Ex Parte Ioffe et al

Patent Trial and Appeal Board

Feb 10, 2016

13015356 (P.T.A.B. Feb. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/015,356 01127/2011 NickIOFFE
56436 7590 02/12/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82275635 2466
EXAMINER
SHIH, ALBERT K
ART UNIT PAPER NUMBER
2411
NOTIFICATION DATE DELIVERY MODE
02/12/2016 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):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICK IOFFE, EY AL KENIGSBERG,
MICHAEL GOPSHTEIN, and ROTEM STEUER
Appeal2014-003641
Application 13/015,356
Technology Center 2400
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
JESSICA C. KAISER, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) the Examiner's final
rejection of claims 1---6, 8-13, 15-19, 21, and 22, which constitute all the
claims pending in this application. (App. Br. 4.) Claims 7, 14, and 20 have
been previously cancelled. (Id.) We have jurisdiction under 35 U.S.C.
§ 6(b) over the pending claims.
We affirm-in-part and enter new grounds of rejection under 37 C.F.R.
§ 41.50(b).
1 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, LP. (App. Br. 2.)
Appeal2014-003641
Application 13/015,356
EXEMPLARY CLAIM
Claim 1 is exemplary and is reproduced below with disputed
limitations italicized:
1. A method for discovering an operating system of a
remote machine, the method comprising:
monitoring network communications to detect a plurality
of data packets that were generated by the remote machine;
reading the contents of each data packet of said plurality
of data packets so as to extract a packet signature of each data
packet;
comparing each packet signature with at least one
signature of a database of signatures in order to determine a
similarity between each packet signature and said at least one
signature;
calculating a confidence level for at least one candidate
operating system based on the determined similarities; and
selecting an operating system of said at least one
candidate operating system based on the confidence level for
that operating system;
wherein said at least one candidate operating system
comprises a plurality of candidate operating systems, and
wherein calculating the confidence level comprises normalizing
the confidence level such that the confidence levels calculated
for said plurality of candidate operating systems add up to a
predetermined value.
REJECTIONS
The Examiner made the following rejections:
Claims 1, 8, and 15 stand rejected under 35 U.S.C § 112, second
paragraph as being indefinite. (Final Act. 5-6.)
Claims 1-6, 8-13, 15-19, 21, and 22 stand rejected under 35 U.S.C
§ 103(a) as being obvious over the combination of Roesch (US 7,496,662
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Application 13/015,356
Bl; issued Feb. 24, 2009) and Beddoe (US 7,519,954 Bl; issued Apr. 14,
2009). (Final Act. 6-23.)
ISSUE
The dispositive issue raised by Appellants' arguments and the
Examiner's rejections is:
Did the Examiner err in finding claims 1, 8, and 15 indefinite based
on those claims' recitations of "at least one candidate operating system
comprises a plurality of candidate operating systems" and "calculating a
confidence level for at least one candidate operating system"?
ANALYSIS
Indefiniteness of Claims 1, 8, and 15
Claim 1 recites "calculating a confidence level for at least one
candidate operating system," and then, further recites "wherein said at least
one candidate operating system comprises a plurality of candidate operating
systems." The Examiner finds the "wherein" recitation above is indefinite
because it is unclear whether "at least one operating system" as modified by
the "wherein" clause encompasses ( 1) a single operating system which is
itself made up of multiple operating systems, (2) multiple operating systems,
each of which are made up of multiple operating systems, or (3) simply a
plurality of operating systems (i.e., a single operating system is excluded
from the scope by the "wherein" clause). (See Ans. 26-27 .) The Examiner
also finds "calculating a confidence level ... comprises normalizing the
confidence level such that the confidence levels calculated for said plurality
of candidate operating systems add up to a predetermined value," as further
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Application 13/015,356
recited in claims 1, 8, and 15, is also indefinite because of the ambiguity in
the plurality of candidate operating systems. (See id. at 28-29.)
Appellants argue the claims are clear that "there must be a plurality of
candidate operating systems" because the preamble of claim 1 recites a
"method for discovering an operating system of a remote machine" which
"necessarily implies there must be a plurality of candidate operating
systems." (Reply Br. 3--4.) Appellants further argue the claims are clear
that "each candidate operating system in the plurality has a corresponding
confidence level that has been calculated" because the claim recites
"confidence level~." (App. Br. 12; Reply Br. 4.)
Appellants fail to persuade us that the Examiner's§ 112 rejection is in
