Ex Parte Lamotte

Board of Patent Appeals and Interferences

Jan 31, 2012

10471562 (B.P.A.I. Jan. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THIERRY LAMOTTE
____________

Appeal 2009-012591
Application 10/471,562
Technology Center 2400
____________

Before MARC S. HOFF, THOMAS S. HAHN, and
DENISE M. POTHIER, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.

Invention
Appellant’s invention relates to a portable security device securing
traffic in a platform and providing information portability linked to the
user’s security. See Spec. 7:26-8:5. Claim 5 is illustrative and reproduced
[emphasis, bracketing, and paragraphing added]:
5. A portable electronic device connectable in a removable manner to
a host platform linked to a packet network, comprising
a means for storing security policies,
a means for detecting security policy designation parameters in
packets outgoing from the platform to the network and packets
transmitted by the network and incoming to the platform,
a means for processing the outgoing and incoming packets
respectively according to security policies designated by the detected
designation parameters, and
[1] a means for initiating a communication with a security policy
management server through the network when the processing means
does not recognize any security policy corresponding to the policy
designation parameters detected in a packet, to enable the server to
negotiate a security policy through the device and transmit to the
device at least one packet containing designation parameters and
parameters on which the negotiated policy depends and which are
stored and used in the device for processing packets relating to the
negotiated policy.

The Examiner relies on the following as evidence of unpatentability:
Holden US 6,067,620 May 23, 2000
Vu US 6,557,104 B2 Apr. 29, 2003
(filed May 2, 1997)
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Bonneau US 6,577,229 B1 June 10, 2003
(filed June 10, 1999)

THE REJECTIONS
1. Claims 5-7, 13, and 14 are rejected under 35 U.S.C. § 102(e) as
anticipated by Holden. Ans. 3-6.1
2. Claims 1-4, 8,2 10-12, 15, and 16 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Holden and Vu. Ans. 6-10.
3. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Holden, Vu, and Bonneau. Ans. 10.

THE ANTICIPATION REJECTION OVER HOLDEN
Regarding independent claim 5, Appellant argues among other things
that the cited passages in Holden do not disclose recited limitation [1] supra.
Br. 9-11. In particular, Appellant asserts that Holden only relate to hosts
finding hardware and internet protocol (IP) addresses and does not disclose
the secured network interface unit (SNIU) communicating with the server
when detecting a security policy designation parameter in a packet not
associated with a known policy. Br. 10-11.
Regarding independent claim 13, Appellant asserts that Holden’s
SNIU is external to the host platform and network whereas the logical
implementation of the security policy as set forth in the claims is within the

1 Throughout this opinion, we refer to the Appeal Brief filed November 28,
2008 and the Examiner’s Answer mailed January 23, 2009.
2 We presume the Examiner mistakenly included claim 9 in this rejection.
See Ans. 6. The body of the § 103 rejection based on Holden and Vu does
not discuss claim 9 (see Ans. 6-10), and claim 9 has been separately rejected
based on Holden, Vu, and Bonneau (Ans. 10).
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host’s Open Systems Interconnection (OSI) model. See Br. 12-13. For this
reason, Appellant contends that Holden does not disclose “implementing
security policies in a host device that communicates with a network by
means of a multi-layer [OSI] model” as recited in the preamble. Id.

ISSUES
Under § 102, has the Examiner erred by finding that Holden discloses:
(1) a means for initiating a communication with a security policy
management server through the network when the processing means does
not recognize any security policy corresponding to the policy designation
parameters detected in a packet, as recited in claim 5?
(2) a method for implementing security policies in a host device that
communicates with a network using an OSI model, as recited in claim 13?

ANALYSIS
Claims 5-7
Based on the record before us, we find error in the Examiner’s
rejection of independent claim 5, which recites a means for initiating a
communication with a security policy management server through the
network when the processing means does not recognize any security policy
corresponding to the policy designation parameters detected in a packet (i.e.,
limitation [1]).3 The Examiner maps Holden’s discussion of attempting to

3 37 C.F.R. § 41.37(c)(1)(v) requires each means plus function as permitted
by 35 U.S.C. §112, ¶ 6 be identified. Neither Appellant nor the Examiner
indicates whether the “means for” language found in claim 5 invokes 35
U.S.C. § 112, ¶ 6. However, because claim 5 uses “means for” language, we
find 35 U.S.C. § 112, ¶ 6 has been invoked, and we accordingly conduct our
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communicate with someone else to limitation [1]. See Ans. 3-4, 11-12.
Holden discloses that a host attempts to communicate with someone by
sending messages to maintain associations. Holden, col. 11, l. 18 – col. 12,
l. 9. While we agree that this discussion is directed to the host attempting to
communicate with someone (Holden, col. 11, ll. 35-40; Br. 11), this passage
also states “[w]hen a host behind a SNIU attempts to communicate . . ., the
SNIU transmits an Association Request Message . . . to the destination.” Id.
(emphasis added). Thus, the SNIU (i.e., a portable electronic device), as
well as the host, initiate communications.
Yet, when attempting to communicate with someone, Holden does not
disclose a mechanism that initiates these communications when the
processing means does not recognize any security policy corresponding to
the policy designation parameters in a packet. The sending of messages
back and forth (e.g., the Association Request Message) from the host to the
destination is used to identify other SNIUs in the communications path.
Holden, col. 11, l. 35-45. However, Holden does not initiate these
communications when a processing means does not recognize a security
policy corresponding to policy designation parameters detected in a packet.
Holden further discusses the terminating SNIU determining whether an
association should be permitted when the association would not violate the
global or local security policy (i.e., a security policy) and then creates an
Association Grant Message. Holden, col. 11, ll. 51-57. While Holden
discloses examining a packet to see if there is a violation of a security

