Ex Parte van Bemmel et al

Patent Trial and Appeal Board

Aug 15, 2014

10970143 (P.T.A.B. Aug. 15, 2014)

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.
10/970,143 10/21/2004 Jeroen van Bemmel van Bemmel 8-5
(LCNT/1266
4937
46363 7590 08/18/2014
WALL & TONG, LLP/
ALCATEL-LUCENT USA INC.
25 James Way
Eatontown, NJ 07724
EXAMINER
POLTORAK, PIOTR
ART UNIT PAPER NUMBER
2496
MAIL DATE DELIVERY MODE
08/18/2014 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 JEROEN VAN BEMMEL and JACCO BROK
___________

Appeal 2014-002632
Application 10/970,143
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, MICHAEL J. STRAUSS, and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/970,143
2

This is an appeal under 35 U.S.C. § 134(a) of the final rejection of
claims 1 and 23–44.
1
Claims 2–22 were previously cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
THE INVENTION
Appellants’ invention relates to protecting network systems from
viruses and other malicious applications by enforcing security policies.
Spec. 1:6–7.
Claim 1, reproduced below, is illustrative:
1. A method of enforcing security policies, comprising:
using a processor and a memory for:
determining if a client requesting access to an Internet
Protocol (IP) network is in compliance with a current version of
the security policies, wherein compliance is determined by
checking a listing of compliant clients, wherein the listing of
compliant clients includes clients that have downloaded client
software including the current version of the security policies;
based on a determination that the client is not in
compliance with the current version of the security policies,
denying the client access to the IP network and making
accessible to the client the latest version of the client software
including the current version of the security policies; and
adding the client to the listing of compliant clients
responsive to receiving confirmation that the client has

1
In this Opinion, we refer to Appellants’ Appeal Brief (“App. Br.,” filed
November 18, 2013), Reply Brief (“Reply Br.,” filed January 8, 2014), the
Examiner’s Answer (“Ans.,” mailed December 20, 2013), the Final Office
Action (“Final Rej.,” mailed August 13, 2013), and the original
Specification (“Spec.,” filed October 21, 2004).
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downloaded the latest version of the client software including
the current version of the security policies;
wherein, when the security policies are updated, the
listing of compliant clients is cleared.

THE REJECTIONS
2

Claims 1, 23–25, 27–36, and 38–44 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Herrmann (US 2003/0055994 A1, published
Mar. 20, 2003), Sobel (US 7,249,187 B2, issued July 24, 2007), Szeto (US
7,516,487 B1, issued Apr. 7, 2009, filed May 20, 2004), and Burnett (US
2003/0028798 A1, published Feb. 6, 2003).
Claims 26
3
and 37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Herrmann, Sobel, Szeto, Burnett, and Golan (US
5,974,549, issued Oct. 26, 1999).

Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(iv) (2013).
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner erred. App. Br. 17–39; Reply Br. 2–18. We
disagree with Appellants’ conclusions. We agree with and adopt as our own
the findings and reasons set forth by the Examiner in the action from which
this appeal is taken and as set forth by the Examiner in the Examiner’s

2
The Examiner has withdrawn a rejection of claims 28 and 39 under 35
U.S.C. § 103(a). Ans. 8.
3
We note as harmless error the Examiner listing claim 6 rather than claim
26 under this rejection. Final Rej. 8.
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Answer in response to Appellants’ Appeal Brief (see Ans. 8–31). However,
we highlight and address specific arguments and findings for emphasis as
follows.

