Ex Parte Rolette et al

Patent Trial and Appeal Board

Feb 9, 2016

13030360 (P.T.A.B. Feb. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/030,360 02/18/2011 James Rolette
56436 7590 02/11/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82678062 2584
EXAMINER
SCHMIDT, KARIL
ART UNIT PAPER NUMBER
2439
NOTIFICATION DATE DELIVERY MODE
02/11/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES ROLETTE, EDWARD ROSS, and
DAMON FLEURY
Appeal2014-002615
Application 13/030,360
Technology Center 2400
Before MICHAEL J. STRAUSS, KEVIN C. TROCK, and
NABEEL U. KHAN, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-002615
Application 13/030,360
STATE~v1ENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-5, 8, 9, and 11-22. Claims 6 and 7 are canceled.
Claim 10 is indicated to be allowable. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm-in-part.
THE INVENTION
The claims are directed to securing a virtual environment. Spec.,
Title. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method secunng a virtual environment, said method
compnsmg:
in a host device, intercepting a packet addressed to or
sourced by a virtual machine implemented by said host device;
redirecting said packet from said host device to a security
device external to said host device through an egress tunnel; and
delivering said packet to an intended destination of said
packet if said host device receives an indication from said
security device that said packet is approved.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Morgan
McGee
Kabbara
US 2009/0073895 Al
US 2009/0254990 Al
US 2011/0209215 Al
REJECTIONS
Mar. 19,2009
Oct. 8, 2009
Aug. 25, 2011
The Examiner made the following rejections:
2
Appeal2014-002615
Application 13/030,360
Claims 1-5, 8-14, and 17-22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over McGee and Kabbara. 1 Ans. 7-14.
Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over McGee, Kabbara, and Morgan. Ans. 14--15.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. In connection with claim 21 we
agree with Appellants' conclusions as to this rejection. However, in
connection with claims 1-5, 8, 9, 11-16, 18-20, and 22 we disagree with
Appellants' conclusions and adopt as our own ( 1) the findings and reasons
set forth by the Examiner in the action from which this appeal is taken (Final
Act. 7-15) and (2) the reasons set forth by the Examiner in the Examiner's
Answer in response to Appellants' Appeal Brief (Ans. 2-11) and concur with
the conclusions reached by the Examiner. We highlight the following for
emphasis.
Claim 1
In connection with claim 1 Appellants contend modifying McGee
according to the teachings of Kabbara would not result in redirecting a
packet from a host device through an egress tunnel to a security device that
is external to the host device. App. Br. 13. In particular, Appellants argue
1 Although claims 10 and 17 are among the claims listed as being rejected,
the Examiner indicates "[ c ]laim 10 is objected to as being dependent upon a
rejected base claim, but would be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening
claims." Final Act. 15. Because claim 17 depends from claim 10, it is
presumed to also be allowable.
3
Appeal2014-002615
Application 13/030,360
"if Kabbara's teachings of a switch directing packets to an inspection service
were added to McGee, the result would simply be what McGee already
teaches, that the vSwitches, operated by the Hypervisor (312), can send
packets to the security VM (304) for inspection." Id. According to
Appellants,
[O]ne of skill in the art modifying McGee in view of Kabbara
would [not] ignore the Security VM (304) and, instead, route
packets for inspection out of the system to a separate IPS. This
would change the operating principles of McGee in which the
Security VM (304) is provided to service the host device.
App. Br. 13-14.
The Examiner responds by finding McGee teaches all the limitations
of claim 1 except "that the security device is external to the host system and
the packet travels via an egress tunnel when communicated between the host
and the security device .... " Ans. 3. The Examiner further finds Kabbara,
by disclosing a switch that redirects a packet directly to a third party
intn.1sion prevention system (IPS) to be scanned for malware teaches (i)
switch functionality that could be included in the host device switches of
McGee and (ii) virus scanning services provided external to the packet's
destination, such as on a third party scanning device, i.e., virus scanning that
is external to the host device. Ans. 3. The Examiner concludes
it would require no more than routine skill in the art to relocate
the security device of McGee to an external device; thus one of
ordinary skill in the art would be able to either combine prior art
elements according to known methods to yield predictable
results or simply substitute one known element for another to
obtain predictable results.
Ans. 3--4.
4
Appeal2014-002615
Application 13/030,360
\Ve agree with the Examiner that "Appellant argues against the
references individually, and one cannot show nonobviousness by attacking
references individually where the rejections are based on a combination of
references." Ans. 2 citing In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA
1981); In re Merck & Co., 800 F.2d 1091,231 USPQ 375 (Fed. Cir. 1986).
