Ex Parte 7,756,965 et al

Patent Trial and Appeal Board

Dec 19, 2013

90011761 (P.T.A.B. Dec. 19, 2013)

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.
90/011,761 06/27/2011 7,756,965 18156.0030.RX0000 2616
87916 7590 12/19/2013
2nd Reexam Group - Novak Druce + Quigg LLP
1000 Louisiana Street
Fifty-Third Floor
Houston, TX 77002
EXAMINER
RIMELL, SAMUEL G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/19/2013 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 BROCADE COMMUNICATIONS SYSTEMS, INC.
______________

Appeal 2013-009750
Reexamination Control No. 90/011,761
Patent 7,756,965 B21
Technology Center 3900
______________

Before JOHN C. MARTIN, JAMES T. MOORE,
and MAHSHID D. SAADAT, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(b) from the Examiner’s
rejection of original claims 1, 12, 13, 15, 17, and 18 of Patent 7,756,965 B2

1 Issued to inventor Prajakta S. Joshi on July 13, 2010, based on Application
12/353,701, filed January 14, 2009, as a continuation of Application 10/840,
496, filed May 6, 2004 (now Patent 7,496,651, issued February 24, 2009).
The Certificate of Correction, dated November 2, 2010, corrects the claims
on appeal by changing “Region” and “Geographic” in claim 12 to read
“region” and “geographic.”
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(referred to by Appellant as “Joshi” and hereinafter as the “’965 patent”),
which are all of the claims subject to reexamination in this ex parte
reexamination proceeding. Final Office Action (hereinafter “Final Action”),
mailed March 26, 2012, at 2.
Oral argument was heard on November 20, 2013.
We have jurisdiction under 35 U.S.C. §§ 6(b) and 306. We AFFIRM.

I. STATEMENT OF THE CASE
A. This Ex Parte Reexamination Proceeding
This ex parte reexamination proceeding was initiated by a
“REQUEST FOR EX PARTE REEXAMINATION” filed on June 27, 2011,
by Third-Party Requester A10 Networks, Inc. (hereinafter “A10 Networks”).
The sole reference relied on in the rejection on appeal is ServerIron2
(Request Ex. B), published by Foundry Networks, Inc. (hereinafter
“Foundry Networks”). Final Action 2. According to the sole inventor
named in the ’965 patent, Foundry Networks was acquired after 2002 by
Appellant Brocade Communications Systems, Inc. DECLARATION OF
PRAJAKTA S. JOSHI UNDER 37 C.F.R. 1.132 (hereinafter “Joshi
Supplemental Declaration”), executed August 16, 2012, at para. 3.3

2 “Foundry ServerIron Installation and Configuration Guide” (May 2000)
(784 pages), cited by Appellant as “Conf. Guide” (e.g., Br. 7).
3 This declaration, which was submitted with Appellant’s August 24, 2012,
ADVISORY ACTION RESPONSE, repeats and supplements the statements
(Continued on next page.)
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B. Related Litigation and Reexamination Proceedings
The ’965 patent is the subject of litigation styled: Brocade
Communications Systems, Inc. v. A10 Networks, Inc., Case No. 10-CV-
03428-LHK (N.D. Cal.) (hereinafter “the litigation”). PATENT OWNER’S
REPLACEMENT APPEAL BRIEF PURSUANT TO 37 C.F.R. § 41.37
(hereinafter “Brief”), filed November 26, 2012, at 4.
Appellant has identified twelve ex parte reexamination proceedings
and thirteen inter partes reexamination proceedings that “may be related to,
directly affect, or be directly affected by, or have a bearing on the Board’s
decision in the pending appeal.” Brief 2-3. The only one of these related
proceedings that involves the ’965 patent is Inter Partes Reexamination
Proceeding 95/001,827 (hereinafter “the inter partes proceeding”). Id. at 3,
item 13. USPTO records show that the inter partes proceeding was initiated
by a REQUEST FOR INTER PARTES REEXAMINATION filed by A10
Networks on November 18, 2011. A Right of Appeal Notice (RAN) issued
in the inter partes proceeding on September 18, 2013. The rejections set
forth therein include (at 4) a rejection of original claims 1-5, 8, 10, 11, 18-
21, and 23 for anticipation by ServerIron and (at 5) a rejection of claims 1-3,
6, and 18-20 for obviousness over ServerIron in view of “AAPA”
(Applicant’s Admitted Prior Art”). A petition4 by Patent Owner to terminate

in the DECLARATION OF PRAJAKTA S. JOSHI UNDER 37 C.F.R. 1.132
that was executed on May 7, 2012, and filed on May 25, 2012.
4 PATENT OWNER’S PETITION UNDER 37 C.F.R. § 1.182 TO
(Continued on next page.)
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the inter partes proceeding based on a final decision in the litigation was
dismissed in a USPTO decision mailed August 30, 2013.5

C. The Rejections
Claims 1, 12, 13, 15, 17, and 18 stand rejected under 35 U.S.C.
§ 102(b) for anticipation by ServerIron. Final Action 2-6.
Claim 13 additionally stands rejected under 35 U.S.C. § 103(a) for
obviousness over ServerIron. Id. at 7.
Appellant’s arguments against the anticipation rejection are limited to
the independent claims (i.e., claims 1, 12, and 18) and focus on the language
of claim 1. We accordingly treat the anticipation rejection of independent
claims 12 and 18 and dependent claims 13, 15, and 17 as standing or falling
with the anticipation rejection of parent claim 12.
The obviousness rejection of claim 13, which depends on claim 12, is
not separately addressed in the Brief or the Reply Brief.6 Appellant’s
arguments against this rejection of claim 13 presumably are the same as the
arguments against the anticipation rejection of claim 1.

TERMINATE THE REEXAMINATION PROCEEDINGS, filed July 10,
2013.
5 DECISION DISMISSING PETITION TO TERMINATE INTER PARTES
REEXAMINATION PROCEEDING.
6 PATENT OWNER’S REPLY BRIEF PURSUANT TO 37 C.F.R. § 41.41,
filed July 1, 2013.
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D. Representative Claim on Appeal
Claim 1, which is representative of the claims on appeal, reads as
follows:
1. (Original) A method, comprising:
storing first address prefix information and
corresponding first geographic region information;
storing second address prefix information and
corresponding second geographic region information; and
for network addresses that have first address prefix
information that matches the second address prefix information,
associating these network addresses to the second geographic
region information, which is different from said corresponding
first geographic region information.
’965 patent, col. 11.7

E. The Issues
The principal issue before us is how to interpret the following two
claim phrases: (i) “storing first address prefix information and
corresponding first geographic region information” and (ii) “storing second
address prefix information and corresponding second geographic region
information,” which appear in claims 1, 12, and 18. Appellant contends that
when the claims are given their broadest reasonable interpretation consistent

