DOME 9 SECURITY LTD.

Patent Trials and Appeals Board

Aug 26, 2020

15378331 - (D) (P.T.A.B. Aug. 26, 2020)

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.
15/378,331 12/14/2016 Zohar ALON 7201/1 4256
44696 7590 08/26/2020
Dr. Mark M. Friedman
Moshe Aviv Tower, 54th floor
7 Jabotinsky St.
Ramat Gan, 5252007
ISRAEL
EXAMINER
WANG, HARRIS C
ART UNIT PAPER NUMBER
2439
NOTIFICATION DATE DELIVERY MODE
08/26/2020 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):
friedpat.uspto@gmail.com
patents@friedpat.com
rivka_f@friedpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZOHAR ALON and ROY FEINTUCH
____________

Appeal 2019-002905
Application 15/378,331
Technology Center 2400
____________

Before ALLEN R. MacDONALD, CAROLYN D. THOMAS, and
ERIC B. CHEN, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–21. See Claim Appendix. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Dome 9
Security LTD. Appeal Br. 3.
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The present invention relates generally to secured access for a
computing platform. See Spec. Abstract.
Independent claims 1 and 11, reproduced below, are representative of
the appealed claims:
1. A method for secured access for a computing platform
comprising:
generating an on-the-fly access lease to the computing
platform, wherein the on-the-fly access lease defines provisions for
accessing at least one firewall port of the computing platform,
wherein the provisions include at least a lease duration for accessing
the at least one firewall port; and
controlling access to resources of the computing platform
through an opening of the at least one firewall port of the computing
platform, wherein the access to resources of the computing platform is
determined based on the generated on-the-fly access lease and the
security settings.

11. A system for secured access for a computing platform
comprising:
at least one computing platform comprising at least one
resource and at least one firewall port;
a policy server configured to control port access security
and connectivity settings for the at least one computing platform; and
a communication link communicatively connecting
between the at least one computing platform and the policy server, the
communication link is configured to serve a secure tunnel
communication there through, wherein the secure tunnel
communication is intermittently established over the communication
link;
wherein an on-the-fly access lease to the at least one port
of the at least one computing platform defining provisions for access
the at least one firewall port of the computing platform is acquired,
wherein the provisions include at least a lease duration for accessing
the at least one firewall port; and
wherein the policy server is configured to send
instructions to open the at least one firewall port of the at least one
computing platform during a communication using the secure tunnel
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communication respective of the acquired on-the-fly access lease and
security settings.

Appellant appeals the following rejections:
R1. Claims 5, 6, and 11–20 are rejected under 35 U.S.C. 112(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement. Final Act. 6–7.
R2. Claims 11–202 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Final Act. 8–
15.
R3. Claims 1, 7, and 21 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Chang (US 2002/0078377 A1, June 20, 2002). Final
Act. 15–20.
R4. Claims 2–6 and 8–20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chang and Hyndman (US 2006/0075478 A1,
Apr. 6, 2006). Final Act. 20–23.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Rejection under § 112
Claims 5, 6, and 11–20
The Examiner finds that claims 5 and 11 “recite ‘intermittent
connection’ as well as ‘communication is intermittently established’ [and]

2 Although the header of the rejection lists claims 10–20 as being rejected
under § 101, we shall treat this as a typographical error and instead, treat this
as a rejection of claims 11–20. See Final Act. 7; see also Reply Br. 2.
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[s]upport for this is not found in the prior specification,” i.e., parent
Application No. 13/106,153. See Final Act. 7. In other words, the Examiner
issues a rejection under § 112, first paragraph, because support is allegedly
not found in the parent application, as opposed to the instant application, i.e.,
a priority issue.
In response, Appellant contends that “[s]upport for this subject matter
is contained at least in paragraph 9 of the instant specification . . . . In
addition, paragraph 22 of the instant specification, which corresponds to
paragraph 28 of the parent application, states . . . may occur periodically . . .
this means the communication may be intermittent.” Appeal Br. 6–7.
Appellant further contends that “these claims are original to the instant
application as filed and thus support themselves.” Id. at 7. Finally,
Appellant contends:
Next, even if, arguendo, the Examiner is correct with regard to
support in the prior application, which Appellants are not admitting,
all that means is that claims 5–6 and 11–20 are only entitled to the
filing data of the instant application and not of the parent. As such, a
rejection under 35 U.S.C. [§ ]112, first paragraph is not appropriate.
Appeal Br. 7. We agree with Appellant.
Although it is true that claims are entitled to the benefit of the earlier
filing date only if they are “fully supported under 35 U.S.C. [§ ]112 by the
earlier parent application” (MPEP 706.02(VI)(B) 8th ed., Rev. 8, July 2010),
the question presented by the Examiner’s rejection is not whether Appellant
deserves the benefit of the earlier filing date, but rather did Appellant have
possession of the claimed subject matter as of the filing date of the instant
application. See Final Act. 6–7.
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In order to satisfy the written description requirement, “the [original]
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). “[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. (citations omitted). One shows possession “by such descriptive means as
words, structure, figures, diagrams, formulas, etc., that fully set forth the
claimed invention.” Lockwood v. American Airlines, Inc., 107 F.3d 1565,
1572 (Fed. Cir. 1997).
The Examiner’s finding of lack of descriptive support for the appealed
claims 5, 6, and 11–20 is without merit. This is so because, as pointed out
by Appellant above, the “original claims” provide literal support for
themselves. See In re Anderson, 471 F.2d 1237, 1238–39 (CCPA 1973)
(unamended original claim is a part of the original disclosure). Additionally,
Appellant’s Specification at paragraph 9 describes “the secure tunnel
communication is intermittently established.” Spec. ¶ 9.
Accordingly, the Examiners’ rejection of claims 5, 6, and 11–20 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement, i.e., had possession of the claimed invention, is
reversed.

