Ex Parte Cavanaugh

Patent Trial and Appeal BoardNov 29, 2012

10687413 (P.T.A.B. Nov. 29, 2012)

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. 10/687,413 10/16/2003 Robert E. Cavanaugh 10033.017700 8593 31894 7590 11/29/2012 OKAMOTO & BENEDICTO, LLP P.O. BOX 641330 SAN JOSE, CA 95164 EXAMINER CHEN, SHIN HON ART UNIT PAPER NUMBER 2431 MAIL DATE DELIVERY MODE 11/29/2012 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 ROBERT E. CAVANAUGH ____________________ Appeal 2010-006559 Application 10/687,413 Technology Center 2400 ____________________ Before ERIC S. FRAHM, LARRY J. HUME, and RAMA G. ELLURU, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1-8, 11-16, and 28-30. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2010-006559 Application 10/687,413 2 STATEMENT OF THE CASE 1 The Invention Appellant’s invention is directed to a system and method for providing network security and, more particularly, to a system and method for providing network security without leaving a networking footprint. (Spec. 1, Title and ¶ [0002]). Exemplary Claims Claim 1 is an exemplary claim representing an aspect of the invention which is reproduced below (emphasis added to disputed limitations): 1. A security system for use in conjunction with data flowing from a first device to a second device being directed to said second device in accordance with a network address of said second device, said system comprising: a security device connected between said first and second devices, said security device accepting packet data for bridging to said second device, said security device operable for observing data flowing from said first device to said second device, said security device not itself having a network address or a physical address, and configured to be inserted between said first and said second device while a network connection is active. 1 Our decision refers to Appellant’s Appeal Brief (“App. Br.,” filed Nov. 11, 2009); Reply Brief (“Reply Br.,” filed Mar. 18, 2010); Examiner’s Answer (“Ans.,” mailed Feb. 2, 2010); Final Office Action (“FOA,” mailed June 12, 2009); and the original Specification (“Spec.,” filed Oct. 16, 2003). Appeal 2010-006559 Application 10/687,413 3 Prior Art The prior art relied upon by the Examiner in rejecting the claims on appeal is: Wexler US 2003/0229809 A1 Dec. 11, 2003 Rejections on Appeal Claims 1-8, 11-16, and 28-30 are rejected under 35 U.S.C. § 102(e) as being anticipated by Wexler et al. Ans. 3. GROUPING OF CLAIMS Based upon Appellant’s arguments against the rejection of claim 1 and the similarity of arguments for patentability with respect to independent claims 8 and 28 on appeal (App. Br. 5-8; Reply Br. 3-4), and based upon our authority under 37 C.F.R. §41.37(c)(1)(vii), we select claim 1 as the representative claim to decide this appeal in accordance with those arguments and rejections. Thus, claims 2-8, 11-16, and 28-30 stand or fall with independent claim 1. CONTENTIONS Appellant contends that “[c]laim 1 recites, in part, ‘said security device not itself having a network address or a physical address’ . . . [but] Wexler does not teach this feature of claim 1 at least because it does not appear to teach a security device not having a physical address.” App. Br. 5. In addition, Appellant contends that “Wexler teaches that its proxy server includes a MAC address, which is one type of physical address . . . Appeal 2010-006559 Application 10/687,413 4 [a]ccordingly, Wexler fails to teach the above-recited feature of claim 1 because Wexler explicitly teaches that its proxy server 22 includes a MAC address.” Id. Furthermore, Appellant contends that “[f]or this reason alone, regardless of any other arguments made by the Examiner, the rejection must be reversed.” Id. Appellant goes on to contend that “Wexler teaches that proxy server 22 has a level-2 address, but also that packets forwarded by proxy server 22 do not provide other components with an indication of the level-2 address of proxy server 22.” App. Br. 6. In response to the Examiner’s “Response to Arguments” (Ans. 10), Appellant contends that “[t]he Examiner attempts to change the claim language so that it is different from what is meant by the Appellant . . . [by adding] an occurrence of the word either to claim 1, when such word clearly does not appear in claim 1 . . . .” Reply Br. 3. Finally, Appellant contends that “the Examiner attempts to limit the claim language to passages taken from the specification . . . [h]owever, it is improper to import claim limitations from the specification.” Id. ISSUE Did the Examiner err in finding that Wexler discloses all the limitations of claim 1, particularly a security system comprising “a security device connected between said first and second devices . . . said security Appeal 2010-006559 Application 10/687,413 5 device not itself having a network address or a physical address,” as recited in independent claim 1? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We disagree with Appellant’s conclusions with respect to claim 1, and we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in the Examiner’s Answer (Ans. 3-4, 10-11) in response to Appellant’s Arguments (App. Br. 5-8). However, we highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. In particular, we concur with the Examiner’s finding that the limitation at issue, i.e., “said security device not itself having a network address or a physical address” can be interpreted as “said security device not itself having” either [1] “a network address” or [2] "a physical address” and not both. Ans. 10. We also agree with the Examiner’s finding that Appellant’s Specification provides a definition of what is meant by the above-cited limitation, i.e., “said security device not itself having a network address or a physical address” may reasonably be defined as “[the system and] method does not have a physical address that is identifiable to any internal or external device, and is thus invisible and not available for direct attack.” Ans. 10, (citing Spec. at ¶¶ [0006]–[0007], emphasis added). Appeal 2010-006559 Application 10/687,413 6 Appellant’s argument that their claimed invention operates without having any address associated with the networked security device (i.e., physical address or network address) is not persuasive, particularly given Appellant’s disclosure cited by the Examiner. Thus, as set forth by the Examiner, we find that Wexler’s disclosure of a transparent proxy server that is invisible to internal and external devices discloses the limitations of claim 1. Therefore, we sustain the Examiner’s rejection of claims 1-8, 11-16, and 28-30. CONCLUSIONS Appellant has not established that the Examiner erred with respect to the anticipation rejection of claims 1-8, 11-16, and 28-30 under 35 U.S.C. § 102(e) over Wexler, and the rejection is sustained. DECISION The decision of the Examiner to reject claims 1-8, 11-16, and 28-30 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)(1)(iv) (2010). AFFIRMED kis