The Examiner relies on McGee only for disclosing the security device is
external to the host device with communications between the two provided
through an egress tunnel. Ans. 2-3. In contrast, Appellants argued
combination of prior art embodiments is based on bodily incorporation of
Kabbara's switch into the host device switches of McGee rather than what
the combination of the two references teaches or suggests. We note that "[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton." KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). In
particular, all of the features of one reference need not be bodily
incorporated into the other, but consideration should be given to what the
combined teachings, knowledge of one of ordinary skill in the art, and the
nature of the problem to be solved as a whole would have suggested to those
of ordinary skill in the art (see In re Keller, 642 F.2d 413, 425 (CCPA
1981) ). The artisan is not compelled to blindly follow the teaching of one
prior art reference over the other without the exercise of independent
judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed.
Cir. 1984)).
Furthermore, we are also not persuaded combining the respective
familiar elements of the cited references in the manner proffered by the
Examiner was "uniquely challenging or difficult for one of ordinary skill in
the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
5
Appeal2014-002615
Application 13/030,360
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). \Ve further note merely
making elements of a device separable, without more, is considered to be an
obvious design choice and does not render an invention patentable. See In re
Larson, 340 F.2d 965, 968 (CCPA 1965); In re Dulberg, 289 F.2d 522, 523
(CCPA 1961). Therefore, the Examiner's proffered combination of familiar
prior art elements according to their established functions would have
conveyed a reasonable expectation of success to a person of ordinary skill at
the time of the invention.
Appellants further contend the references fail to teach or suggest
redirecting the packet though an egress tunnel. App. Br. 14. The Examiner
responds by finding Appellants' Specification "defines 'tunnel' ... as 'a
protocol implemented pathway for transmitting a packet to a destination
other than a destination specified in the packet or from a source other than a
source specified in the packet."' Ans. 4. The Examiner further finds
Kabbara discloses "redirecting a packet to a third party for deep packet
inspection, which meets the 'transmitting a packet to a destination other than
a destination specified in the packet' of the Applicant's definition of tunnel"
and, because Kabbara redirection is via a network, "one of ordinary skill in
the art could reasonably infer that the disclosed redirection occurred over a
protocol implemented pathway." Id. The Examiner concludes Kabbara
teaches the disputed limitation of redirecting the packet though an egress
tunnel.
We find Appellants' argument unpersuasive of Examiner error.
During examination of a patent application, pending claims are given their
broadest reasonable construction consistent with the specification. In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Prater,
6
Appeal2014-002615
Application 13/030,360
415 F.2d 1393, 1404---05(CCPA1969). Appellants' fail to provide sufficient
evidence or argument to persuade us Kabbara's packet redirection to a third
party over a network fails to teach or suggest, under a broad but reasonable
interpretation, the disputed limitation of redirecting the packet through an
egress channel.
For the reasons supra we find Appellants' contentions unpersuasive of
Examiner error. Accordingly, we sustain the rejection of independent claim
1 under 35 U.S.C. § 103(a) together with the rejection of dependent claims
3-5, 8, and 22 which are not argued separately with particularity.
Claim 2
Appellants contend claim 2 requires "if the packet comes back to the
host device from the security device using an ingress tunnel, this fact signals
to the host device that the packet is approved by the security device." App.
Br. 15. In contrast, Appellants argue Kabbara fails to teach "anything about
how the IPS resource indicates to the requesting switch or other device that a
packet is safe or 'approved."' Id. The Examiner responds by finding
Kabbara's system returns information to the switch related to scanning such
that one skilled in the art would understand some indication would be
supplied to the switch regarding the packet. Ans. 5. The Examiner further
finds McGee teaches returning the redirected packet to the host device if the
packet is permissible based on the security policy and, in combination with
Kabbara's external IPS resource, teaches or suggests the disputed limitation
of claim 2. Ans. 5---6.
We find Appellants' contention unpersuasive of Examiner error.
Although Kabbara does not explicitly disclose the host device receiving the
7
Appeal2014-002615
Application 13/030,360
packet (back from) from the security device, in view of ~vfoGee's disclosure
of a packet return, we agree with the Examiner in finding the combination of
references teaches or suggests receipt of a returned packet by the host
device. Concerning the requirement that the return receipt be through an
ingress tunnel, we find such argument unpersuasive for essentially the same
reasons as Appellants' arguments in connection with the egress tunnel of
claim 1 as explained supra. See also Ans. 4. In particular, Appellants fail to
provide sufficient evidence or line of reasoning explaining why McGee's
vSwitches providing connectivity among Security-VM 304, Virtual
Machines 306, and Hypervisor 312 fail to teach or suggest an ingress tunnel.
