Ex Parte Suuronen et alDownload PDFPatent Trial and Appeal BoardApr 23, 201410059182 (P.T.A.B. Apr. 23, 2014) Copy Citation 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. 10/059,182 01/31/2002 Janne Suuronen 004770.00521 5357 72165 7590 04/24/2014 BANNER & WITCOFF, LTD ATTORNEYS FOR CLIENT 004770 1100 13TH STREET SUITE 1200 WASHINGTON, DC 20005-4051 EXAMINER SHAW, YIN CHEN ART UNIT PAPER NUMBER 2439 MAIL DATE DELIVERY MODE 04/24/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JANNE SUURONEN and MARTIN BERGENWALL ____________________ Appeal 2011-008892 Application 10/059,182 Technology Center 2400 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008892 Application 10/059,182 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 4-6, 11, 32-34, 40-50, 53, 54, 56-63, and 65. Claims 2, 3, 7-10, 12-31, 35-39, 51, 52, 55, and 64 have been canceled. We affirm. A. INVENTION According to Appellants, the invention relates to detecting the presence of computer viruses in data transmissions to networks (Spec. 1, [0001]). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1 An apparatus comprising: a firewall configured to: receive data packets over a first network; classify the received data packets based on the contents of the data packets into packets of a first type which cannot contain a virus and packets of a second type which can contain a virus, wherein classifying the received data packets includes determining whether at least one of the data packets includes content for a real-time audio or video data stream; forward the data packets of the first type to a destination without testing by a virus scanning engine and without transmission of the data packets to the virus scanning engine; and forward the data packets of the second type to a virus scanning engine for testing. Appeal 2011-008892 Application 10/059,182 3 C. REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: Baum US 6,400,707 B1 Jun. 4, 2002 Fink US 6,496,935 B1 Dec. 17, 2002 Joyce US 6,519,703 B1 Feb. 11, 2003 Lyle US 6,886,102 B1 Apr. 26, 2005 Claims 1, 4, 5, 11, 32-34, 40-50, 53, 56-63, and 65 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Fink, Joyce and Baum. Claims 6 and 54 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Fink, Joyce, Baum, and Lyle. II. ISSUE The principal issue before us is whether the Examiner has erred in finding the combination of Fink, Joyce and Baum teaches or would have suggested an “apparatus” comprising a “firewall configured to . . . classify the received data packet” into packets of a first type which cannot contain a virus and a second type which can contain a virus, “wherein classifying the received data packets includes determining whether at least one of the data packets includes content for a real-time audio or video data stream” (claim 1 (emphases added)). In particular, the issue turns on whether the claimed invention would have been obvious over Joyce’s teachings of a firewall configured to classify received data packets into packets of a first type and a second type based on content, in view of Baum’s teaching of a firewall that determines whether received data packets includes content for real-time audio or video data stream. Appeal 2011-008892 Application 10/059,182 4 III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Joyce 1. Joyce discloses a heuristic firewall wherein a confidence rating is assigned to packets in accordance with a level of confidence regarding the harmfulness of the analyzed packets (Abstract). 2. A “high-confidence” rating results in a high level of confidence that the packet stream does not contain threats, and the packets are released into a secured channel directly into the network (col. 3, ll. 37-43); while a rating of “poor-confidence” shunts packets to the buffer (col 4, ll. 7-12). Baum 3. Baum discloses real time firewall security that provides network security to a secured network connected to an unsecured packet network for providing audio and/or video service (col. 2, ll. 41-43). IV. ANALYSIS As for claim 1, although Appellants concede “Baum acknowledges the existence of audio or video packets,” Appellants contend Baum “fails to teach or suggest that the filter determines whether a packet includes audio or video in classifying that packet” (App. Br. 6). However, the Examiner finds Joyce discloses “the firewall system is to perform the recited classifying step on the received data packets based on the contents of the data packets . . .” (Ans. 17) while Baum discloses determining whether “the internet communication packet is of either audio or video type” to indicate that “the disclosed firewall is to perform packetized voice filtering” (Ans. 18). The Appeal 2011-008892 Application 10/059,182 5 Examiner concludes that it would have been obvious to combine the teachings of Baum to those of Joyce and Fink “to provide methods and apparatus for a firewall that filter the content of the real-time stream in order to provide real time firewall security” (Ans. 7-8). The claims are given their broadest reasonable interpretation consistent with the specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We note claim 1 does not positively recite a step of classifying data packets. Instead, claim 1 is directed to an “apparatus” and merely requires a “firewall” with the intended purpose of being “configured to” classify and forward data packets. The