Ex Parte Ishijima

Patent Trial and Appeal Board

Apr 25, 2013

10970479 (P.T.A.B. Apr. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YOSHIHIRO ISHIJIMA

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Appeal 2010-010966
Application 10/970,479
Technology Center 2400
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Before MAHSHID D. SAADAT, KRISTEN L. DROESCH, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

BRADEN, Administrative Patent Judge

DECISION ON APPEAL

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This is an appeal1 under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 3-6, 8-11, 13-17, and 19-24.2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to passing data packets, which include
meta-data, from a first network to a second network at a kernel level based
on the meta-data. (Spec. [00008].)

Exemplary Claims
Claims 1 and 6 are representative of the invention, and are reproduced
below with disputed limitations in italics:
1. A method for passing a data packet from a first network to a second
network at a kernel level, the data packet comprising a meta-data and
a payload, the method comprising:

receiving the data packet from a first network interface;

storing the data packet in a kernel-space buffer;

providing the meta-data but not the payload to an application
executing in user space;

determining, by the application, whether the data packet is to be
forwarded to the second network, based on the provided meta-data;
and

1 The Real Party-in-Interest is Hewlett-Packard Development Company.
2 Claims 2, 7, 12, and 18 are cancelled.
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directing the data packet from the kernel-space buffer to a second
network interface responsive to the determination by the application
that the data packet is to be forwarded to the second network.

6. A network processor comprising;

one or more processors;

first network interface configured to enable a processor to
communicate with a first data network;

second network interface configured to enable a processor to
communicate with a second data network;

one or more instruction sequences stored in a memory including;
protocol stack that, when a first instantiation of which is
executed by the processor, minimally causes the processor to
receive a data packet from the first network interface and that,
when a second instantiation of which is executed by the
processor, minimally causes the processor to convey a data
packet to the second network interface;

receive-send module that, when executed by the processor,
minimally causes the processor to:

accept a data packet from a first executing instantiation
of the protocol stack so as to receive a data packet into a kernel-
level buffer; and

direct the data packet from the kernel-level buffer to a
second executing instantiation of the protocol stack when
the data packet is to be passed to a second data network.

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Examiner’s Rejections
1. Claims 1, 16, 22, and 24 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement. (Ans.
3.)
2. Claims 1, 16, 22, and 24 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the
invention. (Ans. 4.)
3. Claims 1, 3-6, 9-11, 14-17, and 19-24 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Ylonen (Pub No. 2003/0110379 A1),
Liu (Pub No. 2002/0154635 A1), and Schwalm (Pub No. 2004/0111728
A1). (Ans. 5, 8.)
4. Claims 8 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ylonen, Liu, Schwalm, and Ouellet (Patent No.
6,854,031 B1). (Ans. 17.)