7 Claim 1 as reproduced in the Claims Appendix (Br. 23) lacks the
paragraph structure employed in the ’965 patent.
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with the disclosure of the ’965 patent, these claim phrases require that the
first/second “geographic region information” identify the geographic region
in which a device having an IP address with the first/second “address prefix
information” is “deemed to reside.” See Br. 13 (“[T]he geographic region
associated to or corresponding to an address prefix is a geographic region
where the device having the address prefix is deemed to reside.”)
Appellant also characterizes the last paragraph of claim 1 as
describing an override function. See Reply Br. 10-11 (“[T]he override
function described in the declaration of Joshi is clearly the ‘associating these
network addresses to the second geographic region information, which is
different from said corresponding first geographic region information’
recited by the
independent claims.” (emphasis omitted)). See also Br. 8 (“[C]laim 1, when
given its broadest reasonable interpretation in light of the specification, is
actually changing the geographic region that a device sending packets with
the claimed network address is perceived to be originating from or [to]
reside at.”) (emphasis added).
The Examiner disagrees with Appellant’s “override” and “deemed to
reside” interpretations (Advisory Action, mailed July 17, 2012, at 3, 7) and
finds that the claim language, when given its broadest reasonable
interpretation, thus reads on ServerIron’s “affinity” feature.
Appellant alternatively argues that the anticipation rejection is
improper even assuming the claim language need not be given Appellant’s
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“deemed to reside” and “override” interpretations. Br. 18-19. Specifically,
Appellant contends that ServerIron’s affinity feature associates a client IP
address with a switch (i.e., a site ServerIron) rather than with a geographic
region, as required to satisfy the claims. See id. at 18 (“While a specific site
ServerIron (a switch) must inherently be located in some location,
associating the IP address prefix with a switch is not the same as associating
it with a geographic location.”).
Appellant’s claim interpretation arguments are based on the ’965
patent’s description of the invention, the Joshi Supplemental Declaration,
and the following expert declaration: “Declaration by Brian D’Andrade
Under 37 CFR 1.132” (hereinafter “D’Andrade Declaration”).8

II. DISCUSSION
A. The ’965 Patent
For the following reasons, we agree with Appellant’s argument that
[t]hroughout the entire specification of the [’]965 patent there is
only one context in which the specification refers to storing first
and second address prefix information that corresponds to first
and second geographic region information, and that context is
with respect to changing the geographic region information
that a device using the claimed network address is perceived to
be originating from or [to] reside at.

8 The D’Andrade Declaration accompanied Appellant’s May 25, 2012,
response to the Final Action and was entered by the Examiner. Advisory
Action 1, l. 9.
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Br. 8-9 (emphasis added). Nevertheless, we do not agree that the claim
language is so limited.
The invention described in the ’965 patent relates generally to load
balancing among servers and relates more particularly to techniques to
configure geographic information for use in load balancing to determine a
geographically optimum server to receive a client request. ’965 patent 1:17-
23.
Figure 1 of the ’965 patent is reproduced below.
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Figure 1 illustrates an example of a GSLB (global server load balancing9)
system with which an embodiment of the invention can be implemented. Id.
at 3:11-12. A GSLB switch 12 connected to Internet 14 acts as a proxy for

9 ’965 patent 1:57.
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an authoritative Domain Name System (DNS) server 16 for a domain, such
as “foundrynet.com.” Id. at 4:21-24. GSLB switch 12 communicates via
Internet 14 with site switches 18A and 18B at a site 20, site switches 22A
and 22B at a site 24, and any other similarly configured site switches. Id. at
4:30-33. These site switches 18A, 18B, 22A and 22B are shown, for
example, connected to routers 19 and 21 and to servers 26A to 26N. Id. at
4:34-36. Although the authoritative DNS server 16 provides the actual DNS
service, the IP address known to the rest of the Internet 14 for the
authoritative DNS server 16 of the domain “foundrynet.com” is a virtual IP
(VIP) address configured on GSLB switch 12. Id. at 4:24-29.
The ’965 patent describes the steps involved in identifying an optimal
server for a client request at column 4, lines 55 to 65. These steps are also
provided as labels in Figure 7.1 of ServerIron’s Chapter 7 (“Configuring
Global Server Load Balancing”), which consists of pages 7-1 to 7-70.
Figure 7.1 is reproduced below.

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Figure 7.1 shows an example of a GSLB configuration in which a “GSLB
ServerIron” (i.e., a ServerIron configured for GSLB) is connected to an
authoritative DNS for a specific domain. ServerIron at page 7-2. The
operational steps 1-5 stated in Figure 7.1 are reproduced below:
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1. The client’s local DNS sends a recursive query for
foundrynet.com.
2. The GSLB ServerIron, as proxy for the authoritative DNS,
forwards the lookup request from the client’s local DNS to the
authoritative DNS.
Other DNSs know the authoritative DNS by the virtual IP
address configured on the GSLB ServerIron, instead of its real
IP address.
3. The authoritative DNS for foundrynet.com answers the
client’s query (forwarded by the GSLB ServerIron) by sending
a list of IP addresses for the sites that correspond to the
requested host.
4. The GSLB ServerIron assesses each IP address in the DNS
reply to determine the optimal site for the client, and moves the
address for that site to the top of the list.
5. The client receives a reordered list of IP addresses. Typical
clients use the first address in the list. Since the ServerIron has
optimized the list for the client, the first address is the best
address.
Id. (emphasis added).
The invention described in the ’965 patent concerns step 4, i.e.,
determining the “optimal site” (i.e., optimal server) for the client. More
particularly, the invention is directed to the prior art technique of using
geographic location to select the optimal server. See ’965 patent 2:6-10 (“A
criterion that is sometimes used for load balancing purposes is geographic
location. That is, where there are multiple geographically located servers,
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load balancing systems attempt to direct client requests to a server that is
geographically the closest to the client.”). The ’965 patent also refers to this
geographic location technique as a “geographic metric.” Id. at 6:37-39.
The use of a geographic metric is also described in ServerIron, which at page
7-6, under the heading “Geographic Location of the Server,” explains that
“the GSLB ServerIron prefers [server] sites with the same geographic region
as the client query.”
The invention described in the ’965 patent addresses the following
problem with using a geographic metric. The geographic locations of the
client and the servers are typically determined using a static table containing
Internet Assigned Numbers Authority (IANA)-allocated IP address prefixes
and their associated geographic locations. ’965 patent 2:10-14. However,
load balancing systems based on static mappings between the IP address
prefixes and the geographic locations have drawbacks that can lead to less-
than optimum performance. Id. at 2:14-17. The ’965 patent gives as an
example the situation in which the internal static geographic prefix database
in a load balancing switch specifies that the address prefix 149.204.0.0/16 is
located in the geographic region EUROPE. Id. at 2:40-43. If a user (e.g., a
system administrator10) has a client with an address of 149.204.11.1 located
instead in ASIA, the load balancing switch will always treat this client IP
address as located in the geographic region EUROPE, even if the user

