Ex Parte OverbyDownload PDFPatent Trial and Appeal BoardJun 18, 201411738500 (P.T.A.B. Jun. 18, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte LINWOOD H. OVERBY JR. ____________________ Appeal 2011-013273 Application 11/738,500 Technology Center 2400 ____________________ Before JASON V. MORGAN, JOHNNY A. KUMAR, and MICHAEL J. STRAUSS, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks review under 35 U.S.C. § 134(a) of a final rejection of claims 1-18. We have jurisdiction over the appeal of these claims pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appeal 2011-013273 Application 11/738,500 2 STATEMENT OF CASE1 An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below: 1. A method, within a security enforcement point, for security enforcement point inspection of encrypted data in a secure, end-to-end communications path, the method comprising: establishing a persistent secure session with a key server holding a security association (SA) for an end-to-end secure communications path between endpoints; receiving the SA for the end-to-end secure communications path over the persistent secure session; decrypting an encrypted payload for the end-to-end secure communications path using session key data in the SA; and performing a security function on the decrypted payload. REJECTIONS The Examiner rejected claims 11-18 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Ans. 4-5. The Examiner rejected claims 1-3, 5-13, and 15-18 under 35 U.S.C. § 103(a) as being unpatentable over Tang (US 2003/0188192 A1, Oct. 2, 2003) and Simon (US 2003/0093691 A1, May 15, 2003). Ans. 6-14. The Examiner rejected claims 4 and 14 under 35 U.S.C. § 103(a) as being unpatentable over Tang, Simon, and Hall (US 2003/0018891 A1, Jan. 23, 2003). Ans. 14-15. 1 Our Decision will make reference to Appellant’s Appeal Brief (“App. Br.,” filed Mar. 7, 2011), and the Examiner’s Answer (“Ans.,” mailed June 13, 2011), and the Reply Brief (“Reply Br.,” filed Aug. 10, 2011). Appeal 2011-013273 Application 11/738,500 3 ANALYSIS Rejection under 35 U.S.C. §101 Claims 11-18 Issue 1: Did the Examiner err in finding that the claims are directed to non-statutory subject matter? Appellant contends the phrase “computer readable storage medium” excludes “any ‘computer usable medium’ that propagates the program (such as a signal or a carrier wave).” Reply Br. 2-3. Appellant further contends a storage medium “is not a transitory medium, but a tangible medium and thus is statutory subject matter.” App. Br. 9. The Examiner found that Appellant has not limited the claimed computer usable storage medium to statutory subject matter. Ans. 4-5, 15-16. We agree with the Examiner. We sustain the Examiner’s § 101 rejection of independent claim 11 reciting, in pertinent part, computer program product comprising a computer usable storage medium having stored therein computer usable program code. The storage recitation, however, is insufficient to limit the claim to non-transitory forms. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (expanded panel) (precedential) (holding recited machine-readable storage medium ineligible under § 101 since, absent a contrary disclosure in the Specification, a machine-readable storage medium encompasses transitory media). The Examiner refers to paragraph 23 of the Specification in connection with the computer usable storage medium of claim 11 (see Ans. 5, 15-16). Appellant’s specification explains that: Appeal 2011-013273 Application 11/738,500 4 For the purposes of this description, a computer-usable or computer readable medium can be any apparatus that can contain, store, communicate, propagate, or transport the program for use by or in connection with the instruction execution system, apparatus, or device. Spec. ¶ 23 (emphases ours). We note the claim does not limit the computer usable storage medium to non-transitory forms. Also, while we interpret claims broadly but reasonably in light of the Specification, we nonetheless must not import limitations from the Specification into the claims. See Phillips v. AWH Corp., 415 F.3d 1303, 1316, 1323 (Fed. Cir. 2005) (en banc). Where, as here, a recited computer- usable storage medium is not claimed as non-transitory, and the disclosure includes embodiments of a computer-usable storage medium that includes transitory forms (i.e., media that communicate, propagate, or transport), the medium encompasses transitory forms and is therefore ineligible under § 101. We are therefore not persuaded that the Examiner erred in rejecting representative claim 11, and claims 12-18 for similar reasons. Rejections under 35 U.S.C. §103 We have reviewed the Examiner’s rejections in light of Appellant’s contentions that the Examiner has erred. Further, we have reviewed the Examiner’s response to claims 1-18 that has been argued by the Appellant. App. Br. 9-16; Reply Br. 4-6. We disagree with Appellant’s conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in Appeal 2011-013273 Application 11/738,500 5 the Examiner’s Answer in response to Appellant’s Appeal Brief. Ans. 6-14, 16-19. We concur with the conclusions reached by the Examiner. We highlight and address specific findings and arguments for emphasis as follows. Issue 2: Did the Examiner err in finding that the combined teachings of Tang and Simon teach and/or suggest “decrypting an encrypted payload for the end-to-end secure communications path using session key data in the SA,” and “performing a security function on the decrypted payload,” as set forth in claim 1, and similarly recited in independent claims 9 and 11? Appellant first contends “Tang does not disclose decrypting an encrypted payload and performing a security function on the decrypted payload.” App. Br. 14. In particular, Appellant contends that Tang’s paragraph 20 “only describes encrypting an entire IP packet, not decrypting an entire IP packet.” Reply Br. 6. The Examiner responds that in Tang “[p]ackets matching the 4 tuple values (i.e[.,] the SA values) are decrypted,” and “the packets are decrypted and the inner part (decrypted payload) is filtered with an inner filter (a security function).” Ans. 7 (emphasis omitted) (citing Tang ¶ 20). We agree with and adopt the Examiner’s findings as our own. Particularly, we concur with the Examiner’s conclusion that Tang in combination with Simon teaches or suggests Appellant’s claimed invention (id. at 16-19). We note Appellant’s arguments address Tang in general (App. Br. 14-16, Reply Br. 4-6), but, because Appellant does not explain why decrypting an entire IP packet would not have been obvious to one skilled in the art, these arguments are not persuasive of Examiner error. Appeal 2011-013273 Application 11/738,500 6 Furthermore, regarding Appellant’s argument “Tang does not disclose that the entire encrypted IP packet is decrypted to be used by the filter,” (App. Br. 15 (emphasis omitted)), Appellant’s argument is not commensurate with the scope of claim 1, because claim 1 does not preclude such a reading of the decrypting step. In other words, we agree with the Examiner that “decrypting the entire encrypted IP Packet or only part of it does not refute that the inner header constitutes an encrypted payload.” Ans. 18. Thus, in light of the broad terms recited in claim 1 and the arguments presented, Appellant has failed to clearly distinguish the claimed invention over the prior art combination relied on by the Examiner. Therefore, in the absence of sufficient evidence or argument, we are not persuaded the Examiner’s reading of the claims on the cited references is erroneous and sustain the rejection of independent claims 1, 9, and 11, which include substantially the same limitations and were argued together (App. Br. 12). With respect to dependent claims, Appellant argues these claims are patentable due to their dependency on their respective independent or dependent claims (id at 9, 16.). Thus, as we sustained the rejection of claims 1, 9, and 11, we also sustain the rejection of claims 2-8, 10, and 12-18, dependent therefrom. Consequently, we conclude there is no reversible error in the Examiner’s rejections of claims 1-18. DECISION The rejection of claims 11-18 under 35 U.S.C. § 101 as being directed to non-statutory subject matter is affirmed. Appeal 2011-013273 Application 11/738,500 7 The Examiner’s decision rejecting claims 1-18 under 35 U.S.C. § 103(a) is affirmed. 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 msc Copy with citationCopy as parenthetical citation