Ex Parte Schier

Board of Patent Appeals and Interferences

Jul 28, 2011

09737679 (B.P.A.I. Jul. 28, 2011)

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).

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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.

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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.
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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).
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"[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
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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.

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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.

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"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.
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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.

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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
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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
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(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).

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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).

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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

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