Ex Parte Bouchat et al

Patent Trial and Appeal Board

Apr 19, 2013

10882235 (P.T.A.B. Apr. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHRISTELE BOUCHAT, SVEN JOZEF JEANNE VAN DEN
BOSCH, MICHEL FERDINAND PAULINE TASSENT, ERWIN ALFONS
CONSTANT SIX, and JEANNE EMMANUELLE RITA De JAEGHER
____________________

Appeal 2010-011496
Application 10/882,235
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, KRISTEN L. DROESCH and
STACEY G. WHITE, Administrative Patent Judges.

WHITE, Administrative Patent Judge.

DECISION ON APPEAL
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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF CASE
Appellants describe the present invention as providing a method and
device wherein a user’s media access control (MAC) address can be changed
or controlled dynamically. (Spec. ¶ 0006). Claim 1 is illustrative and is
reproduced below (disputed limitation in italics):
1. A method to control and to change dynamically a media
access control (MAC) address in an aggregation network
containing at least a server computer device and a client device,
said method comprising:
sending from said client device to a server
computer device a first message containing the MAC
address of said client computer device;
retrieving said MAC address from said message at
said server computer device;
checking if said MAC address is in use in said
network or if said server computer device wants to
change all MAC addresses in said network;
if said checking indicates that said MAC address is
in use or that said server computer device wants to
change all of said MAC addresses, sending from said
server computer device to said client device a second
message containing a new MAC address for said client;
and
overwriting said MAC address with said new MAC
address in said client device.
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REJECTIONS
1) Claims 6 and 7 stand rejected under 35 U.S.C. § 112, second
paragraph as indefinite for failing to particularly point out and
distinctly claim the subject matter which the Applicants regard as
the invention.1
2) Claim 8 stands rejected under 35 U.S.C. § 101 as directed to non-
statutory matter.
3) Claims 1 and 6-9 stand rejected under 35 U.S.C. § 103(a) as
obvious over Gangadharan (U.S. Pat. No. 6,928,478 B1) in view of
Basso (U.S. Pat. No. 5,444,692).
4) Claims 2 and 4 stand rejected under § 103(a) as obvious over
Gangadharan in view of Basso, further in view of Droms,
“Automated configuration of TCP/IP with DHCP,” Piscataway,
NJ, US Vo1.3, no.4 (1999), pp.45-53, XP000874503.
5) Claims 3 and 5 stand rejected under § 103(a) as obvious over
Gangadharan in view of Basso, further in view of Droms, and
further in view of Chiles (U.S. Pat. Pub. 2001/0036192 A1).

