Ex Parte Segal et al

Patent Trial and Appeal Board

Oct 25, 2017

13941500 (P.T.A.B. Oct. 25, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/941,500 07/14/2013 Eytan Segal 1893/180 5733
44696 7590 10/27/2017
DR MARKM FRIEDMAN
EXAMINER
Moshe Aviv Tower, 54th Floor, 7 Jabotinsky St. PEARSON, DAVID J
Ramat Gan, 5252007
ISRAEL ART UNIT PAPER NUMBER
2438
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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):
patents @ friedpat. com
friedpat.uspto@gmail.com
rivka_f@friedpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EYTAN SEGAL and ASSAF HAREL
Appeal 2017-003630
Application 13/941,5001
Technology Center 2400
Before JOSEPH L. DIXON, LARRY J. HUME, and
NORMAN H. BEAMER, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—21 and 23, which are all claims pending in the
application. Appellants have canceled claim 22. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Check Point Software
Technologies Ltd. App. Br. 3.
Appeal 2017-003630
Application 13/941,500
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention are
"directed to security systems, and in particular to security systems for home
or other local area networks (LANs)." Spec. 1,11. 5—6.
Exemplary Claims
Claims 1, and 18, reproduced below, are representative of the subject
matter on appeal (emphases added to contested limitations):
1. A computer program, including a set of
instructions stored on non-transitory computer readable media,
that when executed by a processor of a computer, the computer
linked to a first network, cause the computer to perform a
method for rendering a decision on the network packets,
comprising:
sending at least one spoof packet to at least one host over
the finite network, the at least one spoof packet causing
network packet rerouting over the first network, such that
network packets released onto the first network, by the at least
one host, flow in accordance with the network packet rerouting,
to access network packet communications of the at least one
host; and,
controlling packet flow to a second network, external to
the first network including'.
intercepting the network packets released by
the at least one host', and,
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Aug. 4, 2016); Reply Brief ("Reply Br.," filed Nov. 29, 2016); Examiner's
Answer ("Ans.," mailed Sept. 30, 2016); Final Office Action ("Final Act.,"
mailed Feb. 4, 2016); and the original Specification ("Spec.," filed
July 14, 2013).
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rendering a decision on the intercepted
network packets, at least based on Uniform
Resource Locator (URL) fdtering, to control the
network packet communications from the at least
one host, including injecting packets for
redirecting a browser of the at least one host from
the intended destination to a different destination
along either the first network or the second
network.
18. An apparatus for linking to a first network and
rendering a determination on received packets comprising:
a generator configured for sending at least one spoof
packet to at least one host over the first network, the at least one
spoof packet causing network packet rerouting over the first
network, such that network packets released onto the first
network by the at least one host flow in accordance with the
network packet rerouting, providing access to network packet
communications of the at least one host;
a receiver for receiving the network packets released by
the at least one host in response to the at least one host
receiving the at least one spoof packet; and,
a decision system in communication with the receiver for
rendering a determination on the received network packets and
controlling the flow of the network packets from the first
network to a second network by.
inspecting the network packets; and,
injecting packets for redirecting a browser
of the at least one host from the intended
destination to a different destination along either
the first or the second network.
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Shin et al. ("Shin") US 2007/0064689 A1 Mar. 22, 2007
Martini et al. ("Martini") US 2008/0209057 Al Aug. 28, 2008
Gilde et al. ("Gilde") US 2013/0091534 Al Apr. 11, 2013
Rejections on Appeal3
Rl. Claims 1—3, 5—8, 12—21, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Shin and Martini.
Final Act. 2; see also Ans. 3.
R2. Claims 1—21 and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Gilde4 and Martini. Final
Act. 12; see also Ans. 3.
CFAIM GROUPING
Based on Appellants' arguments (App. Br. 18—23), we decide the
appeal of obviousness Rejection Rl of claims 1—3, 5—8, 12—17, 20, 21,
and 23 on the basis of representative claim 1; and we decide the appeal of
obviousness Rejection Rl of claims 18 and 19 on the basis of representative
claim 18.
3 We note, in the Final Action, the Examiner rejected claims 1—3, 5—8, and
12—21 under Rejections Rl and R2, but did not include claim 23. Final
Act. 2; and see Amendment after Final Rejection filed Mar. 31, 2016
(adding dependent claim 23).
4 We note Appellants and the Examiner incorrectly refer to the Gilde
reference as "Glide" throughout the record.
