11157880 (P.T.A.B. Feb. 9, 2015)

Ex Parte Garg et al

Patent Trial and Appeal BoardFeb 9, 2015

11157880 (P.T.A.B. Feb. 9, 2015)

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. 11/157,880 06/21/2005 Sachin Garg 5123-44 - 291387.000 8236 48289 7590 02/09/2015 Cozen O''Connor 277 Park Avenue NEW YORK, NY 10172 EXAMINER SHAIFER HARRIMAN, DANT B ART UNIT PAPER NUMBER 2434 MAIL DATE DELIVERY MODE 02/09/2015 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SACHIN GARG and NAVJOT SINGH ____________________ Appeal 2012-010510 Application 11/157,880 Technology Center 2400 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-010510 Application 11/157,880 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1–19, 21–42, and 44–51. Claims 20 and 43 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. A. INVENTION According to Appellants, the invention relates to countering denial-of- service attacks in communication appliances which deploy voice over Internet Protocol (¶1). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1. A method for preventing or limiting the effects of denial- of- service attacks in an endpoint communication appliance having a packet-classification rule base which allows all legitimate packets to be processed by the endpoint communication appliance, the method comprising the steps of: monitoring incoming packets to the endpoint communication appliance to determine whether conditions indicating a denial-of-service attack are present; and selecting a rule base subset of the packet-classification rule base from a plurality of rule base subsets based on a current one of a plurality of separate and distinct operating states of the endpoint communication appliance when the conditions indicating a denial-of-service attack are determined to be present, wherein each of the plural operating states has at least one of a different maximum legitimate packet ingress rate and a different maximum legitimate packet egress rate, and Appeal 2012-010510 Application 11/157,880 3 wherein the plurality of rule base subsets includes rules allowing only critical packets to be forwarded to the endpoint communication appliance, and wherein a packet type of at least one of the critical packets is different for each of the rule base subsets. C. REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: Rothermel US 6,678,827 B1 Jan. 13, 2004 Schumacher Matsuhira US 2004/0205359 A1 Oct. 14, 2004 Schumacher US 7,536,573 B2 May 19, 2009 March WO 02/103982 A2 Dec. 27, 2002 Claims 1–19, 21–42, and 44–50 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over March, Schumacher, and Rothermel. Claim 51 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over March, Schumacher, Rothermel, and Matsuhira. II. ISSUE The principal issue before us is whether the Examiner erred in finding that the combination of March and Rothermel teaches or would have suggested “selecting a rule base subset . . . from a plurality of rule base subsets based on a current one of a plurality of separate and distinct operating states of the endpoint communication appliance” wherein “the plurality of rule base subsets includes rules allowing only critical packets to be forwarded.” (Claim 1 (emphases added)). Appeal 2012-010510 Application 11/157,880 4 III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. March 1. March discloses Session Initiation Protocol (SIP) used to initiate call sessions as well as to invite members to a session, Real-Time Protocol (RTP) for transporting real-time data, and standards such as the H.323 Recommendation to provide call control signaling (p. 4, l. 27 – p. 5, l. 8). 2. Media portal allows only IP packets containing RTP/RTCP payloads to traverse the media portal onto the service provider private network (p. 5, ll. 23–26). IV. ANALYSIS Appellants contend “[t]he present invention takes advantage of the separate and distinct operating states of the endpoint” (App. Br. 6), wherein “[a] significant difference between [the claimed] communication appliances e.g., IP phones, and other network elements is that endpoint communication appliances have a plurality of separate and distinct operating states” (App. Br. 7). Although Appellants concede March discloses “security checks,” Appellants contend “March does not teach or suggest that these security checks are separate and distinct from each other, i.e., that each is performed in a separate operating state” (App. Br. 8). According to Appellants, in March, “only RTP/RTCP related packets are filtered” and thus “March does not filter packets based on ‘operating states of the endpoint communication appliance’” (App. Br. 9). Appeal 2012-010510 Application 11/157,880 5 However, the Examiner finds “March teaches that user stations 22 and 24 can be network telephones (i.e. which include interfaces to enable communication with a packet based network) or IP phones that are capable of participating in real time interactive