1 On February 25, 2010, the Board remanded this Appeal so that the
Examiner could consider whether claims 6-8 contain functional language
that is indefinite under 35 U.S.C. § 112. See Ex Parte Rodriquez, 92
USPQ2d 1395 (BPAI 2009) (precedential opinion) and Aristocrat Techs.
Austl. Pty. Ltd. v. It'l. Game Tech., 521 F.3d 1328 (Fed Cir. 2008).
Examiner responded by filing a Supplemental Answer (hereinafter “Ans.”)
that included two new grounds of rejection under §§ 101 and 112.
Appellants filed a Reply Brief disputing both the new and original grounds
of rejection.
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We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).
ISSUES
Appellants’ response to the Examiner’s positions presents the
following issues:
(1) Did the Examiner err in finding claims 6-7 indefinite under 35
U.S.C. § 112, second paragraph?
(2) Did the Examiner err in finding claim 8 unpatentable under 35
U.S.C. § 101?
(3) Did the Examiner err in finding that Gangadharan teaches or
suggests “sending from said server computer device to said client
device a second message containing a new MAC address for said
client; and overwriting said MAC address with said new MAC
address in said client device,” as required by claim 1?
(4) Did the Examiner err in finding that Droms teaches or suggests
that a first message containing the MAC address of said client
computer device is a dynamic host configuration protocol (DHCP)
discover message as required by claims 2 and 4?
ANALYSIS
The Examiner found claims 6 and 7 indefinite due to a lack of
sufficient structure for two means-plus-function limitations. (Ans. 5-6).
Appellants do not dispute that the terms are covered by 35 U.S.C. § 112
sixth paragraph; instead, they argue sufficient structure is recited in the
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specification. (Reply Br. 5-8). Appellants point to the Terminal of Figures
1 and 2 as structure for the “means for changing said MAC address into said
new MAC address upon reception of a message from said server computer
device containing said new MAC address” recited in claim 6. (Reply Br. 6
(citing Fig. 1, element 4 and Fig. 2, element 14)). Appellants point to the
DHCP and the Point-to-Point Protocol (PPP) Servers of Figures 1 and 2 as
the structure for the “means for deciding to change said MAC address of
said client device” recited in claim 7. (Reply Br. 6 (citing Fig. 1, element 2
and Fig. 2, element 12)). Appellants state that these structures are more than
general purpose computers; however, Appellants do not direct us to
objective evidence to support that assertion. (Reply Br. 7). We agree with
the Examiner and find the Appellants’ Terminal and Servers to be general
purpose computers and the Specification does not disclose an algorithm to
define how these functions are to be performed. As such, the Specification
fails to provide sufficient structure. See Ergo Licensing, LLC v. CareFusion
303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012). Therefore, we affirm the
Examiner’s rejection of claims 6 and 7 under 35 U.S.C. § 112.
The Examiner rejected claim 8 as unpatentable under 35 U.S.C. § 101.
Claim 8 is directed to a “computer program product” comprising elements
including “software instructions” and “a computer-readable medium.” The
Examiner finds this claim unpatentable because the medium is not specified
as tied to a non-transitory medium and therefore, the medium could include
non-statutory matter such as a signal or carrier wave. (Ans. 9). Appellants
aver that the claim is directed to a non-transitory computer readable medium
and cite Figures 1 and 2 for support. (Reply Br. 8). We agree with the
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Examiner. We find nothing in the claim language or the Figures cited by
Appellants that limits the scope of claim 8 to a non-transitory medium. A
claim that can include a transitory signal is not patentable under 35 U.S.C. §
101 and as such, we affirm the Examiner’s rejection of claim 8. See In re
Nuijten, 500 F. 3d 1346, 1357 (Fed. Cir. 2007).
Claims 1 and 6-9 were rejected by the Examiner under 35 U.S.C.
§ 103(a) over Gangadharan in view of Basso. Appellants argue that the
Examiner used improper hindsight reasoning to combine Gangadharan and
Basso in a manner that would be contrary to Gangadharan’s principle of
operation. (Br. 13-14 (citing In re Ratti, 270 F.2d 810 (CCPA 1959)). In
addition, Appellants assert Gangadharan does not disclose a server computer
device sending a second message containing a new MAC address for said
client and overwriting said MAC address with said new MAC address. Id.
The Examiner determined that it would have been obvious to one of
ordinary skill in the art to combine Basso with Gangadharan. (Ans. 12).
Appellants argue this combination would be contrary to Gangadharan’s
principle of operation. (Ans. 14). Appellants have not meaningfully
explained why the operation of Gangadharan’s address pool would be
impermissibly modified if it were used in combination with Basso’s
disclosure of checking to see whether a MAC address is already in use. See
In re Umbarger, 407 F.2d 425, 430-31 (CCPA 1969) (finding In re Ratti
inapplicable where the modified apparatus will operate “on the same
principles as before.”). As such, we are not persuaded that the Examiner
erred in combining Gangadharan and Basso.
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Further as to the argument based on Appellants’ reading of Ratti, we
have reviewed that venerable case of the CCPA, and find that much of its
holding must be updated by further developments in the law guided by the
Supreme Court as expressed in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398
(2007). Rather than expressing obviousness as the physical placement of
structure from one reference within the confines of the structure from
another reference as in Ratti, the Supreme Court viewed the prior art as a
combination of teachings from different sources, and the use of those
teachings by a practitioner in the art. Appellants’ reasoning based on Ratti is
inconsistent with the Court’s reasoning in KSR.
Appellants also argue that Gangadharan does not teach or suggest
“sending from said server computer device to said client device a second
message containing a new MAC address for said client; and overwriting said
MAC address with said new MAC address in said client device,” as required
by claim 1. (Br. 13-15). The Examiner found that Basso discloses
“checking if said MAC address is in use.” (Ans. 11-12) Appellants argue
that because Basso discloses this limitation and not Gangadharan that
“Gangadharan cannot consequently disclose elements performed based on
the checking.” (Br. 14). Thus by Appellants’ reasoning, Gangadharan
cannot disclose the second message or overwriting the MAC address. We
disagree. “Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). As noted above, we find that Examiner’s combination of Basso
and Gangadharan is proper. Thus, the appropriate inquiry is to determine
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whether Gangadharan as modified by Basso discloses the disputed
limitations and not whether Gangadharan in isolation discloses the
limitations.
As the Examiner pointed out, Gangadharan discloses formatting a
modified MAC address into a packet, returning that information to the client,
and assigning a new MAC address in place of the original MAC address.
(Ans. 21 (citing Gangadharan 4:30-35; 5:23-6:18)). We agree with the
Examiner’s finding that Gangadharan’s disclosure in combination with
Basso teaches or suggests the disputed limitations. KSR, 550 U.S. at 417
(“[W]hen a patent ‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no more than one
would expect from such an arrangement, the combination is obvious.”
(citation omitted)). Therefore, we affirm the Examiner’s rejection of claims
1 and 6-9 over Gangadharan and Basso.
In addition, Appellants argue the obviousness rejection of claims 2
and 4 is in error because Droms does not teach or suggest “a first message
containing the MAC address of said client computer device is a dynamic
host configuration protocol (DHCP) discover message.” (Br. 16). The
Examiner finds that Droms discloses a DHCP discover message. (Ans. 17
(citing Droms 47-48, Table 2)). Appellants concede that Droms discloses a
DHCP message and DHCP message format, but they argue that the
disclosure is insufficient because it does not teach or suggest “a first
message containing the MAC address of said client computer device is a
[DHCP] discover message.” (Br. 16). As discussed above, when dealing
with an obviousness rejection it is improper to view the references in
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isolation. The Examiner stated that one of ordinary skill in the art would
combine the teachings of Droms with Gangadharan and Basso in order to
“reduce the overhead and errors resulting from TCP/IP configuration.”
(Ans. 17). Appellants have not persuaded us that Examiner’s articulated
reasoning is in error. Thus, the proper inquiry here is whether Gangadharan
as modified by Basso and Droms teaches or suggests the disputed limitation.
We find that Droms’ disclosure of DHCP messages in combination with the
disclosures of Gangadharan and Basso teaches or suggests the disputed
limitations of claims 2 and 4. As such, we affirm the Examiner’s rejection
of claims 2 and 4 as obvious over the cited art.
For the foregoing reasons, Appellants’ arguments have not persuaded
us of error in the Examiner’s rejection of claims 1, 2, 4, and 6-9.
Accordingly, we sustain the Examiner’s rejection of those claims and
dependent claims 3 and 5, which are not argued separately, which fall with
independent claim 1.
DECISION
The Examiner’s decision rejecting claims 1-9 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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