Ex Parte Buer et al

Patent Trial and Appeal Board

Oct 31, 2013

10728192 (P.T.A.B. Oct. 31, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/728,192 12/04/2003 Mark L. Buer 2875.0170001 7312
26111 7590 11/01/2013
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
WILLIAMS, JEFFERY L
ART UNIT PAPER NUMBER
2437
MAIL DATE DELIVERY MODE
11/01/2013 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 MARK L. BUER and SCOTT S. MCDANIEL
____________________

Appeal 2011-008319
Application 10/728,192
Technology Center 2400
____________________

Before: ERIC S. FRAHM, JOHNNY A. KUMAR, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008319
Application 10/728,192
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-7, 9, 13-33, and 35-40. Claims 8, 10-12, 34, and 41-53 have been
canceled. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b). We heard oral arguments on October 22, 2013.
We affirm.
THE INVENTION
The claims are directed to a tagging mechanism for data path security
processing. Claims 1 and 5, reproduced below, are representative of the
claimed subject matter:
1. A method of generating encrypted packets comprising the
steps of:
receiving, in a security processor, a first Ethernet packet
from an originating device, the first Ethernet packet comprising
a second Ethernet packet and a memory address associated with
a security association, wherein a destination address of the
second Ethernet packet is an address of the originating device;
extracting the memory address and the second Ethernet
packet from the first Ethernet packet;
retrieving the security association from the memory using
the received memory address; and
encrypting a portion of the extracted second Ethernet
packet according to the retrieved security association.

5. The method of claim 4 wherein the outer Ethernet header comprises
a user-specific type.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hadzic US 7,130,303 B2 Oct. 31, 2006
Appeal 2011-008319
Application 10/728,192
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Mercer
Bryers
US 2003/0018908 A1
US 2003/0126233 A1
Jan. 23, 2003
Jul. 3, 2003
Stevens, W. Richard, TCP/IP Illustrated, Vol. 1, 1994, Addison Wesley, pg.
21-23.

REJECTIONS
The Examiner made the following rejections:
Claims 5-7, 9, 18, and 30 stand rejected under 35 U.S.C. § 112 first
paragraph as failing to comply with the written description requirement.
Ans. 8.1
Claims 5-7 , 9, 18, and 30 stand rejected under 35 U.S.C. § 112
second paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter which appellant regards as the invention.
Ans. 9.2
Claims 1-4, 13-16, 17, 22-29, 31, and 35-40 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Bryers, Hadzic, and Mercer.3

1 The rejections of claims 1-4, 13-17, 19-29, 31-33, and 35-40 under 35
U.S.C. § 112, first paragraph, are withdrawn. Ans. 3.
2 The rejections of claims 1-4, 13-17, 19-29, 31-33, and 35-40 under 35
U.S.C. § 112, second paragraph, are withdrawn. Ans. 3.
3 Although the Examiner’s listing of claims rejected under 35 U.S.C.
§ 103(a) over Bryers, Hadzic and Mercer at page 12 of the Answer omits
claims 13-15, 22-29, 31, and 35-40 (with omitted claims 13-15 and 37
substantively addressed at page 15 of the Answer), because the omitted
claims were previously indicated to have been rejected in the Non-final
Office Action of October 8, 2008 and those rejections were not subsequently
indicated to have been withdrawn, we agree with Appellants that the
omission of these claims was a typographical error (see App. Br. 7, fn. 1.)
Therefore, for purposes of this appeal, we consider the outstanding rejection
under 35 U.S.C. § 103(a) over Bryers, Hadzic, and Mercer to be as set forth
at page 5 of the October 8, 2008 O.A. Should prosecution continue, the
Examiner should confirm the status of all rejections.
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Claims 5-7, and 9, 18-21, 30, 32, and 33 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Bryers, Hadzic, Mercer, and
Stevens.4

APPELLANTS’ CONTENTIONS
1. In connection with the rejections under 35 U.S.C. § 112, Appellants’
disclosure of a unique Ethernet type field registered to a company
provides support for the disputed terminology including a user-specific
type. App. Br. 8.
2. In connection with the rejections under 35 U.S.C. § 103(a): “It is
irrelevant that the address of a sender may be used by the recipient to
send data to the sender at some time in the future [but instead] whether
the sender transmits a . . . second Ethernet packet pre-populated with the
destination address of the originating device.” App. Br. 14-15.

