Ex Parte Singh et al

Patent Trial and Appeal Board

Apr 16, 2014

11505171 (P.T.A.B. Apr. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte PRADEEP K. SINGH, ANKIT AGARWAL, ALAIN J. COHEN,
VENUPRAKASH BARATHAN, and VINOD JEYACHANDRAN
_____________

Appeal 2011-010316
Application 11/505,171
Technology Center 2400
______________

Before BRADLEY W. BAUMEISTER, DAVID M. KOHUT, and
BRETT C. MARTIN, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL

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This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-27, 47-57, 61, and 63-65.1 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part the Examiner’s rejections of these claims and enter
a new ground of rejection pursuant to 37 C.F.R. § 41.50(b).

INVENTION
The invention is directed to a system, a non-transitory computer-
readable medium, and method for verifying compliance of security policies
among network devices by simulating traffic on a model of a network. Spec.
¶¶ [0001] and [0007]. Claims 1 and 20 are illustrative of the invention and
are reproduced below:
1. A system comprising:
a database that is configured to identify one or more pairs
of zones of a network, each element of a first zone of each pair
having a common security policy relative to each element of a
second zone of the pair,
a traffic generator that is configured to process the
database to:
select at least one pair of the pairs of zones,
generate one or more messages for transmission
between a source zone and a destination zone of the least
one pair, and
a security analyzer that is configured to determine the
security policy corresponding to the at least one pair of zones
based on propagation of the one or more messages from the
source zone toward the destination zone.

1 Claims 28-46 were previously cancelled. The rejections of claims 58-60
and 62 were withdrawn in the Answer. Ans. 3.
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20. A method comprising:
identifying, on a security validation system, one or more
pairs of zones of a network, each element of a first zone of each
pair having a common security policy relative to each element
of a second zone of the pair,
selecting, by the security validation system, at least one
pair of the pairs of zones,
generating, by the security validation system, one or
more messages for transmission between a source zone and a
destination zone of the at least one pair, and
determining, by the security validation system, the
security policy corresponding to the at least one pair of zones
based on propagation of the one or more messages from the
source zone toward the destination zone.

REFERENCES
Tracy US 6,993,448 B2 Jan. 31, 2006

REJECTIONS AT ISSUE
Claims 1-27 and 47-56 are rejected under 35 U.S.C. § 101 as
containing non-statutory subject matter.2 Ans. 5-6.
Claims 1, 7-9, 11, 13, 15, 20, 25-27, 48, 57, 61, and 63-65 are rejected
under 35 U.S.C. § 102(e) as being anticipated by Tracy.3 Ans. 7-9.

2 The Examiner withdrew the 35 U.S.C. § 101 rejection of claims 58-65.
Ans. 3.
3 The Examiner withdrew the 35 U.S.C. § 102(e) rejection of claims 49 and
62. Ans. 3.
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ISSUES
Did the Examiner err in finding that claims 1-27 and 47-56 contain
non-statutory subject matter?
Did the Examiner err in finding that Tracy discloses “a database that
is configured to identify one or more pairs of zones of a network, each
element of a first zone of each pair having a common security policy relative
to each element of a second zone of the pair,” as recited in claim 1 and
similarly recited in claims 20 and 57?4

ANALYSIS
35 U.S.C. § 101 Rejection of Claims 1-19
The Examiner rejects claims 1-19 under 35 U.S.C. § 101. Ans. 4-5.
Claim 1 contains a “database,” a “traffic generator,” and a “security
analyzer.” Claims 2-19 are dependent upon claim 1. Appellants argue that
the claims contain statutory subject matter because the “database,” “traffic
generator,” and “security analyzer” require a physical device in order to
perform their claimed function. Appeal Br. 8; Reply Br. 2-3. The Examiner
finds that paragraph [0030] of Appellants’ Specification indicates that each
of the elements of claim 1 could be software and that a claim directed
toward software does not inherently include hardware. Ans. 10-11.
We are not persuaded by Appellants’ arguments, and we agree with
the Examiner that claims 1-19 do not contain statutory subject matter. At

