Ex Parte Kamboh et al

Patent Trial and Appeal Board

Jun 8, 2016

12966733 (P.T.A.B. Jun. 8, 2016)

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.
12/966,733 12/13/2010 Ameel Kamboh 17620BAUS03C 9355
131442 7590 06/09/2016
RPX Clearinghouse, LLC
One Market Plaza, Steuart Tower
Suite 800
San Francisco, CA 94105
EXAMINER
ROBERTS, BRIAN S
ART UNIT PAPER NUMBER
2466
MAIL DATE DELIVERY MODE
06/09/2016 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 AMEEL KAMBOH and DAVID TSANG
____________________

Appeal 2014-005889
Application 12/966,733
Technology Center 2400
____________________

Before JOSEPH L. DIXON, ERIC S. FRAHM, CARL L. SILVERMAN,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 20–33. Claims 1–19 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Disclosed Invention
Appellants’ disclosed invention relates to data communications using
network elements (Spec. ¶¶ 2 and 3) that can be configured to have multiple
processors (Spec. ¶ 10), and more specifically a virtual private network
(VPN) system and a method of operating a VPN where an internet protocol
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(IP) can be terminated to balance processor work-load distribution using
steering policies that control packets flowing over the VPN (Spec. ¶¶ 10 and
11; Abst.; claims 20 and 27).

Exemplary Claims
Exemplary independent claims 20 and 27 under appeal, with
emphases added, read as follows:
20. A network system, comprising:
Virtual Private Network (VPN) routing control logic
configured to implement a VPN routing entity;
application control logic configured to implement an
application process to execute in the context of the VPN with
access to packet flows over the VPN, the application process
being configured to generate steering policies associated with
packet flows; and
steering policy management control logic configured to
receive steering policies generated by the application control
logic and configured to pass steering policies to at least one
steering policy agent, the steering policy agent being configured
to enable packets in the packet flows to be affected by the
policies, so that the application process associated with the
VPN may obtain access to the packet flows over the VPN even
though it is instantiated in the application control logic rather
than being instantiated in the VPN routing control logic.
27. A method of operating a network system, comprising:
generating, in an application process configured to execute in
the context of a Virtual Private Network (VPN), at least one
steering policy associated with packet flows, the application
process not being instantiated in VPN routing control logic
configured to control the VPN but having access to packet
flows over the VPN;
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passing the policy to a steering policy agent; and
operating the steering policy agent to direct packets
meeting the policy to the application process to enable packets
in the packet flows to be affected by the policy.
The Examiner’s Rejections
(1) The Examiner rejected claims 20–26 as being unpatentable under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which
Appellants regard as the invention. Final Rej. 3–5.
The Examiner determines (Final Rej. 4) that (i) the terms “VPN
routing control,” “application control,” and “steering policy management
control” are not structural modifiers; and (ii) therefore, the terms “logic”
recited in independent claim 20 (e.g., “VPN routing control logic,”
“application control logic,” and “steering policy management control logic”)
are non-structural and are coupled with functional language without reciting
sufficient structure to achieve the functions recited. The Examiner interprets
the terms “VPN routing control logic,” “application control logic,” and
“steering policy management control logic” under 35 U.S.C. § 112, sixth
paragraph (see Final Act. 6–7), and concludes that the written description
supporting these claim limitations fail to clearly link or associate the
disclosed structure, material, or acts to the claimed functions such that one
of ordinary skill in the art would recognize what structure, material, or acts
perform the claimed functions (Ans. 6).
(2) The Examiner rejected claims 20–33 based on the judicially
created doctrine of non-statutory obviousness-type double patenting, over
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claims 1–14 of Kamboh (US 7,869,442 B1; issued Jan. 11, 2011).1 Final
Rej. 2–3.

ISSUE
Based on Appellants’ arguments in the Appeal Brief (App. Br. 4–11)
and the Reply Brief (Reply Br. 1–4), the following issue is presented:
Did the Examiner err in rejecting claims 20–26 based on determining
that the limitations “VPN routing control logic,” “application control logic,”
and “steering policy management control logic” recited in independent claim
20 are indefinite for failing to particularly point out and distinctly claim the
subject matter, which Appellants regard as the invention?

ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 2–5) in light
of Appellants’ contentions in the Appeal Brief (App. Br. 4–11) and Reply
Brief (Reply Br. 1–4) that the Examiner has erred, as well as the Examiner’s
response to Appellants’ arguments in the Appeal Brief (Ans. 2–6). With
regard to the indefiniteness rejection of claims 20–26, we disagree with
Appellants’ conclusions and concur with the conclusions reached by the
Examiner.

1 Appellants do not present separate patentability arguments for claims 20–
33 rejected based on the judicially created doctrine of non-statutory
obviousness-type double patenting, or otherwise rebut the Examiner’s prima
facie case in regards to the obviousness-type double patenting rejections of
claims 20–33 (see generally App. Br. 4–11; Reply Br. 1–4). Thus, no issue
is presented by Appellants as to this rejection, and we sustain the
obviousness-type double patenting rejection of claims 20–33 pro forma.

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We agree with the Examiner that one of ordinary skill in the art would
not be able to ascertain the structure needed to perform the functions recited
in the claims (e.g., the functions of “VPN routing,” “application control,”
and “steering policy management control”). See Ans. 3–5. Such limitations
render the scope of claims 20–26 unascertainable.
The Specification fails to provide a sufficient structure or algorithm
that performs the claimed functions of “VPN routing,” “application control,”
and “steering policy management control” (see claim 20). Because the
structure corresponding to the claimed logic is not described, the
Specification does not “‘permit one of ordinary skill in the art to know and
understand what structure corresponds to the means limitation’ so that he
may ‘perceive the bounds of the invention.”’ In re Aoyama, 656 F.3d 1293,
1298 (Fed. Cir. 2011).
Appellants’ Figure 2 shows a network element 20 having a central
processing unit (CPU) 28 including a VPN routing entity 32, a steering
policy manager 36, and steering policy agents 38, and CPUs 28 and 48 IP
including applications 34 (Fig. 2; ¶¶ 23, 24, and 29). Appellants’
Specification defines the steering policy manager 36, steering policy agents
38, VPN routing entity 32 and applications 34 (i.e., “other logical entities”)
in paragraph 60 as follows:
[0060] The steering policy manager, steering policy agents, and
other logical entities described herein, may be embodied as one
or more software programs implemented in control logic on a
processor on the network element 20. The control logic in this
embodiment may be implemented as a set of program
instructions that are stored in a computer readable memory
within the network element and executed on a microprocessor
on the network element. However, in this embodiment as with
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the previous embodiments, it will be apparent to a skilled
artisan that all logic described herein can be embodied using
discrete components, integrated circuitry such as an
Application Specific Integrated Circuit (ASIC), programmable
logic used in conjunction with a programmable logic device
such as a Field Programmable Gate Array (FPGA) or
microprocessor, or any other device including any combination
thereof. Programmable logic can be fixed temporarily or
permanently in a tangible medium such as a read-only memory
chip, a computer memory, a disk, or other storage medium. All
such embodiments are intended to fall within the scope of the
present invention.
Spec. ¶ 60 (emphasis added). Appellants’ Specification describes the
functions of the various logics recited in claim 20 (e.g., “VPN routing
control logic,” “application control logic,” and “steering policy management
control logic”) as capable of being performed by software known in the art:
[0059] It should be understood that all functional statements
made herein describing the functions to be performed by the
methods of the invention may be performed by software
programs implemented utilizing subroutines and other
programming techniques known to those of ordinary skill in the
art. Alternatively, these functions may be implemented in
hardware, firmware, or a combination of hardware, software,
and firmware. The invention is thus not limited to a particular
implementation.
Spec. ¶ 59 (emphasis added).2 In this light, one of ordinary skill in the art
would understand elements 32, 36, and 38 in Figure 2 to be software
components, modules, or logic that are stored in CPUs 28 and 48.