10 ’965 patent 8:46.
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instead prefers to have the address prefix associated with ASIA. Id. at 2:47-
50.
The invention described in ’965 patent solves this problem by
including a user-configurable geographic prefix feature that permits a user-
configured entry to associate a prefix (or other address portion) with a
geographic region, which can be “a continent, country, state, city, or other
user defined area.” Id. at 3:49-56. If the user-configured prefix also exists
in a static internal geographic database maintained by the load balancing
switch, the user-configured entry will “override” it. Id. at 3:61-63. For
example, if the prefix 200.0.0.0/8 represents SOUTH AMERICA in the
internal geographic database and if the user configures the geographic prefix
200.0.0.0/8 to be in the region NORTH AMERICA, the user-configured
entry will override the earlier entry, with the result that any IP address that
“matches” the prefix 200.0.0.0/8 will be deemed to reside in NORTH
AMERICA. Id. at 3:61-4:2. This override feature can be applied to clients
or servers (i.e., hosts). See id. at Abstract (“The geographic settings in the
second database can override the information in the first database. These
geographic entries help determine the geographic location of a client and
host IP addresses, and aid in directing the client to a host server that is
geographically the closest to that client.”).
The ‘965 patent provides the following examples of client and server
IP addresses that match the same prefix:

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As an example, in the statically generated table in the
first storage unit 212, the geographic region for the prefix
149.204.0.0/16 is EUROPE. Therefore, if Client-1 has an IP
address 149.204.10.1, then the GSLB switch 12 refers to this
static table and determines that Client-1 is in the region
EUROPE. The GSLB switch 12 determines the geographic
location of a real server 306 similarly based on the IP address. .
. . Thus, if the site switch 300 has an IP address of
149.204.53.1, then the GSLB switch 12 determines that the site
switch 300 is in the region EUROPE. Therefore, VIP-1, which
is configured on the site switch 300, will be deemed to be in the
region EUROPE.
Id. at 7:25-39 (emphasis added).
Figure 2 of the ’965 patent is reproduced below.

Figure 2 is a block diagram showing the relevant functional modules of an
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embodiment of GSLB switch 12 and site switch 18A, including functions
and features associated with geographic data. Id. at 5:40-44. GSLB switch
12 includes GSLB switch controller 201 that is connected to various
components , including (i) a first storage unit 212 that contains “IANA-
allocated geographic prefixes and the associated geographic designation, or
default geographic-related settings” and (ii) a second storage unit 210 that
contains user-configured geographic settings. Id. at 6:13-24.
Figure 4 of the ’965 patent is reproduced below.
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Figure 4 is a flowchart 400 illustrating the configuration of geographic
prefix data according to an embodiment of the GSLB system described in
the ’965 patent. Id. at 8:44-45. At block 402, the user (e.g., a system
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administrator) configures the geographic prefix(es) on GSLB switch
controller 201 of GSLB switch 12, such as by setting the geographic region
for the prefix 149.204.0.0/16 as EUROPE. Id. at 8:45-49. At block 404,
GSLB switch 12 maintains the user-configured geographic region for the
prefix in a user-configurable geographic prefix database (referred to in this
flowchart as the database “DY-GEO-DB”). Id. at 8:50-53. The DY-GEO-
DB database contains the information that can be dynamically provided or
changed by the user and is maintained in the second storage unit 210. Id. at
8:53-56. At block 406, if the above prefix already exists in the static internal
geographic database (referred to in the flowchart as the database “ST-GEO-
DB”) maintained in the first storage unit 212, the above user configuration
takes precedence over that static entry. Id. at 8:57-61. At block 408, GSLB
switch 12 updates the geographic region for all the IP addresses that match
the above IP address prefix so as to reflect the new geographic region
configured by the user. Id. at 8:61-66.

