Ex Parte Claise et alDownload PDFPatent Trial and Appeal BoardDec 13, 201311223379 (P.T.A.B. Dec. 13, 2013) Copy Citation 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. 11/223,379 09/08/2005 Benoit Claise 50325-1153 1053 29989 7590 12/16/2013 HICKMAN PALERMO TRUONG BECKER BINGHAM WONG LLP 1 ALMADEN BOULEVARD FLOOR 12 SAN JOSE, CA 95113 EXAMINER BELANI, KISHIN G ART UNIT PAPER NUMBER 2443 MAIL DATE DELIVERY MODE 12/16/2013 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 BENOIT CLAISE and STEFANO BENEDETTO PREVIDI 1 ____________________ Appeal 2011-007779 Application 11/223,379 Technology Center 2400 ____________________ Before JOSEPH F. RUGGIERO, JEAN R. HOMERE, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-3, 6-14, 16-18, and 20-29. Appellants have previously canceled claims 4, 5, 15, and 19. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The Real Party in Interest is Cisco Systems, Inc. App. Br. 1. Appeal 2011-007779 Application 11/223,379 2 STATEMENT OF THE CASE 2 The Invention Appellants’ invention generally relates to routing of data elements and, more specifically, to a method and apparatus for managing routing of data elements. Spec., ¶ [0001] (“FIELD OF THE INVENTION”). Exemplary Claims Claim 1, reproduced below, is representative of the subject matter on appeal (emphasis added): 1. A method of managing routing of data elements, each having a plurality of characteristics having a respective attribute, in a data communications network, comprising: a router performing: creating a flow record representing a plurality of network data packets having common attributes for one or more tracked characteristics; wherein the flow record is created by filtering out network data packets which do not have the common attribute for the one or more tracked characteristics; wherein the flow record has a record value and a state change occurs if the record value meets a state change criterion; 2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed Dec. 1, 2010); Reply Brief (“Reply Br.,” filed Mar. 29, 2011); Examiner’s Answer (“Ans.,” mailed Mar. 3, 2011); Final Office Action (“FOA,” mailed Oct. 25, 2010); and the original Specification (“Spec.,” filed Sep. 8, 2005). Appeal 2011-007779 Application 11/223,379 3 defining said flow record as a trackable object by configuring the object with an Enhanced Object Tracking (EOT) process; tracking the state change of said trackable object using a stand-alone tracking process registered to the EOT process; and performing a routing protocol management step upon occurrence of a tracked state change. Prior Art The Examiner relies upon the following prior art in rejecting the claims on appeal: Rawlins US 2002/0194369 A1 Dec. 19, 2002 Levine US 2003/0177187 A1 Sep. 18, 2003 Kan US 2005/0144314 A1 June 30, 2005 Ross US 2006/0072451 A1 Apr. 6, 2006 Partridge US 2006/0165003 A1 July 27, 2006 Freedman US 7,103,675 B1 Sep. 5, 2006 Turner US 7,313,100 B1 Dec. 25, 2007 Enhanced Object Tracking, Cisco Systems, Inc., 1-53 (2003) (hereinafter “Cisco”). Rejections on Appeal 1. Claims 1-3, 8-10, 16-18, 20, 21, 25, and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Partridge, Freedman, Kan, Levine, and Cisco. Ans. 3-4. Appeal 2011-007779 Application 11/223,379 4 2. Claims 6, 7, 14, 24, and 29 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Partridge, Freedman, Kan, Levine, Cisco, and Ross. Ans. 34-35. 3. Claims 11, 22, and 27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Partridge, Freedman, Kan, Levine, Cisco, and Turner. Ans. 38-39. 4. Claims 12, 13, 23, and 28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Partridge, Freedman, Kan, Levine, Cisco, and Rawlins. Ans. 42-43. ISSUE Appellants argue (App. Br. 7-11; Reply Br. 1-5) that the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Partridge, Freedman, Kan, Levine, and Cisco is in error. These contentions present us with the following issue: Did the Examiner err in finding that the combination of Partridge, Freedman, Kan, Levine, and Cisco teaches or suggests, inter alia, the limitations of “a router performing . . . defining said flow record as a trackable object by configuring the object with an Enhanced Object Tracking (EOT) process; [and] tracking the state change of said trackable object using a stand-alone tracking process registered to the EOT process,” as recited in claim 1? Appeal 2011-007779 Application 11/223,379 5 ANALYSIS We only consider those arguments actually made by Appellants in reaching this decision, and we do not consider arguments which Appellants could have made but chose not to make in the Briefs so that any such arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii). We disagree with Appellants’ conclusions with respect to claim 1, and we adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Arguments. However, we highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. Appellants contend the Cisco reference is more limiting in its teachings than the Examiner asserts, and does not teach or suggest having the ability to track any object. App. Br. 7. Appellants further contend Cisco makes no mention of a flow record, nor does it disclose that a flow record may be configured as a trackable object. Instead, Appellants contend Cisco teaches the object can be an interface or a route, and “[t]here is