Ex Parte Cho

Patent Trial and Appeal BoardApr 19, 2016

11705067 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111705,067 02/12/2007 58027 7590 04/21/2016 RC PARK & ASSOCIATES, PLC 1894 PRESTON WHITE DRIVE RESTON, VA 20191 FIRST NAMED INVENTOR Soung-Su Cho 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 ATTORNEY DOCKET NO. CONFIRMATION NO. P3288USOO 5398 EXAMINER DAVIS, ZACHARY A ART UNIT PAPER NUMBER 2492 NOTIFICATION DATE DELIVERY MODE 04/21/2016 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): PATENT@PARK-LAW.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SOUNG-SU CHO Appeal2014-003854 Application 11/705,067 Technology Center 2400 Before CARL W. WHITEHEAD JR., DANIEL N. FISHMAN, and NABEEL U. KHAN, Administrative Patent Judges. KHAN, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-3, 5-11, 13, 14, and 17-19, which constitute all the claims pending in this application. App. Br. 3. Claims 4, 12, 15, and 16 have been cancelled. App. Br. 24--28. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 According to the Appellant, the real party in interest is Samsung Electronics Co. Ltd. App. Br. 3. Appeal2014-003854 Application 11/705,067 THE INVENTION Appellant's invention relates to an apparatus and method for performing dynamic security in an Internet Protocol (IP) system, and more particularly, to an apparatus and method for performing dynamic security in an IP system that is capable of implementing more dynamic access to a specific resource when Network Address Translation (NAT) or a firewall function is provided in the IP system. Spec. i-f 2. Exemplary independent claim 1 is reproduced below. 1. A server computer to perform dynamic security in an Internet Protocol (IP) system, the server computer comprising: a resource pool to store authentication information and resource information on a resource related to IP services; and a security module processor, coupled to the resource pool, to receive a request to use the resource related to the IP services, to determine if the resource information is stored in the resource pool in response to receiving the request to use the resource, to request address translation in response to determining that the resource information is stored in the resource pool, to request resource reservation for the address translation or operation of a firewall, and to request interruption of use of the resource when use of the IP services is terminated, wherein the security module processor is configured to perform a process of authenticating the requested resource using an authentication method and an authentication key, and to store information on the authenticated resource in the resource pool. REFERENCES and REJECTIONS 1. Claims 9-11, 13, 14, and 17-19 stand rejected under 35 U.S.C. Â§ 112, second paragraph as indefinite. 2. Claims 1-3, 5-11, 13, 14, and 17-19 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Li et al. (US 7,380,011 B2; May 27, 2 Appeal2014-003854 Application 11/705,067 2008) ("Li"), Kung et al. (US 7,760,711 Bl; July 20, 2010) ("Kung"), and Sastry et al. (US 7,721,322 B2; May 18, 2010) ("Sastry"). ANALYSIS I. Section 112, second paragraph Rejection A. Claim 9 The Examiner finds the claim 9 limitations "a Network Address Translation (NAT) module to receive a request ... and to perform address translation" and "a firewall module to receive a request ... and to perform packet forwarding" are means-plus-function limitations that invoke 35 U.S.C. Â§ 112, sixth paragraph. Final Act. 7. The Examiner further finds that the written description fails to disclose the corresponding structure, material, or acts for the associated functions of the above two modules and that, therefore, claim 9 is indefinite under 35 U.S.C. Â§ 112, second paragraph. See Final Act. 6-7. Appellant argues "since Appellant's claim 9 does not recite the phrases 'means for' or 'step for', there should be a strong presumption that Â§ 112, i-f 6 does not apply." App. Br. 13; see also App. Br. 8-10 (citing Flo Healthcare v. Kappas and Rioux Vision, 697 F.3d 1367 (Fed. Cir. 2012) and Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004) for the proposition that the presumption flowing from the absence of the term "means" is a strong one that is not readily overcome.). Moreover, Appellant argues "'module' ... has been frequently recognized in the art, and, in particular in the telecommunications field, as a term that denotes sufficient structure." App. Br. 13. According to the Appellant "[a] 'NAT 3 Appeal2014-003854 Application 11/705,067 module' and 'firewall module', as recited in claim 9, would similarly connote sufficient structure, and may, for example, be understood by a PH OSIT A as referring to any class of hardware and/ or software components .... " App. Br. 14. We are unpersuaded by Appellant's arguments. In a recent en bane decision, the Federal Circuit addressed the standard under whichÂ§ 112, sixth paragraph applies to a claim. Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015). "The use of the word 'means' in a claim element creates a rebuttable presumption that Â§ 112, para. 6 applies ... [while] the failure to use the word 'means' ... creates a rebuttable presumption ... that Â§ 112, para. 6 does not apply." Id. at 1348. In some of its previous decisions, including the decisions relied upon by the Appellant, the Federal Circuit characterized the presumption thatÂ§ 112, sixth paragraph does not apply to a limitation lacking the word "means" as "strong." See Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004); see also, Flo Healthcare v. Kappas and Rioux Vision, 697 F.3d 1367, 1374 (Fed. Cir. 2012). In Williamson, however, the Federal Circuit expressly overruled such a heightened burden and concluded that characterizing this presumption as 'strong' is unjustified. Williamson at 1349. Instead, "[t]he standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure." Id. at 1349. As in Williamson, the limitations at issue here are written in traditional means-plus-function form except with the word "means" replaced by "module." "'Module' is a well-known nonce word that can operate as a substitute for 'means' in the context ofÂ§ 112, para. 6." Id. at 1350. "[T]he 4 Appeal2014-003854 Application 11/705,067 word 'module' does not provide any indication of structure because it sets forth the same black box recitation of structure for providing the same specified functions if the term 'means' had been used." Id. And as the Examiner finds, the terms "Network Address Translation" and "firewall" also do not describe sufficient structure because they "only describe functionality in addition to the claimed functions of receiving requests and performing address translation or packet forwarding." Ans. 4. Finally, Appellant's argument that a person of ordinary skill in the art would understand a NAT module or firewall module as referring to "any class of hardware and/or software components," (App. Br. 14), only serves to emphasize that the terms are simply generic terms that do not connote sufficient structure. For these reasons, we conclude that the NAT module and firewall module limitations fail to recite sufficiently definite structure and that, therefore, the presumption against invokingÂ§ 112, sixth paragraph is rebutted. Because the claim limitations invoke Â§ 112, sixth paragraph, the specification must disclose sufficient structure that corresponds to the claimed function, otherwise the means-plus-function limitation is deemed indefinite under 35 U.S.C. Â§ 112, second paragraph. Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012). For computer-implemented inventions, such disclosure must include an algorithm for performing the claimed functions. Aristocrat Techs. Aust!. Pty Ltd. V. Int 'l Game Tech., 521F.3d1328, 1333 (Fed. Cir 2008). The Examiner finds, and we agree, that such an algorithm, or any such corresponding structure, is not disclosed in the specification. Ans. 5. Moreover, Appellant does not present evidence rebutting the Examiner's findings that such structure (in the form of an 5 Appeal2014-003854 Application 11/705,067 algorithm or otherwise) is not found in the specification, and instead relies on the terms "NAT module" and "firewall module" themselves to impart the required structure. See App. Br. 16. Because we agree that the NAT module and firewall module limitations invokeÂ§ 112, sixth paragraph and that Appellant's specification does not disclose the requisite structure corresponding to the claimed functions, we sustain the Examiner's rejection of claim 9 as indefinite under Â§ 112, second paragraph. We also sustain the Examiner's rejection of claims 10 and 11, which depend from claim 9. B. Claims 13 and 19 Claims 13 and 19 recite "performing a process of authenticating the requested resource using an authentication method and an authentication key with respect to the resource." App. Br. 27 and 29 (Claims App'x). The Examiner finds the claims indefinite because of the phrase "with respect to the resource." Ans. 6. In particular, the Examiner finds that claim 9 includes a similar limitation but without the addition of the phrase "with respect to the resource" and, therefore, that phrase must indicate that the two limitations must not have identical scope. Ans. 6. The Examiner finds "because the claim limitations already recite 'performing a process of authenticating the requested resource', it is not clear what additional limitation on this authentication the addition of the phrase 'with respect to the resource' places on the process of authentication." Ans. 6. Because authentication of the requested resource is already recited in the claim the Examiner finds the phrase "'with respect to the resource' is either redundant or is otherwise missing further language to clarify the manner in which the 6 Appeal2014-003854 Application 11/705,067 phrase 'with respect to the resource' is intended to further limit the claims." Ans. 6-7. Appellant argues the Specification provides an explanation of the authentication method. Further, the Appellant argues there is no requirement to recite how the authentication method and key are used with respect to the resource as long as a person of ordinary skill in the art understands the bounds of the