REJECTION OVER HERRMANN, SOBEL, SZETO, and BURNETT
INDEPENDENT CLAIMS 1, 33, AND 44
ISSUE 1
Has the Examiner erred by failing to consider all words of claim 1?
ANALYSIS 1
Appellants argue the Examiner erred by failing to consider all words
of claim 1. App. Br. 17–19. Specifically, Appellants contend,
First, it is noted that, in discussing Herrmann, the
Examiner asserts that Herrmann discloses “making accessible
to said client a current version of said security policies” and
also asserts that Herrmann discloses “making accessible to the
client the latest version of the client software including the
current version of the security policies.” (See Final Office
Action, Pg. 3, Line 22 - Pg. 4, Line 7). First, Appellants submit
that the first quoted portion above appears to have been
erroneously retained from the previous Office Action (see
Office Action, dated, June 17, 2013, Pg. 4, Lines 1 - 4), as it
includes an assertion related to a previous version of
Appellants’ claim 1 that did not include an indicate that it is
client software that includes the current version of the security
policies. Second, Appellants submit that the Examiner’s
purported application of Herrmann to Appellants’ claim 1 is
identical for the two quoted portions above, thereby indicating
that no additional consideration was given to addition of the
feature of “client software that includes the current version of
the security policies” added to Appellants’ claim 1 in response
to the previous Office Action . . . . Thus, Appellants submit
that the Examiner failed to properly consider the feature of
“making accessible to the client the latest version of the client
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software including the current version of the security policies”
in determining the patentability of Appellants’ claim 1.
App. Br. 18. We are unpersuaded the Examiner erred. Appellants conclude
from the Examiner’s mis-quote of the present claim language that the
Examiner failed to consider the current claim language. Appellants’
conclusion is not persuasive. We consider the Examiner’s copying a portion
of an earlier analysis as harmless error.
Appellants assert that (App. Br. 18–19) the Examiner’s rejection
(Final Rej. 4) indicating a deficiency of Herrmann and introducing Sobel as
disclosing features relating to a listing of compliant clients fails to consider
all words of the claim. App. Br. 19. We find Appellants’ conclusion
unpersuasive because it is not supported by any argument or evidence that
the Examiner’s rejection is in error. We are therefore not persuaded the
Examiner erred by failing to consider all words of claim 1.

ISSUE 2
Has the Examiner erred finding Herrmann, in the proposed
combination, teaches “client software including the current version of the
security policies,” as recited in claim 1?
ANALYSIS 2
Appellants’ arguments (App. Br. 17–19) alleging the Examiner failed
to consider all words of claim 1 may be interpreted as further alleging
Herrmann does not teach client software that includes current version of
security policies. See, e.g., App. Br. 18 (“In the Final Office Action,
however, the Examiner fails to consider or address the portions of
Appellants’ claim 1 which indicate that it is client software that includes the
current version of the security policies.”). Assuming, arguendo, the
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Appellants intended to proffer such an argument, we are not persuaded. The
Examiner explains Herrmann clearly discloses client software including
current security policies as anti-virus engine and/or anti-virus data files and
associated updates. Ans. 10 (citing Herrmann ¶ 51). The Examiner also
explains that this interpretation is consistent with Appellants’ Specification.
Ans. 9 (citing Spec. 4:9–14, 5:8–10). We agree. Herrmann’s anti-virus
engine and virus signatures (Herrmann ¶ 51) are clearly understood by the
skilled artisan to be software elements and thus Herrmann discloses the
claimed client software.
Appellants respond, “Rather, the cited portions of Herrmann [(¶ 51)]
merely disclose security-related elements (e.g., anti-virus policies, engines,
programs, and data files) without any teaching or suggestion that the
security-related elements are included as part of client software of the
client.” Reply Br. 2. We find Appellants’ response (Reply Br. 2–3)
unavailing. As the Examiner explains, the broadest reasonable interpretation
of “client software including the current version of the security policies,”
consistent with Appellants’ Specification, encompasses Herrmann’s
antivirus engine, virus signatures, and related updates—all of which are
recognized by the skilled artisan as software components. Ans. 10–11. The
Examiner summarizes, “Similarly to applicant’s invention, Herrmann’s
system is concern [sic] with policy compliance providing ‘the ability to
enforce compliance with virus protection policies or rules.’” Ans. 10. We
agree. All such software components of Herrmann are reasonably
understood to be “part of” the client software to be updated in clients/users
of Herrmann.
We are therefore not persuaded the Examiner erred by finding
Herrmann, in the proposed combination, teaches features relating to “client
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software including the current version of the security policies,” as recited in
claim 1.