ISSUE 1
35 U.S.C. § 112, 1st Paragraph,
Rejection of Claims: 1, 16, 22, and 24
We are persuaded by Appellant’s arguments (App. Br. 6-7) that the
Specification enables a person of ordinary skill in the art on how to
“provid[e] the meta-data but not the payload to an application executing in
user space,” and therefore, we disagree with the Examiner’s findings.
The Examiner finds that Appellant’s Specification fails to enable one
skilled in the art to make and/or use the invention, including “providing the
meta-data but not the payload to an application executing in user space.”
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The Examiner appears to make this finding because the Specification does
not use the exact language of providing meta-data but not providing the
payload to an application. (See Ans. 3, emphasis added.)
However, as pointed out by Appellant (App. Br. 6), the Specification
teaches that: (i) a data packet includes metadata and a data payload (Spec., ¶
[00019]); and (ii) that the data packet and metadata associated with the data
packet are stored in a kernel level buffer (Spec., ¶¶ [00007], [00019]). The
Specification also teaches that the metadata is extracted from the kernel-
level buffer, and that an application executing in application space receives
the metadata and uses it to make a determination as to whether or not the
data packet associated with a meta-data that it receives needs to be directed
to a second data network 120. (App Br. 6, emphasis in original; Spec., ¶¶
[00013] [00022], see also Spec., ¶ [00012].) The Specification further
teaches: (1) the meta-data associated with the data packet is extracted from
the kernel-level buffer; and (2) the use of a protocol stack for the extraction
205 [Fig. 7] of a meta-data 175 from a data packet 170 stored in the kernel-
level buffer. (Spec., ¶¶ [00013], [00022], Fig. 7.) Yet, based on our
reading, the Specification does not teach extraction of the payload data from
the packet.
Therefore, we disagree with the Examiner that the Specification
fails to enable “providing the meta-data but not the payload to an
application executing in user space.” Accordingly, we do not sustain the
rejection of independent claim 1 under 35 U.S.C. § 112, first paragraph.
Claims 16, 22, and 24 recite similar limitations to those discussed with
respect to independent claim 1. Therefore, we do not sustain the
rejection of claims 16, 22, and 24 under 35 U.S.C. § 112, first paragraph.
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ISSUE 2
35 U.S.C. § 112, 2nd Paragraph,
Rejection of Claims: 1, 6, 11, 16, 22, and 243
We are persuaded by Appellant’s arguments (App. Br. 7-8) that the
limitation “providing the meta-data but not the payload to an application
executing in user space,” recited in claim 1 is definite. The Examiner finds
that the claims and the Specification do not teach how to separate the
metadata and the payload and, thus, the claims are indefinite. (Ans. 21.)
However, as discussed above, the Specification discloses how to provide the
meta-data but not the payload to an application, because the Specification
teaches the use of a protocol stack for the extraction 205 [Fig. 7] of a meta-
data 175 from a data packet 170 stored in the kernel-level buffer. (Spec., ¶
[00022], Fig. 7.) Therefore, we disagree with the Examiner’s findings that
claim 1 is indefinite. Accordingly, we do not sustain the rejection of
independent claim 1 under 35 U.S.C. § 112, second paragraph. Claims 16,
22, and 24 recite similar limitations to those discussed with respect to
independent claim 1. Therefore, we do not sustain the rejection of claims
16, 22, and 24 under 35 U.S.C. § 112, second paragraph.
As to independent claims 6 and 11, the Examiner finds that the phrase
“minimally” renders the claim indefinite, because it is unclear whether the
limitation(s) following the phrase are part of the claimed invention. (Ans.
4.) As pointed out by Appellant, the Specification demonstrates that the
phrase “minimally causes the processor” serves as an open ended

3 Claims 6 and 11 were not listed in the statement of the rejection, but the
limitations of claims 6 and 11 were substantively addressed. Therefore, we
treat claims 6 and 11 as rejected under 35 U.S.C. § 112, 2nd Paragraph.
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enumeration of functions, where a particular functional process causes a
processor to perform functions in addition to those defined in the claims.
(App. Br. 8, citing Spec., ¶ [0017].) Thus, reading the claims in light of the
Specification, it is readily apparent that the phrase “minimally,” means “at a
minimum.” Accordingly, we do not sustain the rejection of independent
claims 6 and 11 under 35 U.S.C. § 112, second paragraph.

ISSUE 3
35 U.S.C. § 103(a) Rejection of Claims: 1, 3-5, 16, 17, and 19-24
Appellant contends that the claim limitation “providing the meta-data
but not the payload to an application executing in user space,” recited in
independent claims 1 and 16 is not taught or suggested in the combination of
Schwalm with Ylonen and Liu. (App. Br. 14.) According to Appellant,
Schwalm may appear to disclose providing metadata to a client module upon
the client’s request (e.g., FIG. 5) and a client module executes in user space,
but Schwalm fails to teach providing meta-data to an application stored in
kernel space as required by claim 1. (App. Br. 15.) Appellant then contends
that Schwalm also fails to teach “providing the meta-data but not the
payload.” (Id.) According to Appellant, Schwalm does not even mention
payload, much less specifically teach excluding the payload from that which
is provided to an application. (App. Br. 15.)
We are unpersuaded by Appellant’s contentions, because the
Examiner finds that Schwalm describes (i) determining whether the
metadata object specified in the receive request is stored in the cache
memory (¶ [0068]) and (ii) executing the metadata object specified in the
request custom definition table (¶¶ [0063]-[0064]). (Ans. 24, citing
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Schwalm, Figs. 6-8 and ¶¶ [0062]–[0072].) According to the Examiner,
Schwalm meets the disputed claim limitation, because a software module
(112, 114, and 116) requesting that the ObjectStore component 110 provide
metadata object is equivalent to providing the metadata to an application
executing in user space. (Ans. 24, citing Schwalm, ¶ [0064].) The
Examiner makes this finding in light of Appellant’s Specification, which
discloses that, “the meta-data associated with the data packet is extracted
from a kernel-level [buffer]. . .whether or not the data packet is to be
forwarded to the second data network.” (Ans. 24, citing Spec.,
¶ [0013].) We agree with the Examiner. Thus, Appellant has not persuaded
us the Examiner erred in finding the combination of Schwalm, Liu, and
Ylonen teaches the claim limitation, as recited in independent claim 1.
Appellant has not presented substantially different arguments for
independent claim 16, which recites similar limitations as claim 1.
Accordingly, we sustain the rejection of independent claim 16 under
35 U.S.C. § 103(a). Similarly, Appellant has not presented substantive
arguments separately addressing dependent claims 3-5, 17, and 19-24, thus,
these claims fall with their respective independent claims. Therefore, we
sustain the rejection of claims 1, 3-5, 16-17, and 19-24 under 35 U.S.C.
§ 103(a).

