corresponding dependent
claims 2-8 for similar reasons.
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Appeal2014-005162
Application 12/910, 140
Independent claim 9 and 17 recite limitations that are substantively
the same as the disputed claim limitations of claim 1. See claims 9 and 17.
Therefore, for similar reasons discussed above with respect to claim 1, we
do not sustain the Examiner's rejection of independent claims 9 and 17, and
corresponding dependent claims 10-16 and 18-24.
DECISION
We reverse the Examiner's decision rejecting claims 1-24.
REVERSED
4