Ex Parte GrosseDownload PDFPatent Trial and Appeal BoardDec 17, 201311356721 (P.T.A.B. Dec. 17, 2013) Copy Citation 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. 11/356,721 02/17/2006 Eric H. Grosse 15 3622 7590 12/18/2013 Ryan, Mason & Lewis, LLP Suite 205 1300 Post Road Fairfield, CT 06824 EXAMINER SALEHI, HELAI ART UNIT PAPER NUMBER 2433 MAIL DATE DELIVERY MODE 12/18/2013 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 ERIC H. GROSSE ____________ Appeal 2011-006425 Application 11/356,721 Technology Center 2400 ____________ Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006425 Application 11/356,721 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s non-final decision rejecting claims 1-20. 1 (App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellant’s Invention The invention at issue on appeal concerns apparatuses, articles of manufacture, and methods for securing an end-to-end path in a network by determining if a vendor associated with said next sub-path (hop) in the end- to-end path satisfies predefined security criteria. (Spec. 1:6-8; 2:18-3:3; Abstract.) Representative Claim Independent claim 1, reproduced below with the key disputed limitations emphasized, further illustrates the invention: 1. A method for securing an end-to-end path in a network, said end-to-end path including a plurality of hops, said method comprising the steps of: receiving a call setup request for a call, said call setup request containing a request for end-to-end protection; 1 Appellant states that “[c]laims 1, 3-5, 6, 9, 11, 13, 14, 17, 19, and 20 are being appealed” (App. Br. 2); however, Appellant’s Notice of Appeal states “Applicant hereby appeals to the Board of Patent Appeals and Interferences from the last decision of the examiner” (Notice of Appeal, filed September 24, 2010). Additionally, Appellant discusses claims 3 and 13 (App. Br. 6-8) which depend on claims 2 and 12 that have not been “appealed.” The Board has no jurisdiction as to non-appealed claims. See Ex parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008) (precedential)(per curiam). We find, however, that Appellant appeals all claims 1-20, but only argues claims 1, 3- 6, 9, 11, 13, 14, 17, 19, and 20. Appellant waives argument as to the remaining claims 2, 7, 8, 10, 12, 15, 16, and 18. Appeal 2011-006425 Application 11/356,721 3 identifying a next hop in said end-to-end path; determining, in response to said received call setup request, if a vendor associated with said next hop in said end- to-end path has satisfied one or more predefined security criteria; and routing said call to said next hop if said vendor has satisfied said one or more predefined criteria. Rejections on Appeal 1. The Examiner rejects claims 1-9, 11-17, 19 and 20 under 35 U.S.C. § 103(a) as being unpatentable over U.S. Patent App. Pub. No. 2005/0239438 A1, published Oct. 27, 2005 (“Naghian”) and U.S. Patent No. 6,895,091 B1, issued May 17, 2005 (“Elliott”). 2. The Examiner rejects claims 10 and 18 under 35 U.S.C. § 103(a) as being unpatentable over Naghian, Elliott, and U.S. Patent No. 7,076,650 B1, issued July 11, 2006 (filed Dec. 24, 1999) (“Sonnenberg”) ISSUE Based upon our review of the administrative record, Appellant’s contentions, and the Examiner’s findings and conclusions, the pivotal issue before us follows: Does the Examiner err in concluding that Naghian and Elliott collectively teach or would have suggested “determining, in response to said received call setup request, if a vendor associated with said next hop in said end-to-end path has satisfied one or more predefined security criteria” within the meaning of Appellant’s claim 1 and the commensurate limitations of claims 11 and 19? Appeal 2011-006425 Application 11/356,721 4 ANALYSIS The Examiner rejects independent claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Naghian and Elliott. (Ans. 4-5, 20-21.) Appellant contends that Naghian and Elliott do not render the claims obvious. (App. Br. 4-6; Reply Br. 2-4.) Claim 1 recites the step of “determining, in response to said received call setup request, if a vendor associated with said next hop in said end-to- end path has satisfied one or more predefined security criteria.” (Claim 1.) The Examiner relies on Elliott to teach this feature, conceding that Naghian fails to do so. (Ans. 4.) We agree with Appellant that the portions of Elliott identified by the Examiner do not teach or suggest the disputed features of independent claim 1 (and independent claims 11 and 19). (App. Br. 4-6; Reply Br. 2-4.) Specifically, we agree with Appellant that Elliott (col. 6, ll. 7-67; col. 7, ll. 1-10; col. 11, ll. 31-55; Figs. 5, 8, 9, 20), cited by the Examiner as describing the recited determining step (Ans. 5, 20-21), instead merely describes determining that a link (path, hop) is protected (secure) (App. Br. 4-6; Reply Br. 2-4). In particular, Elliott describes utilizing tables to determine if a certain link in a network path is protected. (See Elliott col. 6, ll. 7-67.) While Elliott does determine if a particular link is protected, Elliott does not mention vendors associated with these links, much less making any determination with respect to the vendors. The claim requires determining if a vendor meets security criteria. While Elliott arrives at the same destination as the claim – providing a secure/protected hop/link in a network path – it does so using a process different from the one recited in the claim. Appeal 2011-006425 Application 11/356,721 5 Consequently, we are constrained by the record before us to conclude that the combination of Naghian and Elliott fails to teach or suggest the recited features of Appellant’s claim 1, and the rejection of claim 1 fails to establish a prima facie case of obviousness. Appellant’s independent claims 11 and 19 include limitations of commensurate scope. Appellant’s dependent claims 2-10, 12-18, and 20 depend on and stand with their respective base claims. Accordingly, we reverse the Examiner’s obviousness rejections of claims 1-20. CONCLUSION OF LAW Appellant has shown that the Examiner erred in rejecting claims 1-20 under 35 U.S.C. § 103(a). DECISION We reverse the Examiner’s rejections of claims 1-20. REVERSED tj Copy with citationCopy as parenthetical citation