Mody, Nirmal et al.

Patent Trials and Appeals Board

Feb 2, 2021

2019003995 (P.T.A.B. Feb. 2, 2021)

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.
11/560,437 11/16/2006 Nirmal Mody 007412.00169 5803
71867 7590 02/02/2021
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
NGUYEN, STEVEN C
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
02/02/2021 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):
PTO-71867@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NIRMAL MODY, MICHAEL O’REIRDAN, and
MATT SCULLY
____________________

Appeal 2019-003995
Application 11/560,4371
Technology Center 2400
____________________

Before MARC S. HOFF, BARBARA A. PARVIS, and
JASON J. CHUNG, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1–4, 6–8, and 30–41.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant states that the real party in interest is Comcast Cable
Communications, LLC. Appeal Br. 2.
2 Claims 9–29 have been cancelled. Claim 5 is objected to as being
dependent on a rejected base claim, but would be allowable if rewritten in
independent form including all limitations of the base claim and any
intervening claims.
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Appellant’s invention is a method and system for reducing malicious
communications, particularly those associated with Spam and Denial of
Service (DoS) attacks, over an Internet Protocol (IP) network. Spec. 1. The
inventive message limiting includes limiting bandwidth or other
communication capabilities associated with an entity communicating or
facilitating communication of the messages. Abstract. Responsive to a
determination that transmission of an outgoing message would exceed a
limit on transport of messages received via a first network, the invention
transmits a response that comprises an invalid IP address configured to
prevent at least one subsequent message from being transmitted. Spec. 8–9.
Claim 1 is reproduced below:
1. A method comprising:
monitoring, by a computing device of a first network,
traffic levels of at least one message type received, via the first
network, by the computing device from a device
communicating via the first network;
receiving, from the device via the first network, an
outgoing message that is of the at least one message type and
that is intended for transmission to an intended destination
device of a second network different from the first network; and
responsive to a determination that transmission of the
outgoing message would exceed a limitation on transport of
messages that are of the at least one message type and that are
received from the device via the first network, transmitting, to
the device via the first network, a response to the outgoing
message that comprises an invalid Internet Protocol (IP)
address configured to prevent at least one subsequent message
of the at least one message type from being transmitted from
the device via the first network.

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The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Miller US 5,784,569 July 21, 1998
Teng US 2002/0133613 A1 Sept. 19, 2002
Gough US 6,687,740 B1 Feb. 3, 2004
Touitou US 2005/0166049 A1 July 28, 2005
Dagon US 2008/0028463 A1 Jan. 31, 2008
Brooks US 7,409,712 B1 Aug. 5, 2008

Claims 1, 2, 6, 7, 30, 31, and 34–41 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Teng and Dagon. Final Act. 4.
Claim 3 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Teng, Dagon, and Brooks. Final Act. 15.
Claim 43 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Teng, Dagon, and Miller. Final Act. 17.
Claims 8 and 32 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Teng, Dagon, and Touitou. Final Act. 18.
Claim 334 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Teng, Dagon, and Gough. Final Act. 19.

Throughout this decision, we make reference to the Appeal Brief
(“Appeal Br.,” filed Nov. 5, 2018), the Reply Brief (“Reply Br.,” filed
Apr. 19, 2019), and the Examiner’s Answer (“Ans.,” mailed Feb. 19, 2019)
for their respective details.

3 The Examiner’s Final Action refers to claims 4 and 9 being rejected over
Teng, Dagon, and Miller. We regard this as a typographical error, as claim 9
has been cancelled. Final Act. 2.
4 The Appeal Brief refers to claim 33 standing rejected over Ellis, Lee, and
Gough, which we presume to be an oversight. Appeal Br. 12.
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ISSUE
Does the combination of Teng and Dagon teach or suggest
transmitting, to the device via the first network, a response to the outgoing
message that comprises an invalid Internet Protocol address?