no other statement about the kinds of objects that can be tracked, no example of a tracked object other than an interface or a route, and there is no other evidence of record to suggest using EOT to track utterly different data such as flow records.” Id. Appellants also argue: The claimed flow record is neither an interface nor a route, and flow record state changes do not necessarily indicate Appeal 2011-007779 Application 11/223,379 6 the availability of a router or gateway (they are not limited to values of up and down). Thus, Cisco does not teach or suggest that a flow object can be tracked by an EOT process. Id. In response, the Examiner finds Cisco’s EOT feature “creates a separate standalone tracking process that can be used by any other process . . . [that] allows tracking of other objects in addition to the interface line protocol state.” Ans. 46-47 (citing Cisco, p. 1, ¶ 2). The Examiner finds Cisco’s disclosure, therefore, does not limit EOT to one or two objects, as Appellants argue, but applies to any object, including a flow record object. Ans. 47. With respect to Appellants’ argument that Cisco does not specifically mention a “flow record” object, the Examiner responds that Cisco was not cited to specifically teach a flow record object, which is taught in Freedman, and which also teaches configuring a flow record object as a trackable object. Id. The Examiner continues by finding that Cisco was cited to teach configuring the object with a trackable EOT process. Id. With respect to the definition of a “flow record,” Appellants contend: The claimed flow record is comprised of a 5-tuple of data values including source and destination address and port information and a protocol value. In contrast, a person of ordinary skill in the art would have understood a route to comprise a destination endpoint from the perspective of a particular source. A route must be interpreted with respect to its source. Thus, a flow record and a route do not comprise the same information, and they are interpreted in different contexts. Appeal 2011-007779 Application 11/223,379 7 App. Br. 7-8. Further in this regard, Appellants contend, even if it were reasonable to interpret that a route includes flow record objects, a route is not the same as a flow record object, and “[a] route represents a network path; a route does not represent the packets that traverse that path.” App. Br. 8. In response, the Examiner emphasizes that there was no finding that the route and the flow record objects are the same, as Appellants allege, but that route objects includes characteristics such as common source and destination IP addresses, and source and destination ports of the flow record objects. Ans. 48. The Examiner continues by stating flow records have another specific characteristic, i.e. protocol type, such that a route object that includes many different flow record objects of different protocol types encompasses a plurality of flow record objects. Id. The Examiner also disagrees with Appellants’ conclusion that tracking the traffic flow state is not the same as tracking network reachability, because flow is untrackable unless there is network reachability. Id. Appellants also contend the Examiner’s stated basis for motivation to combine the prior art in the manner suggested, i.e., to track network traffic between two network nodes using a popular Enhanced Object Tracking (EOT) system is merely conclusory. App. Br. 9. Appellants contend Cisco does not teach tracking network traffic, but instead describes tracking the state of an interface or a route, and that the Examiner has provided no rationale for why a person of ordinary skill in the art would have chosen the EOT system for tracking network traffic, since “popularity [of the EOT Appeal 2011-007779 Application 11/223,379 8 system] does not provide sufficient motivation to justify an outright modification of the Cisco reference, especially when there was no disclosure at the time of the invention that the Cisco system could perform the tasks required to make the claimed combination work.” Id. “There is no teaching or suggestion in the Cisco reference that the stated objective of an EOT process is to keep track of packets that belong to the same flow as they are transferred across a network,” such that the Examiner’s conclusion is factually in error. Id. Appellants additionally assert, because the Examiner relies upon a combination of five (5) references to reject claim 1, “[t]hat fact is virtually conclusive evidence of the nonobviousness of the claims.” App. Br. 10. Finally, Appellants contend the Examiner has engaged in “piecemeal analysis” that is insufficient to render the claims unpatentable because the Examiner was not able to find a single reference disclosing the claim limitation “the flow record has a record value and a state change occurs if the record value meets a state change criterion” (App. Br. 10-11), and “[t]he Examiner provides no rationale for why a person of skill in the art would have combined Freedman and Cisco to provide the particular claim feature.” App. Br. 11. In response, the Examiner finds Cisco teaches tracking any object, including a flow record object and, the motivation to combine Cisco’s teaching of EOT with the teachings of other prior art was “to select a package that is