Ex Parte Feinstein et alDownload PDFPatent Trial and Appeal BoardAug 15, 201612647681 (P.T.A.B. Aug. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/647,681 12/28/2009 75916 7590 08/17/2016 IBM AUS IPLA W (GLF) c/o Garg Law Firm, PLLC 4521 Copper Mountain Lane Richardson, TX 75082 FIRST NAMED INVENTOR Jason Wyatt Feinstein 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. A US920090256US 1 2406 EXAMINER WANG, HARRIS C ART UNIT PAPER NUMBER 2439 NOTIFICATION DATE DELIVERY MODE 08/17/2016 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): dpandya@garglaw.com uspto@garglaw.com garglaw@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASON WYATT FEINSTEIN, KIMBERLY DIANE KENNA, and YUSUF A. SIMONSON Appeal2015-000107 Application 12/647,681 Technology Center 2400 Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and NABEEL U. KHAN, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-000107 Application 12/647,681 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1, 2, 4--13, and 15-20, which constitute all the claims pending in this application. Final Act. 1. Claims 3 and 14 have been cancelled. App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claim Exemplary claim 1 under appeal reads as follows (emphasis added): 1. A computer implemented method for location based security over wireless networks, the computer implemented method compnsmg: determining, using a processor and a memory in a data processing system, a location of the data processing system based on information about a network operating in the location, the network being a previously unknown wireless network in the wireless networks; selecting by the data processing system, a security policy based on the location and the network wherein the security policy specifies a manner of accessing another data processing system from the data processing system from the location using the network; the data processing system applying the security policy to the data processing system such that the data processing system is configured in a security configuration to use the network while maintaining security according to the security policy; and detecting by the data processing system a change in the network, wherein the determining the location is based on information about the change in the network, and wherein the detecting the change causes selecting by the data processing system a second security policy. 2 Appeal2015-000107 Application 12/647,681 References and Rejections The Examiner rejected claims 1, 2, 4--13, and 15-20 under 35 U.S.C. § 103 (a) as being unpatentable over the combination of Steinberg et al. (US 2009/0005041 Al; Jan. 1, 2009) and Freund et al. (US 7,222,359 B2; May 22, 2007). 1 Appellants' Contentions 1. Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: [T]he combination of the references cited by Examiner does not teach or suggest each and every element of the claimed invention. Therefore, a prima facie case of obviousness is not established. App. Br. 13, emphasis added. 2. Appellants also contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: Steinberg's policy is about how to select a network from several known networks, based on the provider information, or the cost or bandwidth information, but not how the data processing system should behave once the data processing system is connected to a previously unknown network. App. Br. 14, emphasis added. 3. Appellants also contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: Freund requires a priori knowledge of the zones so that a user or administrator can define them and apply the different policies thereto. Pre-specifying how a data processing system behaves when in a known zone, as in Freund, is insufficient to teach or suggest the behavior when a previously unknown 1 Separate patentability is not argued for claims 2, 4--13, and 15-20. Except for our ultimate decision, these claims are not discussed further herein. 3 Appeal2015-000107 Application 12/647,681 network is encountered, including specifying a manner of accessing another data processing system from the data processing system from the location using the previously unknown network. In a section of Freund quoted and analyzed below, Freund does entertain the possibility of new networks. However, as described later in this paper, that section of Freund teaches that a user has to intervene and determine how the data processing system should behave on the new network. A user's determination about how the device should behave is not analogous to a security policy of claim 1. In fact, the user's determination can be entirely arbitrary, different from one instance to the next, and guided by considerations not within the prevue of a security policy, such as greed or opportunity. Freund teaches nothing to eliminate such possibilities, and there/ ore, the user-based determination of the device's behavior in new networks is insufficient to teach or suggest selecting a security policy to specify [a behavior of the data processing system] using the previously unknown network, as in claim 1. App. Br. 15, Appellants' emphasis omitted, Panel's emphases added. [I]n Freund, the user selects the new network and selects the level of access for operating on that network. In contrast, in claim 1, the data processing system detects a change in the network, determines a location based on the change, and selects a [second] security policy corresponding to the location. App. Br. 17-18, Appellants' emphasis omitted, Panel's emphases added. 4. Appellants also contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: Examiner asserts that the following section [at paragraph 76] of Steinberg teaches, "detecting [by] the data processing system a change in the network, wherein the determining the location is based on information about the change in the network, and wherein the detecting the change causes selecting by the data processing system a second security policy" feature of claim 1 [.] 4 Appeal2015-000107 Application 12/647,681 App. Br. 15, emphases omitted. 5. Appellants also contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: [Column 11, lines 15--47 of] Freund considers the possibility of detecting a new network. Freund teaches that a user makes the determination how to operate in the new network, such as by letting the user reconfigure the firewall. These teachings are insufficient to teach, "selecting by the data processing system a second security policy" as in claim 1. App. Br. 17, emphasis omitted. 6. Appellants also contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: Steinberg uses location information to select a network. Claim 1 detects a change in the network and determines a location. The two features are opposite of one another and teaching one is insufficient to teach or suggest the opposite recited in claim 1. App. Br. 16. As in Steinberg, this section [at column 11, lines 15--47] of Freund also pertains to how to select or use a network, not determining the location based on a change in the network. App. Br. 17. 