Ex Parte DinhaDownload PDFPatent Trial and Appeal BoardDec 12, 201613528682 (P.T.A.B. Dec. 12, 2016) Copy Citation 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. 13/528,682 06/20/2012 Francis Dinha PrivTunnelNet 8379 41173 7590 12/14/2016 PETER JAMES TORMEY 2017 ESPERANZA DRIVE CONCORD, CA 94519 EXAMINER SALEHI, HELAI ART UNIT PAPER NUMBER 2433 NOTIFICATION DATE DELIVERY MODE 12/14/2016 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): PJTormey @ Gmail, com PT@AnTLegal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANCIS DINHA Appeal 2016-001168 Application 13/528,682 Technology Center 2400 Before JUSTIN BUSCH, CATHERINE SHIANG, and LINZY T. McCARTNEY, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1—7, 9—17, and 20, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. STATEMENT OF THE CASE Introduction According to the Specification, the present invention relates to a private tunnel network. See generally Spec. 1. Claim 1 is exemplary: Appeal 2016-001168 Application 13/528,682 1. A device comprising: a processor; a memory, coupled to said processor; a private tunnel connector coupled to said processor, said private tunnel connector operable to: receive a network connection request; query a first domain name server (DNS) for a predetermined internet protocol (IP) address associated with the network connection request; query a second domain server for a private tunnel address in response to the predetermined IP address; generate network connection information including the private tunnel address, and respond to the network connection request with the network connection information. References and Rejections Claims 1—7 and 9—14 are rejected under 35 U.S.C. § 102(e) as being anticipated by Sinha (US 8,464,335 Bl; issued June 11, 2013). Claims 15—17 and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Sinha and Chang (US 2013/0283364 Al; published Oct. 24, 2013). ANALYSIS Anticipation We have reviewed the Examiner’s rejection in light of Appellant’s contentions and the evidence of record. We concur with Appellant’s contention that the Examiner erred in finding Sinha discloses “a private tunnel connector coupled to said processor, said private tunnel connector operable to . . . query a first domain name server (DNS) for a predetermined 2 Appeal 2016-001168 Application 13/528,682 internet protocol (IP) address associated with the network connection request; query a second domain server for a private tunnel address in response to the predetermined IP address,” as recited in independent claim 1 (emphases added).1 See App. Br. 5—9; Reply Br. 4—5. The Examiner initially cites Sinha’s column 16, lines 14—65 and Figure 6, 606 for disclosing the italicized claim limitations. See Ans. 2—3. Appellant argues, and we agree, the Examiner fails to show the cited Sinha portions disclose “a first domain name server (DNS)” and “a second domain server,” as required by the claim. See App. Br. 5—9. In response to Appellant’s arguments, the Examiner cites Sinha’s disclosure of a single DNS. See Ans. 11. But the claim requires “a first domain name server (DNS)” and “a second domain server.” Claim 1. Sinha’s single DNS is insufficient for disclosing both claim terms. See Reply Br. 4—5. Further, the Examiner asserts “there are Domain Name Servers,” because Sinha discloses the Internet 608. Ans. 11. Even if the Examiner’s assertion is true, the Examiner has not shown Sinha discloses those “Domain Name Servers” are arranged to teach a private tunnel connector coupled to said processor, said private tunnel connector operable to . . . query a first domain name server (DNS) for a predetermined internet protocol (IP) address associated with the network connection request; query a second domain server for a private tunnel address in response to the predetermined IP address, 1 Appellant raises additional arguments with respect to the anticipation rejection. Because the identified issue is dispositive of the appeal with respect to the anticipation rejection, we do not reach the additional arguments. 3 Appeal 2016-001168 Application 13/528,682 as required by the claim. See Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987) (“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”) (citations omitted). See Reply Br. 4. Because the Examiner fails to provide sufficient evidence or explanation to support the anticipation rejection, we are constrained by the record to reverse the Examiner’s rejection of claim 1. Independent claim 7 recites a claim limitation that is substantively similar to the disputed limitation of claim 1. See claim 7. Therefore, for similar reasons, we reverse the Examiner’s rejection of independent claim 7. We also reverse the Examiner’s rejection of dependent claims 2—6 and 9—14, which depend from claims 1 and 7. Obviousness With respect to claim 15, Appellant argues: Similarly to claims 1 and 7 above, Sinha makes no mention of querying a first and a second domain server. Sinha would need a second DNS to accomplish this step. As shown above, Sinha’s central authority is not a domain sever and does not provide a second IP address. App. Br. 14. Appellant’s argument is not commensurate with the scope of claim 15, as Appellant has not shown claim 15 includes the disputed claim limitations of claims 1 and 7. Appellant further argues: 4 Appeal 2016-001168 Application 13/528,682 Moreover, the text of claim 15 provides for operations on a first and second encapsulated message. Neither Sinha nor Chang disclose multiple encapsulated messages. They both appear to operate on a single secure tunnel (see Chang abstract and Sinha's references to VPN above). App. Br. 14. In response to Appellant’s arguments, the Examiner provides further findings showing Sinha teaches the disputed claim limitations. See Ans. 13. In particular, the Examiner cites Sinha’s column 6, lines 34—37 and column 15, lines 62—67 for teaching “a first encapsulated message” and “a second encapsulated message.” See Ans. 13. Appellant fails to persuasively respond to such findings, and, therefore, fails to show error in the Examiner’s findings. See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court [or this Board] to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). Because Appellant has not persuaded us the Examiner erred, we sustain the Examiner’s rejection of claim 15, and claims 16, 17, and 20, which Appellant does not separately argue with substantive contentions. DECISION We reverse the Examiner’s decision rejecting claims 1—7 and 9—14. We affirm the Examiner’s decision rejecting claims 15—17 and 20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 5 Copy with citationCopy as parenthetical citation