Ex Parte Gearhart et al

Patent Trial and Appeal Board

Feb 23, 2018

11626458 (P.T.A.B. Feb. 23, 2018)

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.
11/626,458 01/24/2007 Curtis M. Gearhart RSW920060084US1
8152-0069
1255
73109 7590 02/27/2018
rWnnt Fnrsvfiie& Kim T T C EXAMINER
20283 State Road 7
Ste. 300
HERZOG, MADHURI R
Boca Raton, EL 33498 ART UNIT PAPER NUMBER
2438
NOTIFICATION DATE DELIVERY MODE
02/27/2018 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CURTIS M. GEARHART, CHRISTOPHER MEYER,
LINWOOD H. OVERBY JR., and DAVID J. WIERBOWSKI
Appeal 2016-000847
Application 11/626,458
Technology Center 2400
Before MAHSHID D. SAADAT, JEAN R. HOMERE, and ALEX S. YAP,
Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 17-34.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is IBM Corporation
(App. Br. 1).
2 Claims 1-11 have been cancelled {id.).
Appeal 2016-000847
Application 11/626,458
STATEMENT OF THE CASE
Appellants’ invention relates to security services management for
distributed security enforcement points using a set of security enforcement
points for controlling communication flows (see Spec., [0001] and
[0007]). Exemplary claim 17 under appeal reads as follows:
17. A security enforcement point separating a device
within a first zone of protection from a device in a second zone
of protection, comprising:
an interface to a security server located in a third zone of
protection; and
at least one processor, wherein the at least one processor
is configured to initiate and/or perform:
controlling communication flows between the
device in the first zone and the device in the second zone;
performing a security service on the
communication flows; and
offloading, via the interface, a portion of the
security service to security services logic within the
security server, wherein
the security enforcement point is disposed m one of the
first and second zones of protection, and
the third zone of protection is
disposed separately from the first and second
zones of protection, and
a more trusted zone of protection than the first and
second zones of protection.
REFERENCES and REJECTIONS
Claims 17-22 stand rejected under 35 U.S.C. § 101 as not being
directed to patent eligible subject matter (see Final Act. 4-5).
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Claims 17-19, 21-25, 27-31, 33, and 34 stand rejected under
35 U.S.C. § 102(b) as anticipated by Grantges (US 6,324,648 Bl; Nov. 27,
2001), (see Final Act. 5-10).
Claims 20, 26, and 32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Grantges (see Final Act. 11-12).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner erred. We are persuaded the Examiner erred in
rejecting the claims under 35 U.S.C. § 101 for not being directed to patent
eligible subject matter. We, however, are not persuaded the Examiner erred
in rejecting the claims under 35 U.S.C. § 102(b) as anticipated by Grantges
and under 35 U.S.C. § 103(a) as obvious over the cited reference, and we
adopt as our own the findings and reasons set forth by the Examiner thereof.
See Final Act. 4-12; Ans. 2-8. We highlight and address specific findings
and arguments for emphasis as follows.
Section 101 Rejection
Independent claim 17 recites a security enforcement point comprising
a processor for “controlling communication flows” and “performing a
security service” as well as “offloading, . . ., a portion of the security
service” and is, therefore, directed to one of the four statutory categories of
patentability enumerated by 35 U.S.C. § 101 (process, machine,
manufacture, or composition of matter). The Examiner finds claims 17-22
are “directed to an abstract idea because for example, the limitations of
claim 17 merely recite a series of processes performed by an interface and a
processor” but “do not include additional elements that are sufficient to
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Application 11/626,458
amount to significantly more than the judicial exception because the
interface and processor are generic computer elements and do not add a
meaningful limitation to the abstract idea because they would be routine in
any computer implementation” (Final Act. 4-5). The Examiner refers to
paragraph 33 of Appellants’ Specification and finds the ordinary skilled
artisan can construe this paragraph to imply that “the processor can be
implemented in software” (Final Act. 5).
Appellants contend the Examiner erred in finding claim 17 is not
directed to patent eligible subject matter (see App. Br. 5-7). Appellants
argue that, contrary to the Examiner’s assertion and consistent with DDR
Holdings case that are tailored toward computer network technology, the
claims are not directed to an “abstract idea” (App. Br. 6 (citing DDR
Holdings, LLCv. Hotels.Com, LP, 773 F.3d 1245, 1257 (Fed. Cir. 2014)).
With respect to their Specification and the reference to a processor in
paragraphs 28-33, Appellants argue the recitation of “[a] data processing
system suitable for storing and/or executing program code will include at
least one processor coupled directly or indirectly to memory elements
through a system bus” establishes the recited processor and the other
elements refer to hardware or a machine (App. Br. 6-7).
We are persuaded by Appellants’ arguments. The Supreme Court has
set forth “a framework for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts” {Alice Corp. Pty. Ltd. v. CIS Banklnt’l, 134
S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Services v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1294 (2012))). According to this framework, a
determination is made to consider whether the claims at issue are directed to
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Application 11/626,458
one of those concepts (i.e., laws of nature, natural phenomena, and abstract
ideas) (see id.). If so, a further determination must be made to consider the
elements of each claim both individually and “as an ordered combination” to
determine whether the additional elements “transform the nature of the
claim” into a patent-eligible application (id.).
First, we review claim 17 to determine whether it is directed to a
patent ineligible concept, such as the “abstract idea” exception found by the
Examiner. See Mayo, 132 S. Ct. at 1297; see also Final Act. 3. The claim
recites steps of “controlling communication flows” as well as “performing a
security service” and “offloading . . . , a portion of the security service.” We
find the recited steps are not directed to an abstract idea, but merely recite