communication sessions” (Ans. 39). The Examiner finds March also discloses “H.323 can be used to provide call control signaling in packet based networks in a call session between endpoints,” “media portal 44 and 45 only allows IP packets containing RTP/RTCP payloads from the endpoints, and discards all other IP packets,” and “user station B responds with a SIP Ringing message which is propagated to user station A” (Ans. 40). The Examiner points out “[t]hese call control signaling protocols of H.323 and SIP and RTP are distinct and separate operating states of endpoints in the establishment of a call session’” (Ans. 40–41, emphasis omitted). In the Reply Brief, Appellants merely repeat “March does not teach or suggest … security checks [that] are selected based on separate and distinct operating states, i.e., that each is performed in a separate operating state” (Reply Br. 2). According to Appellants, “because March performs all three security checks simultaneously and in any and all operating states,” March cannot select a rule base subset “for each of the call control signaling protocols of H.323 and SIP and RTP that is separate and distinct” (Reply Br. 3). We find no error with the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness. To determine whether the references disclose or would have suggested the claimed invention, we give the claims their broadest Appeal 2012-010510 Application 11/157,880 6 reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). At the outset, although Appellants argue March does not teach or suggest “each [security check] is performed in a separate operating state” (App. Br. 8), “filter packets based on ‘operating states of the endpoint communication appliance’” (App. Br. 9), or “security checks [that] are selected based on separate and distinct operating states, i.e., that each is performed in a separate operating state” (Reply Br. 2), such arguments are not commensurate in scope with the recited language of the claims. In particular, claim 1 does not recite any such filtering based “operating states” on “each” security check. Instead, claim 1 merely requires “selecting a rule base subset . . . based on a current one of a plurality of separate and distinct operating states” (claim 1 emphasis added). In fact, claim 1 merely requires that “a” (i.e. one) rule base subset is selected based on “a” current “one” operating state, and does not even require executing of the selected rule. That is, claim 1 only requires one rule being selected, and does not even require filtering using the one selected rule. We further note that claim 1 merely recites that the selecting step is performed “when” a predicate condition occurs, i.e., “when the conditions indicating a denial-of-service attack are determined to be present.” We particularly note the language of claim 1 does not expressly preclude performing the recited “selecting a rule base subset” step at other times when the predicate condition is not satisfied. That is, if the predicate condition does not occur, i.e., if there is no indication of a denial-of-service attack, the claim is silent regarding whether the selecting step is or is not performed. Accordingly, in claim 1, the selection of a rule base subset is not Appeal 2012-010510 Application 11/157,880 7 positively recited as being carried out only because of the recited predicate condition. Cf. In re Johnston, 435 F.3d. 1381, 1384 (Fed. Cir. 2006) (“[O]ptional elements do not narrow the claim because they can always be omitted.”).1 Based on such interpretation, we are of the view the Examiner is not required to find the disclosure of the step of selecting a rule base subset in the prior art. See Ex Parte Gary M. Katz, 2011 WL 514314, *4 (BPAI 2011).2 Nevertheless, we find no error with the Examiner’s finding March teaches or suggests “call control signaling protocols of H.323 and SIP and RTP” (Ans. 40–41, emphasis omitted). In particular, March discloses selecting the SIP protocol to initiate call sessions, selecting the RTP protocol for transporting real-time data, and selecting the H.323 Recommendation to provide call control signaling (FF 1). That is, March discloses and suggests 1 In the event of further prosecution, we leave it to the Examiner to consider the holding of Miyazaki as applied to at least claim 1: “[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim . . . indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). See also In re Packard, 2013-1204, WL 1775996 at *15 (Fed. Cir. May 6, 2014), (J. Plager concurring) (“In my view (and that of the per curiam court), it is within the authority of the USPTO to so interpret the applicable standard”). 2 Our reviewing court guides: “[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. . . . [C]laims may embrace ‘different subject matter than is illustrated in the specific embodiments in the specification.’” Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (citations omitted). Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). Appeal 2012-010510 Application 11/157,880 8 selecting one of the SIP, RTP or H.323 protocols based on the current operate state of the communication device/appliance, i.e., based on whether the device/appliance is initiating call sessions, transporting real-time data or call control signaling (id.). In March, only IP packets containing RTP/RTCP payloads are allowed to traverse the media portal (FF 2). That is, in March, the RTP protocol allows only certain packets to be forwarded (id.). Accordingly, we find no error with the Examiner’s finding that March at least suggests “selecting a rule base subset . . . from a plurality of rule base subsets based on a current one of a plurality of separate and distinct operating states of the endpoint communication appliance” wherein “the plurality of rule base subsets includes rules allowing only critical packets to be forwarded” (claim 1). Furthermore, even assuming, arguendo, our reviewing court were to interpret claim 1 as requiring a plurality of security checks, with “each. . . performed in a separate operating state” (App. Br. 8) as Appellants contend, since the rejection was made under § 103 as being obvious over March and Rothermel, the test for obviousness is what the combined teachings would have suggested to one of ordinary skill in the art. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Supreme Court has determined that the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We conclude that it would have been well within the skill of one skilled in the Appeal 2012-010510 Application 11/157,880 9 art to perform security checks separately and distinctly from each other as well as simultaneously in the same operating state. The skilled artisan is “a person of ordinary creativity, not an automaton.” Id. at 421. We are not persuaded and Appellants have presented no persuasive evidence that performing security checks separately and distinctly was “uniquely challenging or difficult for one of ordinary skill in the art.” Leapfrog Enters, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Rather, we find that Appellants’ invention is simply a modification of known teachings that realize a predictable result. Accordingly, we find Appellants have not shown the Examiner erred in rejecting claim 1 over March and Rothermel. Appellants do not provide substantive arguments for independent claims 18, 21, and 41 (App. Br. 11) and claims 2–17, 19, 22–40, 42, and 44–51 depending respectively from claims 1, 18, 21, and 41 (App. Br. 11–12). Thus, we also find Appellants have not shown the Examiner erred in rejecting 2–19, 21–42, and 44–50 over March, Schumacher, and Rothermel, and in rejecting claim 51 over March and Rothermel further in view of Schumacher and Matsuhira. CONCLUSION AND DECISION The Examiner’s rejections of claims 1–19, 21–42, and 44–51 under 35 U.S.C. § 103(a) are affirmed.3 3 We note that the rejection of the claims under 35 U.S.C. § 101 have been withdrawn (Ans. 4–5). However, in the event of further prosecution, we leave it to the Examiner to evaluate the claims for compliance with 35 U.S.C. § 101 in view of the Supreme Court decision in Bilski v. Kappos, 130 S. Ct. 3218, 3221 (2010), MPEP revised § 2106.01 (August 2012), and post- Bilski application under § 101, including CyberSource Corp. v. Retail Appeal 2012-010510 Application 11/157,880 10 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 tj Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (holding that a method for verifying the validity of a credit card transaction over the Internet to be nonstatutory as an abstract idea capable of being performed in the human mind or by a human using a pen and paper). In particular, we leave it to the Examiner to evaluate whether claim 1’s “monitoring,” and “selecting” steps comprise an abstract idea capable of being performed in the human mind as mental steps or by a human using a pen and paper. We further refer to Digitech, where the Federal Circuit has provided additional guidance on the issue of statutory subject matter by holding claims to a process of organizing information through mathematical correlations was not tied to a specific structure or machine, and was thus an abstract idea and ineligible under § 101. Digitech Image Tech., LLC v. Electr. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), aff'd. We also leave it to the Examiner to evaluate as to whether claim 1 is an abstract idea with only a tangential, if any, relationship to a specific structure or machine. Furthermore, although claims 21 and 41 recite an “apparatus” comprising a “firewall” or “hardware” performing the steps of claim 1, the Supreme Court recently reaffirmed the fundamental concepts, by themselves, are ineligible abstract ideas under § 101. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2358 (2014). Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02.