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Based on Appellants' arguments (App. Br. 23—27), we decide the
appeal of obviousness Rejection R2 of claims 1—17, 20, 21, and 23 on the
basis of representative claim 1; and we decide the appeal of obviousness
Rejection R2 of claims 18 and 19 on the basis of representative claim 18.5
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1—21
and 23 and, unless otherwise noted, we incorporate by reference herein and
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 and rebuttals
set forth in the Examiner's Answer in response to Appellants' arguments.
We highlight and address specific findings and arguments regarding
claims 1 and 18 for emphasis as follows.
1. $ 103 Rejection R1 of Claims 1—3, 5—8, 12—17, 20, 21, and 23
Issue 1
Appellants argue (App. Br. 18—22; Reply Br. 3—5) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
5 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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combination of Shin and Martini is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] computer program, including a set of instructions stored on
non-transitory computer readable media, that when executed by a processor
of a computer, the computer linked to a first network, cause the computer to
perform a method for rendering a decision on the network packets" that
includes, inter alia, the steps of:
controlling packet flow to a second network, external to
the first network including:
intercepting the network packets released by the at
least one host; and,
rendering a decision on the intercepted network
packets, at least based on Uniform Resource Locator
(URL) filtering, to control the network packet
communications from the at least one host, including
injecting packets for redirecting a browser of the at least
one host from the intended destination to a different
destination along either the first network or the second
network
as recited in claim 1?
Analysis
We first note, the test for obviousness is what the combined teachings
of the prior art would have suggested to the hypothetical person of ordinary
skill in the art. In re Keller, 642 L.2d 413, 425 (CCPA 1981).
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Teachings of Shin
Appellants contend:
Shin ... is different from the subject matter recited in
claim 1 . . . [and] is silent as to any further packet inspection,
packet filtering, or other processes, for potentially forwarding
further processed packets out of the local network . . . [which]
is in contrast to claim 1, where the at least one (controlled) host
remains active on the first (local) network, and is not
quarantined or cut off. ... It is the emitted packets which are
intercepted.
App. Br. 19.
With respect to the Examiner's combination of Martini with Shin,
Appellants argue, "unlike the invention of claim 1, Martini. . . does not
work with intercepted packets" {id. at 20), and contrast Martini's teachings
with the claimed invention by alleging Martini "receives DNS requests, but
not from intercepted packets," and therefore does not "'render a decision on
the intercepted network packets,"' as recited in claim 1. App. Br. 20—21.
In their summary, Appellants assert the combination of Shin and
Martini does not teach or suggest all the limitations of claim 1, and further
allege "Shin . . . and Martini. . . cannot be properly combined, except for
impermissible hindsight, and the Examiner has failed to show objective
reasons and a rational underpinning, to support the proposed combination."
App. Br. 21.
The Examiner finds:
Shin clearly teaches packet inspection and filtering (note Fig.
13 and paragraph [0103], steps S238, S242 and S244, S248)
and then the forwarding of packets that are permitted (note Fig.
13 and paragraph [0103], step 250). Packets are either permitted
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or cut-off based on the rules in the packet processing. This
processing can also be seen in Fig. 8 and paragraph [0097],
SI 58, SI 60 and SI 64. An example of the rules for cutting off or
permitting packets from a host can be found in paragraph
[0093] of Shin. Therefore a host whose packets are permitted
would remain "active" just as the host in claim 1 as asserted by
Appellant (note Brief, page 19).
Ans. 4. In further disagreement with Appellants' contentions, the Examiner
also finds Shin teaches:
Packets are compared to rules in steps S238, S242, S244 and
S248 and forwarded in S250. All of these steps are found in
paragraph [0103]. After all of these processing and forwarding
steps, the device can cancel the cut-off state in S252 only "if the
communication cut-off is incorrect". The entirety of paragraph
[0103] is not dedicated to the process of canceling a cut-off as
asserted by Appellant. Instead, the canceling of the cut-off state
is an optional step that occurs after all of the packet
interception, processing and forwarding steps.
Ans. 4—5 (emphasis added). We agree with the Examiner's findings as to the
teachings of Shin in this regard.
Teach Away Argument is not Persuasive
Appellants further contend, "Shin . . . teaches away from any type
further processing of intercepted packets once they have been received at
their destination, the cut-off address . . . [such that] any modification of Shin
... to further process intercepted packets, once they reached their
interception destination, is hindsight." App. Br. 20.