ISSUE 3
Has the Examiner erred finding Sobel, in the proposed combination,
teaches features relating to a “listing of compliant clients,” as recited in
claim 1?
ANALYSIS 3
Appellants argue the cited portion of Sobel (5:20–28) discloses a
“database 315 that includes respective database entries for all clients 105
irrespective of whether the clients 105 are compliant or non-compliant”
while claim 1, by contrast, recites a “listing of compliant clients.” App. Br.
19–20. We are not persuaded. The Examiner explains that the claimed
listing is not limited to only compliant clients. Ans. 12. We agree. A listing
that includes both compliant and non-compliant clients still comprises the
recited “listing of compliant clients.” Regardless, the Examiner further
explains that the cited portion of Sobel clearly discloses searching its
database for an entry corresponding to a client and “If an entry for the
requesting client is not found, the client is treated as not compliant.” Ans.
13 (quoting Sobel 5:25–26). We agree. Sobel, in combination with
Herrmann, clearly teaches the recited listing under Appellants’ narrow
interpretation of a list with entries for only compliant clients as well as the
broad but reasonable interpretation of a “listing of compliant clients” that
may include both compliant and non-compliant clients.
Appellants further contend Sobel’s database is not the same as the
recited listing because Sobel’s database does not satisfy properties of the
recited listing. App. Br. 20–22. Specifically, Appellants argue the recited
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listing includes clients that have been updated with client software including
the current security policies. App. Br. 20. As discussed supra, the
Examiner relies on Herrmann for teaching enforcing compliance with
security policies by updating clients with client software that includes
current security policies. The Examiner relies on Sobel in the proposed
combination only for features relating to the “listing of compliant clients.”
Thus, Appellants improperly attack the references separately. In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants further argue Sobel’s database does not disclose adding or
clearing entries as required of the recited listing. App. Br. 21–22. We
disagree. The Examiner thoroughly explains why the ordinarily skilled
artisan would understand entries are added to, and cleared from, Sobel’s
database as required of the recited listing. Final Rej. 5–6. The Examiner
cites Szeto as illustrative of obvious variations of the teachings of Sobel
regarding a compliance database. Final Rej. 5–6. Appellants respond
“[t]here is no valid basis for the Examiner’s assertion” that a list of
compliant clients is the result of adding compliant clients to the list (Reply.
Br. 5) or that the skilled artisan would recognize the desirability of clearing
entries in the list (database) when the security policy changes (Reply Br. 6).
Appellants do not persuasively rebut the Examiner’s findings. “[T]he
[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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
“If a person of ordinary skill can implement a predictable variation, § 103
likely bars its patentability.” Id. at 417. To the extent the proposed
combination fails to explicitly teach the addition and clearing of entries in
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Sobel’s database, we find such a modification would be a predictable
variation within the skill set of the ordinary skilled artisan.
We are therefore not persuaded the Examiner erred by finding Sobel,
in the proposed combination, teaches features relating to a “listing of
compliant clients,” as in claim 1.
In view of the above discussion, we are not persuaded the Examiner
erred in rejecting independent claim 1. Independent claims 33 and 44
include similar recitations, were rejected for essentially the same reasons
(Final Rej. 7), and Appellants do not argue claims 33 and 44 with
particularity separate from claim 1 (App. Br. 31, 36). Therefore, for the
same reason as claim 1, we are not persuaded the Examiner erred in
rejecting claims 33 and 44.

CLAIM 23
Claim 23 depends from claim 1 and additionally recites “wherein the
latest version of the client software including the current version of the
security policies is made accessible to the client via at least one of an access
gateway, a remote server, or a predetermined website.” The Examiner cites
Herrmann paragraph 51 as teaching this feature as the redirection of a non-
compliant user to a “sandbox server” to obtain required anti-virus updates.
Final Rej. 6. Appellants argue the updates accessible from the sandbox
server of Herrmann are not part of client software as recited in claim 1 (from
which claim 23 depends). App. Br. 23–24; Reply Br. 6–7. For the same
reasons as claim 1 discussed supra, we are not persuaded the Examiner
erred. See also Ans. 14–15.