ANALYSIS
35 U.S.C. § 103 Rejections
Representative claim 1 recites, in pertinent part, “transmitting . . . a
response to the outgoing message that comprises an invalid Internet Protocol
(IP) address configured to prevent at least one subsequent message of the at
least one message type from being transmitted from the device via the first
network.” The other independent claims (31 and 37) also recite that a
response to a message or DNS request comprises an invalid IP address.
The Examiner finds that Appellant’s Specification “merely discloses
and does not further describe ‘an invalid Internet Protocol (IP) address.’”
Ans. 22; Spec. 8:26–9:6. The Specification discloses that packets may be re-
directed to a sink-hole email system 44 by the router 26. “This allows the
sink-hole email system 44 to respond with a successful acknowledgement
message to purposely mislead the Spammer/BOT.” Id. Packets or other
information associated with DNS queries “may be similarly diverted to the
DNS sink-hole 44 for the same purposes. The DNS sink-hole 44 may
respond with a (sic) invalid IP for any type A DNS query such that DoS or
ICMP packets attached to valid websites are prevented from exiting the PC.”
Id.
The Examiner finds that Dagon teaches diverting traffic to a sinkhole
computer. In Dagon, the bot computer’s IP address is recorded and traffic
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from the bot is analyzed. Ans. 23; Dagon ¶ 47. One response option is
DDNS removal: the botnet’s DDNS entry or name registration is removed
and the DDNS account is revoked. Ans. 23–24; Dagon ¶¶ 33, 47, 48. The
botnet would be prevented from sending subsequent messages through the
network. Ans. 24.
The Examiner cites a definition of “invalid” as “erroneous or
unrecognizable because of a flaw in reasoning or an error in input. Invalid
results, for example, might occur if the logic in a program is faulty.” Ans.
22, citing Microsoft Computer Dictionary, Fifth Edition, p. 475. The
Examiner finds that when traffic in Dagon is redirected to the sinkhole
computer, the bot computer is being supplied with the sinkhole computer’s
IP address, which the Examiner finds to be an “invalid” IP address, “as it is
not the intended recipient.” Ans. 23; Dagon ¶¶ 12, 13, 19–32.
Appellant argues, and we agree, that even under the Examiner’s
proffered definition of “invalid,” Dagon does not teach transmitting an
invalid IP address. Reply Br. 2. Dagon teaches that the IP address of the
sinkhole computer is (intentionally) returned to the Dagon bot computer.
Dagon ¶ 13. We agree with Appellant’s argument that the IP address
returned to the Dagon bot computer is not “erroneous” or “unrecognizable.”
Reply Br. 3. We find that the IP address returned in Dagon is not the result
of “a flaw in reasoning or an error in input.” Id.
Because we agree with Appellant that the combination of Teng and
Dagon does not teach or suggest a response to an outgoing message that
comprises an invalid IP address, we do not sustain the Examiner’s rejection
of claims 1, 2, 6, 7, 30, 31, and 34–41. We further do not sustain the
rejection of dependent claim 3 over Teng, Dagon, and Brooks; the rejection
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of dependent claim 4 over Teng, Dagon, and Miller; the rejection of
dependent claims 8 and 32 over Teng, Dagon, and Touitou; and the rejection
of dependent claim 33 over Teng, Dagon, and Gough, for the same reasons.

CONCLUSION
The combination of Teng and Dagon does not teach or suggest
transmitting, to the device via the first network, a response to the outgoing
message that comprises an invalid Internet Protocol address.

DECISION SUMMARY
The Examiner’s decision to reject claims 1–4, 6–8, and 30–41 is
reversed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1, 2, 6, 7, 30,
31, 34–41
103 Teng, Dagon 1, 2, 6, 7, 30,
31, 34–41
3 103 Teng, Dagon,
Brooks
3
4 103 Teng, Dagon,
Miller
4
8, 32 103 Teng, Dagon,
Touitou
8, 32
33 103 Teng, Dagon,
Gough
33
Overall
Outcome

1–4, 6–8, 30–
41

REVERSED