Ex Parte Shelest et al

Patent Trial and Appeal Board

Feb 28, 2013

10405972 (P.T.A.B. Feb. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ART SHELEST and RICHARD B. WARD
____________

Appeal 2010-008544
Application 10/405,972
Technology Center 2400
____________

Before DENISE M. POTHIER, TRENTON A. WARD,
and DAVID C. McKONE, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20 and 25-55, which constitute all the claims pending in this
application. See App. Br. 3.1 Claims 21-24 are cancelled. See id. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this opinion, we refer to the Appeal Brief filed January 21,
2010 (“App. Br.”), the Examiner’s Answer mailed March 31, 2010 (“Ans.”),
and the Reply Brief filed May 24, 2010 (“Reply Br.”).
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THE INVENTION
Appellants’ invention relates to controlling access to network
connections using network zones. See Spec. 3:9-10. Claim 1, which is
illustrative of the invention, reads as follows:
1. A processor-readable storage medium
having stored thereon processor-executable instructions
that, when executed by a computer, cause the computer
to perform a method comprising:
defining by a module locally at the computer a
plurality of network zones each of which includes a
different set of network properties and connection
policies to associate networks encountered by the
computer with one of the plurality of network zones, the
plurality of network zones configured to be enforced by
the module to control connections of the computer to the
encountered networks;
receiving from an application program executing
on the computer, preference information that identifies
one of the plurality of network zones as a preferred
network zone;
permitting a connection between the application
program and a network associated with the preferred
network zone; and
preventing a connection between the application
program and a network not associated with the preferred
network zone.

THE REJECTIONS
The specification stands objected to under 37 C.F.R. § 1.75(d)(1) and
MPEP § 608.01(o) as failing to provide proper antecedent basis for the
claimed subject matter. See Ans. 3-4.
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Claims 1-20 and 25-55 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
See Ans. 4.
Claims 1-12, 18, 19, 35, and 36 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Hsu (US 2004/0205158 A1; published Oct. 14,
2004; filed Feb. 24, 2003). See Ans. 5-8.
Claims 13-17, 20, 25-34, and 37-55 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hsu and Hankinson (US 6,799,202 B1;
issued Sept. 28, 2004; filed Dec. 16, 1999). See Ans. 8-12.