4 Appellants make additional arguments with respect to claims 1, 20, and 57
and their dependent claims. Appeal Br. 12-17; Reply Br. 7-10. We will not
address the additional arguments as resolution of this issue is dispositive of
the Appeal regarding these claims.
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paragraph [0030], Appellants’ Specification states that “each of the
disclosed elements may be comprised of hardware portions (e.g., including
discrete and integrated electronic circuitry), software portions (e.g.,
computer programming), and any combination thereof.” We therefore agree
with the Examiner’s finding (Ans. 10-11) that each element of claim 1 could
be software. We also agree that claim 1 does not inherently recite hardware.
For the reasons stated supra, we sustain the Examiner’s rejection of claims
1-19.
35 U.S.C. § 101 Rejection of Claims 20-27 and 47-56
The Examiner rejects claims 20-27 and 47-56 under 35 U.S.C. § 101.
Ans. 5-6. Claim 20 contains steps that are performed either “on a security
validation system” or “by [a] security validation system.” Claims 21-27 and
47-56 are dependent upon claim 20. Appellants argue that the rejection is
improper because the process of claim 1 is not a law of nature, a physical
phenomenon, or an abstract idea. Appeal Br. 9. Appellants specifically
contend that hardware is required in order to perform the method of claim
20. Reply Br. 4. The Examiner finds that each step of claim 20 may be
carried out using software as described in paragraph [0030] of Appellants’
Specification and, therefore, the claims are not tied to any machine and do
not perform any transformation. Ans. 12.
We agree with the Appellants (Appeal Br. 11-12; Reply Br. 3-4) that
the Examiner has not shown that claim 20 contains non-statutory subject
matter. Claim 20 includes a sufficient recitation of a machine because it
requires the use of a special purpose computer that is programmed to
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perform the claimed steps.5 For the reasons stated supra, we cannot sustain
the Examiner’s rejection of claims 20-27 and 47-56.
35 U.S.C. § 102(e) Rejection of Claims 1, 7-9, 11, 13, 15, 20, 25-27, 48,
57, 61, and 63-65
Independent claim 1 recites “a database that is configured to identify
one or more pairs of zones of a network, each element of a first zone of each
pair having a common security policy relative to each element of a second
zone of the pair.” Independent claims 20 and 57 recite a similar limitation.
Claims 7-9, 11, 13, and 15; 25-27 and 48; and 61 and 63-65 are dependent
upon claims 1, 20, and 57, respectively. The Examiner finds that Tracy
discloses the disputed limitation and specifically finds that Tracy’s network
scanner and Security Requirements Traceability Matrix (SRTM) disclose
this limitation. Ans. 7 and 12-14. Appellants argue that the Examiner’s
characterization of Tracy’s network scanner does not show how Tracy
discloses that each element of a zone of each pair has a common security
policy relative to each element of a second zone of the pair. Reply Br. 5.
Appellants further contend that Tracy’s SRTM is not a “common security
policy” as recited in claim 1. Reply Br. 6.
We agree with Appellants (Appeal Br. 10-12) that the Examiner has
not shown that the disputed limitation is disclosed in Tracy. While Tracy’s
Network Scanner scans a network segment that is comprised of network
devices (see Tracy, col. 6, ll. 49-59), the Examiner has not shown that
Tracy’s Network Scanner identifies one or more pairs of zones as recited in

5 While not binding precedent, see USPTO Interim Guidance for
Determining Subject Matter Eligibility for Process Claims in View of Bilski
v. Kappos, 75 Fed. Reg. 43922 (Jul. 27, 2010).
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claim 1. Furthermore, although Tracy discloses a Security Requirements
Traceability Matrix (SRTM) that includes a list of standards and/or
regulations that a system must comply with (see Tracy, col. 4, ll. 56 - col. 5,
ll. 16), the SRTM does not include a common security policy that is applied
to each element of both zones of a pair as recited in claim 1. For the reasons
stated supra, we cannot sustain the Examiner’s rejection of claims 1, 7-9, 11,
13, 15, 20, 25-27, 48, 57, 61, and 63-65.
Rejections of Claims 57-65 under 37 C.F.R. § 41.50(b)
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection; we reject claims 57-65 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the enablement and written description
requirements.
Initially, we determine claim 57 is not a standard Beauregard-type,
computer-program product claim.6 The claims set forth in Beauregard’s
patent were structured as a combination of plural means-plus-function
elements – which under 35 U.S.C. § 112, sixth paragraph, would be
“construed to cover the corresponding structure, material, or acts described
in the specification and equivalents thereof.” In contrast, Appellants’ claim

