Nicira, Inc.

Patent Trials and Appeals Board

Oct 21, 2021

2020001137 (P.T.A.B. Oct. 21, 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.
14/815,950 07/31/2015 Kiran Kumar Thota N162.07.C1 (B839.07.C1) 7665
109858 7590 10/21/2021
ADELI LLP
P.O. Box 516
Pacific Palisades, CA 90272
EXAMINER
ALMAMUN, ABDULLAH
ART UNIT PAPER NUMBER
2431
NOTIFICATION DATE DELIVERY MODE
10/21/2021 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):
ipadmin@vmware.com
mail@adelillp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIRAN KUMAR THOTA, AZEEM FEROZ, and
JAMES CHRISTOPHER WIESE
Appeal 2020-001137
Application 14/815,9501
Technology Center 2400
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
NABEEL U. KHAN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellant requests rehearing of the July 27, 2021 Decision on Appeal
(“Decision”), wherein we affirmed the rejection of claims 1–20 under
35 U.S.C. § 103. We have reconsidered the Decision in light of Appellant’s
arguments but, for the reasons given below, we are not persuaded any
changes to the Decision are required.

1 Appeal No. 2019-005596 (Application No. 14/320,581) appears to be
related to this appeal, because both applications share the same inventors
and real parties in interest, and are directed to substantially similar
inventions.
Appeal 2020-001137
Application 14/815,950
2
ANALYSIS
A request for rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the Board.”
37 C.F.R. § 41.52(a)(1). “Arguments not raised, and Evidence not
previously relied upon . . . are not permitted in the request for rehearing
except as permitted by paragraphs (a)(2) through (a)(4).” Id. Permitted new
arguments are limited to: (a) new arguments based upon a recent relevant
decision of either the Board or a Federal Court; (b) new arguments
responding to a new ground of rejection designated pursuant to § 41.50(b);
or (c) new arguments that the Board’s decision contains an undesignated
new ground of rejection. See 37 C.F.R. § 41.52(a)(2)–(4).
Appellant contends none of the cited references discloses receiving a
command from a controller or sending a request for a new key based on a
command from the controller as recited in independent claim 1 and similarly
recited in independent claim 12. Req. Reh’g. 2–3. According to Appellant,
the Decision erred in finding that neither Appellant’s claims, nor Appellant’s
Specification, defines “controller” in a way that distinguishes “controller”
from Allen’s client device 202(1). Id. at 3 (citing Dec. 4–5). As argued by
Appellant, the claim language, Specification, and Figures make it clear that
the claimed controller is a different element than the claimed program that
retrieves keys from key managers in response to the controller command.
Req. Reh’g. 3. For example, according to Appellant, Figure 22 illustrates
(and paragraph 142 of the Specification describes) the controllers as servers
and/or applications that interact with host-computer agents that manage key
refresh operations. Id. at 3–4 (citing Spec. ¶ 142, Fig. 22). As another
example, as argued by Appellant, Figure 3 and its corresponding description
Appeal 2020-001137
Application 14/815,950
3
in the Specification also show controllers 320 as separate elements than the
host-side encryptors and encryption agents. Req. Reh’g. 4.
Appellant further contends the Decision erred in finding the claims do
not require that the same entity receives the command from the controller
and sends the request for the new key to the key generator. Req. Reh’g. 5
(citing Dec. 6). According to Appellant, claims 1–11 recite a program
comprising instructions for receiving a command and sending a request
based on the command, where one program that is stored on a non-transitory
machine readable medium is a single entity. Req. Reh’g. 5.
As a threshold matter, none of Appellant’s arguments state with
particularity points believed to have been misapprehended or overlooked by
the Board. Instead, Appellant’s arguments are either reiterations of
Appellant’s previous arguments on appeal or arguments not previously
raised on appeal. Nevertheless, to the extent Appellant’s arguments can be
considered to meet the standard of 37 C.F.R. § 41.52(a), they do not
persuade us that the Board erred for the reasons provided below.
First, Appellant’s argument that Appellant’s claim language,
Specification, and Figures distinguish the claimed controller from the
claimed program that retrieves keys from key managers in response to the
controller command, is not persuasive. Even assuming arguendo that
Appellant’s characterization of its Specification and Figures is correct, the
claims do not recite that the claimed “controller” is a different element than
the entity that performs the recited “receiving a command from a controller,”
and “sending a request [based on the received command.” “Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
Appeal 2020-001137
Application 14/815,950
4
limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
Further, even assuming arguendo that the claims included such a