7. Appellants also contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: Examiner appears to use a personal opinion unsupported by the reference. Examiner considers that the "policy established by ... an administrator" teaches that the policy in Freund is not only teaching "that a user has to intervene" but also teaches a predetermined selected security policy to specify a behavior of a data processing system using the previously unknown network as claimed (i.e. the policy of marking all new networks as untrusted in Freund). These arguments are unsupported in the reference. 5 Appeal2015-000107 Application 12/647,681 App. Br. 18. Issues on Appeal Did the Examiner err in rejecting claim 1 as being obvious? ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We disagree with Appellants' conclusions. As to Appellants' above contention 1, we disagree. Appellants argument that the references must teach or suggest each and every element of the claimed invention overlooks the Court's decision in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Appellants argue that a teaching or suggestion is required, without acknowledging that the Court specifically repudiated that such a "teaching or suggestion" is required to show obviousness. KSR, 550 U.S. at 415 ("We begin by rejecting the rigid approach of the Court of Appeals."). Rather, the requirement is only that the Examiner show "the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." KSR, 550 U.S. at 406 (quoting 35 U.S.C. § 103) (emphasis added); id. at 418 ("[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ."). As to Appellants' above contention 2, we disagree. Appellants argue that Steinberg does not teach or suggest "how the data processing system 6 Appeal2015-000107 Application 12/647,681 should behave once the data processing system is connected to a previously unknown network." App. Br. 15. However, Examiner did not cite Steinberg for the limitation. Rather, the Examiner cited Freund for teaching "a security configuration to use the network while maintaining security according to the security policy wherein the network being a previously unknown wireless network." Final Act. 5. We conclude that Appellants' argument ignores the actual reasoning of the Examiner's rejections. Instead Appellants attack the Steinberg reference singly for lacking a teaching that the Examiner relied on a combination of references to show. It is well established that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). The effect of Appellants' argument is to raise and then knock down a straw man rejection of claim 1 that was never made by the Examiner in that the Examiner did not rely solely on Steinberg as argued. In other words, Appellants argue Examiner findings that were never made. This form of argument is inherently unpersuasive to show Examiner error. Our reviewing court requires that references must be read, not in isolation, but for what they fairly teach in combination with the prior art as a whole. Merck, 800 F.2d at 1097 (Fed. Cir. 1986). As to Appellants' above contention 3, we disagree. First, contrary to Appellants' argument that "[p ]re-specifying how a data processing system behaves when in a known zone, as in Freund, is insufficient to teach or suggest the behavior when a previously unknown network is encountered" (App. Br. 15), the Examiner correctly points to Freund at column 14, lines 7 Appeal2015-000107 Application 12/647,681 1-12 (Final Act. 5 and Ans. 5) which state "the system may be configured to treat all newly discovered networks as untrusted." Further, Freund states that "[t]he system administrator or user may also pre-configure the system so that all unknown networks will be automatically excluded from the trusted zone." Freund 8: 17-20. Second, contrary to Appellants' argument that "Freund teaches that a user has to intervene and determine how the data processing system should behave on the new network" (App. Br. 15.), "rules can be established in advance by the user or an administrator." Freund 11:33-34. Third, as to Appellants' argument that Freund fails to render obvious the claimed invention because in Freund "the user's determination can be entirely arbitrary, different from one instance to the next, and guided by considerations not within the prevue of a security policy, such as greed or opportunity" (App. Br. 15), we disagree. We conclude that, contrary to Appellants' argument, a user-based pre-specified determination of the device's behavior in new networks as taught by Freund is sufficient to suggest selecting a security policy. We note Appellants' Specification teaches that a selected security policy may be selecting any one of the least restrictive network, the most restrictive network, or the network that offers the most privileges. We conclude that Appellants' selecting is arbitrary in the same way that Appellants argue Freund is arbitrary. Fourth, although Appellants are correct that Freund teaches "the user selects the new network and selects the level of access for operating on that network" (App. Br. 17), the Examiner correctly points out that Freund also teaches "detecting at the data processing system a change in the network, wherein the determining the location is based on information about the 8 Appeal2015-000107 Application 12/647,681 change in the network, and wherein the detecting the change causes selecting at the data processing system a second security policy." Final Act. 6. We agree with the Examiner that an artisan reading column 11, lines 18- 23, of Freund would understand Freund to teach both "[t]he ability to detect and distinguish between networks enables different security settings to be applied, [ (a)] by [a] user ... " (as argued by Appellants) or (b) by an established security policy (i.e., by the data processing system as argued by the Examiner), depending on which network the device is connected to at that time. Id. These security settings are then automatically applied to reconfigure the device's firewall. As to Appellants' above contention 4, we disagree. We have reviewed the Examiner's rejection of claim 1, and are unable to find any assertion by the Examiner that corresponds to the argument presented by Appellants. Therefore, this argument is unpersuasive. As to Appellants' above contention 5, we disagree for the reasons set forth above as to contention 3. As to Appellants' above contention 6, we disagree. The Examiner correctly points out (Final Act. 4---6) that both Steinberg (i-f 53) and Freund (col. 1) teach the relationship of a network and a location parameter. We conclude that contrary to Appellants' argument, an artisan would have understood that selecting a network renders obvious determining a location of that selected network. As to Appellants' above contention 7, again we disagree for the reasons set forth above as to contention 3. 9 Appeal2015-000107 Application 12/647,681 CONCLUSIONS (1) The Examiner has not erred in rejecting claims 1, 2, 4--13, and 15-20 as being unpatentable under 35 U.S.C. § 103(a). (2) Claims 1, 2, 4--13, and 15-20 are not patentable. DECISION The Examiner's rejection of claims 1, 2, 4--13, and 15-20 is affirmed. 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 10 Copy with citationCopy as parenthetical citation