review. See Biomedino, L.L.C. v. Waters Techs. Corp., 490 F.3d 946, 950
(Fed. Cir. 2007).

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policy, we do not agree with the Examiner that Holden teaches initiating the
Association Grant Message (Holden, col. 11, ll. 53-57) when a processing
means does not recognize a security policy corresponding to the policy
designation parameters detected in a packet.
Also, regardless of determining when the processing means does not
recognize a security policy as recited in limitation [1], Holden’s host
broadcasts Address Resolution Protocol (ARP) Request messages and
Reverse Address Resolution Protocol (RARP) Requests, and the host target
returns an ARP Response message or a RARP Response (e.g., initiating a
communication to a server). See Holden, col. 11, l. 59–col. 12, l. 8.
Holden’s SNIU further uses associations to establish trust between SNIUs.
Holden, col. 11, ll. 19-21. The SNIUs create this association by using
custom messages and existing protocols to determine the existence of other
SNIUs and hosts. Holden, col. 11, ll. 25-28. While security associations are
held open (Ans. 11-12), Holden’s SNIUs use the association’s security
parameters to make security decisions for each packet. Holden, col. 11, ll.
31-33. However, Holden, again, fails to disclose details as to whether
messages are being initiated to a server when a processing means does not
recognize a security policy corresponding to a parameter detected in each
packet. We therefore find that Holden fails to explicitly or inherently teach
any mechanism or an equivalent drawn to limitation [1] in claim 5.
For the foregoing reasons, Appellant has persuaded us of error in the
rejection of independent claim 5 and dependent claims 6 and 7 for similar
reasons.

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Claims 13-14
Based on the record before us, we reach the opposite conclusion for
independent claim 13. Notably, claim 13 differs in scope from claim 5.
Holden discloses the hosts have systems that operate at the Network or
Transport Layers (Layers 3 and 4) of the OSI. Holden, col. 2, ll. 24-26; Ans.
5. Additionally, Holden discloses the SNIU performs the host/network core
interface functions. Holden, col. 3, ll. 9-13; Ans. 5. Thus, any standard
communication between the host and network is sent to or intercepted by the
SNIU (e.g., intercepted) for performing the core functions of the
host/network interface. See id.
Among these functions performed by the SNIU is the standard
communications stack function, which handles all the standard
communications data translation between the physical data link and network
protocol layers. Holden, col. 3, ll. 9-18; Ans. 5. Such data translation
includes packets that are being transferred within the host and between two
adjacent layers of the host’s model (e.g., the physical data link and the
network layers). See id. Thus, when performing the data translations
between the protocol layers, Holden discloses packets being intercepted as
they are transferred between two adjacent layers of the OSI model within the
host. See id.
Furthermore, despite Appellant’s assertions (Br. 12-13), Appellant’s
Figure 2 shows the location of logic for the portable device (e.g., 2) that
implements the security policies of packets intercepted between two OSI
layers is located external to the host platform (e.g., 1). See Spec. Fig. 2.
Incoming and outgoing packets PE and PS are sent to a portable device’s
“packet filter” which includes the connection module MCS and the
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decision-making engine MPS to implement security policies in the host. See
Spec. 8:17:23; 11:16-28; 19:9-14, 21-27. Moreover, as discussed by the
Examiner (Ans. 13), Holden discloses that the interface of the SNIU with the
host (e.g., Host/Network Interface module 46) intercepts data packets during
processing. Holden, col. 8, ll. 1-39; Fig. 4. Thus, when broadly but
reasonably construing claim 13’s intercepting step, Holden discloses the
SNIU, at least, logically intercepts packets, as they are transferred between
two adjacent model layers within the host, while communicating with the
host interface.
Lastly, Appellant repeats the limitations in claim 13 and then states
that Holden does not disclose these limitations. Br. 11-12. Merely pointing
out what claim 13 recites and then asserting that Holden fails to teach these
limitations is not considered a separate argument for patentability. See In re
Lovin, 99 USPQ2d 1373, 1378-79 (Fed. Cir. 2011).
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 13 and claim 14 not separately argued
with particularity (Br. 11-13).

THE OBVIOUSNESS REJECTION OVER HOLDEN AND VU
Regarding representative claim 1, Appellant refers to “the reasons
discussed above” in arguing that Holden’s SNIU is not analogous to or
cannot anticipate a smart card as recited. Br. 15-16. Appellant also
disagrees that Vu’s smart card is analogous art to a Fortezza card. Br. 16.
Appellant additionally asserts that the Examiner has only provided a
conclusory statement for applying Vu and has failed to articulate a reason
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with some rational underpinning to support the obviousness rejection based
on Holden and Vu. See Br. 16.

ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Holden and Vu collectively would have taught or suggested a
smart card?
(2) Is the Examiner’s reason to combine Holden and Vu in rejecting
claim 1 supported by articulated reasoning with some rational underpinning
to justify the Examiner’s obviousness conclusion?

ANALYSIS
Based on the record, we find no error in the Examiner’s rejection of
claim 1. Appellant refers to “the reasons discussed above” in arguing that
Holden does not anticipate claim 1. Br. 15-16. We are not persuaded. First,
the Examiner rejected claim 1 based on Holden and Vu collectively and
concludes the combination renders claim 1 obvious. See Ans. 6-7. Thus,
attacking Holden individually or arguing Holden does not anticipate claim 1
fails to show nonobviousness. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986).
Second, based on the record, we are led to presume that the referred to
“reasons discussed above” (Br. 15) relate to the argument that: (a) Holden’s
cryptographic card is only part of the SNIU; (b) the SNIU is not a portable
electronic device; and (c) the SNIU cannot be a smart card. Br. 8-9. Based
on these presumptions, we understand Appellant to conclude that Holden
discloses a SNIU but not a portable electronic or smart card that includes the
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recited means for storing, detecting, and processing limitations. Br. 9. We
disagree.
Holden discloses two different embodiments for the SNIU: (1) a
stand-alone hardware SNIU and (2) a software SNIU. Holden, col. 4,
ll. 24-28; Ans. 6. The software embodiment is implemented primary as a
software function residing in the host computer, which can include a
PCMCIA card reader (e.g., 88). Holden, col. 4, ll. 46-51, col. 7, ll. 13-16;
Ans. 6. Holden also states the only hardware involved is a cryptographic
card (e.g., a Fortezza card), which plugs into the host’s reader. See id.
Holden also teaches a flash RAM card (e.g., 92) that can be inserted into the
reader. Holden, col. 7, ll. 12-16. Thus, Holden teaches various portable
cards connectable in removable manner to a reader on a host platform as
recited in claim 1.
Holden’s software embodiment provides all the same network security
features, functionality, and security of the stand-alone SNIU. Holden, col. 4,
ll. 55-67; Ans. 11. Holden teaches that the Fortezza card performs integrity
and authenticating functions while the RAM card 92 loads the SNIU
software. Holden, col. 7, ll. 17-20; see Ans. 6, 10-11. Thus, Holden’s SNIU
software embodiment is located on a removable memory card or storage
device (e.g., 92). See id. Alternatively, the Fortezza card includes integrity
and authenticating functions (Holden, col. 7, ll. 17-18), which suggests
having the means recited in claim 1. Appellant has not challenged that the
SNIU software or the Fortezza card fails to perform the recited means
limitations. See Br. 8-9, 15-16. We, therefore, disagree that Holden does
not teach a card with the recited means in claim 1.
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Third, the Examiner indicates that the Fortezza card in Holden is not a
“smart card” and cites to Vu to teach this feature. See Ans. 7. Vu teaches
that tokens are used to store secret keys on various types of removable
storage devices, including floppy disks, Fortezza cards, and smart cards.
Vu, col. 1, ll. 34-41. Vu’s teaching illustrates that an ordinary skilled artisan
would have recognized that various removable storage devices are
interchangeable, including substituting a Fortezza card for a smart card. See
id. Such a combination does no more than yield a predictable result of
substituting an element (e.g., a Fortezza card) for another known in the field
(e.g., a smart card). See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007). Additionally, Vu teaches and suggests other removable storage
devices, such as a removable flash RAM card, can be used to store
information. See Vu, col. 1, ll. 34-41. Thus, similar to the Fortezza card, Vu
teaches and suggests that a smart card can be substituted for Holden’s flash
RAM card, yielding a predictable result. See KSR, 550 U.S. at 417. Thus,
there is reasoning with rational underpinning to combine Vu with Holden as
the Examiner proposes.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 1 and claims 2-4, 8, 10-12, 15, and 16 not
separately argued with particularity (Br. 17-18).

THE OBVIOUSNESS REJECTION OVER HOLDEN, VU, AND BONNEAU
Regarding claim 9, Appellant refers to the arguments made in
connection with claim 1. Br. 18-19. We are not persuaded by Appellant’s
argument for the reasons disclosed above with regard to Holden and Vu and
need not address whether Bonneau cures any purported deficiency. This
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argument also fails to rebut persuasively the Examiner’s prima facie case of
obviousness – a position we find reasonable.

CONCLUSIONS
Under 35 U.S.C. § 102, the Examiner did not err in rejecting claims
13 and 14, but erred in rejecting claims 5-7.
Under 35 U.S.C. § 103, the Examiner did not err in rejecting claims
1-4, 8-12, 15, and 16.

DECISION
The Examiner’s decision rejecting claims 1-16 is affirmed-in-part.
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-IN-PART

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