Ex Parte SchierDownload PDFBoard of Patent Appeals and InterferencesJul 28, 201109737679 (B.P.A.I. Jul. 28, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JOHN E. SCHIER ____________ Appeal 2009-007378 Application 09/737,679 Technology Center 2400 ____________ Before JOESPH L. DIXON, LANCE LEONARD BARRY, and JAY P. LUCAS Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Patent Examiner rejected claims 1-4, 6-14, 19-31, and 34-39. The Appellant appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2009-007378 Application 09/737,679 2 INVENTION The Appellant describes the invention at issue on appeal as follows. [A] method for providing a secure operating environment for a network accessible system is disclosed. The method includes accessing a delay timer having a delay time interval operably coupled to a communication module. The delay time interval may be compared to activity operably associated with the system communicating with the network. The communication module may be enabled in response to the comparison and in one form may be isolated if the communication port remains idle for a time period greater than the delay time interval. (Abstract, ll. 4-14.) ILLUSTRATIVE CLAIM 1. A method for providing a secure operating environment for a network accessible system comprising: accessing a communication module, the communication module including a delay timer, the delay timer including a delay time interval; comparing the delay time interval to an activity associated with the system communicating with the network, the activity being any communication between the system and the network; and isolating the communication module and the delay timer from the network based on the comparison without terminating all power supplied to the communication module. REJECTIONS Claims 1-4, 6-14, 19-31, and 34-36 stand rejected under 35 U.S.C. § 112, ¶ 1, as lacking an adequate written description. Appeal 2009-007378 Application 09/737,679 3 Claims 1-4, 6-9, 11, 19, 21, 24, 25, 28, 30, 31, and 34-36 stand rejected under 35 U.S.C. § 102(b) as being anticipated by U.S. Patent No. 5,892,901 ("Landwehr"). Claims 37-39 stand rejected under 35 U.S.C. § 102(b) as being anticipated by U.S. Patent No. 5,084,877 ("Netravali"). Claims 10, 20, and 27 stand rejected under § 103(a) as being unpatentable over Landwehr; U.S. Patent No. 6,185,616 ("Namma"); and U.S. Patent No. 6,249,681 B1("Virtanen"). Claims 12-14, 22, and 23 stand rejected under § 103(a) as being unpatentable over Landwehr; Namma; and U.S. Patent No. 6,249,681 B1("Virtanen"). Claim 26 stand rejected under § 103(a) as being unpatentable over Landwehr and Virtanen. Claim 29 stand rejected under § 103(a) as being unpatentable over Landwehr and U. S. Patent No. 5,495,480 (“Yoshida”). REJECTION UNDER § 112, ¶ 1 The issue before us is whether the Examiner erred in finding that the phrase "the communication module including a delay timer" of independent claims 1, 19, and 24; the phrase "isolating . . . the delay timer" of independent claim 1; and the phrase "isolate . . . the delay timer" of independent claim 19 lack an adequate written description.1 1 The Examiner also finds that the phrase "isolating the delay timer" in independent claim 24 "remains unsupported by the specification." (Ans. 3.) Claim 24, however, omits the phrase. Appeal 2009-007378 Application 09/737,679 4 FINDINGS OF FACT The phrases at issue appear in the following limitations of claim 1, 19, and 24. 1. A method for providing a secure operating environment for a network accessible system comprising: accessing a communication module, the communication module including a delay timer, the delay timer including a delay time interval; . . . isolating the communication module and the delay timer . . . . 19. A medium comprising encoded logic for providing a secure operating environment operable to: access a communication module, the communication module including a delay timer, the delay timer including a delay time interval; . . . isolate the communication module and the delay timer . . . . 24. A device operable to provide a secure operating environment for accessing a network comprising: a communication module operable to communicate information via the network; the communication module including a delay timer . . . . (Emphases added.) ANALYSIS The Examiner finds that "'the communication module including a delay timer' . . . remains unsupported by the specification," (Ans. 4), and that, therefore, "'isolating the delay timer' . . . remains unsupported by the specification" (id. at 3). Appeal 2009-007378 Application 09/737,679 5 "[C]ompliance with the 'written description' requirement of § 112 is a question of fact. . . ." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991) (citing In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989); Utter v. Hiraga, 845 F.2d 993, 998 (Fed. Cir. 1988)). A written "description must 'clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.'" Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting Vas-Cath, 935 F.2d at 1563). "In other words, the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Id. (citing Vas-Cath, 935 F.2d at 1563). Here, we agree with the Appellant that "[p]age 7, lines 29-31 of the Specification states that ꞌ[c]ommunication module 101 includes . . . a delay timer 103 that includes a delay time intervalꞌ (emphasis added) . . . ." (Br. 13.) This statement reasonably conveys to those skilled in the art that the Appellant had possession of the verbatim claimed subject matter as of the filing date of his application. The Examiner does not contest that the originally filed disclosure provides adequate support for isolating the communication module. Because the communication module includes the delay timer, we agree with the Appellant that the same disclosure provides adequate support for isolating the timer. Therefore, we conclude that the Examiner erred in finding that the phrase "the communication module including a delay timer" of independent claims 1, 19, and 24; the phrase "isolating . . . the delay timer" of Appeal 2009-007378 Application 09/737,679 6 independent claim 1; and the phrase "isolate . . . the delay timer" of independent claim 19 lack an adequate written description. REJECTIONS UNDER § 102(B) Based on the Appellant's arguments, we will decide the appeal of claims 1-4, 6-9, 11, 19, 21, 24, 25, 28, 30, and 31 on the basis of claim 1 alone; the appeal of claims 34-36 separately; and the appeal of claims 37-39 on the basis of claim 37 alone. See 37 C.F.R. § 41.37(c)(1)(vii). The issues before us are (1) whether the Examiner erred in finding that Landwehr discloses a "communication module including a delay timer," as required by representative claim 1; (2) whether the Examiner erred in finding that Landwehr discloses a "network implement[ing] a TCP/IP transport language protocol," as required by claim 34-36; and (3) whether the Examiner erred in finding that Netravali discloses "isolating [a] communication module," as required by representative claim 37. Appeal 2009-007378 Application 09/737,679 7 FINDINGS OF FACT The Appellant's Figure 1 follows. "FIGURE 1 illustrates a device for providing a secure operating environment for a computer system." (Spec. 7.) Figure 3 of Landwehr follows. Appeal 2009-007378 Application 09/737,679 8 "FIG. 3 is a schematic drawing illustrating an embodiment of the invention adapted for use with a personal computer, computer workstation, and the like." (Col. 2, ll. 34-36.) ANALYSIS We address the aforementioned issues seriatim. Representative Claim 1 The Appellant argues that "[t]he Final Office Action alleges that the delay timer is part of the system that is isolated in Landwehr, but this is incorrect. Instead, Column 5, lines 29-34 of Landwehr identifies the delay timer as being part of detector 18 . . . ." (Br. 15.) "[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification." In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Here, claim 1 recites in pertinent part the following limitations: "communication module including a delay timer." Figure 1 of the Appellant's Specification, reproduced supra, shows that the delay timer 103 can be connected to the communication module 101 to be "included" therein as claimed. For its part, Figure 3 of Landwehr, reproduced supra, shows "circuit 28 [a]s a personal computer/work station (for simplicity, hereafter 'computer') . . . ." (Col. 3, l. 67 – col. 4, l. 1.) It is uncontested that the computer constitutes a communication module. The same Figure shows a detector 18 connected to the computer. As aforementioned, the Appellant admits that Landwehr discloses its delay timer as part of the detector. Appeal 2009-007378 Application 09/737,679 9 Because the reference's delay timer is part of the detector, and the detector is connected to the computer, which constitutes a communication module, we find that the delay timer is included in the communication module. Alternatively, Landwehr 's computer and detector collectively constitute the claimed "communication module including a delay timer." Therefore, we conclude that the Examiner did not err in finding that . Landwehr discloses a "communication module including a delay timer," as required by representative claim 1. Claim 34-36 The Examiner finds that "Landwehr teaches wherein the network implements a TCP/IP transport language protocol (col.2 line 61 thru col.3 line 7)." (Ans. 7.) "It is axiomatic that anticipation of a claim under § 102 can be found only if the prior art reference discloses every element of the claim, and that anticipation is a fact question . . . ." In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). Here, we agree with the Appellant that "[t]he cited portion [of Landwehr] is completely devoid of any mention of a network implementing a TCP/IP language protocol . . . ." (Br. 16.) Therefore, we conclude that the Examiner erred in finding that Landwehr discloses a "network implement[ing] a TCP/IP transport language protocol," as required by claim 34-36. Appeal 2009-007378 Application 09/737,679 10 Representative Claim 37 "It is not the function of [the U.S. Court of Appeals for the Federal Circuit] to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art." In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991). "Similarly, it is not the function of this Board to examine claims in greater detail than argued by an appellant, looking for distinctions over the prior art." Ex Parte Shen, No. 2008-0418, 2008 WL 4105791 at * 9 (BPAI Sep. 4, 2008). Here, the Examiner makes the following "specificfact finding," Ex