ANALYSIS
ANTECEDENT BASIS OBJECTION AND REJECTION OF CLAIMS 1-20
AND 25-55 UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
The claim language at issue in the antecedent basis objection to the
Specification and the written description rejection to the claims is
substantially the same. First, the Examiner objects to the Specification as
failing to provide antecedent basis for the terms “network zone,” “the
plurality of network zones configured . . . by the module to control
connections,” and “network zones configured . . . to control connection[s].”
Ans. 3-4. According to the Examiner, “network zone” is broad enough to
encompass physical networks such as the wireless local area networks
(“WLANs”) disclosed in Hsu (discussed in detail below), Appellants
disagreed with that conclusion, and the Examiner requested that either the
claims or the Specification be amended to exclude WLANs from “network
zones.” See id. The Examiner also found that “the plurality of network
zones configured . . . by the module to control connections,” and “network
zones configured . . . to control connection[s],” lacked antecedent basis in
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the Specification, reasoning that Appellants acted as their own lexicographer
but did not redefine the terms with sufficient clarity in the written
description. See id.
The written description rejection of claims 1-20 and 25-55 is similarly
grounded in the claim language “the plurality of network zones configured .
. . by the module to control connections of the computer to encountered
networks” and “network zones configured [. . .] to control connections.”
Ans. 4. The Examiner finds that the Specification provides no disclosure
that supports these terms. See id.
Ordinarily an objection is petitionable and a rejection is appealable to
the Board. When the issue of new matter presented is the subject of both an
objection and a rejection, the issue is appealable. See MPEP § 2163.06(II).
While the Examiner has not made a new matter rejection or objection, in this
case, the objection to the Specification for lack of antecedent basis and the
written description rejection turn on the same issue of whether the claimed
subject matter finds adequate support in the original disclosure. As such, we
will decide both the objection and the rejection. See, e.g., Ex Parte Edward
J. Domanico, 2009-014289, 2011 WL 4484144 (BPAI Sept. 21, 2011)
(deciding both an objection to the specification and a written description
rejection, even though the Examiner had not made a new matter objection).
“[T]he test for sufficiency [of the written description] 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.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc) (citations omitted). “[T]he written description
requirement is satisfied by the patentee’s disclosure of ‘such descriptive
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means as words, structures, figures, diagrams, formulas, etc., that fully set
forth the claimed invention.’” Enzo Biochem, Inc. v. Gen-Probe Inc., 323
F.3d 956, 969 (Fed. Cir. 2002) (quoting Lockwood v. Am. Airlines, Inc., 107
F.3d 1565, 1572 (Fed. Cir. 1997)).
As an initial matter, Appellants point out that the claim language
subject to the written description rejection does not appear in all of the
claims. See App. Br. 14. The language at issue appears only in claims 1, 13,
and 18 (and their dependents). Claims 20 and 25-55 lack similar language.
Appellants argue that the Examiner erred by not indicating with enough
particularity to which claims the rejection applies. See App. Br. 14. The
Examiner does not explain how the rejection would apply to claims 20 and
25-55; thus, we agree that the Examiner improperly included those claims in
the written description rejection.
Regardless, we are persuaded that the Examiner erred in rejecting the
claims for failure to satisfy written description, and similarly in objecting to
the specification. Appellants contend that the disputed claim limitations are
disclosed at, inter alia, Specification page 19, line 5 to page 20, line 10. See
App. Br. 15-16. According to the Specification, a “computer 202
associates/assigns [an] application 308 to a network zone based on the
preference information from the application 308,” Spec. 19:11-13, after
which “the computer 202 enforces the network zone” in “several ways”
including “prevent[ing] [an] application program 308 from seeing and/or
accepting communication from a network that is not associated with [a]
preferred network zone,” Spec. 19:19-24, and “permit[ting] the application
program to accept communication from the network associated with the
preferred network zone,” Spec. 20:5-6. Thus, the Specification describes a
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module (software executing on computer 202) that enforces the network
zone by controlling connections of the computer to encountered networks
(permits or prevents an application 308 executing on the computer 202 from
accessing a network depending on the network’s association with the
network zone). We find this disclosure adequate to reasonably convey to
those skilled in the art that Appellants had possession of the claimed
“plurality of network zones configured to be enforced by the module to
control connections of the computer to the encountered networks,” as recited
by claim 1.
Accordingly, we do not sustain the antecedent basis objection to the
Specification or the written description rejection of claims 1-20 and 25-55.