B. Claim Interpretation Principles
“During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004)). “[T]he ordinary and customary meaning of a claim
term is the meaning that the term would have to a person of ordinary skill in
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the art in question at the time of the invention, i.e., as of the effective filing
date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1313
(Fed. Cir. 2005) (en banc). Furthermore, the focus must be on the claim
terms:
“[T]here is sometimes a fine line between reading a claim in
light of the specification, and reading a limitation into the claim
from the specification.” Comark Commc’ns, Inc. v. Harris
Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998); accord Phillips v.
AWH Corp., 415 F.3d 1303, 1323–24 (Fed. Cir. 2005) (en
banc) (“In the end, there will still remain some cases in which it
will be hard to determine whether a person of skill in the art
would understand the embodiments to define the outer limits of
the claim term or merely to be exemplary in nature.”). This
court has recognized that “attempting to resolve that problem in
the context of the particular patent is likely to capture the scope
of the actual invention more accurately than either strictly
limiting the scope of the claims to the embodiments disclosed in
the specification or divorcing the claim language from the
specification,” Phillips, 415 F.3d at 1323–24, and, thus, that
there can be “no magic formula or catechism for conducting
claim construction,” id. at 1324. We must read the specification
in light of its purposes in order to determine “whether the
patentee is setting out specific examples of the invention to
accomplish those goals, or whether the patentee instead intends
for the claims and the embodiments in the specification to be
strictly coextensive.” Id. at 1323. “The manner in which the
patentee uses a term within the specification and claims usually
will make the distinction apparent.” Id. Ultimately, our “focus
remains on understanding how a person of ordinary skill in the
art would understand the claim terms.” Id.
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Decisioning.com, Inc. v. Federated Dept. Stores, Inc., 527 F.3d 1300, 1307-
08 (Fed. Cir. 2008) (emphasis added).
It is therefore improper, when giving claims their broadest reasonable
interpretation, to read limitations from the specification into the claims. See
Phillips, 415 F.3d at 1323 (“[A]lthough the specification often describes
very specific embodiments of the invention, we have repeatedly warned
against confining the claims to those embodiments. . . . In particular, we
have expressly rejected the contention that if a patent describes only a single
embodiment, the claims of the patent must be construed as being limited to
that embodiment.”) (citations omitted). For the following reasons,
Appellant’s “deemed to reside” and “override” claim interpretations violate
this principle.
Appellant argues that “Conf. Guide is used to provide a source-to-
destination relationship between a client and a server for purposes of
directing traffic,” whereas
[i]n order to anticipate claims 1, 12 and 18, Conf. Guide must
disclose a first location and a geographic location that is
different than a second location. Patent Owner submits that the
first location is the location where a device was thought to
reside based on its IP address, and that the geographic location
information that is different than the second location is a new
location that an administrator has provided, which is the correct
location for where the device resides.
Br. 17-18 (emphasis added). The Examiner does not contend that
ServerIron’s affinity feature (discussed in detail below) satisfies the claims
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when given a “deemed to reside” interpretation. Instead, the Examiner has
concluded, correctly in our view, that the claim language is not so limited
and thus does not exclude a source-to-destination relationship:
None of [the] claims contain any exclusionary language
pertaining to source or destination as being excluded from the
functionality of the claims. None of the claims actually define
the nature of the association, and certainly do not recite any
exclusions indicating what it cannot be. It is also observed that
this argument contradicts the reexamination patent disclosure,
as there is equally no exclusion to a source-destination
relationship between the geographic regions in the patent
disclosure.
Advisory Action 5 (quoted at Br. 14).
Appellant argues that this position of the Examiner is erroneous for
several reasons. One reason is that “claim terms cannot be expansively
interpreted to define or cover matters that a person having ordinary skill in
the art would not recognize in view of the specification.” Br. 14-15. As
support, Appellant quotes the following statement in Conopco, Inc. v. May
Dep’t Stores Co., 46 F.3d 1556, 1561 (Fed. Cir. 1994): “The relevant
inquiry ... is whether one of skill in the art would have understood that the
term was to be read expansively.” Br. 14 (bolding omitted). Appellant’s
reliance on Conopco is misplaced. As noted by Appellant (id.), the court in
Conopco concluded that the claim phrase “about 40:1” is not broad enough
to read on a ratio of 162.9:1. Specifically, the court stated: “There is simply
no basis for interpreting the phrase ‘about 40:1’ to encompass the 162.9:1
ratio. That would imply an expansion of the term ‘about’ to encompass over
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a fourfold increase in the specified numerical ratio and thus would ignore the
ordinary meaning of that term.” Conopco, 46 F.3d at 1561. The Examiner’s
claim interpretation before us in this appeal does not involve giving any
claim term or phrase an interpretation that is more “expansive” than its
ordinary meaning.
Appellant further argues:
It is erroneous for a patent examiner to adopt an
interpretation of a claim term or limitation that is beyond what
was reasonable in light of the totality of the disclosure. In re
Baker Hughes, 215 F.3d 1297, 1303 (Fed. Cir. 2000) (“We
conclude that the Board adopted a construction of the claim
beyond that which was reasonable in light of the totality of the
written description...” --the BPAI erred in adopting a
construction that include[s] an additional state of matter that
was not disclosed in the specification).
Br. 16. Appellant’s reliance on Baker Hughes is likewise misplaced because
it involves the interpretation of specific claim terms. Claim 17 of the patent
under reexamination in Baker Hughes read in relevant part as follows:
17. A composition comprising:
a. a material comprising water or a hydrocarbon, and
b. a sufficient amount of the following diaminomethane
compound to inhibit hydrogen sulfide gas liberation . . . .
215 F.3d at 1299 (emphasis added). The Board concluded that the broadest
reasonable interpretation of the claim term “hydrocarbon” includes gaseous
hydrocarbon (the type of hydrocarbon relied in the reference) and liquids.
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Id. at 1300. The court concluded that the Board’s broad interpretation of
“hydrocarbon” to include a gaseous hydrocarbon is inconsistent with the
claim term “liberation”:
Although the Director points to various parts of the written
description that describe hydrocarbons as gases and liquids,
nowhere does the written description use the terms “evolution”
or “liberation” to describe the separation of hydrogen sulfide
from a gaseous hydrocarbon material. Moreover, the written
description’s use of the terms “evolution” and “liberation” to
describe the emission of a hydrogen sulfide from a liquid
hydrocarbon is consistent with the terms’ common chemical
definitions. See Webster’s II New Riverside University
Dictionary 690 (1988) (“liberate: to release from combination,
as a gas”); id. at 449 (“evolve: to give off: emit”). Lastly,
nowhere in the written description is there an example of the
claimed process being used with a gaseous hydrocarbon. None
of the embodiments of the invention described in the written
description relate to gaseous hydrocarbons.
Id. at 1303. Appellant has not explained how the Examiner’s interpretation
of any claim term is inconsistent with the meaning of any other claim term.
Appellant additionally argues:
“The broadest-construction rubric coupled with the term
‘comprising’ does not give the PTO an unfettered license to
interpret claims to embrace anything remotely related to the
claimed invention. Rather, claims should always be read in
light of the specification and teachings in the underlying
patent.” In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed.
Cir. 2010) (citing Schriber-Schroth Co. v. Cleveland Trust Co.,
311 U.S. 211, 217 (1940) (“The claims of a patent are always to
be read or interpreted in light of its specifications.”)).
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Br. 16. Appellant’s reliance on Suitco, too, is misplaced. Claim 4 at issue in
Suitco read as follows:
4. On a floor having a flat top surface and an improved
material for finishing the top surface of the floor, the
improvement comprising:
at least one elongated sheet including a uniform flexible
film of clear plastic material having a thickness between about
one mil and about twenty-five mils and
a continuous layer of adhesive material disposed between
the top surface of the floor and the flexible film, the adhesive
layer releasably adhering the flexible film onto the top surface
of the floor.
Suitco, 603 F.3d at 1256. The court noted that “the PTO emphasizes that it
was required to give all ‘claims their broadest reasonable construction’
particularly with respect to claim 4’s use of the open-ended term
‘comprising.’” Id. at 1260. The court disagreed:
The PTO’s construction here . . . is unreasonably broad.
The broadest-construction rubric coupled with the term
“comprising” does not give the PTO an unfettered license to
interpret claims to embrace anything remotely related to the
claimed invention. . . .
When read in the appropriate context of the claim
language and specification, the broadest reasonable
construction is clear: the phrase “material for finishing the top
surface of the floor” refers to a clear, uniform layer on the top
surface of a floor that is the final treatment or coating of a
surface. It is not any intermediate, temporary, or transitional
layer.
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Id. at 1260-61. In contrast to the PTO’s above-noted position in Suitco, the
Examiner in the appeal before us does not rely on the open-ended nature of
“comprising” to effectively ignore other claim language.
Appellant (Br. 16) also argues that the Examiner’s position overlooks
the requirement that “the right to exclude will be no broader than the
inventor’s enabling disclosure” (quoting SuperGuide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 898 (Fed. Cir. 2004) (Michel, J.,
concurring)). Appellant’s reliance on this statement in this concurring
opinion is misplaced because this statement is inconsistent with the opinion