Accordingly we sustain the rejection claim 2.
Claim 9
In connection with claim 9, Appellants contend Kabbara is deficient
as failing to disclose "how the IPS resource indicates to the requesting
switch or other device that a packet is safe or 'approved.'" App. Br. 17. As
this argument is essentially the same we find unpersuasive in connection
with claim 2 for the reasons supra, we likewise find such argument
unpersuasive in connection with claim 9. Accordingly, we sustain the
rejection of independent claim 9 under 35U.S.C.§103(a) together with the
rejection of dependent claims 11-13 and 15 which are not argued separately
with particularity.
Claim 14
In connection with claim 14, Appellants contend "Li Just because the
packet [taught by McGee] is returned to the packet stream after analysis
does not dictate that 'said determination of whether said packet is
8
Appeal2014-002615
Application 13/030,360
permissible based on said security policy comprises determining whether
said security policy permits said packet within a context of said
networliflow."' Reply. Br. 10, see also App. Br. 18-19. Appellants'
argument is unpersuasive because it amounts to little more than a naked
assertion the disputed claim element is not found in the prior art. See 37
C.F.R. § 41.37(c)(l)(iv) ("A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim."); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that
the Board reasonably interpreted Rule 41.3 7 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.") In particular, Appellants fail to provide any reasoning, such as a
required interpretation of "whether said security policy permits said packet
within a context of said network flow," as recited by claim 14, that
distinguishes the disputed limitation over the teachings of McGee including
step 528 as applied by the Examiner. Ans. 9. Instead, absent sufficient
rebuttal, it is reasonable that a security policy for a network teaches or
suggests criteria in context of a network flow. Therefore, in the absence of
sufficient evidence or argument and under a broad but reasonable
interpretation, Appellants fail to demonstrate error in the Examiner's finding
that McGee discloses the disputed limitation. Ans. 9. Accordingly, we
sustain the rejection of claim 14.
Claim 18
Appellants argue the rejection of claim 18 is improper for the reasons
argued in connection with claim 2. Reply Br. 11. Finding those arguments
9
Appeal2014-002615
Application 13/030,360
unpersuasive for the reasons supra, we likewise sustain the rejection of
independent claim 18 under 35 U.S.C. §103(a) together with the rejection of
dependent claims 19 and 20 which are not argued separately with
particularity.
Claim 21
Appellants contend McGee fails to teach dropping a packet form the
buffer on a time-out basis as required by claim 21. App. Br. 21. The
Examiner responds by finding McGee's "'Fast Path' does not consult a
security device thus as reasonably interpreted a 'fast path' drops a packet
without receiving an indication from said security device for any period of
time .... " Ans. 11.
We disagree with the Examiner. Even if McGee's "Fast Path" is not
dependent on receiving an indication from the security device in connection
with dropping a packet from the buffer and therefore teaches never receiving
an indication, there is no teaching that no indication is received for a
specified period of time. That is, McGee's "Fast Path" does not consider
any indication, much less no receipt of an indication for a specified period of
time. Therefore, we reverse the rejection of claim 21.
Claim 16
Appellants argue the rejection of claim 16 is improper for the reasons
argued in connection with claim 14. App. Br. 22. Finding such argument
unpersuasive for the reasons supra, we likewise sustain the rejection of
claim 16.
10
Appeal2014-002615
Application 13/030,360
Claims l 0 and l 7
Although claim 10, and claim 17 dependent therefrom, are both
included in the listing of claims rejected under 35 U.S.C. §103(a) as being
unpatentable over McGee and Kabbara (Final Act. 7), the Examiner
indicates claim 10 is objected to, but would be allowable if rewritten in
independent form (Final Act.15.) Accordingly, we summarily reverse the
rejection of claim 10 for the reasons set forth in the Examiner's statement of
reason for indication of allowable subject matter (id) together with the
rejection of claim 17 based on its dependency from claim 10.
DECISION
The Examiner's decision to reject claims 10, 17, and 21 is reversed.
The Examiner's decision to reject claims 1-5, 8, 9, 11-16, 18-20, and
22 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)(l )(iv).
AFFIRMED-IN-PART
11