Ex Parte Jemes et al

Board of Patent Appeals and Interferences

May 29, 2008

09795778 (B.P.A.I. May. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRIAN JEMES, JOHN M. PAPE, JOSEPH GARCIA, and
MICHAEL MILLIGAN

Appeal 2008-0075
Application 09/795,7781
Technology Center 2100
____________________

Decided: May 29, 2008
____________________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1, 2, 4 through 13, and 15 through 36. Claims 3 and 14
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

1 Filed on Feb. 27, 2001. The real party in interest is Hewlett-Packard
Development Company, L.P.
Appeal 2008-0075
Application 09/795,778

The Invention
Appellants invented a network system for implementing a virtual
backbone on a common network infrastructure to ensure thereon a consistent
network policy. (Spec. 1.) As depicted in Figure 2, the network system (22)
includes a plurality of networks (24). Each of the networks is connected to
one of a plurality of network control points (NCP)(26). In turn, each of the
NCPs includes a network control device (NCD), which may be a router with
an access control list configured to enforce the security policy of a network
connected thereto. Further, the network system (22) includes a virtual
backbone (28) that connects the NCPs to one another, and stores in an
address registry the address range of the plurality of networks connected
thereto. (Id. 9-11.)

Claims 1 and 9 further illustrate the invention. They read as follows:
1. A network system configured to carry data, comprising:

a plurality of networks, each network having at least one network
device configured to transmit and receive data and having a network security
policy;

a plurality of network control points, each network control point
having at least one network control point device, wherein each of the
plurality of network control points is connected to at least one of the
plurality of networks, and wherein at least one of the network control point
devices is configured to enforce the network security policy of the network
that is connected to the network control point device; and

a virtual backbone configured to connect the plurality of network
control points to one another and having a registry that stores an address
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range of the plurality of networks that are connected to the virtual backbone
via the plurality of network control points.

9. A network system as defined in claim 1, wherein each of the
plurality of networks is defined by an address range.

The Examiner relies on the following prior art:
Segal US 6,345,299 B2 Feb. 05, 2002
(filed Nov. 26, 1997)
Pete Loshin, TCP/IP Clearly Explained, 3d Ed., pp. 38-40, 1999.

The Examiner rejects the claims on appeal as follows:
1. Claims 1, 2, 4 through 8, 11 through 13, 15 through 18, and 21
through 36 stand rejected under 35 U.S.C. § 102(e) as being anticipated by
Segal.
2. Claims 9, 10, 19 and 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of Segal and Loshin.

FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.

Segal
1. Segal discloses a method and system for providing distributed
security and protection to a computer network. (Col. 1, ll. 5-7.)
2. As depicted in Figure 2, Segal discloses a data network such as the
Internet (40) that links a plurality of subnetworks (42, 44, 48, 52, and 53)
together. (Col. 2, ll. 50-56.)
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3. Each of the subnetworks includes a firewall unit in a separate
node for providing secure access to authorized users of the subnetworks.
(Col. 2, ll. 56-60.)
4. Each of the firewall units (43, 45, 45, 47, 49, and 50) includes a
shared list containing a plurality of listed nodes of the subnetworks and a set
of access privileges for each of the listed nodes. (Col. 2, ll. 60-66, col. 3, ll.
1-15.)

Loshin
5. Loshin discloses that Internet protocol (IP) addresses are split into
three sections including the network address, the subnet address and the host
address. The network addresses spans over a range of numbers identifying
different entities. (Pp. 38-39.)

PRINCIPLES OF LAW
ANTICIPATION
In rejecting claims under 35 U.S.C. § 102, “a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation.” Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005), citing
Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976
F.2d 1559, 1565 (Fed. Cir. 1992). “Anticipation of a patent claim requires a
finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder
Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if
granting patent protection on the disputed claim would allow the patentee to
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exclude the public from practicing the prior art, then that claim is
anticipated, regardless of whether it also covers subject matter not in the
prior art.”) (internal citations omitted).

OBVIOUSNESS
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’ KSR Int'l Co. v. Teleflex
Inc., 127 S. Ct. 1727, 1734 (2007).

The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 127 S. Ct. at 1734 (“While the sequence of these questions might
be reordered in any particular case, the [Graham] factors continue to define
the inquiry that controls.”)
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727, 1739-40 (2007)).
“One of the ways in which a patent's subject matter can be proved obvious is
by noting that there existed at the time of invention a known problem for
which there was an obvious solution encompassed by the patent's claims.”
KSR, 127 S. Ct. at 1742.
Discussing the obviousness of claimed combinations of elements of
prior art, KSR explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. Ag
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 127 S. Ct. at 1740. Where the claimed subject matter cannot be fairly
characterized as involving the simple substitution of one known element for
another or the mere application of a known technique to a piece of prior art
ready for the improvement, a holding of obviousness can be based on a
showing that there was “an apparent reason to combine the known elements
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in the fashion claimed.” KSR, 127 S. Ct. at 1741. Such a showing requires
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)).
The reasoning given as support for the conclusion of obviousness can
be based on 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, 127 S. Ct. at 1740-41. See also Dystar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2007).
We note our reviewing court has recently reaffirmed that:
[A]n implicit motivation to combine exists not only when a suggestion
may be gleaned from the prior art as a whole, but when the
‘improvement’ is technology-independent and the combination of
references results in a product or process that is more desirable, for
example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient. Because the desire to
enhance commercial opportunities by improving a product or process
is universal—and even common-sensical—we have held that there
exists in these situations a motivation to combine prior art references
even absent any hint of suggestion in the references themselves. In
such situations, the proper question is whether the ordinary artisan
possesses knowledge and skills rendering him capable of combining
the prior art references.