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CLAIMS 24 AND 25
Claim 24 depends from claim 1 and additionally recites the update is
made accessible by “obtaining” the latest version and the “propagating” the
obtained latest version toward the client. Claim 25 depends from claim 24
and additionally recites the latest version is obtained by “downloading” the
latest version from a remote server. The Examiner rejects both claims
asserting, “in order for the client to receive the latest version of the client
software, the software must be first obtained and then propagated to the
client.” Final Rej. 7. Appellants argue, with respect to both claims 24 and
25, the Examiner erred by failing to cite any portion of the prior art that
supports the rejection and thus concludes the Examiner’s rejection is
deficient as merely a conclusory statement. App. Br. 24–26.
We are not persuaded the Examiner erred. Although Appellants
require specific citations to the prior art references, the test for obviousness
does not require the claimed invention “be expressly suggested in any one or
all of the references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). The Examiner
explains, regardless of the specific manner in which client software is
communicated to a client, it is required in Herrmann (i.e., inherent) that the
software update must first be obtained “(otherwise there is nothing to
provide to a client).” Ans. 17. We agree. Appellants’ Specification provide
no definitions limiting the interpretation of “obtaining” or “propagating” and
thus, the Patent Office applies the broadest reasonable interpretation
consistent with the Specification. In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). The Examiner construes claims 24 and 25
(Ans. 17, 19) such that Herrmann’s paragraph 51 discloses obtaining as
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“sandbox server can provide access to the required anti-virus updates or
information about where such updates may be obtained.” The Examiner
further explains making the latest version accessible to, and received by, a
client, as in Herrmann, meets the limitation of propagating the latest version
toward the client. Ans. 17 (citing Herrmann ¶ 51, claim 64 “redirecting the
device to a sandbox server for installation of the required virus protection
update.”); see also Ans. 19. We agree.
In view of the above discussion, we are not persuaded the Examiner
erred in rejecting claims 24 and 25.

CLAIM 27
Claim 27 depends from claim 1 and additionally recites the latest
version of client software is made accessible to the client by “redirecting the
client to a remote location using a restrictive connection.” In rejecting claim
27, the Examiner finds Herrmann paragraph 51 (“[n]on-compliant systems
are barred from accessing a network until they have installed and activated
the required programs . . . a non-compliant user is typically redirected to a
server”) teaches use of a restrictive connection Final Rej. 6. Appellants
argue the Examiner erred because the cited portion of Herrmann is devoid of
any teaching that the redirection uses a restrictive connection. App. Br. 27.
The Examiner explains, lacking any narrowing definition in the
Specification, under a broad but reasonable interpretation, “a connection that
restricts a client to the resources meets the limitation of the ‘restrictive
connection.’” Ans. 21 (citing Herrmann ¶ 88). We agree. Appellants
further argue, “the cited portions of Herrmann [(responsive primarily to the
added citation to Herrmann ¶ 88)] are references to the connection that the
client is attempting to establish with the gateway server, not a connection
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between the client and the sandbox server for purposes of obtaining the
required anti-virus updates.” Reply Br. 8. We are unpersuaded because the
argument is not commensurate with the claim language. Claim 27 does not
require the “restrictive connection” be utilized specifically “for purposes of
obtaining the required anti-virus updates.”
Further supporting the Examiner’s findings, we note Appellants’
Specification provides an exemplary embodiment of a “restrictive
connection” stating:
The redirection of the client 110 to the remote server or Internet
site is implemented using a restrictive connection such that the
client 110 is isolated from network resources of the IP network
branch 120, such as file servers, other clients, web servers, etc.
Such restrictive connections may include assigning to the client
110 a predetermined IP address or Internet address allowing the
client 110 access to only the remote server or a specific Internet
site, respectively.
Spec. 8:2–8. We observe Herrmann’s Figures 3 and 4 disclose a similar
architecture in which a client 310 is restricted from access to protected data
390 by gateway server 350 when the client is non-compliant with security
policies. See, e.g., Herrmann ¶ 88. However, client 310 may access other
resources of the network (e.g., TrueVector service 320, integrity server 370,
etc.) to access anti-virus updates and attain compliance with security
policies. Id. Thus, under the Examiner’s broad but reasonable construction
of “restrictive connection,” consistent with Appellants’ Specification,
Herrmann’s non-compliant client obtains updates for anti-virus software
through a connection that is restricted, permitting access to only those
network elements required to bring the client into compliance—i.e., a
“restrictive connection” similar to the exemplary embodiment of Appellants’
Specification.
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In view of the above discussion, we are not persuaded the Examiner
erred in rejecting claim 27.