ISSUE 4
35 U.S.C. 103(a) Rejection of Claims: 1, 3-5, 16, 17, and 19-24
Appellant contends that the claim limitation “determining, by the
application, whether the data packet is to be forwarded to the second
network, based on the provided meta-data” is not taught or suggested in the
combination of Ylonen and Liu. (App. Br. 15.) We are unpersuaded by
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Appellant’s argument (App. Br. 15-16) that Ylonen, in view of Liu and
Schwalm, fails to teach or suggest the disputed claim limitation. (App. Br.
15.) Appellant first contends that Liu fails to teach the disputed claim
element, because Liu teaches that a decision to forward a data packet to a
second network is based on data in the packet: “The computer then
determines from data in the packet whether the packet is destined for the
second private network” (¶ [0039]). (Id.) According to Appellant, a
forwarding determination based on the general teaching of “data in the
packet” is not the same as the specific feature recited in claim 1, namely
“based on the provided metadata.” (App. Br. 15-16.)
However, the Examiner finds that Liu discloses that from data in the
packet, it is determined (i) whether a packet is destined for a second
network, and (ii) what address the packet should be sent to. (Ans. 24-25,
citing Liu, ¶¶ [0022]-[0023], [0039]-[0040].) According to the Examiner,
the teaching in Liu is equivalent to determining whether the data packet is to
be forwarded to the second network based on the provided metadata. (Id.)
The Examiner’s finding is supported in the disclosure of Appellant’s
Specification that teaches the data packet is made of both meta-data and
payload data. (See Spec., ¶ [0019]). Thus, we agree with the Examiner’s
finding that Liu teaches the disputed claim limitation.
Appellant then contends that Ylonen does not specify that the
forwarding determination is done by an application as required by claim 1.
(App. Br. 16.) However, the Examiner cites to Lui for the disclosure of a
method of determining whether or not to the direct the packet to the second
network based on the data in the packet. (Ans. 24-25, citing Lui, ¶¶ [0022-
0023], [0039-0040].) We agree with the Examiner’s findings and
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conclusions. Thus, Appellant has not persuaded us the Examiner erred in
finding that the combination of Ylonen, Liu, and Schwalm teaches the
invention, as recited in independent claim 1.
Appellant has not presented substantially different arguments for
independent claim 16, which requires similar limitations as claim 1.
Accordingly, we sustain the rejection of independent claim 16 under
35 U.S.C. § 103(a). Similarly, Appellant has not presented substantive
arguments addressing the limitations of dependent claims 3-5, 17, and 19-24,
thus, these claims fall with their respective independent claims. Therefore,
we sustain the rejection of claims 1, 3-5, 16, 17, and 19-24 under 35 U.S.C.
§ 103(a).