error. The Examiner finds, and we agree, the claims recite "at least one
candidate operating system," meaning a single candidate operating system is
within the scope of the claim (Ans. 26-27), but Appellants argue a
competing interpretation where "there must be a plurality of candidate
operating systems" (Reply Br. 3 (emphasis added)). This ambiguity in scope
of the claim is not resolved by Appellants' argument which discusses the
claims' preamble but does not address the ambiguities in the claim the
Examiner identifies. (See id. at 4.)
Additionally, we agree with the Examiner's finding that calculating a
confidence level for an ambiguous number of candidate operating systems
results in an ambiguous number of confidence levels being calculated. (See
Ans. 28-29.) Indeed, Appellants confirm the ambiguity identified by the
Examiner by arguing "[t]here may be circumstances in which a confidence
level is not calculated for all candidates," but conversely arguing "each
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Application 13/015,356
candidate operating system in the plurality has a corresponding confidence
level that has been calculated." (Reply Br. 4 (emphases added).)
As the Federal Circuit has recognized, "the patent drafter is in the best
position to resolve the ambiguity in the patent claims, and it is highly
desirable that patent examiners demand that applicants do so in appropriate
circumstances so that the patent can be amended during prosecution."
Halliburton Energy Servs., Inc. v. M-1 LLC, 514 F.3d 1244, 1255 (Fed. Cir.
2008); see also Ex parte Miyazaki, 89 USPQ 2d 1207, 1211 (BPAI 2008)
(precedential) ("If a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring an applicant to more
precisely define the metes and bounds of the invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite."). We
agree with the Examiner that claims 1, 8, and 15 are indefinite, and
Appellants have stated they are "not opposed to clarifying the claim." (App.
Br. 12.). Therefore, we sustain the indefiniteness rejection under 35 U.S.C.
§ 112, second paragraph.
Obviousness
The Examiner rejected independent claims 1, 8, and 15 as obvious
over Roesch and Beddoe. Appellants argue Beddoe does not teach
"normalizing the confidence level such that the confidence levels calculated
for said plurality of candidate operating systems add up to a predetermined
value," as recited in claim 1. (See App. Br. 13-16; Reply Br. 5-8.)2
2 We observe in passing that normalizing appears to be a known statistical
technique used when comparing values and that known normalization
techniques would appear to include adjusting values to be within a
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However, as discussed supra, we affirm the Examiner's indefiniteness
rejection of claims 1, 8, and 15. To address the propriety of the obviousness
rejection, we would be required to speculate as to the scope of those claims
because the disputed issues in independent claims 1, 8, and 15 are directed to
the indefinite subject matter regarding calculating confidence levels of
candidate operating systems. We decline to speculate as to the scope of
those claims. See In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) (it is
improper to "rely[] on what at best are speculative assumptions as to the
meaning of the claims" as the basis for a rejection). Accordingly, we reverse
the Examiner's obviousness rejection of claims 1, 8, and 15 and the other
dependent claims for which we enter new grounds as discussed below.
New Grounds
As discussed supra, we affirm the Examiner's indefiniteness rejection
of claims 1, 8, and 15. While the Examiner does not reject claims 2-6, 9-
13, 16-19, 21, and 22, which depend directly or indirectly from claims 1, 8,
or 15, under 35 U.S.C. § 112, second paragraph, for being indefinite (see
Final Act. 5---6), we find those dependent claims do not clarify the ambiguity
inherited from their respective independent claims. Accordingly, we set
forth new grounds of rejection under 35 U.S.C. § 112, second paragraph, for
dependent claims 2---6, 9-13, 16-19, 21, and 22.
predetermined range (e.g., 0-1.0) and aligning their probability distributions
(e.g., totaling up to a value of 1.0).
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DECISION
The Examiner's decision to reject claims 1, 8, and 15 under 35 U.S.C.
§ 112, second paragraph, is affirmed, and the Examiner's decision to reject
claims 1-6, 8-13, 15-19, 21, and 22 under 35 U.S.C § 103(a) is reversed.
We enter new grounds of rejection of claims 2-6, 9-13, 16-19, 21,
and 22 under 35 U.S.C. § 112, second paragraph, pursuant to our authority
under 37 C.F.R. § 41.50(b).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2010). 37 C.F.R. § 41.50(b) provides "[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review."
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record ....
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; 37 C.F.R. § 41.50(b)
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