certain steps used to enforce network security.
Particularly, we are persuaded by Appellants’ argument that the
Examiner’s generic, conclusory statement that the claim relates to a
processing system suitable for storing and executing program code (see Ans.
4) does not address the actual the claim as a whole (Reply Br. 3—4). The
recited limitations of claim 17, although generic, are not abstract and
constitute functions that are widely known to be performed by a computer.
In fact, similar to DDR holding, the appealed claims are “necessarily rooted
in computer technology in order to overcome a problem specifically arising
in the realm of computer networks,” and that the claimed invention did not
simply use computers to serve a conventional business purpose (see DDR
Holdings, LLCv. Hotels.com, 773 F.3d 1245, 1257 (Fed. Cir. 2014)).
Therefore, we are persuaded the Examiner erred in finding claims 17-
22 recite patent-ineligible subject matter. Accordingly, we do not sustain the
rejection of claims 17-22 under 35 U.S.C. § 101.
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Section 102 Rejection
First, Appellants contend, recognizing firewall 32 as the first line of
defense, Grantges does not teach proxy server 34 to be a security
enforcement point (App. Br. 13 (citing Grantges Fig. 7)). More specifically,
Appellants contend “the firewall 32 is between the private network side and
the public network 26. Therefore, while the firewall 32 is illustrated as
being connected to the proxy server 34, Grantges does not contemplate the
proxy server 34 as being something different from the public network 26
regarding a different zone of protection” {id.).
These arguments are not persuasive because, as explained by the
Examiner (Ans. 4-5), Grantges describes the proxy server as a security
enforcement point by checking the validity of an authentication cookie
because “DMZ proxy server 34 determines whether the incoming message
contains a valid authentication cookie 90” and if the answer is “NO,” sends a
popup login screen to the user via secure connection 52 {see Grantges col.
14,11. 29-55). The Examiner finds proxy server 34 in the DMZ server “is
located between the insecure network 26 (e.g., the Internet) and the private
network’s first line of defense, for example, firewall system 32” (Ans. 5-6).
We agree with these findings.
Second, Appellants contend:
However, while these may be different zones, they are not
different zones of protection. Grantges describes that in step
234, “web server 210 sends a redirect message to client
computer 22.” Thus, the proxy server 34 does not necessarily
separate the web server 210 from the client computer 22. Asa
result, the proxy server 34 and web server 210, while possibly
being in different zones, are within the same zone of protection
- not separate zones of protection, as claimed.
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(App. Br. 15). Lastly, Appellants contend Grantges describes a security
service that “is being performed on the communication flows between the
client 22 and the destination servers 281, 282” (App. Br. 16). Appellants
assert the described communication flows are not “between the client 22 and
the enterprise server 210” {id.).
The Examiner finds the cited portion of Grantges in column 14
discusses using proxy server 34 for controlling communication between the
user computer on insecure network 26 (i.e., first zone) and the application
web servers on the secure side of the firewall (i.e., second zone) (Ans. 6-7).
We also agree with these findings.
Thus, Appellants’ contentions do not persuade us of Examiner error in
finding Grantges anticipates claim 17 because the references teaches all of
the claim elements of independent claim 17. Accordingly, we sustain the
Examiner’s 35 U.S.C. § 102(b) rejection of claim 17, as well as claims 18,
19, 21-25, 27-31, 33, and 34 which are not argued separately {see App. Br.
12).
Section 103 Rejection
Appellants argue the patentability of claim 20 based on arguments
similar to those presented with respect to the teachings of Grantges for claim
17 and add that the Examiner’s conclusion of obviousness is “based upon a
conclusory statement that is unsupported by an articulated reasoning with
some rational underpinning” (App. Br. 18).
The Examiner provides a comprehensive response citing to the
relevant passages in the applied reference and the proposed modifications.
For example, the Examiner states:
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Grantges teaches the first zone to be an insecure internet zone
and the second zone to be a demilitarized zone as claimed in
claim 19 but does not teach wherein the first zone is a
demilitarized zone, the second zone is an application zone.
However, it is within the scope of one of ordinary skill in the
art at the time of the invention to apply the principles of
Grantges to zones specified in claim 20.
(Ans. 7). The Examiner relies on KSR holding and explains that the
proposed modification would have been within “the ordinary capabilities of
one skilled in the art” (Ans. 7-8 (citing KSR Int’l Co., v. Teleflex Co., 550
U.S. 398 (2007))).
We agree with the Examiner and note that the Supreme Court has
rejected the rigid requirement of demonstrating a teaching, suggestion, or
motivation in the references to show obviousness. See KSR, 550 U.S. at
415-16; see also In re Ethicon, Inc., 844 F.3d 1344, 1350 (Fed. Cir. 2017)
(“KSR directs that an explicit teaching, suggestion, or motivation in the
references is not necessary to support a conclusion of obviousness.”).
Instead, “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR, 550 U.S. at 416. In the present case, the Examiner found that
the ordinary skilled artisan would have found it obvious to apply the security
enforcement scheme of Grantges to specific zones recited in claim 20 (Ans.
7-8). We find this articulated rationale to be sufficient to justify this
modification which would merely require the ordinarily skilled artisan to
combine prior art elements that perform their ordinary functions to
predictably result in the claimed system.
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Application 11/626,458
Based on the Examiner’s findings and analysis, which we adopt as our
own, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claim 20, as
well as claims 26 and 32 which are not argued separately (see App. Br. 16).
DECISION
We affirm the Examiner’s decision to reject claims 17-34.
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
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