of the majority for the following reasons. The claim phrase that is the
subject of this statement is a “regularly received television signal.”
SuperGuide, 358 F.3d at 897-98. The majority opinion states that as of the
May 1985 filing date of the patent in question, the only type of television
signals that were broadcast were analog signals. Id. at 876 (majority
opinion). The majority opinion nevertheless concluded that the above claim
phrase is broad enough to read on digital signals. See id. at 881 (“[W]e
construe ‘regularly received television signal’ to mean video data that is
customarily received by the television viewing public and not video-on-
demand. The form of the television signal is irrelevant; it could be an analog
signal, a digital signal, some combination of the two, or another format.”).
We also are not persuaded of Examiner error by Appellant’s following
additional argument based on the enablement requirement:
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To press for a broad claim construction requires the proponent,
in this case the patent examiner, to show that such a claim was
fully enabled by the specification for such a broad construction.
Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1380
(Fed. Cir. 2007) (“The irony of this situation is that Liebel
successfully pressed to have its claims include a jacketless
system, but, having won that battle, it then had to show that
such a claim was fully enabled, a challenge it could not
meet.”[).]
Br. 16. To the extent Appellant is suggesting that Liebel-Flarsheim requires
taking enablement into account in order to determine the scope of the claim,
we do not agree. To the contrary, the court explained that the question of
enablement is addressed after the scope of the claims has been determined.
See Liebel-Flarsheim, 481 F.3d at 1378-79 (“We have previously construed
the claims of the front-loading patents such that they are not limited to an
injector with a pressure jacket, and therefore the full scope of the claimed
inventions includes injectors with and without a pressure jacket. That full
scope must be enabled, and the district court was correct that it was not
enabled.”). Thus, although the court went on to find that the specification
teaches away from using a disposable syringe without a jacket, this was
considered to be evidence of nonenablement (as opposed to a factor to be
considered when determining claim scope). See id. at 1379 (“[W]e find that
nowhere does the specification describe an injector with a disposable syringe
without a pressure jacket. In fact, the specification teaches away from such
an invention. . . . As we have held previously, where the specification
teaches against a purported aspect of an invention, such a teaching ‘is itself
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evidence that at least a significant amount of experimentation would have
been necessary to practice the claimed invention.’”).
Appellant also appears to argue that it is improper to interpret the
claims as broad enough to read on a source-to-destination relationship (such
as described by ServerIron) because the ’965 patent does not describe an
embodiment that employs such a relationship:
[N]ot only must an interpretation be reasonable to a person of
ordinary skill in the art, but also the interpretation must not
stray outside that which is described and enabled by the
patent’s description. Since the Examiner’s interpretation cannot
be supported by the specification[,] the Examiner’s
interpretation is clearly not reasonable.
Br. 17 (emphasis added). This position is contrary to SuperGuide, wherein
the majority opinion concluded that the term “regularly received television
signal” is broad enough to read on the digital signals even though such
signals are not described in the patent specification. SuperGuide, 358 F.3d
at 881. See also Martek Biosciences Corp. v. Nutrinova Inc., 579 F.3d 1363,
1371 (Fed. Cir. 2009) (“[A] patent claim is not necessarily invalid for lack of
written description just because it is broader than the specific examples
disclosed.”).
Appellant further contends that “the Examiner’s interpretation cannot
be maintained in light of the dependent claims and claim differentiation”
(Reply Br. 3-4) and that “[n]ot only is the Examiner’s interpretation of the
claim not reasonable in light of the specification, but it is not reasonable in
light of the dependent claims.” Id. at 5. These contentions are unpersuasive
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because they are not accompanied by any supporting analysis based on the
language of any dependent claim.
For the above reasons, we also are not persuaded by Appellant’s
argument (Reply Br. 10-11) that an override function is implied by claim 1’s
recitation of “associating these network addresses to the second geographic
region information, which is different from said corresponding first
geographic region information” or by the similar language in claims 12
and 18. This claim language does not require associating these network
addresses to only the second geographic region of the recited first and
second geographic regions.
For all of the above reasons, we conclude that giving the claim
language its broadest interpretation consistent with the ’965 patent
disclosure does not require using Appellant’s asserted “deemed to reside”
interpretation or “override” interpretation.
We are not persuaded otherwise by the Joshi Supplemental
Declaration or the D’Andrade Declaration. We begin with the D’Andrade
Declaration, which was initially filed in the inter partes proceeding in
response to a rejection based on Skene, et al., Patent US 7,441,045 B2,
which is discussed at paragraphs 5 and 16-32 of this declaration. Regarding
the matter of claim interpretation, Dr. D’Andrade testified: “A person of
ordinary skill in the art reading the [’]965 patent would . . . only understand
that the associated/corresponding geographic region in the claims of the
[’]965 patent is where a device having the address prefix is deemed to be
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residing.” D’Andrade Decl. para. 12 (emphasis added). Dr. D’Andrade
additionally assumes an “override” claim interpretation when stating that
“[t]he Requester cites this passage (column 19, lines 55-63) from the Skene
patent for allegedly disclosing the capability to use/override/designate a
second geographic location of an address prefix in place of a different first
geographic location of the address prefix.” Id. at para. 19 (emphasis added).
The Examiner found the D’Andrade Declaration unpersuasive for two
reasons, the first being that it “ha[s] no probative value” because it addresses
a rejection based on Skene rather than a rejection based on ServerIron.
Advisory Action 6-7, item 5. We agree with Appellant (Br. 11-13) that Dr.
D’Andrade’s paragraph 12 testimony regarding the interpretation of the
claims is independent of his testimony about the Skene reference and thus
cannot be disregarded for being limited to the Skene rejection.
However, we agree with the Examiner’s second reason for finding Dr.
D’Andrade’s testimony unpersuasive, which is that “the purpose of an expert
declaration under 37 CFR 1.132 is not to provide the ultimate legal opinion
on the manner of claim construction.” Answer 11 (citing In re Chilowsky,
306 F.2d 908 (CCPA 1962)). As explained in Phillips, expert testimony can
be relied on to establish that a claim term has a particular meaning in the art:
[E]xtrinsic evidence in the form of expert testimony can be
useful to a court for a variety of purposes, such as to provide
background on the technology at issue, to explain how an
invention works, to ensure that the court’s understanding of the
technical aspects of the patent is consistent with that of a person
of skill in the art, or to establish that a particular term in the
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patent or the prior art has a particular meaning in the pertinent
field. . . . However, conclusory, unsupported assertions by
experts as to the definition of a claim term are not useful to a
court. Similarly, a court should discount any expert testimony
“that is clearly at odds with the claim construction mandated by
the claims themselves, the written description, and the
prosecution history, in other words, with the written record of
the patent.”
415 F.3d at 1318 (citations omitted; emphasis added). The meanings of the
claim terms “address prefix information” and “geographic region
information” are not in dispute. Dr. D’Andrade’s testimony, quoted blow,
suggests that his “deemed to reside” claim interpretation is based on reading
limitations from the examples appearing in the specification into the claims:
12. The specification of the [’]965 patent is clear that
the geographic region associated to or corresponding to an
address prefix is a geographic region where the device having
the address prefix is deemed to reside. For example, the
specification of the [’]965 patent consistently explains that the
associated/corresponding geographic region is where the device
having the address prefix or address is deemed to reside, in at
least the following passages: Abstract; col. 3, lines 52-54; col.
3, line 63 to col. 4, line 2; col. 6, lines 17-24; col. 6, line 41 to
col. 7, line 2; col. 7, lines 16-24; col. 7, lines 25-39; col. 8, lines
17-24; col. 9, lines 8-17; col. 9, lines 37-40; col. 9, lines 51-56;
and at col. 10, lines 40-67. A person of ordinary skill in the art
reading the [’]965 patent would therefore only understand that
the associated/corresponding geographic region in the claims of
the [’]965 patent is where a device having the address prefix is
deemed to be residing.
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D’Andrade Decl. para. 12 (footnote omitted). His testimony regarding the
“override” feature in the ’965 patent (id. at paras. 9, 11) similarly relies on
the examples given in the specification rather than on the claim language.
Also, the inventor’s testimony, reproduced below, regarding the
“deemed to reside” and “override” claim interpretations is not based on a
discussion of the claim language and thus presumably involves reading
limitations from the examples given in the specification into the claims:
8. My recognition of the above problem(s) of the
geographic regions and of the deficiency in the technology of
the GSLB ServerIron appliance provided the motivation for and
the foundational work towards my invention of the solution(s)
described and claimed in claims 1-23 and claims 1-12,
respectively, of the [’]965 and [’]899 patents. These solution(s)
described and claimed in claims 1-23 and claims 1-12,
respectively, of the [’]965 and [’]899 patents operated to
change (by overriding) the original geographic region
designated for a particular address prefix, to a different
geographic region, where a device having the particular
address prefix is deemed to reside.
Joshi Suppl. Decl. para. 8 (emphasis added).11 The Examiner is therefore
correct to state that “[t]here is no indication that Declarant Joshi is
considering the claims of the invention, rather than the specification.”
Advisory Action 8.

