Ex Parte Curcio et al

Patent Trial and Appeal Board

Sep 25, 2014

11759061 (P.T.A.B. Sep. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSEPH CURCIO and MAHALINGAM MANI
____________

Appeal 2012-001466
Application 11/759,061
Technology Center 2400
____________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1–25. (App. Br. 3.)1 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 We refer to Appellants’ Specification (“Spec.”) and Appeal Brief (“App.
Br.”) filed June 7, 2011. We also refer to the Examiner’s Answer (“Ans.”)
mailed August 2, 2011.
Appeal 2012-001466
Application 11/759,061

2

Appellants’ Invention
The invention at issue on appeal concerns virtual private network
(VPN) overlay network apparatus, devices, and methods for providing
multiple peer-to-peer (P2P) networks over a VPN. (Spec. 1:4–5; 3:23–4:23;
Abstract.)
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A method, comprising:
providing a Virtual Private Network (VPN) overlay
network for a first set of communication devices; and
defining a first and second peer-to-peer network
over the VPN, the first peer-to- peer network being defined for
a second set of communication devices over the VPN overlay
network and the second peer-to-peer network being defined for
at least one of a third set of communication devices and third
set of users over the VPN overlay network, wherein the at least
one of a second set of communication devices and second set of
users are in the at least one of a first set of communication
devices and first set of users, wherein the at least one of a third
set of communication devices and third set of users are in the at
least one of a first set of communication devices and first set of
users.

Appeal 2012-001466
Application 11/759,061

3

Rejections on Appeal2
1. The Examiner rejects claim 9 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. The Examiner rejects 1, 2, and 9 under 35 U.S.C. § 103(a) as
being unpatentable over U.S. Patent App. Pub. No. 2004/0006708 A1,
published Jan. 8, 2004 (“Mukherjee”).
3. The Examiner rejects claims 3–8 and 10–21 under 35 U.S.C.
§ 103(a) as being unpatentable over Mukherjee and U.S. Patent App. Pub.
No 2008/0183853 A1, published July 31, 2008 (filed June 28, 2007,
claiming benefit of 60/898,519, filed Jan. 30, 2007) (“Manion”).
4. The Examiner rejects claims 22–25 under 35 U.S.C. § 103(a) as
being unpatentable over Mukherjee and U.S. Patent No. 7,197,565 B2,
issued Mar. 27, 2007 (“Abdelaziz”).

ISSUE
Based upon our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
Does the Examiner err in concluding that Mukherjee would have
taught or suggested:
providing a Virtual Private Network (VPN) overlay
network for a first set of communication devices; and

2 The Examiner rejects claims 22–25 under 35 U.S.C. § 103 over a
combination of Mukherjee with Marion (ground 3) and Mukherjee with
Abdelaziz (ground 4) (see Ans. 11–12). We need not address the propriety
of the multiple grounds of rejection in view of reasoning with respect to
Mukherjee (and claim 1), infra.
Appeal 2012-001466
Application 11/759,061

4

defining a first and second peer-to-peer network over the
VPN, the first peer-to- peer network being defined for a second
set of communication devices over the VPN overlay network
and the second peer-to-peer network being defined for at least
one of a third set of communication devices and third set of
users over the VPN overlay network, wherein the at least one of
a second set of communication devices and second set of users
are in the at least one of a first set of communication devices
and first set of users, wherein the at least one of a third set of
communication devices and third set of users are in the at least
one of a first set of communication devices and first set of users
within the meaning of Appellants’ claim 1 and the commensurate limitations
of claims 10 and 22?

ANALYSIS
The Examiner rejects claim 9 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter (a “tangible computer readable medium”).
(Ans. 4.) Appellants do not dispute this rejection, instead stating that
“Appellants will gladly amend claim 9 to recite a ‘nontransitory computer
readable medium’ upon receiving a favorable decision from the Board of
Appeals.” (App. Br. 5.) Thus, we summarily affirm the Examiner’s § 101
rejection of claim 9.
The Examiner also rejects independent claim 1 under 35 U.S.C.
§ 103(a) as being obvious in view of Mukherjee. (Ans. 4–6, 13–14.)
Appellants contend that the combination does not teach the disputed features
of claim 1. (App. Br. 5–8.) Specifically, Appellants contend that claim 1
recites “a first and second peer-to-peer network [that] are defined over the
VPN overlay network . . . . [and] that the first and second peer-to-peer
Appeal 2012-001466
Application 11/759,061

5

networks have different sets of communication devices and/or users.” (App.
Br. 6.) Appellants further contend that:
When a user requests the P2P-VPN service in Mukherjee, the
user is provided with both the VPN and P2P services, thus
making it impossible for a set of users in Mukherjee to be users
of the VPN but not users of the P2P network. Furthermore,
since the P2P and VPN services are bundled, Mukherjee
cannot establish multiple P2P networks over a single VPN.
(See e.g., ¶ 34 reciting that each “VPH 222 is assigned an IP
address and serves as an endpoint for a user in a group”).
(App. Br. 6.)
We agree with Appellants that the portions of Mukherjee identified by
the Examiner (Ans. 5–6 (citing Mukherjee ¶¶ 16 and 17; Figs. 1 and 5) and
13–14 (citing Mukherjee ¶¶ 16 and 17; Figs. 1 and 5)) do not disclose, teach,
or suggest the disputed features of independent claim 1. (App. Br. 5–8.)
While Mukherjee does describe multiple peer-to-peer networks, we find no
indication that the multiple P2P networks are on the same VPN. Rather, the
P2P networks appear to be on different VPNs (supra). Accordingly, we
cannot agree that Mukherjee teaches or suggests defining multiple P2P
networks on a single VPN as required by claim 1.
Consequently, we are constrained by the record before us to find that
the Examiner erred in concluding Mukherjee teaches the recited features of
Appellants’ claim 1. Appellants’ independent claims 10 and 22 include
limitations of commensurate scope. Accordingly, we find the Examiner
erred in concluding a combination of Mukherjee with Marion or Abdelaziz
teaches the recited features of Appellants’ claims 10 and 22. Appellants’
dependent claims 2–9, 11–21, and 23–25 depend on and stand with claims 1,
Appeal 2012-001466
Application 11/759,061

6

10, and 22 respectively. Accordingly, we reverse the Examiner’s
obviousness rejections of claims 1–25.

CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claim
9 under 35 U.S.C. § 101.
Appellants have shown that the Examiner erred in rejecting claims 1–
25 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claim 9 under 35 U.S.C. § 101
and reverse the Examiner’s rejections of claims 1–25 under 35 U.S.C. § 103.

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

msc