2 Notably, since Appellants’ Specification states that the functional
statements “describing the functions to be performed by the methods of the
invention [e.g., the functional statements recited in claim 20] may be
performed by software programs implemented utilizing subroutines and
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Figures 2–6 of Appellants’ Drawings do not show, and the
accompanying textual disclosure (Spec. ¶¶ 22–58) does not describe or
disclose, any definite structure or algorithm for accomplishing the recited
functions of VPN routing, application control, and steering policy
management control. Because there is no underlying support in the
Specification for the terms “VPN routing control logic,” “application control
logic,” and “steering policy management control logic,” claim 20, as well as
claims 21–26 depending therefrom, do not particularly point out and
distinctly claim the subject matter, which Appellants regard as the invention.
Furthermore, those skilled in the art would not understand what is claimed
when the claim is read in light of the specification. Orthokinetics, Inc., 806
F.2d 1565, 1576 (Fed. Cir. 1986).
The indefiniteness inquiry is concerned with whether the bounds of
the invention are sufficiently demarcated, not with whether one of ordinary
skill in the art may find a way to practice the invention. Aristocrat Techs.
Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1337 (Fed. Cir.
2008). To assess whether a claim is indefinite, therefore, we do not “look to
the knowledge of one skilled in the art apart from and unconnected to the
disclosure of the patent.” Id. (quoting Med. Instrumentation & Diagnostics
Corp. v. Elekta AB, 344 F.3d 1205, 1212 (Fed. Cir. 2003)). We rather “look
at the disclosure of the patent and determine if one of skill in the art would
have understood that disclosure to encompass [the required structure].”

other programming techniques known to those of ordinary skill in the art”
(Spec. ¶ 59) (emphases added), Appellants admit that each of the functions
performed by the “VPN routing control logic,” “application control logic,”
and “steering policy management control logic” of the network system
recited in claim 20 are known to those of ordinary skill in the art.
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Aristocrat, 521 F.3d at 1337 (quoting Med. Instrumentation, 344 F.3d at
1212). Here, the Specification does not disclose any specific structure or
algorithm that is responsible for VPN routing control, application control,
and steering policy management control. There is therefore nothing in the
Specification to help cabin the scope of the functional language recited in
claims 20–26.
Network system claims 20–26 are therefore indefinite. The problem
in the instant case is not the adequacy of the substance or form of the
disclosure, but the absence of any disclosure at all. See also Aristocrat, 521
F.3d at 1337 (“The question . . . is not whether the algorithm that was
disclosed was described with sufficient specificity, but whether an algorithm
was disclosed at all.”).
In view of the foregoing, we need not reach the issue of whether or
not the terms recited in claim 20 (“VPN routing control logic,” “application
control logic,” and “steering policy management control logic”) are (i) in
means-plus-function format; and/or (ii) contain nonce words. Claims 20–26
are indefinite because the bounds of the invention are not sufficiently
demarcated such that one of ordinary skill in the art may find a way to
practice the invention. See Aristocrat, 521 F.3d at 1337.
Accordingly, we sustain the Examiner’s indefiniteness rejection of
claims 20–26 under § 112, second paragraph.

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 20–26 under
35 U.S.C. § 112, second paragraph, as being indefinite for lack of clarity
with regards to the algorithm or structure used to control VPN routing,
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applications, and/or steering policy management because a person of
ordinary skill in the art would not understand the metes and bounds of the
logic used to perform the recited functions. The terms used in claims 20–26
(“VPN routing control logic,” “application control logic,” and “steering
policy management control logic”) are indefinite.
(2) Appellants have not shown that the Examiner erred in rejecting
claims 20–33 based on the judicially created doctrine of non-statutory
obviousness-type double patenting.

DECISION
(1) The Examiner’s rejection of claims 20–26 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which Appellants regard as the
invention, is affirmed.
(2) The Examiner’s rejection of claims 20–33 based on the judicially
created doctrine of non-statutory obviousness-type double patenting, over
claims 1–14 of US Patent No. 7,869,442, is affirmed, pro forma.
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