Ex Parte Cook

Board of Patent Appeals and Interferences

Dec 2, 2011

10390134 (B.P.A.I. Dec. 2, 2011)

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.
10/390,134 03/17/2003 Fred S. Cook 2041 (16056) 3473
33272 7590 12/02/2011
SPRINT COMMUNICATIONS COMPANY L.P.
6391 SPRINT PARKWAY
MAILSTOP: KSOPHT0101-Z2100
OVERLAND PARK, KS 66251-2100
EXAMINER
LANIER, BENJAMIN E
ART UNIT PAPER NUMBER
2432
MAIL DATE DELIVERY MODE
12/02/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRED S. COOK
____________
Appeal 2009-013567
Application 10/390,134
1

Technology Center 2400
____________

Before JEFFREY S. SMITH, ERIC B. CHEN, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL

1
Filed on March 17, 2003. The real party in interest is Sprint
Communications L.P. (App. Br. 1.)
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s Final Rejection of claims 1-5, 13-16, and 20-24.
2
(App. Br. 2.)
Responsive to a restriction requirement, claims 6-12 and 17-19 have been
withdrawn from consideration. (Id.) We have jurisdiction under 35 U.S.C.
§ 6(b) (2008).
We affirm-in-part.
Appellant’s Invention
Appellant invented an apparatus and method for providing security
against unauthorized intrusions to a supervisory control and data acquisition
(hereinafter “SCADA”) device. (Spec. 1: 15-18.)
Illustrative Claim
1. Apparatus for interacting with a physical plant
comprising:
a programmable control unit for connecting to said
physical plant and for performing a supervisory function for
said physical plant, said programmable control unit having a
public network interface for communicating with remote
computer systems;
a user computer system located remotely from said
programmable control unit;
a front-end security gateway located remotely from said
programmable control unit, wherein said front-end security
gateway communicates with said user computer system to
authenticate and authorize a user for access to said
programmable control unit, and wherein said front-end security
gateway forwards messages between said user computer system
and said programmable control unit after said user is
authenticated and authorized;

2
In the Supplemental Appeal Brief filed August 13, 2008, Appellant
reaffirms intent that all pending claims 1-5, 13-16, and 20-24 are subject to
appeal. (Supp. App. Br. 1-2.)
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a public communication network coupled between said
front-end security gateway and said programmable control unit
to carry said forwarded messages; and
a routing control configured to allow communication
with said programmable control unit only by said front-end
security gateway.

Prior Art Relied Upon
Buck US 2002/0186683 A1 Dec. 12, 2002
Benjamin US 2004/0028057 A1 Feb. 12, 2004
(effectively filed June 19, 2002)

Paul Oman et al., Concerns About Intrusions Into Remotely Accessible
Substation Controllers and SCADA Systems, (2000) 1-16 (hereinafter
“Oman”).

Rejections on Appeal
Claims 1, 13-15, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Buck and Oman. (Ans. 3-5.)
Claims 2-5, 16, and 21-24 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Buck, Oman, and Benjamin.
(Ans. 5-6.)
Appellant’s Contentions
Appellant contends that Buck’s disclosure of a firewall does not
perform routing functions and, therefore, does not teach or suggest the
“routing control,” as recited in independent claim 1. (App. Br. 7.)
Appellant also argues that Buck’s firewall merely screens or blocks certain
data packets. (Id.) Consequently, Appellant alleges that the Examiner’s
correspondence of Buck to the claim elements, namely the claimed “routing
control,” is erroneous because only the structure and interaction of the
claimed invention achieves the objective of creating source access to the
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programmable control unit using a secure gateway that communicates with
the programmable control unit over a public network. (Id.)
Further, Appellant contends that Oman fails to remedy the
deficiencies in the Examiner’s obviousness rejection. (Id. at 8.) Moreover,
Appellant argues that there is no justification that an ordinarily skilled
artisan would be motivated to replace Buck’s disclosure of telephone calls
processed at the user computer with supervisory functions of a physical
plant. (Id.) In response to the Examiner’s Answer, Appellant alleges that
Buck’s disclosure only limits voice data or a particular data packet type to
the restricted transmission with the telephony service provider, whereas
other embodiments in Buck allow other types of data or packets to continue
to pass through the firewall. (Reply Br. 1.) Appellant also contends that
Buck fails to teach or suggest that a remote caller must be specifically
authorized for access to the computer system behind the firewall. (Id. at 2.)
Consequently, Appellant argues that any user authorized to use the telephone
system would be able to place a call to the user in Buck. (Id.)
Examiner’s Findings and Conclusions
The Examiner finds that Buck’s disclosure of setting up the firewall to
allow either the transmission of voice data through one particular port, or
permitting the transfer of data packets between the internal computer system
and a gateway server of the Internet Telephony Service provider, teaches or
suggests that the firewall is configured such that only the gateway server can
communicate with an internal computer system, such as computer system
(10). (Ans. 7.) Therefore, the Examiner finds that Buck teaches or suggests
“a routing control configured to allow communication with said
programmable control unit only by said front-end security gateway,” as
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recited in independent claim 1. (Id.) Further, the Examiner finds that using
the firewall protection system, as disclosed in Buck, in a power plant
environment that comprises like computer systems would have been obvious
to an ordinarily skilled artisan at the time of the claimed invention in order
to protect plants that are vulnerable to electronic attacks, wherein attacks
could result in widespread disruption of power at regional and even national
levels for up to 24 hours, as disclosed in Oman. (Id. at 7-8.)

