Ex Parte Anantharam et al

Patent Trial and Appeal Board

May 30, 2018

14447455 (P.T.A.B. May. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/447,455 07/30/2014
126109 7590 06/01/2018
Zilka-Ko tab, PC - Endicott
1155 North First Street, Suite 105
San Jose, CA 95112
FIRST NAMED INVENTOR
Sushma Anantharam
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.
END1P012B/SJ0920120008US3 1332
EXAMINER
AHMED, ABDULLAH!
ART UNIT PAPER NUMBER
2472
NOTIFICATION DATE DELIVERY MODE
06/01/2018 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):
zk-uspto@zilkakotab.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUSHMA ANANTHARAM, KESHA VG. KAMBLE,
DAR-REN LEU, NILANJAN MUKHERJEE,
and VIJOY A. PANDEY,
Appeal2017-011702
Application 14/447,455
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 According to Appellants, the real party in interest is International Business
Machines Corp. App. Br. 2.
Appeal2017-011702
Application 14/447,455
INVENTION
Appellants' invention relates to data center infrastructure, and more
particularly, to Ethernet switches capable of layer 2 packet switching
without the use of a look-up table. Spec. ,r 2. Claim 9 reads as follows:
9. A computer program product for assigning a media access
control (MAC) address, the computer program product
comprising a computer readable storage medium having program
instructions embodied therewith, the program instructions being
readable and/or executable by at least one processor to cause the
at least one processor to:
receive, by the at least one processor, a request to assign a
MAC address to a device on a port;
determine, by the at least one processor and without using
a look-up table, a MAC address to assign to the device, wherein
the port is determinable from the MAC address; and
send, by the at least one processor, the MAC address to the
device via the port.
REJECTI0NS 2
Claims 1, 9, and 15 stand rejected under 35 U.S.C. § I02(e) as
anticipated by Shukla et al. (US 2013/0163591 Al; published June 27, 2013)
("Shukla"). Final Act. 4.
Claims 1-20 stand rejected on the ground of non-statutory
obviousness type double patenting ("OTDP") as unpatentable over claims 1-
22 of US 8,861,401 B2 ("'401 patent"). Final Act. 4.
2 The Examiner withdrew the rejection of claims 9-14 under 35 U.S.C.
§ 101. Ans. 2.
2
Appeal2017-011702
Application 14/447,455
ANALYSIS
Reiection of Claims 1. 9. and 15 under 35 U.S.C. § 102(e)
The Examiner found paragraphs 59, 69, 85, and 86 of Shukla disclose
the limitations of each of claims 1, 9, and 15. Final Act. 5. The Examiner
cited to Figure 1 and paragraphs 5, 61, and 91 of Shukla in further support of
the rejection. Ans. 7-12.
In an anticipation rejection, "it is not enough that the prior art
reference ... includes multiple, distinct teachings that [an] artisan might
somehow combine to achieve the claimed invention." Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the reference
must "clearly and unequivocally disclose the claimed [invention] or direct
those skilled in the art to the [invention] without any need for picking,
choosing, and combining various disclosures not directly related to each
other by the teachings of the cited reference." Id. ( quoting In re Arkley, 455
F.2d 586, 587 (CCPA 1972)). Thus, while "[s]uch picking and choosing
may be entirely proper in the making of a 103, obviousness rejection ... it
has no place in the making of a 102, anticipation rejection." Arkley, 455
F.2d at 587-88.
Because the Examiner relies on multiple embodiments in Shukla to
reject each independent claim (see, e.g., Shukla ,r 69), we find the Examiner
has not established a prima facie case of anticipation.
We express no opinion regarding the obviousness of the claims before
us on appeal because a rejection under § 103 is not before us. However, our
reviewing court guides that under § 103: "Combining two embodiments
disclosed adjacent to each other in a prior art patent does not require a leap
of inventiveness." Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982,
3
Appeal2017-011702
Application 14/447,455
991 (Fed. Cir. 2009). Although the Board is authorized to reject claims
under 37 C.F.R. § 4I.50(b), no inference should be drawn when the Board
elects not to do so. See Manual of Patent Examining Procedure (MPEP)
§ 1213.02. We leave any such further consideration of a rejection under
§ 103, over Shukla considered alone or in combination with additional
references, to the Examiner.
Accordingly, we do not sustain the Examiner's§ 102(e) rejection of
independent claims 1, 9, and 15.
Non-Statutory Double Patenting Reiection of Claims 1-20
Appellants contend the Examiner's rejection of claims 1-20 fails to
allege a proper prima facie case of obviousness-type double patenting. App.
Br. 22-23; Reply Br. 15-16. Appellants argue the double patenting
rejection is in error because the Examiner has not shown how the differences
between the conflicting claims are obvious in view of the claims of the cited
patent. Reply Br. 16. Appellants argue the Examiner has failed to provide
any evidence of double patenting and the reasoning used by Examiner is
merely conclusory. Id.
The Examiner bears the initial burden of presenting a prima facie case
of unpatentability. In making an obviousness-type double patenting
rejection, the Examiner must show that a claimed invention is "a mere
variation of [the patented] invention ... which would have been obvious to
those of ordinary skill in the relevant art ... [and] there must be some clear
evidence to establish why the variation would have been obvious which can
properly qualify as 'prior art."' In re Kaplan, 789 F.2d 1574, 1579-80 (Fed.
Cir. 1986). Accordingly, in Kaplan, the Federal Circuit reversed an
obviousness-type double patenting rejection "because there [was] no proper
4
Appeal2017-011702
Application 14/447,455
evidence to show that the claim [was] for a mere obvious variation of what
[was] claimed in the Kaplan patent relied on to support the rejection." Id.
at 1581.
In the instant case, the Examiner provided a claim chart for
independent claim 1, finding all the elements of the instant claim 1 in
claim 1 of the '401 patent. Ans. 12. Independent claim 15 recites
limitations commensurate with those of claim 1.
With regard to claims 2-14 and 16-20, however, the Examiner
provided essentially no evidence or explanation as to why the appealed
claims would have been obvious over the claims of the '401 patent. The
Examiner's claim chart in the Answer does not include all of the claims on
appeal. We, therefore, conclude that the Examiner has not met the burden
required to show that the appealed claims would have been obvious in view
of or anticipated by the patented claims.
In view of the foregoing, we sustain the Examiner's non-provisional
obviousness-type double patenting rejection of claims 1 and 15, but we do
not sustain the Examiner's non-provisional obviousness-type double
patenting rejection of claims 2-14 and 16-20.
DECISION
We reverse the Examiner's decision rejecting claims 1, 9, and 15
under 35 U.S.C. § 102(e).
We reverse the Examiner's decision rejecting claims 2-14 and 16-20
on the ground of non-statutory OTDP.
We affirm the Examiner's decision rejecting claims 1 and 15 on the
ground of non-statutory OTDP.
5
Appeal2017-011702
Application 14/447,455
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED-IN-PART
6