Ex Parte Bitar et al

Board of Patent Appeals and Interferences

May 23, 2011

10838782 (B.P.A.I. May. 23, 2011)

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.
10/838,782 05/03/2004 Nabil N. Bitar 129250-002189/US 5943
32498 7590 05/23/2011
CAPITOL PATENT & TRADEMARK LAW FIRM, PLLC
P.O. BOX 1995
VIENNA, VA 22183
EXAMINER
HSU, ALPUS
ART UNIT PAPER NUMBER
2465
MAIL DATE DELIVERY MODE
05/23/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NABIL N. BITAR, THOMAS A. HOCH,
and MARTIN KANNAMPUZHA VARGHESE
____________

Appeal 2009-011027
Application 10/838,782
Technology Center 2400
____________

Before MAHSHID D. SAADAT, ALLEN R. MACDONALD,
and BRUCE R. WINSOR, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-011027
Application 10/838,782

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Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-3, 5, 8, 10-13, and 16-18. Claims 4, 6, 7, 9, 14, and 15 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to switching and routing devices used in
networks that provide multicast services (Abstract). Claim 1, which is
illustrative of the invention, reads as follows:
1. A system for switching or routing data packets, the system
comprising:
one or more ingress line cards having one or more input
ports;
one or more control units, wherein control units at the
ingress line cards segment a multicast packet into one or more
fabric data units (FDU) prior to sending across the switch fabric
and switch or route a segmented, multicast data packet from an
input port to an output port across the switching fabric in two or
more separate stages of packet replication, wherein at most one
replica is sent to an egress line card, and control units at the
egress line cards reassemble the multicast packet from FDUs
received after being sent across the switch fabric;
a switching fabric; and
one or more egress line cards having one or more output
ports,
wherein an egress line card may indicate that it is
unavailable to receive FDUs, and wherein the control units at
the ingress line cards do not send an FDU to an egress line card
if that egress card has indicated that it is unavailable to receive
FDUs.

Appeal 2009-011027
Application 10/838,782

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The Examiner relies on the following prior art in rejecting the claims:
Bianchini US 5,287,346 Feb. 15, 1994
Pegrum US 2002/0080720 A1 Jun. 27, 2002
Sarkinen US 2003/0058880 A1 Mar. 27, 2003

Claims 1, 8, and 16-18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pegrum in view of Sarkinen.
Claims 2, 3, 5, and 10-13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pegrum in view of Sarkinen and further in view of
Bianchini.
Rather than repeat the arguments here, we make reference to the
Briefs (App. Br. filed Aug. 26, 2008; Reply Br. filed Jan. 8, 2009) and the
Answer (mailed Nov 13, 2008) for the respective positions of Appellants
and the Examiner. Only those arguments actually made by Appellants have
been considered in this decision. Arguments that Appellants did not make in
the Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
Appellants argue the patentability of claims 1-3, 5, 8, 10-13, and 16-
18 together. Therefore, we select claim 1 as the representative claim,
pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds claim 1 to be unpatentable based on Pegrum’s
disclosure of replicating multicast packets in two separate stages and
sending at most one replica to an egress line card (herein the “replication
limitation”) (Ans. 4). The Examiner combines Pegrum’s disclosure of the
replication limitation with Sarkinen’s disclosure of segmenting a multicast
Appeal 2009-011027
Application 10/838,782

4
packet into fabric data units (FDUs) and indicating to ingress cards to not
send FDUs to an egress card when that egress card is not available to receive
FDUs (herein “backpressure control”) (Ans. 5-6, 13). Appellants contend
that one skilled in the art would not combine the references (App. Br. 6),
because combining Sarkinen with Pegrum would require a change in
Pegrum’s principle of operation (App. Br. 6-7; Reply Br. 1-2).
The issue presented is whether the combination of Sarkinen with
Pegrum impermissibly requires a change in Pegrum’s principle of operation.

PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
To justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device shown in
the other. The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).

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Application 10/838,782

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ANALYSIS
Appellants contend that a person skilled in the art would not combine
Sarkinen’s disclosure of backpressure control with Pegrum’s disclosure of
the replication limitation, because to do so would impermissibly change
Pegrum’s principle of operation (App. Br. 6). More particularly, Appellants
argue that because Pegrum uses overlapping sets of egress interfaces to
handle overloads, using backpressure control to handle overloads would
cause Pegrum to change its principle of operation (id.). Appellants further
argue that “in all likelihood [backpressure control] would interfere with
Pegrum’s intended operation” (Reply Br. 1).
We are not persuaded. Appellants provide no explanation as to why
Pegrum’s overlapping egress cards cannot coexist operationally with
Sarkinen’s backpressure control. More significantly, Appellants’ argument
ignores the Examiner’s reliance on Pegrum for teaching the replication
limitation, so as to minimize congestion on the switching fabric (Ans. 4),
and not for teaching handling overload conditions. See Keller, 642 F.2d at
425. In other words, the way in which Pegrum replicates multicast packets
is the relevant principle of operation, and Appellants make no argument that
combination with Sarkinen’s backpressure control alters this principle of
operation.
Accordingly, we find that claim 1 recites a combination of familiar
elements according to known methods that does no more than yield
predictable results, see KSR, 550 U.S. at 416, that can be implemented by a
person of ordinary skill in the art, see id. at 417. Therefore, we sustain the
rejection of claim 1 and of claims 2, 3, 5, 8, 10-13, and 16-18.

Appeal 2009-011027
Application 10/838,782

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ORDER
The decision of the Examiner to reject claims 1-3, 5, 8, 10-13, and 16-
18 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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