Ex Parte Fenton et al

Board of Patent Appeals and Interferences

Jul 23, 2010

10040573 (B.P.A.I. Jul. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/040,573 11/02/2001 Charles S. Fenton 103036.00014 2730
82744 7590 07/23/2010
AT&T Legal Department - JW
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
POLTORAK, PIOTR
ART UNIT PAPER NUMBER
2434
MAIL DATE DELIVERY MODE
07/23/2010 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 CHARLES S. FENTON, and KEITH E. SHAFER
____________________

Appeal 2008-0061481
Application 10/040,573
Technology Center 2100
____________________

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Before: JEAN R. HOMERE, DEBRA K. STEPHENS, and
JAMES R. HUGHES, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
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Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-5, 8-10, 14, 21-29, 33-39, 41-43, and 47-55. Claims 6,
7, 11-13, 15-20, 30-32, 40, and 44-46 have been canceled. (Br., 2). We have
jurisdiction under 35 U.S.C. § 6(b) (2008).
We AFFIRM.
Introduction
According to Appellants, the invention is a system and method for
secure communication between two entities (Spec., 1 and Abstract). A
virtual private proxy is generated between the two entities based on
agreement between the two entities (Abstract). Each entity has a virtual
private proxy associated with it (id.). When data is monitored, if the data
associated with the first entity violates the agreement, the data is disallowed
(id.).

STATEMENT OF THE CASE

Exemplary Claim(s)
Claim 1 is an exemplary claim and is reproduced below:
1. A method for secure communication comprising:
generating a plurality of virtual private proxies based on
an agreement between a first entity and a second entity;

associating a first virtual private proxy of the plurality of
virtual private proxies with the first entity and a second virtual
private proxy of the plurality of virtual private proxies with the
second entity;

monitoring data at the first virtual private proxy
associated with the first entity;
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determining whether the data violates the agreement; and

disallowing communication of the data from the first
virtual private proxy to the second virtual private proxy when
the data violates the agreement.

Prior Art

Dan (Dan ‘290)
Reed
Ashdown
Dan (Dan ‘103)
Epstein
US 6,148,290
US 6,266,704 B1
US 6,308,276 B1
US 2002/0178103 A1
US 6,684,329 B1
Nov. 14, 2000
Jul. 24, 2001
Oct. 23, 2001
Nov. 28, 2002
Jan. 27, 2004
Charles P. Pfleeger, “Security In Computing”, pp. 270-273, 2nd Ed., 1996,
ISBN: 0-13-37486-6. (Pfleeger)

Rejections
Claims 1-4, 14, 24-26, 28-29, 37, 41, 43, and 52-54 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Dan ‘290, and
Epsteine.
Claims 5 and 47 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dan ‘290, Epsteine, and Reed.
Claims 5 and 47 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dan ‘290, Epsteine, and Pfleeger.
Claims 38, 39 and 53 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dan ‘290, Epsteine, and Ashdown.
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Claims 8-10, 21-23, 27, 33-36, 42, and 55 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Dan ‘290, Epsteine, and Dan
‘103.
Claims 48-51 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dan ‘290, Epsteine, Pfleeger, and Dan ‘103.
Claims 48-51 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dan ‘290, Epsteine, Reed, and Dan ‘103.

GROUPING OF CLAIMS

(1) Appellants argue all of the independent claims 1, 14, 26, 41, and
55 with respect to independent claim 1 (Br. 5-11). We select
independent claim 1 as the representative claim. We treat the
dependent claims, 2-5, 21-25, 27-29, 33-39, 42, 43, and 47-54 as
standing or falling with their respective dependency as they were
not separately argued. Therefore, claims 2-5, 8-10, 14, 21-29,
33-39, 41-43, and 47-55 stand or fall with representative claim 1.
(2) Appellants argue claim 8 separately (Br. 10). Claims 9 and 10
depend from claim 8 and were not separately argued; therefore,
claims 9 and 10 stand or fall with claim 8.
See 37 C.F.R. § 41.37(c)(1)(vii).

