Ex Parte HiscockDownload PDFPatent Trial and Appeal BoardFeb 6, 201711347893 (P.T.A.B. Feb. 6, 2017) 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. 10033.026300 5280 EXAMINER DEBNATH, SUMAN ART UNIT PAPER NUMBER 2495 MAIL DATE DELIVERY MODE 11/347,893 02/06/2006 31894 7590 02/06/2017 OKAMOTO & BENEDICTO, LLP P.O. BOX 641330 SAN JOSE, CA 95164 James S. Hiscock 02/06/2017 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 JAMES S. HISCOCK Appeal 2016-002963 Application 11/347,893 Technology Center 2400 Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and JOHN P. PINKERTON, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—20, which are all the claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2016-002963 Application 11/347,893 Invention The disclosed and claimed invention on appeal “is directed to network tuning means, and particularly, a dynamic network tuner that automatically correlates networking device functionality with network-related performance.” (Spec. 1,11. 18—20). Illustrative Claim 12. A dynamic network tuner configured for installation and use in a network, wherein said network comprises two or more nodes, a network-related performance monitor, and a networking device for executing a specified protocol or application that substantially effects data packet transmission within said network, and wherein the dynamic network tuner comprises, housed within a common enclosure: a processor: a memory on which is stored machine readable instructions to cause the processor to: communicate with said network-related performance monitor to obtain or receive network-related performance information; communicate with said networking device; and effect a modification of said specified protocol or application based upon the network-related performance information indicating that the monitored network-related performance is to be tuned, wherein the networking device is to execute the specified protocol or application on a data packet upon detection hy the networking device of a real or potential network threat. (Contested “wherein clause” limitation emphasized, and the temporal limitation designated in bold.) 2 Appeal 2016-002963 Application 11/347,893 Rejections A. Claims 1—11 and 16—20 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the combined teachings and suggestions of Jawad Pirzada et al. (US 2005/0182847 Al; publ. Aug. 18, 2005) (hereinafter, “Jawad Pirzada”), Stewart et al. (US 7,606,887 Bl; iss. Oct. 20, 2009) (hereinafter, “Stewart”), and Singhal et al. (US 2004/0034800 Al; publ. Feb. 19, 2004) (hereinafter, “Singhal”). B. Claims 12—15 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the combined teachings and suggestions of Jawad Pirzada and Singhal. ANALYSIS We have considered all of Appellant’s arguments and any evidence presented. We find Appellant’s arguments persuasive for the reasons discussed infra. Rejection B of Independent Claim 12 Appellant contends: (1) the aforementioned limitation is not taught or suggested by the proffered combination (App. Br. 10), and (2) the Examiner has improperly combined the Jawad Pirzada and Singhal references. (App. Br. 13-14; 21-22). Issue: Under § 103(a), did the Examiner err by finding the cited Jawad Pirzada and Singhal references would have collectively taught or suggested the contested limitation (with emphasis added): wherein the networking device is to execute the specified protocol or application on a data packet upon detection by the networking device of a real or potential network threat[,] 3 Appeal 2016-002963 Application 11/347,893 within the meaning of independent claim 12? 1 In reviewing the record, we find this issue turns upon the question of whether the Examiner has erred by improperly combining the cited Jawad Pirzada and Singhal references under §103. We focus our analysis on the contested temporal limitation: “wherein the networking device is to execute the specified protocol or application on a data packet upon detection hy the networking device of a real or potential network threat.” (Claim 12) (emphasis added). Commensurate temporal language is recited in each of independent claims 1, 9, and 16. Regarding the “upon detection” temporal language of claim 12, Appellant urges: “In other words, the networking device is to execute the specified protocol or application on a data packet after the networking device has detected a real or potential network threat.” (App. Br. 10). We note the primary Jawad Pirzada reference teaches monitoring wireless network performance and switching wireless network protocols for the purpose of improving network performance'. The method receives performance data for the first network protocol. The method also receives performance data for a second network protocol. The method then determines whether switching from the first network protocol to the second network protocol would improve performance for the client system. Upon determining that switching to the second network protocol would cause improved performance, the method automatically switches from the first network protocol to the second network protocol. 1 We give the contested claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). 