ISSUES ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 8-18)
and Reply Brief (Reply Br. 2-8), the issues presented on appeal are whether:
(i) The Specification as filed provides a written description of a user-
specific or user-specified [Ethernet] type so as to reasonably convey

4 Although the listing of claims rejected under 35 U.S.C. § 103(a) over
Bryers, Hadzic, Mercer, and Stevens appearing at page 16 of the Answer
omits claims 18-21, 30, 32, and 33, because the omitted claims were
previously indicated to have been rejected in the Non-final Office Action of
October 8, 2008 and those rejections were not subsequently indicated to
have been withdrawn, it appears that the omission of these claims was a
typographical error. Therefore, for purposes of this appeal, we adopt
Appellants’ statement of the rejection appearing at page 7 of the Appeal
Brief, item 5, consistent with the October 8, 2008 O.A. at page 8.
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to one skilled in the relevant art that the inventors had possession of
the claimed invention; and, in view of the description, the disputed
limitations are sufficiently definite so as to particularly point out and
distinctly claim the subject matter which Appellants regard as the
invention.
(ii) Hadzic’s description of an inner Ethernet header including the source
address of a sending device populating a Source Address (SA) field of
the inner Ethernet header teaches or suggests a destination address of
the inner Ethernet packet is an address of the originating device.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Ans. 4-16) and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief (Ans. 16-22) and concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.

35 U.S.C. § 112
Appellants contend the disclosure of the Ethernet “type field” together
with the description that “[a] company such as Broadcom Corporation may
have a unique registered Ethernet type 62 that is used to define inband
packet communication” (App. Br. 8 quoting Spec. p. 12, l. 31 – p. 13, l. 1)
provides support for a “unique registered Ethernet type [that] is user-
specific.” (Id.) Appellants conclude “[t]he recitation ‘user-specific type’
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and ‘user-specific Ethernet type’ are defined with reasonable clarity and
precision in Appellants' specification.” App. Br. 9. The Examiner responds
that, while the terms “Ethernet type field” and “manufacturer” are well
understood by those of ordinary skill in the art, there is no basis to interpret
an Ethernet type field as the disputed “user specific type,” “user-specific
Ethernet type,” or “user-specified Ethernet type.” Ans. 19. Instead, the
Examiner finds:
[O]ne of ordinary skill in the art does not regard a company or
equipment manufacturer (e.g. “Broadcom[,]”[] see also
Appellant[]s[’] Remarks, Brief, pg. 8), to be a “user[.]”[] The meaning
of the term “user” is well defined in the prior art and is understood by
one of ordinary skill to be a person who uses the services of or
interacts with a product or system (e.g. for evidentiary definition, see
definition of “user[,]”[] IEEE 100, The Authoritative Dictionary of
IEEE Standards Terms, pg. 1241. While a company or equipment
manufacturer may manufacture an individual machine component or
design a particular protocol component that is found to be used within
an overall computing system, one of ordinary skill in the art does not
regard the company or equipment manufacturer to be the “user” of the
computing system.
Ans. 19-20.
We find the Examiner’s position to be reasonable. In contrast,
Appellants have failed to provide sufficient evidence or argument in rebuttal
to persuade us that the Examiner’s interpretation is erroneous. In particular,
Appellants’ argument that a company, such as Broadcom, would be
understood to be a “user” is mere attorney argument unsupported by
persuasive evidence. Reply. Br. 2-3. Therefore, we agree that a reasonable
interpretation of a user is a person who uses services of or interacts with a
product or system. See Ans. 19. Because Appellants have not shown that the
Specification describes an Ethernet type that is specific to or specified by a
“user,” i.e., a person who uses the services of or interacts with a product of
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system, we agree with the Examiner that (i) the Specification fails to provide
proper antecedent basis for the recitations of claims 5, 9, 18 and 30 (Ans. 5)
and that (ii) the subject matter of claims 5-7, 9, 18, and 30 was not described
in the Specification in such a way as to reasonably convey to one skilled in
the relevant art that the inventors, at the time the application was filed, had
possession of the invention defined by the claims (Ans. 8.) Furthermore, in
the absence of proper support for the disputed claim language, we agree with
the Examiner that claims 5 -7, 9, 18, and 30 are indefinite (Ans. 9-11.)
Accordingly, we sustain the rejections of claims 5 -7, 9, 18, and 30 under 35
U.S.C. § 112 first and second paragraphs.