parte Belinne, No. 2009-004693, 2009 WL 2477843, at *4 (BPAI Aug. 10, 2009) (informative), regarding Netravali. Within lines 47-50 of column 7, Netravali provides yet another example of an isolation with his description of the use of a "DISC" state when a packet has not been received within a particular period of time, a state wherein operations are disconnected. Last but not least, Netravali discloses in lines 20- 24 of column 8 the use of a timer on the interval between states transmissions by the transmitter in order that the system may en[t]er the DISC state and cease operations when a packet has not been sent within a predetermined time interval. There is no question that each of these sections within the reference discloses a means of "isolation." (Ans. 18.) For his part, the Appellant does not address these findings. Instead, he makes the following argument. Column 3, lines 48-51 of Netravali states that a wait indicator is set at the transmitter after a block is retransmitted "to prevent further retransmissions until the retransmitted block has sufficient time to be received and sufficient time to acknowledge the reception." Therefore, even assuming for the Appeal 2009-007378 Application 09/737,679 11 sake of argument that Netravali discloses a wait indicator, Netravali does not teach or suggest isolating the receiver because the receiver of Netravali continues to receive retransmitted blocks of data packets while the transmitter awaits acknowledgement. (Br. 14-15.) "Arguing about different parts of the reference that those aforementioned 'do[es] not … explain why the Examiner's explicit fact finding is in error.'" Ex parte Nanja, 2011 WL 1826811, at *3 (BPAI May 9, 2011)(quoting Belinne, at *4.). Therefore, we conclude that the Examiner did not err in finding that Netravali discloses "isolating [a] communication module," as required by representative claim 37. REJECTIONS UNDER § 103(A) The issues before us are (1) whether the Examiner erred in finding that claims 10, 20, and 27 would have been obvious; (2) whether the Examiner erred in combining teachings from Landwehr and Namma to reject claims 12-14, 22, and 23; and (3) whether the Examiner erred in finding that claims 26 and 29 would have been obvious. ANALYSIS We address the aforementioned issues seriatim. Claims 10, 20, and 27 "[I]it is not the function of this Board to examine claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art." Ex parte Post, No. 2005-2042, 2006 WL 1665399 at *4 Appeal 2009-007378 Application 09/737,679 12 (BPAI 2006). Here, the Appellant does not address the rejection of claims 10, 20, and 27. We decline to examine the claims sua sponte, looking for nonobvious distinctions over the prior art." Therefore, we summarily conclude that the Examiner did not err in finding that claims 10, 20, and 27 would have been obvious. Claims 12-14, 22, and 23 The Examiner finds makes the following conclusion and finding. It would have been obvious to one of ordinary skill in the art to combine Lan[d]wehr's secure identification system with Namma's teaching of removing data associated with communication connection in order to provide the improved method of disconnecting communication between clients and servers (Namma col.1 lines 52-54; col.6 lines 1-9). (Ans. 10-11.) The presence or absence of a reason "to combine references in an obviousness determination is a pure question of fact." In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000) (citation omitted). "[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citing In re Lee, 277 F.3d 1338, 1343- 46 (Fed. Cir. 2002); In re Rouffet, 149 F.3d 1350, 1355-59 (Fed. Cir. 1998)). "To facilitate review, this analysis should be made explicit." KSR Int'l v. Teleflex Inc., 550 U.S. 398, 401 (2007). Appeal 2009-007378 Application 09/737,679 13 Here, the Examiner has not shown that Landwher features clients and servers that would have benefited from Namma's improved method of disconnecting communication between clients and servers. Absent such an explicit showing, the Examiner's reason for combining amounts to impermissible hindsight. We agree with the Appellant argues that "this type of hindsight analysis, using Appellant's claims as a roadmap for summarizing references . . . is impermissible." (Br. 17.) Therefore, we conclude that the Examiner erred in combining teachings from Landwehr and Namma to reject claims 12-14, 22, and 23. Claims 26 and 29 Rather than arguing the rejections of claims 26 and 29 separately, the Appellant relies on the aforementioned argument for claim 1, which was unpersuasive. Therefore, we conclude that the Examiner did not err in finding that claims 26 and 29 would have been obvious. DECISION We reverse the rejection of claims 1-4, 6-14, 19-31, and 34-36 under § 112, ¶ 1. We also reverse the rejection of claims 34-36 under § 102(b) and the rejection of claims 12-14, 22, and 23 under § 103(a). We affirm the rejections of claims 1 and 37 under § 102(b) and those of claims 2-4, 6-9, 11, 19, 21, 24, 25, 28, 30, 31, 38, and 39, which fall therewith. We also affirm the rejections of claims 10, 20, 26, 27 and 29 under § 103(a). Appeal 2009-007378 Application 09/737,679 14 No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART pgc Copy with citationCopy as parenthetical citation