Rejection under § 101
Claims 11–20
The Examiner determines that the elements of claims 11–20 “may be
considered software per se and are therefore direct[ed] to non-statutory
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subject matter.” Final Act. 7. Specifically, the Examiner finds that
“Applicant’s own [S]pecification explicitly teaches a situation where the
‘computing platform’ and ‘server’ may be solely ‘associated [with]
software.’” Ans. 5 (citing Spec. ¶ 35).
For example, Appellant’s Specification states:
According to some embodiments of the present invention, a
server or any computing platform (300A) may comprise some
processing logic, circuit, device, system and/or associated software
for executing processing functions for the server (e.g.[,] Platform
operating memory/space 305A).
Spec. ¶ 35 (emphasis added).
Some embodiments of the invention, for example, may take the
form of an entirely hardware embodiment, an entirely software
embodiment, or an embodiment including both hardware and software
elements. Some embodiments may be implemented in software,
which includes but is not limited to firmware, resident software,
microcode, or the like.
Spec. ¶ 44 (emphasis added). In other words, Appellant’s Specification
states that some embodiments may be entirely hardware, entirely software,
or both hardware and software, i.e., a server or any computing platform may
comprise . . . associated software.
However, a claim that recites no more than software, logic, or a data
structure (i.e., an abstraction) does not fall within any statutory category. In
re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). Significantly,
“[a]bstract software code is an idea without physical embodiment.”
Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
Although Appellant contends that, in claim 11, “a platform, a server,
and a communication link are all terms used to describe hardware, or at
least must include hardware in conjunction with software” (Appeal Br. 8),
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Appellant’s Specification clearly describes an entirely software embodiment,
an idea without a physical embodiment. As such, the issue is not whether
one of ordinary skill in the art would have understood the embodiments in
the disclosure to be within the scope of the claims, but whether software per
se would also be within the scope of the claims. It is common to assign
structural names to software modules for the purpose of identifying the
module function. Here, the Examiner construes independent claim 11 to
include software modules with structural names, which is consistent with at
least one embodiment in Appellant’s Specification, i.e., a software per se
implementation. See Ans. 5
Notably, claim 11 recites “at least one [(1)] computing platform . . . a
[(2)] policy server configured to control port access . . . [and (3)] a
communication link . . . between the at least one computing platform and the
policy server . . . configured to serve a secure tunnel.” See claim 11
(emphasis added). None of these three elements recite physical structure
limitations, but rather claim 11 recites the phrase “configured to” numerous
times followed by a series of steps.
Additionally, as used by Appellant, “computing platform,” “policy
server,” and “communication link” are broad enough to encompass both a
“software system” and a “computer system.” A patent claim that is broad
enough to cover both statutory subject matter and nonstatutory subject
matter is subject to rejection under 35 U.S.C. § 101. Amgen, Inc., v. Hoechst
Marion Roussel, Inc., 314 F.3d 1313, 1329 (Fed. Cir. 2003).
Although Appellant directs our attention to numerous extrinsic
definitions for “computing platform” and “server” (see Appeal Br. 9–13),
our reviewing court guides that extrinsic evidence is unlikely to result in a
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reliable interpretation of patent claim scope unless considered in the context
of the intrinsic evidence. Phillips v. AWH Corp., 415 F.3d 1303, 1319 (Fed.
Cir. 2005) (en banc). The court in Phillips guided that “different
dictionaries may contain somewhat different sets of definitions for the same
words. A claim should not rise or fall based upon the preferences of a
particular dictionary editor, or the court’s independent decision, uninformed
by the specification, to rely on one dictionary rather than another.” Id. at
1322. The court in Phillips reaffirmed its view that the specification “is
always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.” Id.
at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996)). Here we find that Appellant’s Specification clearly
describes a software per se implementation.
Accordingly, we affirm the Examiner’s rejection of claims 11–20
under 35 U.S.C. § 101 for being directed to non-statutory subject matter.