6 [T]he Board rejected Beauregard’s computer program product
claims on the basis of the printed matter doctrine. Beauregard
appealed. The Commissioner now states “that computer
programs embodied in a tangible medium, such as floppy
diskettes, are patentable subject matter under 35 U.S.C. § 101
and must be examined under 35 U.S.C. §§ 102 and 103.” The
Commissioner states that he agrees with Beauregard’s position
on appeal that the printed matter doctrine is not applicable.
Thus, the parties are in agreement that no case or controversy
presently exists.
In re Beauregard, 53 F.3d 1583, 1584 (Fed. Cir. 1995).
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does not recite any elements in means-plus-function language. Claim 57
recites:
A computer program embodied on a non-transitory
computer-readable medium that is configured to cause a
processor to:
identify one or more pairs of zones of a network,
each element of a first zone of each pair having a
common security policy relative to each element of a
second zone of the pair,
select at least one pair of the pairs of zones,
generate one or more messages for transmission
between a source zone and a destination zone of the at
least one pair, and
determine the security policy corresponding to the
at least one pair of zones based on propagation of the one
or more messages from the source zone toward the
destination zone.
Therefore, claim 57, which does not invoke 35 U.S.C. § 112, sixth
paragraph, is essentially devoid of anything that can be construed as
structure, except for the recited non-transitory computer-readable medium.
Thus, claim 57 is directed to a computer program embodied on a non-
transitory computer-readable medium that is configured to cause a processor
to perform particular functions. Although embodying a computer program
on a non-transitory computer-readable medium may change the physical
structure of the medium (e.g., at a bit level for magnetic storage), the claim
does not specify the actual structure of the computer-readable medium.
Furthermore, Appellants’ Specification does not provide sufficient
disclosure as to this actual physical structure. As a result of the lack of
disclosure, each operation could be coded in a variety of ways using a
variety of languages, etc. Thus, the scope of claim 57 encompasses any and
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all (present and future) computer-readable media including a computer
program for performing the claimed functions. Accordingly, claim 57 is not
in compliance with the enablement and description requirements as it
exceeds the Appellants’ disclosure. See Fiers v. Revel, 984 F.2d. 1164, 1171
(Fed. Cir. 1993). See also In re Swinehart, 439 F.2d 210 (CCPA 1971)
(discussing claims employing functional language encompassing any and all
embodiments and that such claims should be rejected under 35 U.S.C. §112,
first paragraph, if the scope of the claim is beyond that justified by the
disclosure).
Section 112 requires that the patent specification enable “those skilled
in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation’” to extract meaningful disclosure of the
invention and, by this disclosure, advance the technical arts. Koito Mfg.,
Co., v. Turn-Key-Tech, 381 F.3d 1142, 1155 (Fed. Cir. 2004) (quoting
Genentech Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997)).
The disclosure is necessary to put those skilled in the art on notice of the
enforceable boundary of the commercial patent right; therefore, the law
further makes the enabling disclosure operational as a limitation on claim
validity.
“The scope of [patent] claims must be less than or equal to the
scope of the enablement. The scope of enablement, in turn, is
that which is disclosed in the specification plus the scope of
what would be known to one of ordinary skill in the art without
undue experimentation.” Nat'l Recovery, 166 F.3d at 1196; see
also In re Goodman, 11 F.3d 1046, 1050 (Fed.Cir.1993)
(“[T]he specification must teach those of skill in the art ‘how to
make and how to use the invention as broadly as it is
claimed.’”); In re Fisher, 57 C.C.P.A. 1099, 427 F.2d 833, 839
(1970) (“[T]he scope of the claims must bear a reasonable
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correlation to the scope of enablement provided by the
specification to persons of ordinary skill in the art.”).
Invitrogen Corp. v. Clontech Labs. Inc., 429 F.3d 1052, 1070-71 (Fed. Cir.
2005).
The test for sufficiency of a written description is whether the
disclosure “‘clearly allow[s] 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 Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991)). The
disclosure must “reasonably convey[] to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. at 1351. Therefore, the Specification does not support any and all
(present and future) computer-readable media including instructions for
performing the claimed functions.
Thus, claim 57 encompasses all coding of the recited operations as
stored on a non-transitory computer-readable medium. Our reviewing court
has concluded that such all-encompassing claims do not comply with the
enablement and written description requirements of 35 U.S.C. § 112, first
paragraph because such claims are “an attempt to preempt the future before
it has arrived.” Fiers v. Revel, 984 F.2d at 1171.
Accordingly, we reject claim 57 under 35 U.S.C. §112, first paragraph
for lack of enablement and written description.
Claims 58-65 are similarly rejected.

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CONCLUSION
The Examiner did not err in finding that claims 1-19 contain non-
statutory subject matter.
The Examiner erred in finding that claims 20-27 and 47-56 contain
non-statutory subject matter.
The Examiner erred in finding that Tracy discloses “a database that is
configured to identify one or more pairs of zones of a network, each element
of a first zone of each pair having a common security policy relative to each
element of a second zone of the pair,” as recited in claim 1 and similarly
recited in claims 20 and 57.

SUMMARY
The Examiner’s decision to reject claims 1-19 under 35 U.S.C. § 101
is affirmed.
The Examiner’s decision to reject claims 20-27 and 47-56 under
35 U.S.C. § 101 is reversed.
The Examiner’s decision to reject claims 1, 7-9, 11, 13, 15, 20, 25-27,
48, 57, 61, and 63-65 under 35 U.S.C. § 102(e) is reversed.
We enter new grounds of rejection for claims 57-65 under 35 U.S.C.
§ 112, first paragraph.

FINALITY
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 CFR § 41.50(b) also provides that the Appellants, WITHIN
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TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .

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)(iv).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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