With respect to Appellants' "teach away" argument, our reviewing
court holds "[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
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divergent from the path that was taken by the applicant." In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994); Para-Ordnance Mfg., Inc. v. SGSImporters
Int'l., Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995). A reference does not teach
away if it merely expresses a general preference for an alternative invention
from amongst options available to the ordinarily skilled artisan, and the
reference does not discredit or discourage investigation into the invention
claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Concerning Appellants' argument that Shin teaches away from further
processing of intercepted packets, the Examiner finds:
Shin clearly teaches comparing packets to rules and forwarding
those that are allowed. The device in Shin is not "deactivated"
as asserted by Appellant (note Brief, page 20). Instead the
packets from the device are either ignored or permitted based
on the processing rules. Since Shin teaches the processing of
intercepted packets, Shin clearly does not criticize, discredit, or
otherwise discourage further processing of intercepted packets
and thus does not "teach away" from further processing of
intercepted packets (note MPEP 2143.01).
Ans. 5.
On this record, and in view of the Examiner's findings above, we are
not persuaded by Appellants' arguments that Shin teaches away from the
claimed invention.
Teachings of Martini
Appellants argue even if Martini is properly combinable with Shin,
the combination is deficient in teaching or suggesting all the limitations of
claim 1. App. Br. 20. Further to this point, Appellants contend, "unlike the
invention of claim 1, Martini. . . does not work with intercepted packets."
Id. Appellants continue their arguments by alleging the paragraphs of
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Martini cited by the Examiner "merely disclose operation of. . . filters on
normal traffic, as normally transmitted from a . . . computer-type device
which seeks to access a network, such as the Internet." App. Br. 21.
Appellants also argue "[t]here is no browser redirect in this situation, as with
claim 1, whereby Martini . . . fails to meet the claim 1 recitation of:
'injecting packets for redirecting a browser of the at least one host from the
intended destination to a different destination along either the first network
or the second network.'" Id.
We again note the test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary skill in the art.
See In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006); In re Young, 927
F.2d 588, 591 (Fed. Cir. 1991); and In re Keller, 642 F.2d at 425 (emphasis
added).
We agree with the Examiner's finding that "Shin was deficient in
teaching URF filtering, which Martini teaches .... [such that] the
combination of Shin and Martini would teach using spoof packets to reroute
and intercept packets (Shin) for URF filtering (Martini)." Ans. 5. As
indicated in the Final Rejection (5),
[I]t would have been obvious to one of ordinary skill in the art
before the effective filing date of the claimed invention to
combine Shin and Martini because a simple substitution of one
known method (filtering using URF rules of Martini) for
another (filtering rules of Shin) would yield the predictable
results of a network device filtering traffic of the other devices
on the network.
Ans. 5.
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The Examiner further finds, and we agree:
Appellant's claims or specification provide no special or
explicit definition for "intercepted". Therefore, Examiner
applies the broadest, reasonable interpretation which is the
dictionary definition of the word. Merriam-Webster provides
the simple definition of "to stop and take someone or something
that is going from one place to another place before that person
or thing gets there."
Ans. 7.6
Furthermore, "Martini teaches the internet connection filter device
'holds back' (i.e. intercepts) outbound messages (note paragraph [0040] and
renders a decision on the packets that have been held back (note paragraph
[0041]). Thus, the operations of Martini performed in the filter device are
performed on 'intercepted packets' as required by the claims." Ans. 8.
The Examiner reiterates his findings by stating:
Shin teaches intercepting packets and filtering packets and
Martini was merely relied upon to teach filtering based on
URLs. Appellant also agrees that Shin teaches the interception
of packets (note Brief, page 19). Therefore, even assuming
arguendo that Martini failed to teach the rendering a decision on
"intercepted packets", the combination of Shin and Martini
teaches "operations on intercepted packets" as required by the
claims.
Id.
6 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
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Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 1, nor do
we find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 1, and grouped claims 2, 3, 5—8, 12—17, 20, 21, and 23 which fall
therewith. See Claim Grouping, supra.