35 U.S.C. § 103(a)
Appellants contend in Hadzic’s encapsulation “the destination address
of the inner packet is the address of the ultimate message recipient (and not
the address of the originating device).” App. Br. 16. Therefore, according to
Appellants, Hadzic fails to teach or suggest a destination address of the
second (i.e., inner packet) is an address of the originating device as required
by claim 1. App. Br. 16. The Examiner responds that, when a receiving
device replies to an originating device, the receiving device uses the address
of the originating device (i.e., source address SA) to send the reply so that
the source address becomes a destination address. Ans. 21. Therefore, the
Examiner finds that Hadzic’s inner source address, SA, is a destination
address when used to send a response back to the sender and, as such,
teaches or suggests the disputed claim language of “a destination address of
the second Ethernet packet is an address of the originating device.” Id. We
find that the Examiner’s analysis to be reasonable and agree with the
conclusion.
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The disputed claim language requires that a “destination address” of
the Ethernet packet be an address of the originating device. Appellants argue
that this corresponds to requiring “the destination address of the embedded
second Ethernet packet is pre-populated by the originating device with the
address of the originating device.” App. Br. 14. The Examiner finds this
limitation taught by having the address of the originating device included in
the Ethernet SA (source address) field (Ans. 21), while Appellants argue that
it must be included as the “destination address” (App. Br. 16.) We note,
however, that Appellants’ claims do not require that the “DA field” be
populated or include the address of the originating device (see, e.g., Spec. p.
12, ll. 10-11, 28-31), only that the destination address be included
somewhere in the second Ethernet packet. Therefore, we agree with the
Examiner that, under a broad yet reasonable interpretation of the claims,
including the address of the originating device in the Ethernet SA field to be
used as a destination address when, for example, replying to the originating
device, teaches or suggests a destination address of the second Ethernet
packet is an address of the originating device. Ans. 21. We find that such a
broad interpretation is reasonable and not inconsistent with the Specification
which specifically describes a “DA field” (id.) in contrast to the argued
“destination address.”5
Therefore, in the absence of sufficient evidence or argument, we are
unpersuaded of Examiner error. Accordingly, we sustain the rejections of

5 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and 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)).

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independent claim 1 and, for the same reasons, independent claims 17, 26
and 37 under 35 U.S.C. § 103(a) over Bryers, Hadzic, and Mercer together
with the rejections of dependent claims 2-4, 13-16, 22-25, 27-29, 31, and 35,
36, and 38-40 not separately argued.6 We further sustain the rejection of
dependent claims 5-7, and 9, 18-21, 30, 32, and 33 under 35 U.S.C. § 103(a)
over Bryers, Hadzic, Mercer, and Stevens, these dependent claims also not
separately argued.

CONCLUSIONS
We find
(i) The Specification as filed fails to provide a written description
of a user-specific or user-specified [Ethernet] type so as to reasonably
convey to one skilled in the relevant art that the inventors had possession of
the claimed invention; and, the disputed limitations are sufficiently
indefinite so as to fail to particularly point out and distinctly claim the
subject matter which Appellants regard as the invention.
(ii) Hadzic’s description of an inner Ethernet header including the
source address of a sending device populating a Source Address (SA) field
of the inner Ethernet header teaches or suggests a destination address of the
inner Ethernet packet is an address of the originating device.

DECISION
The Examiner’s decision to reject claims 1-7, 9, 13-33, and 35-40 is
affirmed.

6 Merely restating with respect to a second claim an argument, previously
presented with respect to a first claim, is not an argument for separate
patentability of the two claims.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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