claims, (App. Br. 16), nor is there a requirement to indicate what the claim limitation is intended to add, (App. Br. 17). We agree with Appellant and are persuaded of error. The claim limitations are fairly clear on their face, indicating that an authentication method and authentication key are used in relation to the resource that is being authenticated. Although there may be some amount of redundancy between phrases and terms within the claim, this does not render the claim indefinite. Accordingly we do not sustain the Examiner's rejection of claims 13 and 19 as indefinite. We also do not sustain the rejection of claims 14, 17, and 18, which were rejected based on their dependence from claim 13. Final Act. 9. II. Section 103(a) Rejection Appellant argues2 Kung does not teach or suggest "to determine if the resource information is stored in the resource pool in response to receiving the request to use the resource." App. Br. 19. 2 Appellant argues, for the first time in the Reply Brief, that "Sastry fails to supply the claimed, 'wherein the security module processor is configured to perform a process of authenticating the requested using an authentication 7 Appeal2014-003854 Application 11/705,067 The Examiner finds Kung teaches this limitation by disclosing a call manager that polls a broadband residential gateway for terminal configuration information to determine whether adequate resources are available to carry out a call. Ans. 8 (citing Kung 13:30-36, 28:66-29:23, and 31 :48---62). Appellant argues "[a] PHOSITA can readily appreciate that determining whether resources are available by comparing requirements or polling BR Gs does not teach or suggest determining if resource information is stored in a resource pool." App. Br. 19. According to the Appellant, "polling a BRG for configuration information relies on the inherent assumption that the configuration information is stored in the device being polled, and one would not have to determine whether the configuration information is stored in the device being polled." App. Br. 20. Appellant further argues that "[i]nformation regarding the bandwidth or networking conditions does not have to be stored, rather the available real-time conditions may just be checked to see if a call can be completed." App. Br. 20. Finally, Appellant argues that "even if Kung disclosed 'to determine if the resource information is stored in the resource pool' ... Kung still does not teach that the determination is done 'in response to receiving the request to use the resource."' App. Br. 21. method and an authentication key, and to store information on the authenticated resource in the resource pool."' Reply Br. 4--5. Because this argument was not made in the Appeal Brief, we deem this argument waived. See 37 CPR Â§ 41.41 (b )(2)(2012) ("Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown."). 8 Appeal2014-003854 Application 11/705,067 We are unpersuaded by Appellant's arguments. We agree with and adopt as our own the Examiner's findings of facts and conclusions as set forth in the Answer (on pages 7-12) and in the Action from which this appeal was taken (on pages 9-11). In particular, we agree with the Examiner "that determining whether adequate network resources are available ... requires determining whether information regarding those resources is in the resource pool." Ans. 10. We also agree with the Examiner that "by determining whether the resources are available it is checked whether the information describing those resources is in the pool, corresponding to the claimed limitation of determining if resource information is stored." Id. Appellant's argument that Kung' s resource information could be checked in real-time, rather than be stored, is unpersuasive. Kung teaches that terminal configuration information is retrieved from the BRG (Kung 29:8-12 and 31 :25-28) which indicates that this information is indeed stored rather than calculated in real-time. As to Appellant's argument that Kung does not teach that the determination is done "in response to receiving the request to use the resource," we agree with the Examiner that polling the BRG for configuration information is done in response to a request to add a party to a call and, thus, "in response to receiving a request to use the resource." Ans. 12 (citing Kung 13:30-36 and 31:37--47). Accordingly, we sustain the Examiner's rejection of claim 1. Appellant does not present any additional arguments for independent claims 9, 13, and 19, (App. Br. 22-23) and does not separately argue dependent 9 Appeal2014-003854 Application 11/705,067 claims 2, 3, 5-8, 10, 11, 14, 17, and 18, (App. Br. 22-23). Accordingly, we also sustain the Examiner's rejection of these claims. DECISION The Examiner's rejection of claims 9-11 under 35 U.S.C. Â§ 112, second paragraph is affirmed. The Examiner's rejection of claims 13, 14, and 17-19 under 35 U.S.C. Â§ 112, second paragraph is reversed. The Examiner's rejection of claims 1-3, 5-11, 13, 14, and 17-19 under 35 U.S.C. Â§ 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended. See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 10