2. $103 Rejection R1 of Claims 18 and 19
Issue 2
Appellants argue (App. Br. 22—23; Reply Br. 5) the Examiner's
rejection of claim 18 under 35 U.S.C. § 103(a) as being obvious over the
combination of Shin and Martini is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a]n apparatus for linking to a first network and rendering a
determination on received packets" that includes, inter alia:
a receiver for receiving the network packets released by
the at least one host in response to the at least one host
receiving the at least one spoof packet; and,
a decision system in communication with the receiver for
rendering a determination on the received network packets and
controlling the flow of the network packets from the first
network to a second network by . . .
injecting packets for redirecting a browser of
the at least one host from the intended destination
to a different destination along either the first or
the second network[,]
as recited in claim 18?
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Analysis
Similar to Rejection R1 of claim 1, supra, Appellants contend "Shin
. . . fails to disclose any features for further processing packets, once the
packets are received at a terminal destination address as a result of spoof
packets received in at least one host," and reiterate that Shin teaches away
from any further packet processing. App. Br. 22. Additionally, Appellants
only rely upon their arguments concerning claim 1 by also arguing Martini
does not teach or suggest "injecting packets." App. Br. 23.
For the same reasons discussed above in Issue 1, claim 1, we are not
persuaded the Examiner erred in rejecting claim 18. See Ans. 10—11.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 18, nor do
we find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 18, and grouped claim 19 which falls therewith. See Claim Grouping,
supra.
3. $103 Rejection R2 of Claims 1—21 and 23
Issue 3
Appellants argue (App. Br. 23—26; Reply Br. 5—6) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Gilde and Martini is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] computer program, including a set of instructions stored on
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non-transitory computer readable media, that when executed by a processor
of a computer, the computer linked to a first network, cause the computer to
perform a method for rendering a decision on the network packets" that
includes, inter alia, the steps of:
controlling packet flow to a second network, external to
the first network including:
intercepting the network packets released by the at
least one host; and,
rendering a decision on the intercepted network
packets, at least based on Uniform Resource Locator
(URL) filtering, to control the network packet
communications from the at least one host, including
injecting packets for redirecting a browser of the at least
one host from the intended destination to a different
destination along either the first network or the second
network
as recited in claim 1?
Analysis
Appellants contend, "Claim 1 has been discussed above [with respect
to Rejection R1 and tjhat discussion is applicable here." App. Br. 24.
Further, "Martini . . . was cited to cure the aforementioned deficiencies [of
Gilde and] Martini. . . has been discussed above . . . [and] is applicable
here." Id. That is, Appellants allege Martini does not teach or suggest
"injecting packets," but do not rebut the Examiner's findings (Final
Act. 12—13) concerning Gilde. App. Br. 25.
For the same reasons discussed above with respect to Issue 1, claim 1,
we adopt the Examiner's findings regarding the teachings and suggestions of
Martini (Final Act. 13—14; Ans. 11—12) and, moreover, we adopt the
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Examiner's conclusion that the combination of Gilde and Martini renders
claim 1 obvious under § 103. Ans. 12.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 1, and grouped claims 2—17, 20, 21, and 23 which fall therewith. See
Claim Grouping, supra.
4. $103 Rejection R2 of Claims 18 and 19
Issue 4
Appellants argue (App. Br. 26—27; Reply Br. 6) the Examiner's
rejection of claim 18 under 35 U.S.C. § 103(a) as being obvious over the
combination of Gilde and Martini is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a]n apparatus for linking to a first network and rendering a
determination on received packets" that includes, inter alia:
a receiver for receiving the network packets released by
the at least one host in response to the at least one host
receiving the at least one spoof packet; and,
a decision system in communication with the receiver for
rendering a determination on the received network packets and
controlling the flow of the network packets from the first
network to a second network by . . .
injecting packets for redirecting a browser of
the at least one host from the intended destination
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to a different destination along either the first or
the second network[,]
as recited in claim 18?
Analysis
Appellants make no arguments in connection with Rejection R2 of
claim 18 that is different than those set forth with respect to Rejection R1 of
claim 1 and Rejection R2 of claim 1. See App. Br. 26—27.
For the same reasons discussed, supra, we agree with the Examiner's
findings concerning Rejection R2 of claim 18. See Final Act. 16—17;
Ans. 13.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 18, nor do
we find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 18, and grouped claim 19, which falls therewith. See Claim Grouping,
supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 3—6) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
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CONCLUSION
The Examiner did not err with respect to obviousness Rejections R1
and R2 of claims 1—21 and 23 under 35 U.S.C. § 103(a) over the cited prior
art combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1—21 and 23.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED
17