Ex Parte Chokshi et al

Patent Trial and Appeal BoardApr 20, 2016

12910140 (P.T.A.B. Apr. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/910,140 10/22/2010 35525 7590 04/22/2016 IBM CORP (YA) C/O YEE & AS SOCIA TES PC P.O. BOX 802333 DALLAS, TX 75380 FIRST NAMED INVENTOR ShaivalJ. Chokshi 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. AUS920100397US1 7425 EXAMINER AMBA YE, SAMUEL ART UNIT PAPER NUMBER 2433 NOTIFICATION DATE DELIVERY MODE 04/22/2016 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): ptonotifs@yeeiplaw.com mgamez@yeeiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHAIV AL J. CHOKSHI, XIAOHAN QIN, and RAKESH SHARMA Appeal2014-005162 Application 12/910, 140 Technology Center 2400 Before JOHNNY A. KUMAR, CATHERINE SHIANG, and JOYCE CRAIG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1-24. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. STATEMENT OF THE CASE According to the Specification, the present invention relates to securing computer systems from network communication attacks. See generally Spec. 1. Claim 1 is exemplary: 1. A method of enabling secure network communications with logical partitions, which comprises: Appeal2014-005162 Application 12/910, 140 receiving a packet at a gateway between a physical network adapter and at least one virtual network adapter; tagging said packet, by the gateway, with an indication of an origin of said packet; delivering, by the gateway, said tagged packet to an intrusion prevention system; receiving, by the gateway, said tagged packet from said intrusion prevention system; and, forwarding, by the gateway, said tagged packet received from said intrusion prevention system according to said indication of origin of said tagged packet. References and Rejection Claims 1-24 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Goyal (US 7,562,389 Bl, issued July 14, 2009) and Brown (US 2006/0123204 Al, published June 8, 2006). ANALYSIS We have reviewed Appellants' arguments in the Briefs, the Examiner's rejection, the Examiner's response to Appellants' arguments, and the evidence of record. We concur with Appellants' conclusion that the Examiner erred in finding Goyal and Brown collectively teach "forwarding, by the gateway, said tagged packet received from said intrusion prevention system according to said indication of origin of said tagged packet," as recited in independent claim 1 (emphasis added). 1 See App. Br. 19-21. The Examiner finds: Goyal in col. 3, lines 37-43 teaches Security conditions 120 are policies that determine whether a packet may be forwarded from external network 104 to protected network 106. In one 1 Appellants raise additional arguments. Because the identified issue is dispositive of the appeal, we do not reach the additional arguments. 2 Appeal2014-005162 Application 12/910, 140 embodiment, a security condition 120 comprises an attack signature, i.e., a pattern of information that indicates that an incoming packet represents a hostile action directed at protected network 106, but silent on forwarding by the gateway said tagged packet; [citing Brown for forwarding by the gateway said tagged packet] (emphasis added). Final Act. 6-7 (emphasis added); see also Ans. 10. Therefore, the Examiner maps the claim element "according to said indication of origin of said tagged packet " to Goyal' s according to security conditions 120. See Final Act. 6-7; Ans. 10. However, the Examiner's mapping is contradictory to the existing mapping, as the Examiner has already mapped Goyal's first VLAN [virtual local area network] identifier- not Goyal's security conditions 120-to the claimed "indication of origin of said tagged packet." See Final Act. 4. It is unreasonable to map the same claim element to Goyal' s two separate and different entities in order to read on the claim. Further, the Examiner does not provide sufficient evidence or reasonable explanation to sho\'l/ ho\'l/ the cited references collectively teach "forwarding, by the gateway, said tagged packet received from said intrusion prevention system according to said indication of origin of said tagged packet," (emphasis added), when the italicized claim element is correctly mapped to Goyal's first VLAN identifier. As a result, the Examiner fails to adequately show Goyal and Brown collectively teach the italicized claim limitation, as required by claim 1. Because the Examiner fails to provide sufficient evidence or explanation to support the rejection, we are constrained by the record to reverse the Examiner's rejection of claim 1, and corresponding dependent claims 2-8 for similar reasons. 3 Appeal2014-005162 Application 12/910, 140 Independent claim 9 and 17 recite limitations that are substantively the same as the disputed claim limitations of claim 1. See claims 9 and 17. Therefore, for similar reasons discussed above with respect to claim 1, we do not sustain the Examiner's rejection of independent claims 9 and 17, and corresponding dependent claims 10-16 and 18-24. DECISION We reverse the Examiner's decision rejecting claims 1-24. REVERSED 4