intended purpose of the firewall configured to classify and forward data packets does not limit the scope of the claim because the intended purpose merely defines a context in which the invention operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering- Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Since claim 1 does not positively recite classifying by the firewall or any other element, claim 1 also does not positively recite “wherein classifying” includes “determining” whether the data packets include content for real-time audio or video data stream. Nevertheless, we find no error in the Examiner’s findings and ultimate legal conclusion obviousness. Joyce discloses a firewall configured to classify/rate packets based on their contents (FF 1), wherein the data packets are classified into a first type that cannot contain a virus (high confidence) and a second type which can contain a virus (poor confidence) (FF 2). Thus, even if our reviewing court gives patentable weight to the “classifying” and “determining” steps that were not positively recited in claim 1, we agree with the Examiner that Appeal 2011-008892 Application 10/059,182 6 Joyce discloses “the firewall system is to perform the recited classifying step of the received data packets based on the contents of the data packets” (Ans. 17). Thus, the only feature of claim 1 missing from Joyce is an express teaching that the classifying based on content includes “determining” whether the content includes real-time audio or video data stream. However, Baum’s firewall determines whether the content includes real-time audio or video data stream (FF 3). We agree with the Examiner’s conclusion that it would have been obvious to combine the teachings of Baum to those of Joyce (and thus Fink) “to provide methods and apparatus for a firewall that filter the content of the real-time stream in order to provide real time firewall security” (Ans. 7-8). Although Appellants contend Appellants contend Baum “fails to teach or suggest that the filter determines whether a packet includes audio or video in classifying that packet” (App. Br. 6), since the Examiner rejects the claims as obvious over the combined teachings, the test for obviousness is not what the references show individually but what the combined teachings would have suggested to one of ordinary skill in the art. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Supreme Court has determined that the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The skilled artisan would “be able to fit the teachings of multiple patents together like pieces of a puzzle” since the skilled artisan is “a person of ordinary creativity, not an automaton.” Id. at 420-21. As stated by the Supreme Appeal 2011-008892 Application 10/059,182 7 Court, an obviousness “analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. See also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). We are not persuaded of Examiner error because Appellants have presented no evidence that adding the step of determining by a firewall that the content of the data packets include real-time audio or video data stream (as taught by Baum), to Joyce’s firewall, which classifies the data packets based on their content, was “uniquely challenging or difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR 550 U.S. at 418). Therefore, we find the Examiner’s proffered combination of familiar prior art elements according to their established functions would have conveyed a reasonable expectation of success to a person of ordinary skill having common sense at the time of the invention. Accordingly, we find that Appellants have not shown that the Examiner erred in rejecting claim 1 and claims 4, 5, 11, 32-34, and 41-48 depending therefrom but not separately argued (App. Br. 7) over Joyce, Fink and Baum. As for the dependent claim 40, Appellants merely contend “Joyce fails to describe alerting network 30 upon detection of a virus in data packets” (id.). However, we find no error with the Examiner’s conclusion that Joyce at the least suggests, as required by 35 U.S.C 103, “that in case heuristic stages discover problems, such as existence of virus . . . a[n] Appeal 2011-008892 Application 10/059,182 8 external call or alternate process such as alarms are provided” wherein alarms “would be alerting/ pager device providing messages to be transmitted to administrator, security officer, etc...” (Ans. 19). As for claims 49, 50, 53, 56-63, and 64, Appellants merely repeat the language of claims 49, 50, and 62 (App. Br. 8). Consequently we do not find Appellants’ statements to be persuasive because a statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii). Therefore we sustain the Examiner rejection of dependent claims 49, 50, 53, 56-3, and 64. As for claims 6 and 54, Appellants merely contend “Lyle fails to remedy the deficiencies of Fink, Joyce and Baum” (App. Br. 9). However, as discussed above, we find no deficiencies in the Examiner’s reliance on Fink, Joyce and Baum. Accordingly, we also affirm the Examiner’s rejection of claims 6 and 54 over Fink, Joyce and Baum in further view of Lyle. V. CONCLUSION AND DECISION The Examiner’s rejections of claims 1, 4-6, 11, 32-34, 40-50, 53, 54, 56-63, and 65 under 35 U.S.C. § 103(a) are 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)(iv). 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