Dystar 464 F.3d at 1368. See also Leapfrog, 485 F.3d at 1162 (holding it
“obvious to combine the Bevan device with the SSR to update it using
modern electronic components in order to gain the commonly understood
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benefits of such adaptation, such as decreased size, increased reliability,
simplified operation, and reduced cost.”)
Also, a reference may suggest a solution to a problem it was not
designed to solve and thus does not discuss. KSR, 127 S. Ct. at 1742
(“Common sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like pieces of a
puzzle. . . . A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”)
The prior art relied on to prove obviousness must be analogous art.
As explained in Kahn,
the ‘analogous-art’ test - has long been part of the primary
Graham analysis articulated by the Supreme Court. See Dann
[v. Johnston,] 425 U.S. [219,] 227-29 (1976), Graham,
383 U.S. at 35. The analogous-art test requires that the Board
show that a reference is either in the field of the applicant's
endeavor or is reasonably pertinent to the problem with which
the inventor was concerned in order to rely on that reference as
a basis for rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed.
Cir. 1992). References are selected as being reasonably
pertinent to the problem based on the judgment of a person
having ordinary skill in the art. Id. (“[I]t is necessary to
consider ‘the reality of the circumstances,’—in other words,
common sense—in deciding in which fields a person of
ordinary skill would reasonably be expected to look for a
solution to the problem facing the inventor.” (quoting In re
Wood, 599 F.2d 1032, 1036 (C.C.P.A. 1979))).

Kahn, 441 F.3d at 986-87. See also In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992) (“[a] reference is reasonably pertinent if, even though it may be in a
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different field from that of the inventor's endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor's attention in considering his problem.”)
In view of KSR’s holding that “any need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed,”
127 S. Ct. at 1742 (emphasis added), it is clear that the second part of the
analogous-art test as stated in Clay, supra, must be expanded to require a
determination of whether the reference, even though it may be in a different
field from that of the inventor's endeavor, is one which, because of the
matter with which it deals, logically would have commended itself to an
artisan’s (not necessarily the inventor’s) attention in considering any need or
problem known in the field of endeavor. Furthermore, although under KSR
it is not always necessary to identify a known need or problem as a
motivation for modifying or combining the prior art, it is nevertheless
always necessary that the prior art relied on to prove obviousness be
analogous. See KSR, 127 S. Ct. at 1740. (“The Court [in United States v.
Adams, 383 U.S. 39, 40 (1966)] recognized that when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.”) (Emphasis added). See also
Sakraida, 425 U.S. at 280 (“Our independent examination of that evidence
persuades us of its sufficiency to support the District Court's finding ‘as a
fact that each and all of the component parts of this patent . . . were old and
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well-known throughout the dairy industry long prior to the date of the filing
of the application for the Gribble patent.’”)

ANALYSIS
Rejection Under 35 U.S.C. § 102
Independent claim 1 recites in relevant part a virtual backbone
configured to connect a plurality of NCPs to one another, and having a
registry that stores an address range for the networks connected to the virtual
backbone via the NCPs. (Claims Appendix.) Appellants argue that Segal
does not teach these limitations. (App. Br. 7-10, Reply Br. 5-7.) In
response, the Examiner avers that Segal’s disclosure of a plurality of links
interconnecting the firewall units of the subnetworks teaches the cited
limitations. (Ans. 12-14.)
Therefore, the issue before us is whether one of ordinary skill in the
art would find that Segal’s disclosure of using the Internet for linking a
plurality of networks via their respective firewalls teaches a virtual
backbone, as recited in representative claim 1. We answer this inquiry in the
affirmative.
We begin our analysis by considering the scope and meaning of
“virtual backbone” which must be given its broadest reasonable
interpretation consistent with Appellant’s disclosure, as explained in In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997):
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
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definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
Id. at 1054. See also In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (stating
that claims must be interpreted as broadly as their terms reasonably allow.”
Appellants’ Specification states the following:
The term “virtual backbone,” unless otherwise specified, is intended
to refer to a network(s) that connects a plurality of network control
points having the property of source integrity (e.g., anti-spoofing).
(Spec. 8, ll. 4-6.)