11 The ’899 patent presumably is U.S. Patent 7,899,899, which is involved
in related Ex Parte Reexamination Proceeding 90/011,760 and related Inter
Partes Reexamination Proceeding 95/001,826. Br. 2, item 11; id. at 3,
(Continued on next page.)
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For the above reasons, we agree with the Examiner that: (i) the recited
“first geographic region information” and “second geographic region
information” are not limited to information that identifies geographic regions
where devices having the corresponding address prefix information are
deemed to reside and (ii) that the claim language does not expressly or
implicitly require that the “second geographic region information” override
the “first geographic region information.”12
During oral argument, Appellant’s counsel argued that the claim 1
phrase “first address prefix information that matches the second address
prefix information” requires an identical match. Hr’g Tr. 15:16-16:5.
Counsel conceded that this argument does not appear in the Brief or Reply
Brief but pointed out (correctly) that it was presented in the response to the
non-final Office Action.13 Inasmuch as this argument does not appear in the
Brief or Reply Brief, it is entitled to no consideration in this appeal
proceeding and will not be considered. See 37 C.F.R. § 41.47(e)(1) (2013)
(“At the oral hearing, appellant may only rely on Evidence that has been
previously entered and considered by the primary examiner and present

item 1.
12 However, as explained infra, ServerIron’s affinity feature performs an
override function.
13 See OFFICE ACTION RESPONSE, filed February 21, 2012, at 9 (“The
specification of the [’]965 patent supports an interpretation of
‘match[es/ing]’ that requires at least a set of numbers in the geographic
prefixes to be the same (i.e. ‘200’ matches ‘200’).”).
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argument that has been relied upon in the brief or reply brief except as
permitted by paragraph (e)(2) of this section.”). Appellant has not
demonstrated compliance with § 41.47(e)(2) (authorizing “a new argument
based upon a recent relevant decision of either the Board or a Federal
Court”).

C. Whether the Claim Language Reads on ServerIron’s Affinity Feature
The rejection is based on ServerIron’s Figure 7.10 (at page 7-39),
labeled “Example of the affinity feature,” and the associated discussion at
pages 7-38 to 7-40. Final Action 2-6. ServerIron explains, under the
heading “Configuring Affinity”:
The Affinity feature configures the GSLB ServerIron to always
prefer a specific site ServerIron for queries from clients whose
addresses are within a given IP prefix. This feature is useful in
the following situations:
• When you want to use a primary site for all queries and
use other sites only as backups.
• When you want to use a site located near clients within a
private network for all queries from the private network.
To configure affinity, you associate a site ServerIron with an IP
prefix. When the GSLB ServerIron receives a query from a
client whose IP address is within the configured prefix, the
GSLB ServerIron examines the DNS reply for a virtual IP
address (VIP) configured on the [site] ServerIron associated
with the IP prefix that contains the client’s IP address.
ServerIron 7-38.
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Figure 7.10 is reproduced below.

Figure 7.10 closely resembles Figure 7.1, reproduced above. However,
whereas step 4 in Figure 7.1 broadly states that “[t]he GSLB ServerIron
assesses each IP address in the DNS reply to determine the optimal site for
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the client, and moves the address for that site to the top of the list” (id. at 7-
2), Figure 7.10 more particularly recites:
4. The GSLB ServerIron checks for an affinity configuration
that has an IP prefix that contains the client’s IP address.

If one exists, and if the DNS reply contains a VIP configured on
the ServerIron associated with the IP prefix, the ServerIron
checks the health of the VIP.