REJECTION OF CLAIMS 1-12, 18, 19, 35, AND 36
UNDER 35 U.S.C. § 102(e)
Claims 1-12
The Examiner finds that Hsu discloses each limitation of claim 1. See
Ans. 5-6. Specifically, the Examiner finds, inter alia, that Hsu’s WLAN#1
and WLAN#2, denoted 120 and 130 in Figure 2A, are a “plurality of
network zones,” and that a module disclosed in Hsu (the “application 54”
shown in Figure 1) defines those WLANs to have network properties and
policies (shown at Hsu, ¶¶ 0025, 0027, 0029) to associate networks
encountered by the computer to the plurality of network zones. See Ans. 5.
Appellants contest the Examiner’s identification of WLAN’s 120 and
130 as “network zones,” drawing a distinction between the recited “network
zones” and “actual networks.” App. Br. 17-19. Specifically, Appellants
argue that the “WLANs themselves are actual networks to which the mobile
station connects” and thus “are the networks encountered by the computer,”
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App. Br. 17-18, while “the recited network zones are clearly not actual
networks.” App. Br. 19. To be more specific, Appellants argue that Hsu’s
“WLANs cannot be both network zones defined by a mobile station and the
networks to which the mobile station connects,” and thus Hsu does not
disclose “a plurality of network zones . . . to associate networks encountered
by the computer with one of the plurality of network zones.” App. Br. 22-
23. The Examiner responds that if network zones are sets of network
properties and connection policies to associate networks encountered by a
computer, then, under a broadest reasonable interpretation, a WLAN, such
as disclosed in Hsu, is a network zone. See Ans. 15.
The Specification does not provide an explicit definition of “network
zone.” Nor do Appellants cite any definition or disclaimer in their
Specification to support their contention that a “network zone” cannot be an
“actual network.” According to the language of claim 1, a network zone
includes a set of network properties and connection policies to “associate”
networks encountered by a computer with that network zone.
The examples in the Specification do not support Appellants’
proposed narrow construction. In one embodiment, the Specification
describes a network zone as a logical entity that resides locally on a
computer and “incorporates a set of network properties and polices that are
consistent with particular networks” to which the computer may connect.
Spec. 11:15-22. Figure 5, for example, depicts three network zones as
logical entities on a computer associated with external physical networks.
See Spec. 15:3-15; Fig. 5. See also Spec. 11:15-24; Spec. 12:22–13:11.
However, the Specification also states that a “preferred network zone . . .
may be a network zone that includes one or more networks . . . .” Spec.
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19:14-18 (emphasis added). Thus, in light of the claim language itself and
the written description, the broadest reasonable interpretation of “network
zone” can include a physical network along with the policies and properties
to which the physical network is associated.
The Examiner finds that Hsu, at paragraphs 0027 and 0029, discloses
network properties and connection policies associated with various
networks, such as WLANs and cellular networks (e.g., a cdma2000
network). See Ans. 5. In particular, paragraph 0027 describes a memory
device that stores system selection criteria, which the system uses to select a
network to connect to. According to Hsu’s paragraph 0029, the system
selection criteria “are rules that the selector 58 will use for decision
making,” for example “if an application is active . . . and the WLAN access
medium is available, then the system should select the WLAN access
medium to transport data traffic.” We note that Appellants do not point to
any particular definition of the broad term “associate” in the Specification.
Nor do Appellants point to any definition of “policies” or “properties” that
would limit the meaning of these broad terms. Indeed, the Specification
gives broad examples of “security,” “file sharing,” “enforcement,” “network
connection,” and “network communication” policies, Spec. 2:18-25; 12:3;
14:12; 18:19-20, and provides no specific examples of “network properties.”
Hsu discloses a system with a logical construct including policies and
properties whereby, when a WLAN becomes available, the system will
switch from a cellular network to the WLAN, thereby associating with the
WLAN according to the selection criteria (properties and policies). See Hsu,
¶¶ 0027, 0029. Accordingly, we see no error in the Examiner’s finding that
