Ex Parte IOFFE et al

Patent Trial and Appeal BoardFeb 10, 2016

13015356 (P.T.A.B. Feb. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/015,356 01127/2011 NickIOFFE 56436 7590 02/12/2016 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 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. 82275635 2466 EXAMINER SHIH, ALBERT K ART UNIT PAPER NUMBER 2411 NOTIFICATION DATE DELIVERY MODE 02/12/2016 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): hpe.ip.mail@hpe.com mkraft@hpe.com chris.mania@hpe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NICK IOFFE, EY AL KENIGSBERG, MICHAEL GOPSHTEIN, and ROTEM STEUER Appeal2014-003641 Application 13/015,356 Technology Center 2400 Before DEBRA K. STEPHENS, KEVIN C. TROCK, and JESSICA C. KAISER, Administrative Patent Judges. KAISER, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) the Examiner's final rejection of claims 1---6, 8-13, 15-19, 21, and 22, which constitute all the claims pending in this application. (App. Br. 4.) Claims 7, 14, and 20 have been previously cancelled. (Id.) We have jurisdiction under 35 U.S.C. Â§ 6(b) over the pending claims. We affirm-in-part and enter new grounds of rejection under 37 C.F.R. Â§ 41.50(b). 1 According to Appellants, the real party in interest is Hewlett-Packard Development Company, LP. (App. Br. 2.) Appeal2014-003641 Application 13/015,356 EXEMPLARY CLAIM Claim 1 is exemplary and is reproduced below with disputed limitations italicized: 1. A method for discovering an operating system of a remote machine, the method comprising: monitoring network communications to detect a plurality of data packets that were generated by the remote machine; reading the contents of each data packet of said plurality of data packets so as to extract a packet signature of each data packet; comparing each packet signature with at least one signature of a database of signatures in order to determine a similarity between each packet signature and said at least one signature; calculating a confidence level for at least one candidate operating system based on the determined similarities; and selecting an operating system of said at least one candidate operating system based on the confidence level for that operating system; wherein said at least one candidate operating system comprises a plurality of candidate operating systems, and wherein calculating the confidence level comprises normalizing the confidence level such that the confidence levels calculated for said plurality of candidate operating systems add up to a predetermined value. REJECTIONS The Examiner made the following rejections: Claims 1, 8, and 15 stand rejected under 35 U.S.C Â§ 112, second paragraph as being indefinite. (Final Act. 5-6.) Claims 1-6, 8-13, 15-19, 21, and 22 stand rejected under 35 U.S.C Â§ 103(a) as being obvious over the combination of Roesch (US 7,496,662 2 Appeal2014-003641 Application 13/015,356 Bl; issued Feb. 24, 2009) and Beddoe (US 7,519,954 Bl; issued Apr. 14, 2009). (Final Act. 6-23.) ISSUE The dispositive issue raised by Appellants' arguments and the Examiner's rejections is: Did the Examiner err in finding claims 1, 8, and 15 indefinite based on those claims' recitations of "at least one candidate operating system comprises a plurality of candidate operating systems" and "calculating a confidence level for at least one candidate operating system"? ANALYSIS Indefiniteness of Claims 1, 8, and 15 Claim 1 recites "calculating a confidence level for at least one candidate operating system," and then, further recites "wherein said at least one candidate operating system comprises a plurality of candidate operating systems." The Examiner finds the "wherein" recitation above is indefinite because it is unclear whether "at least one operating system" as modified by the "wherein" clause encompasses ( 1) a single operating system which is itself made up of multiple operating systems, (2) multiple operating systems, each of which are made up of multiple operating systems, or (3) simply a plurality of operating systems (i.e., a single operating system is excluded from the scope by the "wherein" clause). (See Ans. 26-27 .) The Examiner also finds "calculating a confidence level ... comprises normalizing the confidence level such that the confidence levels calculated for said plurality of candidate operating systems add up to a predetermined value," as further 3 Appeal2014-003641 Application 13/015,356 recited in claims 1, 8, and 15, is also indefinite because of the ambiguity in the plurality of candidate operating systems. (See id. at 28-29.) Appellants argue the claims are clear that "there must be a plurality of candidate operating systems" because the preamble of claim 1 recites a "method for discovering an operating system of a remote machine" which "necessarily implies there must be a plurality of candidate operating systems." (Reply Br. 3--4.) Appellants further argue the claims are clear that "each candidate operating system in the plurality has a