If the VIP passes the health checks, the ServerIron places the
VIP at the top of the list in the DNS reply.
Id. at 7-39 (emphasis added).
The anticipation rejection additionally relies (Final Action 3) on the
text at page 7-40, which explains that “[y]ou can configure up to 50
affinities” and that “[i]f you configure more than one affinity, it is possible
for a client’s IP address to be within the prefixes of more than one affinity
definition.” The following paragraph at this page also describes using “a
default affinity definition” with “another affinity definition” (referred to
hereinafter as a “specific affinity definition”):
You can configure a default affinity definition by using the
prefix 0.0.0.0/0 in the definition. When you configure a default
affinity definition, the ServerIron prefers a VIP on the
ServerIron associated with the prefix 0.0.0.0/0 for all clients
except those whose addresses are within a prefix configured in
another affinity definition.
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Id. at 7-40 (emphasis added). The Examiner specifically relies on the
following examples of default and specific affinity definitions that associate
client prefixes with site ServerIrons located in Sunnyvale and Atlanta:
Configuring an Affinity Definition
. . . .
USING THE CLI [Command Line Interface14]
To configure an affinity definition, enter commands such as the
following:
ServerIron(config) # gslb affinity
ServerIron(config-gslb-affinity) # prefer sunnyvale slb-1 for
0.0.0.0/0
ServerIron(config-gslb-affinity) # prefer atlanta slb-1 for
192.108.22.0/22
These commands configure a default affinity definition (using
the 0.0.0.0/0) prefix and an affinity definition that uses prefix
192.108.22.0/22. For clients that are not within the prefix in the
second affinity definition, the ServerIron uses the default
affinity definition. The ServerIron sends clients whose IP
addresses are within the 192.108.22.0/22 prefix to a VIP on
slb-1 at the “atlanta” site, when available. The ServerIron sends
all other clients to a VIP on slb-1 at the “sunnyvale” site when
available.
Id. (emphasis added). The Examiner reads claim 1 on these default and
specific affinity definitions as follows:

14 See ServerIron 2-7 (reciting “Command Line Interface (CLI)”).
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Claim 1: A method, comprising: storing first address
prefix information and corresponding first geographic
region information; storing second address prefix
information and corresponding second geographic region
information (Page 7-39, Figure 7.10 illustrates a network
(cloud) that contains “GLSB Site 1” and “GLSB site 2”. Each
site includes network address prefixes corresponding with
cities, such as Sunnyvale and Atlanta. Each correspondence
can be created and saved using the “CLI Method” defined on
page 7-40 in the middle of the page); and for network
addresses that have first address prefix information that
matches the second address prefix information (page 7-39,
Figure 7.10, steps 3-4 involve matching a client address to a list
of IP addresses having geographic locations), associating these
network addresses to the second geographic region
information, which is different from said corresponding
first geographic region information (pages 7-39, Figure 10,
step 4: The list of addresses includes a VIP address followed by
a secondary address. Page 7-40 under “Using the CLI” states
that the VIP address is Atlanta, and the secondary address is
Sunnyvale. The client address thus becomes associated to both
Atlanta and Sunnyvale. These geographic locations become
new locations associated with the client).
Final Action 2-3 (italics added).
We understand the term “new locations” in the last sentence to mean
that neither location was associated with the first or second client address
prefix prior to configuration of the default and specific affinity relationships.
Because the Examiner (Advisory Action 3) disagrees with Appellant’s
“override” claim interpretation, we understand the Examiner to be reading
the claimed step of “storing first address prefix information and
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corresponding first geographic region information” on either one of the
default and specific affinity definitions and to be reading the claimed step of
“storing second address prefix information and corresponding second
geographic region information” on the other one of these affinity definitions.
However, assuming for the sake of argument that an override operation is
required by the claim language, this requirement can be accommodated by
reading the claimed “second address prefix information and corresponding
second geographic region information” on the specific affinity definition,
which effectively overrides the default definition for client addresses that
match the address prefixes given in both affinity definitions.
We understand the Examiner’s above-quoted statement that “steps 3-4
involve matching a client address to a list of IP addresses having geographic
locations” to mean a list of IP addresses is generated in response to receiving
a client query (which contains a client address). Finally, we understand the
Examiner’s reading of the “associating” step on the first two addresses in the
list of IP addresses generated in step to mean that if a client IP address
matches the default and specific affinity definitions, the first address on the
list will be the address of the Atlanta site and the second address on the list
will be the address of the Sunnyvale site (assuming the Atlanta and
Sunnyvale sites both pass the health checks). We therefore do not agree
with Appellant that “[i]n the Examiner’s statement of the rejection, the
Examiner points out only the new locations, but does not point out what is
the first geographic region.” Reply Br. 12.
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Nor are we persuaded by Appellant’s argument that “[t]he Examiner
has never provided a complete interpretation of the claims.” Reply Br. 4.
As explained in In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011): “There
has never been a requirement for an examiner to make an on-the-record
claim construction of every term in every rejected claim and to explain every
possible difference between the prior art and the claimed invention in order
to make out a prima facie rejection.” See also In re Hyatt, 211 F.3d 1367,
1371 (Fed. Cir. 2000) (an examiner’s interpretation of claim terms may be
implied by the explanation of the rejection rather than expressly stated).
Appellant’s argument that ServerIron fails to satisfy the claim
language when properly given a “deemed to reside” interpretation (Reply
Br. 12) is unpersuasive because this interpretation is unreasonably narrow
for the reasons given above. For the same reason, we are unpersuaded by
the argument that ServerIron fails to satisfy the claim language when
properly given an “override” interpretation. Id. at 10-11. Furthermore, as
noted above, ServerIron performs an override function.
Appellant also argues that it is unreasonable to interpret the claims
broadly enough to read on ServerIron’s affinity feature because this feature
corresponds to the “geographic metric” described in the ’965 patent and
because the ’965 patent makes a distinction between the claimed invention
and the geographic metric. See, e.g., Reply Br. 14 (“The affinity feature . . .
cannot be the claimed ‘associating these network addresses to the second
geographic region information, which is different from said corresponding
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first geographic region information’ because the affinity feature actually
discloses what is known as a ‘geographic metric’ in the [’]965 patent.”
(emphasis omitted)). As support for the asserted equivalence of ServerIron’s
affinity feature and the ’965 patent’s geographic metric, Appellant quotes
the following two paragraphs from ServerIron and the ’965 patent:
The Affinity feature configures the GSLB ServerIron to always
prefer a specific site ServerIron for queries from clients whose
addresses are within a given IP prefix. This feature is useful in
the following situations: When you want to use a primary site
for all queries and use other sites only as backups. When you
want to use a site located near clients within a private network
for all queries from the private network.
Id. (quoting ServerIron 7-38) (underlining by Appellant).
As described above, one of the metrics that can be used by an
embodiment of the GSLB switch 12 to select the best IP
address for clients is the geographic metric. This metric enables
the GSLB switch controller 201 to direct a client to a server that
is geographically the closest to that client.
Id. (quoting ’965 patent 6:34-39) (underlining by Appellant).
This claim interpretation argument is unpersuasive for two reasons.
The first reason is that Appellant has cited no legal authority in the Brief or
Reply Brief for the proposition that giving a claim its broadest reasonable
interpretation consistent with the specification requires interpreting the claim
in a manner that avoids admitted prior art.15 We are therefore unpersuaded