CLAIMS 30 AND 31
Claims 30 and 31 depend from claim 1 and each additionally recites a
specific source of the confirmation message that the client is successfully
updated with the latest version of client software. The Examiner finds Sobel
teaches confirming that a client is updated. Final Rej. 7. The Examiner
further finds “a [person] skilled in the art would recognize that there are only
a finite set of solution, including the confirmation about the client download
wherein the conformation [sic] received from the client or from the source
would have been merely an obvious variant offering the predictable benefit
of customization (see KSR ruling).” Id. Appellants argue the Examiner
erred by failing to cite any specific portion of Sobel as teaching the
additional limitation. App. Br. 28–30; see also Reply Br. 10–12. We are
unpersuaded because, as discussed supra, there is no requirement that the
claimed limitation “be expressly suggested in any one or all of the
references.” Keller, 642 F.2d at 425.
In view of the above discussion, we are not persuaded the Examiner
erred in rejecting claims 30 and 31.

CLAIM 32
Claim 32 depends from claim 31 (which, in turn, depends from claim
1) and additionally recites the source of the latest version “comprises at least
one of an access gateway, a remote server, or a predetermined website.”
This additional limitation is identical to the additional limitation of claim 23
(which depends from claim 1). The Examiner’s rejects claim 32 pointing to
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the earlier discussions of similar recitations in other claims (i.e., claims 1,
23, and 31 in this case). Final Rej. 7. Appellants argue the Examiner erred
by failing to consider all words of the claim in the different context—i.e.,
claim 32 depends from claim 31, which depends from claim 1, while claim
23, essentially identical to claim 32, depends directly from claim 1. App.
Br. 30–31. We find Appellants’ argument unavailing because Appellants do
not identify an error in the Examiner’s findings.
In view of the above discussion, we are not persuaded the Examiner
erred in rejecting claim 32.

CLAIMS 28, 29, 34–36, AND 38–43
Appellants argue these dependent claims together with their respective
base claims. App. Br. 27–28, 31–36. For the reasons discussed supra, we
are unpersuaded the Examiner erred in rejecting claims 28, 29, 34–36,
and 38–43.

REJECTION OVER HERRMANN, SOBEL, SZETO, BURNETT, and
GOLAN
CLAIMS 26 AND 37
Claim 26 depends from claim 24 (discussed supra) and additionally
recites “obtaining the latest version of the client software including the
current version of the security policies in the form of an ActiveX
component.” Claim 37 depends from claim 35 (rejected for the same
reasons as claim 24) and includes the identical additional recitation. The
Examiner rejects claims 26 and 37 for the same reasons as their respective
base claims (24 and 35) additionally citing Golan for showing that the
ActiveX format is “merely an old and well known obvious variant.” Final
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Rej. 9 (citing Golan Fig. 1 and associated text). Appellants argue the
Examiner erred because “citation of Golan as an example illustrating use of
ActiveX components fails to establish use of ActiveX components as
claimed within the context of claim 26, or that use of ActiveX components
as claimed within the context of claim 26 was well known at the time of
Appellants’ invention.” App. Br. 38. Appellants argue the Examiner erred
rejecting claim 37 for the same reasons as claim 26. App. Br. 39. We are
not persuaded.
Initially, we note Golan issued on October 26, 1999, in the same field
of endeavor (see, e.g., Golan Abstract), and thus Golan is prior art that
discloses technology known at the time of Appellants’ invention (application
filed October 21, 2004). Appellants’ contention that Golan fails to establish
that use of ActiveX “within the context of claim 26” is not persuasive
because Appellants have not identified any error in the Examiner’s findings.
Id.
In view of the above discussion, we are not persuaded the Examiner
erred in rejecting claims 26 and 37.

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DECISION
For the above reasons, the Examiner’s decisions rejecting claims
rejections of claims 1 and 23–44 under 35 U.S.C. § 103 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).

AFFIRMED

kis