35 U.S.C. § 103(a): claims 1-4, 14, 24-26, 28-29, 37, 41, 43, and 52-54
ISSUE 1A
Appellants assert their invention is not obvious over Dan ‘290 and
Epsteine because Dan ‘290 does not teach or suggest generating a plurality
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of virtual private proxies (VPP) (App. Br. 5). Instead, according to
Appellants, Dan ‘290 teaches enforcement code components that are
components of a business service application that is public (App. Br. 5-6).
Because Dan ‘290 explicitly declares the public nature of the environment to
be an important aspect of Dan ‘290’s invention, Appellants contend Dan
‘290 does not teach the limitation recited (App. Br. 6).
Appellants next argue Dan ‘290 does not teach proxies being
generated (App. Br. 6). Specifically, Appellants contend none of the
elements of Dan ‘290 cited qualify as proxies or are described as proxies
(id.).
The Examiner finds Appellants did not defined various terms
including “private” and “proxy” (Ans. 12). The Examiner then finds, in
light of definitions one of ordinary skill in the art would attribute to these
terms, Dan ‘290's invention includes enforcement components that are a
plurality of virtual proxies, for enforcing particular service contracts and
services on behalf of enterprise networks (private entities) that result in the
business service provider controlling a "service implementation component
that executes . . . entirely on the service execution engine of the business
service provider" (Ans. 11-12, 16-17, and 19). Accordingly the Examiner
finds Dan ‘290 discloses that a plurality of virtual private proxies are
generated (Ans. 11-13).
Issue 1A Have Appellants shown the Examiner erred in finding Dan
‘290 discloses “generating a plurality of virtual private proxies?”

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FINDINGS OF FACT (FF)
Appellants’ Specification
(1) A VPP may be a logical entity (Spec. 10, ll. 8).

Dan ‘290
(2) Dan ‘290 teaches a method and system for managing an
automated business service system including multiple parties and a service
contract specifying rules of interaction between the parties during service
transactions (Abstract). The provider of the business service 500 controls
and has full knowledge of the actual service implementation component 508
while the end user or client application only knows how to interact via the
enforcement code component 502 and the contract specification 514
provided (col. 6, ll. 2-5).
(3) A business service application 500 includes separate
enforcement code components 502, 504 and 506 for enforcing a service
contract(s) and service implementation component 508 which contains
service implementation logic. In an example, the enforcement code
components 502 and 512 are automatically generated from a single service
contract 514 and executed on the service execution engine 510 and the client
engine 516, respectively to ensure enforcement of interaction rules. The
service contract specifies the rules of interaction between the parties
including the permitted interaction patterns by the client and the required
interaction pattern behaviors of the service provider. (Col. 5, ll. 49-63, col.
6, ll. 11-34, and Fig. 5).
(4) [T]he enforcement code components can serve many purposes
in the function of enforcing the specifications of the service
contract. For example, enforcement code 512, upon receiving a
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request to be sent from the application 526, can log the request
(noting time and content), number the request for correlation to
an anticipated response, provide a signing function, include a
timer function and notification in event of timeout and pass the
request by a chosen protocol. When receiving a request or
response from the service application 500, the enforcement
code component can provide some of the functions listed
hereinabove and also can determine whether the message is a
response or a request, check validity of response and take
appropriate action.

(Col. 6, ll. 26-38).

Dictionary
(5) A “proxy” is defined as “authority or power to act for another”
Merriam-Webster’s Collegiate Dictionary 938 (10th ed. 2000).
(6) “Private” is defined as “intended for or restricted to use of a
particular person, group, or class” Merriam-Webster’s Collegiate Dictionary
925 (10th ed. 2000).

ANALYSIS
After consideration, we adopt the Examiner’s findings that Dan ‘290
teaches generating virtual private proxies. Appellants have not defined
“virtual private proxy” (See Spec. 9-10). “In the absence of an express
intent to impart a novel meaning to the claim terms, the words are presumed
to take on the ordinary and customary meanings attributed to them by those
of ordinary skill in the art.” Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc.,
334 F.3d 1294, 1298 (Fed. Cir. 2003) (internal citations omitted). The
“ordinary and customary meaning of a claim term is the meaning that the
term would have to a person of ordinary skill in the art in question at the
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time of the invention, i.e., as of the effective filing date of the patent
application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
(en banc). We determine the scope of the claims in patent applications not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
In Dan ‘290, the enforcement code components can have many
functions (FF 3). Given the proposed functions set forth by Dan ‘290, we
find the enforcement code components (computer logic) have the function of
standing in for another (the agreement) (FF 5). Thus, we find that the
enforcement code components are proxies.
Additionally, Dan ‘290 teaches a business service implementing
separate enforcement code components executed on different engines (FF 2
and 3). Since these proxies can be restricted to use of a particular device,
group or person (FF 6), we find these virtual proxies are private. According
to Dan ‘290, a single service contract is utilized to generate the enforcement
code components 502 and 512 (FF 3). Therefore, we find the enforcement
code components are generated based on an agreement. Moreover, since
each enforcement code component is generated to be executed on respective
engines, we find the proxies are each associated with a different entity (FF 3
and Fig. 5).
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In light of these teachings by Dan ‘290, we find Appellants have
failed to persuade us of error in the Examiner’s findings that Dan ‘290
teaches generating virtual private proxies.