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a WLAN (e.g., 120 or 130) of Hsu, at least when associated with the system
according to Hsu’s selection criteria, is part of a network zone. See Ans. 5.
The Examiner finds that Hsu’s description of defining, locally to the
system, policies and properties that can be associated with the WLANs
constitutes “defining by a module locally at the computer a plurality of
network zones each of which includes a different set of network properties
and connection policies to associate networks encountered by the computer
with one of the plurality of network zones.” See Ans. 5 (citing Hsu, ¶¶
0027, 0029); see also Ans. 19 (further finding that ¶¶ 0045-54 of Hsu
describe defining network zones locally). Appellants contend that Hsu does
not disclose “defining” network zones locally at a computer, see App. Br.
18, asserting that “Hsu simply lacks the recited defining feature of claim 1”
because Hsu’s mobile station lacks control over the arrangement of the
network. App. Br. 21-22. Instead, Appellants argue, Hsu describes an
application that “merely uses selection criteria to select WLANs when
available.” App. Br. 22. However, Appellants do not point to any
disclosure in the Specification limiting the meaning of “defining . . . locally
at the computer a plurality of network zones . . . ” to require “control over
the arrangement of the network” or otherwise excluding Hsu’s defining of
properties and policies. App. Br. 21-22. Thus, Appellants do not
persuasively explain why Hsu’s description of defining properties and
policies is not defining network zones.
Appellants also argue that Hsu does not disclose associating different
encountered networks with different network zones. See App. Br. 18. Here,
Appellants essentially repeat their arguments that Hsu’s WLANs cannot be
both network zones and the networks encountered by the computer. See
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App. Br. 22-23. As explained above, we are not persuaded by this
argument.
Appellants further contend that Hsu does not disclose “receiving from
an application program executing on the computer, preference information
that identifies one of the plurality of network zones as a preferred network
zone,” as recited in claim 1. See App. Br. 18, 23-24. The Examiner finds
that Hsu discloses a “preference database” with selection criteria to choose
one network over another (e.g., a WLAN over a cellular network or a
WLAN with a strong signal over a WLAN with a weak signal). See Ans. 5
(citing Hsu, ¶¶ 0025-26; 0094-96). Appellants admit that “Hsu is intended
to identify and connect to a WLAN (e.g., select alternate network paths)
based on specified criteria” but argue that this does not disclose “different
sets of preferences corresponding to different applications and/or WLANs.”
App. Br. 24. Instead, Appellants argue, Hsu only “mentions a single set of
preferences used to select between WLANs.” Id. Appellants further argue,
without citation, that “each of the WLANs [of Hsu] must satisfy the same
preferences of the mobile station before the mobile station selects the
WLAN” and that these “preferences are not associated with particular
networks.” Id. However, Appellants’ arguments are not commensurate in
scope with the claim, which merely recites “preference information that
identifies one of the plurality of network zones as a preferred network zone.”
We agree with the Examiner’s finding that this is satisfied by Hsu’s
selection criteria, which identifies one network (e.g., a WLAN with a strong
signal) as preferred over another (e.g., a WLAN with a weak signal). See
Ans. 5.
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Appellants also contend that Hsu does not disclose enforcing defined
network zones to permit and prevent connections. See App. Br. 18.
Appellants argue that “Hsu discusses techniques to identify and connect to
existing WLANs, which are not equivalent to network zones . . . .” App. Br.
25. As explained above, we are not persuaded by Appellants’ argument that
a WLAN cannot be a network zone. In any case, we agree with the
Examiner that Hsu describes permitting a connection between the computer
and a preferred network (e.g., a WLAN) and preventing a connection
between the computer and a non-preferred network (e.g., a cellular network).
See Ans. 5 (citing preference database 56 of Hsu and ¶¶ 0047-48 (teaching
that a mobile station, when communicating on a cellular network, can search
within a cell for a WLAN to which to associate)).
Appellants only nominally argue dependent claims 2-12 separately.
See App. Br. 25.
Accordingly, we sustain the rejection of independent claim 1, and
claims 2-12, which depend on claim 1.