15 Section 41.37(c)(1)(iv) of Title 37 of the Code of Federal Regulations
(Continued on next page.)
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by the inventor’s following testimony that the claimed invention is distinct
from ServerIron’s affinity feature:
9. . . . I have read and understood ServerIron Conf. Guide,
including page 7-6 (section subtitled “Geographic Location of a
Server”), pages 7-38 to 7-41 (section describing the “affinity”
feature), and pages 7-62 to 7- 64 (showing and describing static
prefix entries in Table 7.8) of Chapter 7.
10. The above-identified passages of Chapter 7 pertain to a
previous version of the GSLB ServerIron appliance and do not
describe the invention claimed in claims 1-23 and claims 1-12,
respectively, of the [’]965 and [’]899 patents.
Joshi Suppl. Decl. paras. 9-10.
The second reason we are unpersuaded by Appellant’s above-noted
claim interpretation argument is that it incorrectly equates ServerIron’s
affinity feature to the ’965 patent’s geographic metric, which is used by the
GSLB system to automatically select a server based on its proximity to the
client. ServerIron describes such a geographic metric in the following
passage, which does not describe ServerIron’s affinity feature:

(2013) provides that an Appeal Brief shall contain an “Argument” section
that includes “[t]he arguments of appellant with respect to each ground of
rejection, and the basis therefor, with citations of the statutes, regulations,
authorities, and parts of the Record relied on.” (Emphasis added.) This
provision was effective January 23, 2012. Rules of Practice Before the
Board of Patent Appeals and Interference in Ex Parte Appeals, 76 Fed. Reg.
72270, 72270 (Nov. 22, 2011).
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Geographic Location of the Server
For each client query, the GSLB ServerIron can determine the
geographic location from which the client query came based on
its IP address. The GSLB can determine whether the query
came from North America, Asia, Europe, or South America. If
multiple sites compare equally based on the metrics above, the
GSLB ServerIron prefers sites within the same geographic
region as the client query.
ServerIron 7-6 (emphasis added). ServerIron characterizes this geographic
location feature as a “metric” in the following passage:
The GSLB Policy
The ServerIron uses the following metrics to evaluate the server
IP addresses in a DNS reply:
• . . . .
• The geographic location of the server
• . . . .
Id. at 7-4 (emphasis added).
Nor does ServerIron’s affinity feature function in the same way as a
geographic metric. The ServerIron GSLB system does not use the affinity
feature to automatically select a server based on its proximity to the client.
Instead, a user (i.e., administrator) employs the affinity feature to manually
select a particular server for a particular client. Although the affinity feature
can be used “[w]hen you want to use a site located near clients within a
private network for all queries from the private network” (id. at 7-38), this
selection is done manually by the user rather than automatically, as is the
case when using the geographic metric.
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Appellant also contends that anticipation is lacking even if the
Examiner is correct to conclude that Appellant’s “deemed to reside” claim
interpretation is unreasonably narrow. See Br. 18 (“Even if the concept of
assigning one device to a new geographic location in which it resides is
ignored and [we] focus on the interpretation suggest[ed] by the Examiner
where a prefix is associated with a geographic location, regardless of where
the device having that prefix resides, Conf. Guide still does not anticipate
claim 1.”). According to Appellant, ServerIron’s affinity definitions do not
associate address prefix information with geographic region information, as
required by the claim phrases “storing first address prefix information and
corresponding first geographic region information” and “storing second
address prefix information and corresponding second geographic region
information.” Specifically, Appellant argues:
When a switch is configured with the affinity feature disclosed
in Conf. Guide, the switch is merely configured to send requests
from a specified IP address prefix to a “specific site ServerIron”
(Conf. Guide, 7-38), which is not the same as the claimed
geographic region information. While a specific site ServerIron
(a switch) must inherently be located in some location,
associating the IP address prefix with a switch is not the same
as associating it with a geographic location. Many switches
could be present in one location, but according to Conf. Guide
the IP address prefix will be associated with just one of them.
Additionally, a switch can be moved to another geographic
location but would still remain associated with the old IP
address (i.e., the switch would receive all requests from the
specified IP address regardless of where that switch is
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44
geographically located or moved to). Association with a switch
cannot be considered the same as a geographic location.
Br. 18-19 (emphasis added). We agree with the Examiner that the claim
terms “first geographic region information” and “second geographic region
information” can be read on the names “sunnyvale” and “atlanta” in the
default and specific affinity definitions, which are reproduced below for
convenience:
ServerIron(config-gslb-affinity)# prefer sunnyvale slb-1 for
0.0.0.0/0
ServerIron(config-gslb-affinity)# prefer atlanta slb-1 for
192.108.22.0/22
ServerIron 7-40 (emphasis added). Each of these affinity definitions
associates address prefix information with geographic region information
(i.e., “sunnyvale” or “atlanta”). This is not altered by the fact that each
definition additionally associates the address prefix information with a
particular device identifier (i.e., “slb-1”). This additional association of the
address prefix information with a device identifier is not precluded by the
claim language. We are also unpersuaded by Appellant’s above-quoted
argument that “a [ServerIron] switch can be moved to another geographic
location but would still remain associated with the old IP address (i.e., the
switch would receive all requests from the specified IP address regardless of
where that switch is geographically located or moved to).” Br. 18-19. The
claims do not require that the second geographic information identify the
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45
actual location of a device, let alone require that the second geographic
information continually provide an accurate identification of its location.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of independent claims 1, 12, and 18 for anticipation
by ServerIron.

D. Conclusions Regarding Rejections for Anticipation and Obviousness
We sustain the Examiner’s rejection of independent claims 1, 12, and
18 and dependent claims 13, 15, and 17 under 35 U.S.C. § 102(b) based on
the affinity feature in ServerIron.
For the same reasons, we also sustain the rejection of dependent
claim 13 under 35 U.S.C. § 103(a) for obviousness over ServerIron.16 This
rejection relies on the Examiner’s additional finding that “[w]ell known

16 Claim 13 reads as follows:
13. (Original) The article of manufacture of claim 12
wherein said instructions to read said first address prefix
information and corresponding first geographic region
information include instructions executable by said processor
to:
read Internet Assigned Numbers Authority (IANA)-
allocated first address prefix information and corresponding
IANA-designated first geographic region information, and
wherein said second geographic region information specifies a
geographic region that is different from a geographic region
specified by said corresponding IANA-designated first
geographic region information.
(Continued on next page.)
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46
standards such IANA exist in the public domain for the express purpose of
being adopted by the public.” Final Action 7.

III. DECISION
The Examiner’s decision that claims 1, 12, 13, 15, 17, and 18 are
unpatentable over the prior art is affirmed.
AFFIRMED

peb

’965 patent cols. 12-13.
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47
For Third Party Requester:

Timothy J. May
Finnegan Henderson, Farabow, Garrett & Dunner, L.L.P.
901 New York Avenue, N.W.
Washington, D.C. 20001-4413

For Appellant/Patent Owner:

NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
1000 Louisiana Street
53rd Floor
Houston, TX 77002