Rejection under § 102(b)
Claims 1, 7, 21
Appellant contends that it “is well-known, on-the-fly means,
‘activities that develops or occur dynamically rather than as the result of
something that is statically predefined.’” Appeal Br. 16. Appellant further
contends that “[b]y contrast, Chang teaches predefined times . . . these times
do not refer to generating an . . . on-the-fly lease but rather they refer to
particular firewall properties” (id.), and “[a] key to the fact that Chang is not
teaching or suggesting the creation of an on-the-fly lease is the specification
of start time 802.” Id. at 17.
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In response, the Examiner finds that claim 1 merely defines “on-the-
fly” as including “at least a lease duration for accessing the at least one
firewall port” and Chang teaches this feature. See Ans. 6 (citing Chang Fig.
8 and ¶ 86). The Examiner further determines that “Appellant’s
[S]pecification has no definition whatsoever of ‘on-the-fly’ . . . Therefore,
the term ‘on-the-fly’ must be given the broadest reasonable interpretation.”
Ans. 7. The Examiner determines that “the temporary access lease which
changes based on the time as taught by Chang can be considered a dynamic
access lease or ‘on-the-fly’ access lease.” Id. at 8. We agree with the
Examiner.
Although we agree in part with Appellant that Chang disclose a “start
time 802” for which the port can be accessed (see Appeal Br. 17; see also
Chang Fig. 8), we disagree that having such a “start time” is contrary to an
“on-the-fly access lease.” For example, as noted by the Examiner (see Ans.
6), claim 1 also requires “a lease duration,” i.e., a start and stop time. As
exemplified by Appellant’s claim 1, such a start and stop time does not
appear to take away from the access lease being “on-the-fly.”
Instead, as reasonably interpreted by the Examiner, and we agree, the
broadest reasonable interpretation of an “on-the-fly” access lease is a lease
that changes. See Ans. 8. Here, the Examiner points out that Chang
discloses a “temporary access lease which changes based on the time.” Id.
Specifically, Chang discloses if a port is not configured for a user, an
application request for the port on behalf of the user fails, but thereafter the
port can be configured for the user if the timing is correct and the user is part
of the security group. See Chang, Fig. 9, steps 918–922. In other words,
Chang discloses securing a port for only a single user at a time and thereafter
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waiting for another user request for the port, i.e., changing port access based
on time. See Chang ¶ 98.
In fact, Appellant concedes that “Chang discloses on-the-fly
configuration” (see Reply Br. 6), but tries to distinguish Chang’s on-the-fly
configuration by stating that “the time-based access of Chang is static.” Id.
Even if this is the case, we note that claim 1 does not specify what specific
part of the access lease is “on-the-fly,” i.e., claim 1’s on-the-fly access lease
merely requires duration provisions for accessing the port. Claim 1 does not
require that any start time be on-the-fly. As such, Appellant fails to
persuasively distinguish the conceded on-the-fly configuration of Chang
from the claimed “on-the-fly” access lease.
Accordingly, we sustain the Examiner’s rejection of claim 1.
Appellant’s arguments regarding the Examiner’s rejection of independent
claim 21 rely on the same arguments as for claim 1, and Appellant does not
argue separate patentability for dependent claim 7. See Appeal Br. 16–20.
We, therefore, also sustain the Examiner’s rejection of claims 7 and 21.

Rejection under § 103(a)
Claims 2–6 and 8–20
Because Appellant has not presented separate patentability arguments
or have reiterated substantially the same arguments as those previously
discussed for patentability of claim 1 above (see Appeal Br. 6–7), claims 2–
6 and 8–20 fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

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CONCLUSION
Appellant has demonstrated that the Examiner erred in rejecting
claims 5, 6, and 11–20 under 35 U.S.C. § 112 as failing to comply with the
written description requirement.
However, the Examiner’s rejections of: (1) claims 11–20 as being
directed to non-statutory subject matter; (2) claims 1, 7, and 21 as being
anticipated by Chang; and (3) claims 2–6 and 8–20 as being unpatentable
over Chang and Hyndman are all affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
5, 6, 11–20 112 Written Description 5, 6, 11–20
1–5, 10 101 Software per se 11–20
1, 7, 21 102 Chang 1, 7, 21
2–6, 8–20 103 Chang, Hyndman 2–6, 8–20
Overall
Outcome
1–21

Because at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner is 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).

AFFIRMED