ISSUE 5
35 U.S.C. § 103(a) Rejection of Claims: 6, 9-11, 14 and 15
We are unpersuaded by Appellant’s arguments (App. Br. 9-11) that
Ylonen, Liu, and Schwalm fails to teach or suggest the limitation “protocol
stack that, when a first instantiation of which is executed by the processor,
minimally causes the processor to receive a data packet from the first
network interface and that, when a second instantiation of which is executed
by the processor, minimally causes the processor to convey a data packet to
the second network interface,” as recited in claim 6.
Appellant first contends that Ylonen fails to describe a protocol stack.
According to Appellant, neither the kernel-mode packet processor, nor the
user-mode application gateway shown in Ylonen’s Figure 3, Figure 6A,
Figure 8A, or Figure 8B are described as a protocol stack. (App. Br.
10.) However, the Examiner finds that Ylonen meets the disputed claim
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limitation, because Ylonen discloses performing the packet-filtering firewall
through the protocol sources for receiving packets that come through the
firewall device and convey both packets and additional signaling
information. (Ans. 22, citing Ylonen, ¶¶ [0043], [0046]; Figs. 3, 6A, 8A,
and 8B.) We agree with the Examiner, because contrary to Appellant’s
contentions, the combination of the packet processor and the user-mode
application gateway taught by Ylonen corresponds to a protocol stack since
a protocol stack includes a suite of protocols with software to implement the
protocols.
Appellant then contends that even if the combination of the packet
processor and the user-mode application gateway could properly correspond
to a protocol stack, it would be merely a single instantiation, not two
instantiation as required by claim 6. (App. Br. 10.) Appellant dismisses the
disclosure in Ylonen, paragraphs [0043] and [0046], because the “mention
[of] the packet processor and the user-mode application gateway” are not
equivalent to the claimed instantiation feature. (Id.) However, the Examiner
finds that Ylonen’s teachings in Figures 8A and 8B of a method of
conveying packets from a 1st network to 2nd network through kernel mode
is equivalent to a method of conveying a data packet to a second network
interface, thereby meeting the disputed claim limitation. (Ans. 22.)
Appellant’s contentions also fail because Ylonen specifically teaches
that the packet processor part 110 receives (¶ [0043]) and can redirect (¶
[0044]) data packets. Thereby Ylonen’s teachings indicate that the packet
processor part 110 can perform two instantiations (i.e., it can run two
processes) as required by claim 6. Thus, we agree with the Examiner’s
findings and conclusions.
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Appellant further contends that Examiner has not made a prima facie
case for combining Ylonen, Liu, and Schwalm. According to Appellant, the
Examiner’s allegation that the motivation “to enable users to use the
resources of their private network in secure and robust manners” is nothing
more than a feature or advantage of the second reference, and is not actually
a motivation to combine the references. (App. Br. 10-11.) However,
Appellant’s argument is premised on the teaching, suggestion, motivation
test, which is no longer required. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 415 (2007). Additionally, Appellant’s argument against the
combination is unsupported by objective evidence. In light of the
Examiner’s sufficiently articulated reasoning for combing the references
supported by a rational underpinning (Ans. 26.) as quoted above, we agree
with the Examiner. Thus, Appellant has not persuaded us the Examiner
erred in finding that the combination of Ylonen, Liu, and Schwalm discloses
the claim limitation, as recited in independent claim 6.
Appellant has not presented substantially different arguments for
independent claim 11, which recites similar claim limitations as claim 6.
Accordingly, we sustain the rejection of independent claim 11 under
35 U.S.C. § 103(a). Similarly, Appellant has not presented substantive
arguments addressing the limitations of dependent claims 9, 10, 14, and 15,
thus, these claims fall with their respective independent claims. Therefore,
we sustain the rejection of claims 6, 9-11, 14, and 15 under 35 U.S.C.
§ 103(a).

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ISSUE 6
35 U.S.C. 103(a) Rejection of Claims: 8 and 13
Appellants have not substantively argued the limitations of claims 8
and 13. (App. Br. 19-20.) The arguments presented by Appellant are
unpersuasive for the same reasons as discussed above regarding claims 6 and
11. Accordingly, we sustain the rejection of claims 8 and 13 under 35
U.S.C. § 103(a).

DECISION
The Examiner’s decision to reject claims 1, 16, 22, and 24 under §
112, 1st paragraph and claims 1, 6, 11, 16, 22 and 24 under § 112, 2nd
paragraph is reversed. The Examiner’s decision to reject claims 1, 3-6, 8-11,
13-17, and 19-24 under § 103(a) is affirmed. Since we have affirmed at
least one ground of rejection with respect to each claim on appeal, the
Examiner's decision to reject claims 1, 3-6, 8-11, 13-17, and 19-24 is
affirmed. See 37 C.F.R. § 41.50(a)(1).
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).

AFFIRMED

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