II. ISSUE
Has the Examiner erred in concluding that the combination of Buck
and Oman renders independent claim 1 unpatentable? In particular, the
issue turns on whether the proffered combination teaches or suggests “a
routing control configured to allow communication with said programmable
control unit only by said front-end security gateway,” as recited in
independent claim 1.

III. FINDINGS OF FACT
The following Findings of Fact (hereinafter “FF”) are shown by a
preponderance of the evidence.
Buck
FF 1. Buck’s figure 1 illustrates a computerized system for
transmitting voice data over the Internet. (¶ [0032].) In particular, Buck
discloses using a firewall (20) to protect the computer system (10) of an
internal client. (Id.) Further, Buck discloses that the firewall (20) may be
implemented using packet-screening routers in order to protect the computer
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system (10) of the internal client against unauthorized (i.e., non-secure)
transmissions over the Internet from external computer(s) (50). (¶ [0034].)
FF 2. Buck discloses that the firewall security system may be set up
in such a way as to allow either the transmission of voice data through one
particular port, or permits data packets to be transferred strictly between the
computer system (10) of the internal client and a gateway server (81) of the
Internet Telephony Service Provider. (¶ [0066].)
Oman
FF 3. Oman discloses that many of the risks involving networked
controllers and SCADA systems are similar to those affecting traditional
network-based computer systems. (Abstract.) Accordingly, Oman discloses
that the implementation of security policies for power substation controllers
and SCADA systems can draw from lessons learned in commercial network
and computer security. (Id.) Oman discloses traditional approaches for
reducing vulnerability that include, among other things, implementing
firewalls. (Id.)
FF 4. Oman discloses that remotely accessible Intelligent Electronic
Devices, Controllers, and SCADA systems, and more importantly,
substations controlled by such devices, are vulnerable to electronic attacks.
(P. 3, para. 2.) Because the nature of the activities and systems controlled by
the electronic devices in the substations, Oman discloses that the misuse of
these devices could have disastrous consequences that could lead to loss of
life and/or property. (Id.) Oman discloses that the electronic power industry
needs to address and mitigate these risks. (Id.)
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FF 5. Oman discloses that electronic attacks could result in
widespread disruption of power at regional and even national levels for up to
24 hours. (P. 5, para. 7.)

IV. ANALYSIS
35 U.S.C. § 103(a) Rejection—Combination of Buck and Oman
Claim 1
We do not find error in the Examiner’s obviousness rejection of
independent claim 1. Independent claim 1 recites, inter alia, “a routing
control configured to allow communication with said programmable control
unit only by said front-end security gateway.”
As detailed in the Findings of Fact section supra, Buck discloses that
the firewall protects the computer system of an internal client from
unauthorized transmissions over the Internet by external computers. (FF 1.)
In particular, Buck discloses that the firewall security system may be set up
in such a way that permits the transfer of data packets strictly between the
computer system of the internal client and a gateway server. (FF 2.)
Consequently, we agree with the Examiner that Buck’s firewall is capable of
being configured in such a way that only the gateway server can
communicate with the computer system of the internal client. (See Ans. 7.)
Thus, we find that Buck teaches or suggests the disputed claim limitation.
Further, we are not persuaded by Appellant’s argument that there is no
justification that an ordinarily skilled artisan would be motivated to replace
Buck’s disclosure of telephone calls processed at the user computer with
supervisory functions of a physical plant. (App. Br. 8.) We note that Oman
discloses that the security risks involving power substation controllers and
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SCADA systems are similar to those affecting traditional network-based
computer systems. (FF 3.) Oman also discloses using traditional
approaches to reduce the vulnerability associated with such controllers and
systems, including implementing firewalls. (Id.) Consequently, we find that
Oman provides a basis in fact to support the Examiner’s position of
incorporating Buck’s firewall protection system into Oman’s power
substation controllers and SCADA systems. (See Ans. 4, 7-8.) That is, we
find that it would have been obvious to an ordinarily skilled artisan to
incorporate Buck’s firewall protection system (FFs 1 and 2) into Oman’s
power plant environment (i.e., power substation controllers and SCADA
systems) (FF 3) in order to protect such controllers and systems from attacks
that may result in widespread disruption of power at regional and even
national levels for up to 24 hours. (FFs 4 and 5.)
We find untimely Appellant’s argument that Buck fails to teach or
suggest that a remote caller must be specifically authorized for access to the
computer system behind the firewall and, therefore, any user authorized to
use the telephone system would be able to place a call to the user in Buck.
(Reply Br. 1-2.)
3
We note that Appellant raised this argument for the first
time in the Reply Brief. We further note that this argument is not raised in
response to any new issues the Examiner may have raised in the Answer, or
to address changes or developments in the law that may have occurred after
the Appeal brief was filed. Appellant’s attempt to introduce such a belated
argument in the Reply Brief is improper.