limitation, Allen teaches such a limitation. Specifically, Allen expressly
teaches that its client device 202(1) is a separate element from server 206.
See Dec. 3–4 (citing Allen 6:40–48, 7:52–57, 9:4–15, Figs. 2, 3).
Even further, assuming arguendo that Allen did not teach or suggest
such a limitation, the mere existence of differences between the prior art and
the claim does not establish non-obviousness. See Dann v. Johnston, 425
U.S. 219, 230 (1976). Instead, the relevant question is “whether the
difference between the prior art and the subject matter in question is a
[difference] sufficient to render the claimed subject matter unobvious to one
skilled in the applicable art.” Dann, 425 U.S. at 228 (internal quotations and
citations omitted). Indeed, the Supreme Court made clear that when
considering obviousness, “the 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).
Here, the Examiner finds Allen teaches a request for a cryptographic
key received from client device 202(1) that is a command to request-
processing module 104 to update the cryptographic key stored at client
device 202(1), where the request specifically commands request-processing
module 104 to fetch a new cryptographic key from server 206 and replace an
old cryptographic key at client device 202(1) with the new cryptographic
key. See Dec. 4 (citing Ans. 7). Appellant does not persuasively show that
modifying the system disclosed in Allen so that server 206 receives the
Appeal 2020-001137
Application 14/815,950
5
command from some other entity besides client device 202(1) (i.e., a
“controller”) would have been beyond the skill of an ordinary artisan.
Second, Appellant’s argument that the recitation of “a program” in
claim 1 requires a single entity to both receive the command from the
controller and send the request for the new key to the key generator is also
not persuasive. A claim under examination is given its broadest reasonable
interpretation consistent with the underlying specification. See In re
American Acad. of Science Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Contrary to Appellant’s argument, the mere recitation of “a program” in
claim 1, under its broadest reasonable interpretation, does not require a
single entity to both receive the command from the controller and send the
request for the new key to the key generator. For example, the claimed
“program” may instruct a first entity to receive a command and may instruct
the second entity to send a request for a new key based on the command
received by the first entity.
Further, even assuming arguendo that claim 1 requires a single entity
to both receive the command from the controller and send the request for the
new key to the key generator, Allen teaches such a limitation. Specifically,
Allen teaches that request-processing module 104 (which receives a
command from the controller) and subscription-management module 106
(which sends a request for the new key to a key generator) are part of server
206, where server 206 teaches the single entity that both receives the
command from the controller and sends the request for the new key to the
key generator. See Dec. 3–4 (citing Allen 6:40–48, 7:52–57, 9:4–15, Figs. 2,
3).
Even further, assuming arguendo that Allen did not teach or suggest
such a limitation, the mere existence of differences between the prior art and
Appeal 2020-001137
Application 14/815,950
6
the claim does not establish non-obviousness, as previously described. See
Dann, 425 U.S. at 230. As the Examiner found, the request-processing
module 104 teaches the claimed entity that “[receives] a command from a
controller to (1) fetch a new key for the keyring and (2) remove a particular
key from the plurality of keys in the keyring,” and the subscription-
management module 106 teaches the claimed entity that “[sends] a request
for the new key to a key generator.” Dec. 5–6 (citing Ans. 7–9). Appellant
does not persuasively show that modifying the system disclosed in Allen so
that a single module performs the functionality performed by request-
processing module 104 and subscription-management module 106 would
have been beyond the skill of an ordinary artisan.

DECISION
Based on the foregoing, we have granted Appellant’s request to the
extent that we have reconsidered our Decision, but we deny Appellant’s
request to make any changes therein.

Outcome of Decision on Rehearing:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Denied Granted
1–3, 7, 12–
15, 18
103 Allen, Lin, Harjula 1–3, 7, 12–
15, 18

4–6, 8, 16–
17, 19
103 Allen, Lin,
Harjula, Boubion
4–6, 8, 16–
17, 19

9–11, 20 103 Allen, Lin,
Harjula, Yared
9–11, 20
Overall
Outcome
1–20
Appeal 2020-001137
Application 14/815,950
7

Final Outcome of Appeal after Rehearing:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 7,
12–15, 18
103 Allen, Lin, Harjula 1–3, 7, 12–
15, 18

4–6, 8,
16–17, 19
103 Allen, Lin, Harjula,
Boubion
4–6, 8, 16–
17, 19

9–11, 20 103 Allen, Lin, Harjula,
Yared
9–11, 20
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

DENIED