Claims 18, 19, 35 and 36
Regarding independent claims 18 and 35, Appellants essentially
incorporate or repeat their arguments for claim 1. See App. Br. 25-30.
These arguments are unpersuasive for the reasons given above.
Appellants also contend that the Examiner erroneously found the
features of claims 18 and 35 to be coextensive with claim 1. See App. Br.
26-27, 29. However, Appellants do no more than identify claim language
that differs from claim 1 and contend that it is not disclosed by Hsu. See id.
This is insufficient to raise a separate ground for patentability. See 37
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C.F.R. § 41.37(c)(vii) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e
hold that the Board reasonably interpreted Rule 41.37 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.”).
Appellants only nominally argue dependent claims 19 and 36
separately. See App. Br. 28, 30.
Accordingly, we sustain the rejection of: (1) independent claims 18
and 35, which recite commensurate limitations to claim 1; (2) claim 19,
which depends on claim 18; and (3) claim 36, which depends on claim 35.

REJECTION OF CLAIMS 13-17, 20, 25-34, AND 37-55
UNDER 35 U.S.C. § 103(a)
The Examiner finds that Hsu teaches each limitation of claim 13
except for “defining via a zone module of an operating system . . . .” See
Ans. 8-9. The Examiner finds that limitation taught in Hankinson and
concludes that it would have been obvious to combine the teachings of Hsu
and Hankinson. See Ans. 9-10.
Appellants incorporate their arguments for claim 1 regarding the
patentability of claim 13 over Hsu. See App. Br. 34-35. For the reasons
given above, those arguments are not persuasive. Appellants further argue
that Hankinson
is entirely silent with respect to (1) a module to define locally at
the computer a plurality of network zones (2) network zones
each of which includes a different set of network properties and
connection policies to associate networks encountered by the
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computer with the plurality of network zones and (3) network
zones configured to be enforced to control connections of a
computer to encountered networks.
App. Br. 32-33. See also App. Br. 35-37.
However, the Examiner finds that those limitations are taught in Hsu,
not Hankinson. See Ans. 8-9. The Examiner only cites Hankinson to show
that it was well known to implement in an operating system modules
optimized for specialized functions. See Ans. 9-10. Appellants do not
adequately challenge this finding. See App. Br. 32-33, 35-37. Accordingly,
we conclude that implementing a zone module (taught by Hsu) as a
component of an operating system (taught by Hankinson), would have been
nothing more than “the predictable use of prior art elements according to
their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007).
Appellants argue that Hankinson’s disclosure “does not provide a
basis for the claimed ‘zone module’ that is implemented by a operating
system of a computer,” implying that Hankinson’s disclosure of a
“federated” operating system that distributes tasks among processors does
not meet this purportedly required singularity. App. Br. 36. However, the
Federal Circuit “has repeatedly emphasized that an indefinite article ‘a’ or
‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended
claims containing the transitional phrase ‘comprising.’” KCJ Corp. v.
Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). Thus, we are
not persuaded that claim 13 is limited to a single operating system on a
single computer.
Regarding independent claims 20, 30, 37, 39, 42, 50, and 54,
Appellants essentially incorporate or repeat their arguments for claims 1 and
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13. See App. Br. 39-43, 45-46, 48-54, and 56-57. Those arguments are
unpersuasive for the reasons given above.
Appellants also contend that the Examiner erroneously found the
features of claims 20, 30, 37, 39, 42, 50, and 54 to be coextensive with claim
13. See App. Br. 38-39, 42, 44-45, 47, 50, 52-53, and 55-56. However,
Appellants do no more than identify claim language that differs from claim
13 and contend that it is not taught by Hsu. See id. This is insufficient to
raise a separate ground for patentability. See 37 C.F.R. § 41.37(c)(vii);
Lovin, 652 F.3d at 1357.
Appellants only nominally argue dependent claims 14-17, 25-29, 31-
34, 38, 40, 41, 43-49, 51-53, and 55 separately. See App. Br. 37, 41, 43-44,
46, 49, 52, 54, and 57.
Accordingly, we sustain the rejection of: (1) independent claim 13; (2)
independent claims 20, 30, 37, 39, 42, 50, and 54, which recite
commensurate limitations; (3) claims 14-17, which depend on claim 13; (4)
claims 25-29, which depend on claim 20; (5) claims 31-34, which depend on
claim 30; (6) claim 38, which depends on claim 37; (7) claims 40 and 41,
which depend on claim 39; (8) claims 43-49, which depend on claim 42; (9)
claims 51-53, which depend on claim 50; and (10) claim 55, which depends
on claim 54.

ORDER
The decision of the Examiner to object to the Specification and to
reject claims 1-20 and 25-55 under § 112, first paragraph, is reversed. The
decision of the Examiner to reject claims 1-12, 18, 19, 35, and 36 under §
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102(e) is affirmed. The decision of the Examiner to reject claims 13-17, 20,
25-34, and 37-55 under § 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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