corresponding confidence level that has been calculated" because the claim recites "confidence level~." (App. Br. 12; Reply Br. 4.) Appellants fail to persuade us that the Examiner'sÂ§ 112 rejection is in error. The Examiner finds, and we agree, the claims recite "at least one candidate operating system," meaning a single candidate operating system is within the scope of the claim (Ans. 26-27), but Appellants argue a competing interpretation where "there must be a plurality of candidate operating systems" (Reply Br. 3 (emphasis added)). This ambiguity in scope of the claim is not resolved by Appellants' argument which discusses the claims' preamble but does not address the ambiguities in the claim the Examiner identifies. (See id. at 4.) Additionally, we agree with the Examiner's finding that calculating a confidence level for an ambiguous number of candidate operating systems results in an ambiguous number of confidence levels being calculated. (See Ans. 28-29.) Indeed, Appellants confirm the ambiguity identified by the Examiner by arguing "[t]here may be circumstances in which a confidence level is not calculated for all candidates," but conversely arguing "each 4 Appeal2014-003641 Application 13/015,356 candidate operating system in the plurality has a corresponding confidence level that has been calculated." (Reply Br. 4 (emphases added).) As the Federal Circuit has recognized, "the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution." Halliburton Energy Servs., Inc. v. M-1 LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008); see also Ex parte Miyazaki, 89 USPQ 2d 1207, 1211 (BPAI 2008) (precedential) ("If a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring an applicant to more precisely define the metes and bounds of the invention by holding the claim unpatentable under 35 U.S.C. Â§ 112, second paragraph, as indefinite."). We agree with the Examiner that claims 1, 8, and 15 are indefinite, and Appellants have stated they are "not opposed to clarifying the claim." (App. Br. 12.). Therefore, we sustain the indefiniteness rejection under 35 U.S.C. Â§ 112, second paragraph. Obviousness The Examiner rejected independent claims 1, 8, and 15 as obvious over Roesch and Beddoe. Appellants argue Beddoe does not teach "normalizing the confidence level such that the confidence levels calculated for said plurality of candidate operating systems add up to a predetermined value," as recited in claim 1. (See App. Br. 13-16; Reply Br. 5-8.)2 2 We observe in passing that normalizing appears to be a known statistical technique used when comparing values and that known normalization techniques would appear to include adjusting values to be within a 5 Appeal2014-003641 Application 13/015,356 However, as discussed supra, we affirm the Examiner's indefiniteness rejection of claims 1, 8, and 15. To address the propriety of the obviousness rejection, we would be required to speculate as to the scope of those claims because the disputed issues in independent claims 1, 8, and 15 are directed to the indefinite subject matter regarding calculating confidence levels of candidate operating systems. We decline to speculate as to the scope of those claims. See In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) (it is improper to "rely[] on what at best are speculative assumptions as to the meaning of the claims" as the basis for a rejection). Accordingly, we reverse the Examiner's obviousness rejection of claims 1, 8, and 15 and the other dependent claims for which we enter new grounds as discussed below. New Grounds As discussed supra, we affirm the Examiner's indefiniteness rejection of claims 1, 8, and 15. While the Examiner does not reject claims 2-6, 9- 13, 16-19, 21, and 22, which depend directly or indirectly from claims 1, 8, or 15, under 35 U.S.C. Â§ 112, second paragraph, for being indefinite (see Final Act. 5---6), we find those dependent claims do not clarify the ambiguity inherited from their respective independent claims. Accordingly, we set forth new grounds of rejection under 35 U.S.C. Â§ 112, second paragraph, for dependent claims 2---6, 9-13, 16-19, 21, and 22. predetermined range (e.g., 0-1.0) and aligning their probability distributions (e.g., totaling up to a value of 1.0). 6 Appeal2014-003641 Application 13/015,356 DECISION The Examiner's decision to reject claims 1, 8, and 15 under 35 U.S.C. Â§ 112, second paragraph, is affirmed, and the Examiner's decision to reject claims 1-6, 8-13, 15-19, 21, and 22 under 35 U.S.C Â§ 103(a) is reversed. We enter new grounds of rejection of claims 2-6, 9-13, 16-19, 21, and 22 under 35 U.S.C. Â§ 112, second paragraph, pursuant to our authority under 37 C.F.R. Â§ 41.50(b). This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 41.50(b) (2010). 37 C.F.R. Â§ 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. Â§ 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same Record .... No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART; 37 C.F.R. Â§ 41.50(b) 7