4 Appeal 2016-002963 Application 11/347,893 (Jawad Pirzada 111) (emphasis added). Thus, we find Jawad Pirzada teaches switching wireless network protocols to improve performance (111), to allow “a user to take advantage of the best wireless network protocol available.” (112). However, we find the primary Jawad Pirzada reference is silent regarding any mention of any problem involving network intrusion. In setting forth a basis for the rejection, the Examiner looks to the secondary Singhal reference to teach that the “networking device is to execute the specified protocol or application on a data packet upon detection by the networking device of a real or potential network threat . . . .” (Final Act. 4) (emphasis added). The Examiner proffers that an artisan would have been motivated to combine Jawad Pirzada with the teachings of Singhal because: it would have been obvious to one of ordinary skill in the art at the time of the invention was made to modify the teaching of Jawad Pirz[a]da as taught by Singhal in order to provide an optimized network monitoring system by minimizing instances of over and under detection, thereby increasing efficiency and accuracy. (Final Act. 4—5) (emphasis added). Although no specific citation is provided immediately following the Examiner’s motivation statement {id.), in reviewing the record, we note the Examiner cites on page 4 of the Final Office Action to Singhal (| 58) in support. In reviewing paragraph 58, we find Singhal clarifies that the “over and under detection” the Examiner refers to in the motivation statement (Final Act. 5) is in reference to the “over and under detection” of network intrusion events'. 5 Appeal 2016-002963 Application 11/347,893 From the foregoing, it will be appreciated that the system and method of detecting network intrusions afford a simple and effective way to monitor network performance and integrity. Embodiments of the invention are able to interact seamlessly with the network, sense network conditions, ascertain network performance, and identify instances of potential intrusion. A system and method according to the invention minimizes instances of over-and under-detection, thereby increasing efficiency and accuracy. (Singhal 1 58) (emphasis added). However, because the primary Jawad Pirzada reference is silent regarding any mention of network intrusions, we find an artisan having knowledge of Jawad Pirzada would have had no reason to minimize instances of over and under detection (of network intrusions), thereby increasing efficiency and accuracy, in the manner proffered by the Examiner. (Final Act. 4—5). We emphasize the need to minimize instances of over and under detection of network intrusion events is found only in Singhal, and is not contemplated by Jawad Pirzada. Simply put, the Examiner applies the solution of Singhal to modify Jawad Pirzada, to address a network intrusion problem described only in Singhal (158). Therefore, for essentially the same reasons argued by the Appellant in the Briefs, we find the Examiner’s proffered motivation is unconvincing because it relies on circular reasoning that fails to provide a rational underpinning to support the legal conclusion of obviousness.2 2 ‘“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). 6 Appeal 2016-002963 Application 11/347,893 Moreover, as pointed out by Appellant (App. Br. 10; Reply Br. 8), “Jawad Pirzada merely discusses that the switching of wireless network protocols is between the 802.1 la, 802.1 lb and 802.1 lg wireless network protocols. Jawad Pirzada, par. [0039].” (Reply Br. 8). Therefore, we find the Examiner’s responsive explanation in the Answer (4) is unsupported by a preponderance of the evidence: “When IDS [(Intrusion Detection System)] of Singhal is implemented to the Jawad Pirzada, IDS has to use the specific protocol used by Jawad Pirzada” (emphasis added). We find the Examiner has not fully developed the record, or provided any convincing evidence, to show how switching between the various 802.11 wireless protocols in Jawad Pirzada flflf 39, 40, 43, 44) would have solved any network intrusion problem in Singhal’s intrusion detection system (IDS). Nor has the Examiner shown how such protocol switching would have been performed responsive to a network intrusion event, such as described by Singhal (1 58) (i.e., corresponding to the “upon detection by the networking device of a real or potential network threat” language recited in Appellant’s claim 12). Therefore, we find the combinability (lack of motivation) arguments advanced by Appellant in the principal Brief (13—14; 21—22) strongly support Appellant’s responsive contention in the Reply Brief (7) that the Examiner has relied on impermissible hindsight in formulating the basis for both rejections A and B of all claims on appeal: As discussed above, Singhal does not disclose that any type of a modified protocol or application is executed following the detection of a real or potential network threat. Thus, Singhal does not provide support for the Examiner's assertion that it would somehow have been obvious to modify Jawad Pirzada and Singhal to arrive at the above-cited features of independent claim 7 Appeal 2016-002963 Application 11/347,893 12. That is, neither Jawad Pirzada nor Singhal discloses the execution of a modified protocol or application upon detection of a real or potential network threat and thus, the proposed combination of these documents also fails to disclose this feature. Accordingly, therefore, it is respectfully submitted that the Examiner appears to have arrived at the conclusion that the proposed combination of Jawad Pirzada and Singhal results in the above-cited features of independent claim 12 solely through impermissible hindsight reasoning. (Reply Br. 6—7) (emphasis added). Because Appellant has persuaded us the Examiner has improperly combined the Jawad Pirzada and Singhal references under § 103, we also find the contested temporal limitation recited in each independent claim is not taught or suggested by the combination, because meeting the contested limitation is directly premised on the Examiner’s flawed rationale to combine the references. Conclusion For at least the aforementioned reasons, and on this record, Appellant has persuaded us the Examiner erred. We find a preponderance of the evidence supports Appellant’s contention the Examiner has improperly combined the Jawad Pirzada and Singhal references under § 103, for both rejections A and B on appeal. DECISION We reverse the Examiner’s decision rejecting claims 1—20 under § 103(a). REVERSED 8 Copy with citationCopy as parenthetical citation