In a discussion of Figure 2, Appellants’ Specification further states the
following:
The virtual backbone 28 is a network that connects to a plurality of
network control points 26. The virtual backbone can be implemented
using one or more of the following: communication lines, e.g., T1,
DS3, OC-3, an Internet service provider (ISP), a VPN, e.g., IPsec, a
private network, switched and permanent virtual circuit network
transmission technologies, e.g., frame relay and asynchronous transfer
mode, multi-access transmission technologies, e.g., switched
multimegabit data service, or any other wired or wireless network.
The virtual backbone is outside the network control points 26 and is
external to all of the plurality of networks. The networks 24
themselves are not part of the virtual backbone, so they must utilize
separate real or virtual equipment for LAN and WAN infrastructure
that is contained entirely within its network. This allows for a
consistent network security policy for each network that may be
managed and maintained independent of the virtual backbone that is
used to interconnect network control points. . . . (Emphasis added.)
(Spec. 11, l. 19- 12, l. 6.)
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Our reviewing court further states, “the ‘ordinary meaning’ of a claim
term is its meaning to the ordinary artisan after reading the entire patent.”
Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005).
Upon reviewing Appellants’ Specification, we find that the proper
definition of “virtual backbone” is a network that connects a plurality of
NCPs, as provided at page 8 of Appellants’ Specification. We note that
the further discussion of “virtual backbone” provided at pages 11 and 12
is an explanation of how the “virtual backbone” can be implemented in a
particular embodiment. However, we do not consider this discussion of
the cited terms in the disclosed embodiment as being part of the
definition of “virtual backbone.”
Further, we similarly construe the term “address registry,” pursuant to the
definition provided in Appellants’ Specification, which states the
following:
The term "address registry," unless otherwise specified, is
intended to refer to a collection of information describing the address
ranges in all the known networks of a virtual backbone. The address
registry may be embodied in a document, a tool, or application with
processes and procedures for the acquisition, maintenance, and
distribution of this information.
(Spec. 8, ll. 26-30.)

As set forth in the Findings of Fact section, Segal discloses that the
Internet can be used to link a plurality of networks via their respective
firewall units. (FF 1-3.) Further, Segal discloses that each of the firewall
units includes a shared list of listed nodes along with corresponding access
privileges for said nodes. (FF 4.) One of ordinary skill in the art would
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readily recognize that, consistently with Appellants’ definitions reproduced
hereinabove, Segal’s disclosure of the Internet as a means for linking the
different networks teaches the virtual backbone. The ordinarily skilled
artisan would duly recognize that, in Segal, the Internet is a network that
connects firewall units of the different networks to one another. Further, the
ordinarily skilled artisan would recognize that Segal’s disclosure of the
shared list, like Appellants’ registry, stores address information regarding
each of the nodes on the networks, as well as their access privileges thereon.
Additionally, for the reasons set forth in the Examiner’ Answer, we agree
with the Examiner that Segal teaches the virtual backbone even when
construed to include the specific embodiment of Figure 2. (Ans. 13-14.) It
therefore follows that Appellants have not shown that the Examiner erred in
finding that Segal anticipates claim 1.
Appellants do not provide separate arguments with respect to the
rejection of claims 2, 4 through 8, 11 through 13, 15 through 18, and 21
through 36. Therefore, we select independent claim 1 as being
representative of the cited claims. Consequently, these claims fall together
with representative claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

Rejection Under 35 U.S.C. § 103
Appellants argue that there is insufficient rationale to combine Sager
with Loshin to render claim 9 unpatentable. (App. Br. 12, Reply Br. 8.)
Appellants’ argument is not persuasive. The Supreme Court has held
that in analyzing the obviousness of combining elements, a court need not
find specific teachings, but rather may consider "the background knowledge
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possessed by a person having ordinary skill in the art" and "the inferences
and creative steps that a person of ordinary skill in the art would employ."
See KSR at 1740-41. To be nonobvious, an improvement must be "more
than the predictable use of prior art elements according to their established
functions." Id. at 1740.
As set forth in the Findings of Fact, both Segal and Loshin teach
enabling multiple networks on the Internet to communicate with one
another. Further, Loshin teaches TCP/IP as the protocol for enabling such
communication to take place between the networks, wherein an IP address
readily identifies a particular network during such exchange. (FF 5.)
Therefore, identifying a network on the Internet during communication
exchange is a prior art teaching that is being used in a conventional network
communication system to perform its established function to predictably
result in defining a network by an address range as claimed.
It follows that Appellants have not shown that the Examiner erred in
concluding that the combination of Segal and Loshin renders claim 9
unpatentable.
Appellants do not provide separate arguments with respect to the
rejection of claims 10, 19, and 20. Therefore, we select claim 9 as being
representative of the cited claims. Consequently, these claims fall together
with representative claim 9. 37 C.F.R. § 41.37(c)(1)(vii).

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CONCLUSIONS OF LAW
1. Appellants have not shown that the Examiner erred in finding
that Segal anticipates claims 1, 2, 4 through 8, 11 through 13, 15 through 18,
and 21 through 36 under 35 U.S.C. § 102(e).
2. Appellants have not shown that the Examiner erred in
concluding that the combination of Segal and Loshin renders claims 9, 10,
19 and 20 unpatentable under 35 U.S.C. § 103.

DECISION
We affirm the Examiner’s decision rejecting claims 1, 2, 4 through 13,
and 15 through 36.
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

pgc

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