Ex Parte Fork et al

Patent Trial and Appeal Board

Sep 30, 2016

13183884 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/183,884 07/15/2011
46797 7590 10/04/2016
Patterson & Sheridan, LLP
24 Greenway Plaza, Suite 1600
Houston, TX 77046
FIRST NAMED INVENTOR
MICHAEL J. FORK
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.
ROC920110073US 1 9260
EXAMINER
RACIC, MILENA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
Pair_eOfficeAction@pattersonsheridan.com
IBM@P ATTERSONSHERIDAN.COM
rociplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte MICHAEL J. FORK, CHRISTOPHER T. GLOE, and
KEVIN G. PATERSON
Appeal2014-009002 1
Application 13/183,8842
Technology Center 3600
Before MURRIEL E. CRAWFORD, JAMES A. WORTH, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-25. We have jurisdiction under 35 U.S.C. §§ 134
and 6(b).
We AFFIRM-IN-PART.
1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed
Mar. 24, 2014) and Reply Brief ("Reply Br.," filed Aug.18, 2014), and the
Examiner's Final Office Action ("Final Act.," mailed Oct. 22, 2013) and
Answer ("Ans.," mailed June 16, 2014).
2 According to Appellants, the real party in interest is International Business
Machines Corporation (Appeal Br. 3).
Appeal2014-009002
Application 13/183,884
Introduction
Appellants' disclosure relates to "cloud-based computing
environments [and] to providing secure access to applications executing on
virtual machines accessed over public facing networks." (Spec. i-f 1 ).
Claims 1, 10, and 18 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A method of configuring access to an
application executed on a virtual machine (VM)
instance, the VM instance being hosted in a
computing cloud and including virtualized hardware,
the method comprising:
configuring a dummy interface on the VM
instance, wherein the dummy interface is assigned a
network address that is inaccessible from the public
interface, and wherein the dummy interface creates an
interface for a network that exists only on the VM
instance;
binding the application executed on the VM
instance to the dummy interface; and
establishing a VPN connection between a
VPN server on the VM instance and a VPN client
executing on a remote computing system, wherein a
VPN interface on the VPN client is assigned a
network address that is routable to the dummy
interface, and wherein an application executed on the
VPN client forwards packets to the application
executed on the VM instance over the VPN
connection.
(Appeal Br., Claims App.)
2
Appeal2014-009002
Application 13/183,884
Rejections on Appeal
The Examiner maintains, and Appellants appeal, the following
rejections:
I. Claims 1, 7-8, 10, 16-18, 24, and 25 stand rejected under
35 U.S.C. § 112 (pre-AIA), second paragraph, as being
indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant
regards as the invention.
II. Claims 1--4, 8, 10-13, 17-21, and 25 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Bazzinotti
(US 7 ,444,415 B 1, iss. Oct. 28, 2008) and Suri (US
2010/0131636 Al, pub. May 27, 2010).
III. Claims 5-7, 14--16, and 22-24 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Bazzinotti,
Suri, and Yang (US 2009/0328192 Al, pub. Dec. 31,
2009).
IV. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bazzinotti, Suri, and Breitgand
(US 2012/0240110 Al, pub. Sept. 20, 2012).
ANALYSIS
Rejection I (Indefiniteness)
Claims 1, 7-8, 10, 16--18, 24, and 25
Appellants do not contest the Examiner's rejection of claims 1, 7-8,
10, 16-18, 24, and 25 rejected under 35 U.S.C. § 112 (pre-AIA), second
paragraph, as being indefinite for failing to particularly point out and
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Appeal2014-009002
Application 13/183,884
distinctly claim the subject matter which the applicant regards as the
invention. Accordingly, we sustain the Examiner's rejection under 35
U.S.C. § 112 (pre-AIA), second paragraph.
Rejections II-IV (Obviousness)
We reverse proforma the rejections under 35 U.S.C. § 103(a) of
claims 1-25 because the claims are indefinite or depend from claims subject
to an indefiniteness rejection. In re Steele, 305 F.2d 859 (CCPA 1962)
(analysis of prior art rejection would require considerable speculation as to
meaning of the terms employed and assumptions as to the scope of such
claims).
DECISION
The Examiner's decision to reject claims 1, 7-8, 10, 16-18, 24, and
25 under§ 112, second paragraph, is affirmed.
The Examiner's decision to reject claims 1-25 under§ 103 is
reversed.
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
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