ISSUE 1B
Appellants further contend Dan ‘290 and Epsteine do not teach or
suggest “determining whether the data violates the agreement” or
“disallowing communication of the data from the first virtual proxy to the
second virtual private proxy when the data violates the agreement” (App. Br.
7 and 8). According to Appellants, Dan ‘290 instead describes automatic
generation of code used to implement a service contract (App. Br. 7).
The Examiner finds Dan ’290 discloses an agreement that is used to
take appropriate action based on the agreement data to be communicated
from first entity utilizing a first proxy and second entity utilizing a second
proxy (Ans. 14-15 and 20). The Examiner further finds that Epsteine
teaches allowing data communication based on an agreement and concludes
it would have been obvious to one of ordinary skill in the art at the time of
Appellants’ invention to disallow communication of data between entities as
taught by Dan ‘290 based on an agreement as taught by Epsteine (Ans. 15
and 20).
Issue 1B: Have Appellants shown the Examiner erred in finding the
prior art teaches “determining whether the data violates the agreement” and
“disallowing communication of the data from the first virtual proxy to the
second virtual private proxy when the data violates the agreement?”

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FURTHER FINDINGS OF FACT (FF)
Epsteine
(7) In a generic example, a firewall system 120 screens all
connections between a private network 110 and an untrusted system 140.
During the screening process, the “firewall system 120 determines which
traffic should be allowed and which traffic should be disallowed based on a
predetermined security policy.” (Col. 1, ll. 19-26 and Fig. 1).

ANALYSIS
We find Dan ‘290 teaches determining if the data violates the
agreement as the data is transferred via the enforcement code components
which ensure enforcement of the interaction rules (FF 3). Therefore, we find
it inherent that these enforcement code components would need to determine
whether the data violates the interaction rules in order to enforce them.
Accordingly, we find Dan ‘290 teaches “determining whether the data
violates the agreement.”
We further find that the combination of Dan ‘290 and Epsteine
teaches disallowing traffic based on an agreement (FF 7). Thus, we find
Dan ‘290’s teaching of communications between proxies (as discussed
above in Issue 1A) according to an agreement (FF 3) and Epsteine’s
teaching of disallowing communication according to an agreement teach
“disallowing communication of the data from the first virtual proxy to the
second virtual proxy when the data violates the agreement.”

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ISSUE 1C
Appellants argue no motivation exists to modify Dan ‘290’s public
system using Epsteine’s firewall enhancement system (App. Br. 6-7).
Specifically, Appellants argue that since Dan ‘290’s business service
application is public, implementing Epsteine’s firewall enhancement system
would undermine a fundamental principle of operation of Dan ‘290 (App.
Br. 7).
The Examiner finds Epsteine suggests allowing or disallowing data
communication based on a security policy which the Examiner finds to be a
predetermined agreement (Ans. 4 and 14). Thus, the Examiner finds it
would have been obvious to one of ordinary skill in the art at the time of
Appellant's invention to “disallow communication of the data between the
first entity (using a first virtual proxy) and the second entity (using the
second virtual proxy) as disclosed by Dan ‘290, based on an agreement as
disclosed by Epsteine” to achieve a system that would allow only traffic
conforming to a predetermined security policy (Ans. 4, 14, and 17-20).
Issue 1C: Have Appellants shown the Examiner erred in finding one
of ordinary skill in the art would have been motivated to combine Epsteine’s
firewall enhancement system into the system of Dan ‘290?

ANALYSIS
We disagree that implementing Epsteine’s firewall enhancement
system would undermine a fundamental principle of operation of Dan ‘290.
As discussed above with respect to Issue 1A, we find that Dan ‘290 teaches
private proxies. Using a firewall to allow or disallow traffic based on an
agreement does not undermine the basic principle of Dan ‘290 which teaches
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private proxies and other elements of a business service system that permits
communication between entities according to rules of interaction. Indeed,
we find an ordinary artisan would have possessed the knowledge and skills
rendering one capable of combining the technology of Epsteine into the
system of Dan ‘290 as Dan ‘290 already suggests enforcement of interaction
between proxies. (“[T]he proper question is whether the ordinary artisan
possesses knowledge and skills rendering him capable of combining the
prior art references.” DyStar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (emphasis in
original). We find the Examiner has articulated a motivation with a rational
underpinning and Appellants have not persuaded us that the Examiner erred
in finding one of ordinary skill in the art would have been motivated at the
time Appellants’ invention was made, to combine Epsteine’s firewall
enhancement system into the system of Dan ‘290.

