Ex Parte Chen et al

Patent Trial and Appeal Board

Dec 17, 2014

11610830 (P.T.A.B. Dec. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WEI-PIN CHEN, HUNG-CHI HUANG, MING-CHAO CHUNG,
and CHUN-CHENG WANG
____________

Appeal 2012-005284
Application 11/610,830
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-005284
Application 11/610,830

2
STATEMENT OF THE CASE
The Examiner finally rejected claims 1-17. Appellants appeal from
the final rejection under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
INVENTION
This invention relates to media access control (MAC) address
management. (Spec. ¶1). Claim 1, reproduced below, is representative of
the claimed subject matter:
1. A method for MAC (Media Access Control) address
management executed by a router comprising a MAC table,
comprising:
[a] performing, by the router, a first checking to determine
capacities of a first column and a second column in the MAC
table,
[b] wherein the first and second columns correspond to a first
index;
[c] performing, by the router, a second checking to determine
capacities of a third column and a fourth column in said MAC
table when capacities of said first column and said second
column are filled with MAC addresses,
[d] wherein the third and fourth columns correspond to a
second index; and
[e] storing, by the router, a MAC address into one of said third
column and said fourth column if one of said third and fourth
columns has available capacity,
[f] wherein said second index is successive to said first index.
(Steps lettered, paragraph returns added).
Appeal 2012-005284
Application 11/610,830

3

REJECTIONS
R1. Claims 1–17 stand rejected under 35 U.S.C. § 102(a) as “clearly
anticipated” (Ans. 5) by Appellants' Admitted Prior Art ("AAPA" i.e., the
“Description of the Related Art” portion of Appellants’ Specification, ¶¶2–6,
Figs. 1a, 1b, 2a, 2b).
R2. Claims 1, 4, 7, 10, and 15 stand rejected under 35 U.S.C. § 102(e)
as anticipated by Chen (U.S. Patent Application Pub. No. 2006/0274739
A1).
R3. Claims 2, 3, 5, 6, 8, 9, 11–14, 16, and 17 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Chen in view of AAPA.

GROUPING OF CLAIMS
Based on Appellants' arguments, we decide the appeal of:
The rejection of claims: on the basis of representative claim:
R1. claims 1–17 Individually (reverse)
R2. claims 1, 4, 7, 10, and 15 1 (sustain)
R3. claims 2, 3, 5, 6, 8, 9,11-14,16,
and 17
Individually (reverse)
See 37 C.F.R. § 41.37(c)(1)(vii)(2004). 1

1 Appellants filed a Notice of Appeal on Aug. 16, 2011. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex Parte
appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the
2004 version of the Board Rules last published in the 2011 edition of Title
37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to
the appeal. See also Manual of Patent Examining Procedure (MPEP) 8th
ed., Rev. 8, July 2010.
Appeal 2012-005284
Application 11/610,830

4

ANALYSIS
R1. CLAIMS 1 AND 7
Regarding base claim 1 limitation [e] "storing, by the router, a MAC
address into one of said third column and said fourth column if one of said
third and fourth columns has available capacity," and base claim 7 limitation
[a] "writing, by the router, said MAC address into one of the columns
corresponding to said second index if one of the columns corresponding to
said second index has available capacity," Appellants contend:
Figure 2a and paragraph 0004 of the AAPA only relevantly
discloses looking up the MAC table for the four columns
corresponding to an index generated by a MAC address, and if
one of the columns is available, storing the MAC address into
the available column, and otherwise, overwriting one of the
columns with the MAC address.
(Appeal Br. 7; See Appeal Br. 5-7).
Appellants' contentions are persuasive because the Examiner's cited
sections of AAPA (¶ 4, and Fig, 2b) do not disclose limitation [e].
Specifically, AAPA describes: "[i]n step S204, it is individually checked
whether the capacities of one of the four columns are available for the MAC
address. If one of the columns is available, the MAC address is stored
thereto in step S206." (Emphasis added; ¶4).
Thus, AAPA stores the Mac address into any one of the available four
columns, and does not specifically describe claim 1 limitation [e]: "storing
by the router, a MAC address into one of said third column and said fourth
column" or the claim 7 limitation [a] "said second index," which the

