Ex Parte Overby

Patent Trial and Appeal Board

Jun 18, 2014

11738500 (P.T.A.B. Jun. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LINWOOD H. OVERBY JR.
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Appeal 2011-013273
Application 11/738,500
Technology Center 2400
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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.

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Application 11/738,500

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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).
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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:
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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
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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.
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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.
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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

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