ISSUE 2
35 U.S.C. § 103(a): claims 8-10
Appellants argue Dan does not teach an agreement that includes the
types of data allowed and the Examiner did not “even allege that the
references teach or claim this element” (App. Br. 10).
The Examiner finds that to perform a comparison to determine if data
is allowable, as discussed in Issue 1B, the data that is allowed must be listed
(Ans. 15). The Examiner further finds Dan teaches Dan '103, provides
exemplary types of data that could be found in an agreement including types
of protocols used (Ans. 15-16). Thus, the Examiner concludes, it would
have been obvious to one of ordinary skill in the art at the time of applicant's
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invention to include allowable data types in an agreement given the benefit
of fine control of data communication (Ans. 16).
Issue 2: Have Appellants shown the Examiner erred in finding Dan
‘103 teaches “the agreement comprises types of data allowed?”

FURTHER FINDINGS OF FACT (FF)
Dan ‘103
(8) Dan is directed toward automatic contract negotiation between
multiple parties over a communication network (Abstract). The parties
determine a negotiation protocol before the negotiation process including
transport protocol (communication protocol, encoding, and transport security
information) (Abstract, pg. 1, [0005], and Fig. 3).
(9) Possible elements of a negotiation meta contract 110 that define
information about the meta contract include many variations and
combinations of types of information, for example,
general information 120, information about roles and participants 130,
delivery channels 140 and transport protocol 150, document-exchange
(DocExchange) protocol 160, negotiation protocol 170, sequencing
rules 180 and policy constraints 190. The negotiation protocol 170
defines the negotiation operations, e.g., actions for selecting and
changing values of parameters, actions for changing constraints, etc.
A set of sequencing rules 180 may be provided in meta contract 110
to ensure that the various negotiation actions are being issued in the
correct order. The meta contract may also provide a set of policy
constraints 190 for governing the negotiation. Policy constraints may
include, for example, time constraints that specify the amount of time
in which a response is required or the amount of time allowed before
an offer is withdrawn.

(pg. 3, [0032]).

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ANALYSIS
We find Dan ‘103 teaches determining the type of data permitted and
including those types of data allowed as part of the agreement (if it is the
right protocol, meets time constraints, etc.) (FF 8 and FF 9). Thus, we find
Appellants have not shown the Examiner erred in finding Dan ‘103 teaches
“the agreement comprises types of data allowed.”

ISSUE 3
35 U.S.C. § 103(a): claims 5, 47
35 U.S.C. § 103(a): claims 38, 39, 53
35 U.S.C. § 103(a): claims 21-23, 27, 33-36, 42 and 55
35 U.S.C. § 103(a): claims 48-51
Appellants presented no separate arguments for these rejections.
Accordingly, Appellants have not presented any evidence or arguments to
persuade us of error in the Examiner’s rejections of these claims. Therefore,
these claims fall with their respective independent claims.

CONCLUSION
Appellants have not shown that the Examiner erred in finding claim 1
and similarly argued claims 14, 26, 41, and 55 reciting commensurate
language obvious over Dan ‘290 and Epsteine. Since dependent claims 2-5,
21-25, 27-29, 33-39, 42, 43, and 47-54 depend either directly or indirectly
from representative and independent claims 1, 14, 26, or 41, and were not
argued separately, Appellants have not shown the Examiner erred in finding
claims 2-5, 21-25, 27-29, 33-39, 42, 43, and 47-54 obvious. Additionally,
Appellants have not shown the Examiner erred in rejecting claim 8 for
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obviousness and thus, its dependent claims 9 and 10 fall with claim 8.
Accordingly, Appellants have not shown the Examiner erred in rejecting
claims 1-5, 8-10, 14, 21-29, 33-39, 41-43, and 47-55 under 35 U.S.C.
§ 103(a) for obviousness.

DECISION
The Examiner’s rejection of claims 1-4, 14, 24-26, 28-29, 37, 41, 43,
and 52-54 under 35 U.S.C. § 103(a) as being unpatentable over Dan ‘290,
and Epsteine is affirmed.
The Examiner’s rejection of claims 5 and 47 under 35 U.S.C. § 103(a)
as being unpatentable over Dan ‘290, Epsteine, and Reed is affirmed.
The Examiner’s rejection of claims 5 and 47 under 35 U.S.C. § 103(a)
as being unpatentable over Dan ‘290, Epsteine, and Pfleeger is affirmed.
The Examiner’s rejection of claims 38, 39 and 53 under 35 U.S.C.
§ 103(a) as being unpatentable over Dan ‘290, Epsteine, and Ashdown is
affirmed.
The Examiner’s rejection of claims 8-10, 21-23, 27, 33-36, 42, and 55
under 35 U.S.C. § 103(a) as being unpatentable over Dan ‘290, Epsteine and
Dan ‘103 is affirmed.
The Examiner’s rejection of claims 48-51 under 35 U.S.C. § 103(a) as
being unpatentable over Dan ‘290, Epsteine, Pfleeger, and Dan ‘103 is
affirmed.
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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) (2009).

AFFIRMED

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