3
“[T]he reply brief [is not] an opportunity to make arguments that could
have been made in the principal brief on appeal to rebut the Examiner's
rejections, but were not.” See Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (Informative).
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Nonetheless, to the extent that Appellant’s argument is premised on
the notion that Buck does not teach or suggest authenticating and authorizing
a user at a remote user computer before allowing such user to access the
programmable unit, we are not persuaded. As discussed supra, Buck
discloses that the firewall protects the computer system of an internal client
from unauthorized transmissions over the Internet by external computers.
(FF 1.) Consequently, we find that such disclosure at least suggest to an
ordinarily skilled artisan that Buck implicitly discloses authorizing a user of
an external computer prior to allowing such user to access the computer
system of the internal client. Thus, we find that Buck teaches or suggests
authenticating and authorizing a user at a remote user computer before
allowing such user to access the programmable unit, as required by
independent claim 1. It follows that the Examiner has not erred in
concluding that the combination of Buck and Oman renders independent
claim 1 unpatentable.
Claims 13 and 14
Appellant does not provide separate and distinct arguments for
patentability with respect to dependent claims 13 and 14. (See App. Br. 6-
9.) Therefore, we select independent claim 1 as representative of these cited
claims. See 37 C.F.R. § 41.37(c)(1)(vii). Consequently, the Examiner has
not erred in rejecting dependent claims 13 and 14 for the same reasons set
forth in our discussion of independent claim 1.
Claims 15 and 20
Appellant offers the same arguments set forth in response to the
obviousness rejection of independent claim 1 to rebut the obviousness
rejection of independent claims 15 and 20. (See App. Br. 8-9.) We have
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already addressed these arguments in our discussion of independent claim 1,
and we found them unpersuasive. Therefore, we find that the Examiner has
not erred in concluding that the combination of Buck and Oman renders
independent claims 15 and 20 unpatentable.
35 U.S.C. § 103(a) Rejection—Combination of Buck, Oman, and Benjamin
Claim 2
Appellant contends that that none of the prior art cited by the
Examiner teach or suggest that “[the] routing control comprises a telephone
switching system configured to provide an originating call restriction…,” as
recited in dependent claim 2. (App. Br. 9.) The Examiner finds that Buck’s
disclosure of an Internet telephony transmission system that uses a firewall
to effectively filter and block calls, in conjunction with Benjamin’s
disclosure of a hybrid call communication system, teaches or suggests the
disputed limitation. (Ans. 8.) In response to the Examiner’s Answer,
Appellant argues that Buck’s disclosure of blocking is not based on the
identity of the originator of the call as required by the claimed “originating
call restriction.” (Reply Br. 2.) We agree with Appellant.
At best, we find that Buck’s disclosure of a firewall that effectively
filters and blocks unauthorized transmissions of voice data (e.g., telephone
calls) (FFs 1 and 2) amounts to a routing control that functions to block
incoming telephone calls that are unauthorized. However, we find that
Buck’s disclosure is silent in regards to completing an incoming telephone
call that originates from a predetermined telephone number, and blocking
incoming telephone calls that originate from other telephone numbers.
Moreover, we are unable to ascertain how the textual portions of Benjamin
relied upon by the Examiner teaches or suggests placing call restrictions on
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incoming telephone calls, such that a call which originates from a
predetermined telephone number is complete, whereas calls from other
telephone numbers are blocked. Consequently, we find that the Examiner
improperly relied upon the combination of Buck and Benjamin to teach or
suggest the disputed claim limitation. Further, we find that Oman fails to
remedy the above-noted deficiencies in the Examiner’s obviousness
rejection. It follows that the Examiner has erred in concluding that the
combination of Buck, Oman, and Benjamin renders dependent claim 2
unpatentable.
Claims 16 and 21
Since dependent claims 16 and 21 recite a similar claim limitation as
dependent claim 2, we find the Examiner has erred in concluding that the
combination of Buck, Oman, and Benjamin renders dependent claims 16 and
21 unpatentable for the same reasons set forth supra.
Claims 3-5 and 22-24
By virtue of their dependency to dependent claims 2, 16, and 21, we
find that the Examiner has also erred in concluding that the combination of
Buck, Oman, and Benjamin renders dependent claims 3-5 and 22-24
unpatentable for the same reasons set forth supra.

V. CONCLUSIONS OF LAW
1. The Examiner has not erred in rejecting claims 1, 13-15, and 20
as being unpatentable under 35 U.S.C. § 103(a).
2. The Examiner has erred in rejecting claims 2-5, 16, and 21-24
as being unpatentable under 35 U.S.C. § 103(a).

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VI. DECISION
1. We affirm the Examiner’s decision to reject claims 1, 13-15,
and 20 as being unpatentable under 35 U.S.C. § 103(a).
2. We reverse the Examiner’s decision to reject claims 2-5, 16,
and 21-24 as being unpatentable under 35 U.S.C. § 103(a).
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-IN-PART

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