Appeal 2012-005284
Application 11/610,830

5
Examiner maps to the AAPA third and fourth columns. (Ans. 7–8, 5;
AAPA, Fig. 2b: “PRIOR ART”). Under any arbitrary column numbering
scheme, we find AAPA (¶4, Fig. 2b) could store the MAC address to any
one of the available four columns, including a first or second column.
Therefore, the cited sections of AAPA do not expressly or inherently
anticipate claim 1 limitation [e] and claim 7 limitation [a].2 Accordingly, we
reverse anticipation rejection R1 of independent claims 1 and 7, and
rejection R1 of associated dependent claims 2–6, and 8–17, respectively.
R2. CLAIM 1
Regarding claim 1 limitations [b] and [d], Appellants contend: "[t]hus,
A slot and B slot of Chen cannot be properly construed as the first index and
second index of the claimed embodiments and the cited reference, Chen,
does not teach, disclose, or suggest the claimed features as indicated above."
(Appeal Br. 11).
Appellants' contentions are unpersuasive because Appellants do not
address and rebut the specific findings relied on by the Examiner in the
“Response to Arguments” section of the Answer. (Appeal Br. 11;
Ans. 10–11, 21–22). Specifically, the Examiner relies on Chen's bucket 210
and bucket 220, not A slot and B slot as Appellants contend, for teaching or
suggesting the claimed first index and second index. (Ans.10–11, 21–22;
claim 1). Appellants' Reply Brief fails to address and rebut the Examiner’s
findings in the Answer. (Reply Br. 1).

2 “Inherency … may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient.” In re Robertson, 169 F.3d 743, 745, (Fed. Cir. 1999)
(internal citations omitted).
Appeal 2012-005284
Application 11/610,830

6
For these reasons, on this record, we are not persuaded the Examiner
erred. Accordingly, we sustain anticipation rejection R2 of representative
claim 1, and the grouped claims rejected under rejection R2, which fall
therewith. (See Grouping of Claims, supra).
R3.
Regarding all claims rejected under rejection R3, Appellants contend:
In addition, Applicant submits that the combination of
AAPA with Chen with AAPA is improper. Applicant addresses
each of claims 2, 3, 5, 6, 8, 9, 11-14, 16, and 17, and in each
instances alleges that the combination of AAPA with Chen
would have been obvious because the particularly combination
"would have enhanced the versatility of Chen's method by
allowing it to __ ." With respect to each claim, the blank was
filled in merely by reciting the feature of the corresponding
claim. Clearly such bases for rejection are improper and
embody clear (and improper) hindsight reconstruction.
(Appeal Br. 12–13).
We agree with Appellants. (id.). The Examiner's proffered motivation
for combining Chen and AAPA is that the AAPA features would "manage
MAC address[es] more efficiently." (Emphasis added; Ans. 13-20).
However, the Examiner's articulated reasoning does not have a rational
underpinning because the Examiner fails to provide any evidence or
reasoning explaining why an artisan would have recognized the AAPA
features would "manage MAC address[es] more efficiently." (id.) 3

3 The Supreme Court stated that “‘[r]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”’ KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Appeal 2012-005284
Application 11/610,830

7
In reviewing the record, we find the background of Appellants’
Specification (AAPA relied on by the Examiner, Spec. ¶6) directly
contradicts the Examiner’s proffered motivation statements. (Ans. 13–20).
The cited AAPA method expressly describes: "[u]sing indices to access the
MAC addresses is convenient; however, the utilization of memory is not
efficient." (Spec. ¶ 6, emphasis added). This statement in the AAPA that the
prior art approach is not efficient eviscerates the Examiner's articulated
reasoning for each proffered motivation statement (Ans. 13–20, Rejection
R3), and evidences reliance on impermissible hindsight per se. (See also
App. Br. 12–13).
Because we agree with Appellants’ contention the Examiner relied on
impermissible hindsight reconstruction (Appeal Br. 12–13), and for the
additional reasons discussed above, we are constrained by the record to
reverse the rejection of all claims rejected under §103 rejection R3. (See
REJECTIONS, supra).
DECISION
We reverse the Examiner's rejection R1 of claims 1–17 under §102.
We affirm the Examiner's rejection R2 of claims 1, 4, 7, 10, and 15
under §102.
We reverse the Examiner's rejection R3 of claims 2, 3, 5, 6, 8, 9,
11–14, 16, and 17 under § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART
Ssc