well-established, popular and supported by an industry leader (such as Cisco) to ensure continued service in the future.” Ans. 49. Appeal 2011-007779 Application 11/223,379 9 In response to the Examiner’s use of five references in finding claim 1 unpatentable, the Examiner explained: [T]he number of references used depends on how many unique features are strung together in an independent claim. The appellants’ independent claim 1 includes several independent and unique features that necessarily require the examiner to combine a plurality of references that teach those unique features. It is not that the unique features of claim 1 are not taught in the cited prior art, just that they are taught in different references. Id. With respect to Appellants’ allegation that the Examiner engaged in piecemeal analysis, the Examiner states he has carefully analyzed each claim feature, and finds “[a] claim that just strings together different features taught in different references, does not qualify for a patent.” Ans. 50. In the Reply Brief, Appellants reiterate arguments presented in their Appeal Brief (see Reply Br. 1-6), and also contend: The real issue is not whether EOT can support flow record objects based on hindsight, but rather whether a person of ordinary skill in the art reading the Cisco reference would have seen a suggestion to appropriately code a flow record in order to use the EOT system for tracking a flow record object. Insufficient evidence is provided that tracking flow objects with EOT was an anticipated use of EOT without the benefit of hindsight. For at least this reason, the Examiner should be reversed. Reply Br. 2-3 (emphasis added). In addition, Appellants contend “[t]he fact that the Examiner is not able to find combinations of these unique features in a fewer number of references is a ‘secondary consideration of Appeal 2011-007779 Application 11/223,379 10 nonobviousness’ – and a key indication that the combination of these features is novel.” Reply Br. 5. On the record before us, we agree with the Examiner’s findings and ultimate conclusions of obviousness, cited supra. First, we agree with the Examiner’s finding that the prior art combination of record teaches or suggests all the limitations in claim 1. In particular, we agree with the Examiner’s finding that the Cisco reference teaches or suggests creating a separate tracking process used to allow tracking of objects other than the interface line-protocol state (Cisco, p. 1.), which we find does not exclude using the known Enhanced Object Tracking process to track flow objects, as claimed. Second, we agree with the Examiner’s finding, cited supra, that Freedman teaches flow record objects being configured as trackable objects, and that it would be obvious to combine the teachings of Cisco with the other cited prior art to allow tracking of network traffic between nodes using the well-established, popular, and supported EOT processing techniques. Ans. 10 and 49. Other than alleging the improper use of hindsight analysis, we also note that Appellants do not dispute the Examiner’s finding that Cisco’s EOT techniques can be used in combination with the other cited prior art techniques to carry out the claimed invention, except to argue “[t]here is no evidence that the authors envisioned the use of the EOT system for tracking a flow record object, which is completely outside the frame of reference” (Reply Br. 2), and that “[t]here is no disclosure that a flow record object can be ‘appropriately coded’ to work with EOT or why it would occur to a Appeal 2011-007779 Application 11/223,379 11 person of ordinary skill in the art to use EOT to track a flow record object.” Id. We further agree with the Examiner since “[a] person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. The Examiner may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. We find that to be the case here, since the Examiner has set forth a rational basis for a person with skill in the art to combine the prior art as suggested, e.g., by extending Cisco’s known EOT process to flow records. Ans. 49. Further, we note that the U.S. Supreme Court has held that “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” Id. at 419. Instead, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). We find that the Examiner has met his burden by providing an articulated reason with a rational underpinning for combining the cited prior art combination in the manner suggested. See Ans. 7-10 and 49. With respect to Appellants’ remarks in their Reply regarding the teachings of Cisco, cited supra, we note the rejection of the claims on appeal Appeal 2011-007779 Application 11/223,379 12 is for unpatentability, and not anticipation. Further, we disagree with Appellants’ assertion, without evidence, that the use of multiple references in an unpatentability rejection constitutes “secondary considerations.” Reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982 (Fed. Cir. 1991). We note rebuttal evidence may include evidence of “secondary considerations,” such as “commercial success, long felt but unsolved needs, [and] failure of others” (Graham v. John Deere Co., 383 U.S. 1, 17 (1966), and may also include evidence of unexpected results. See In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“One way for a patent applicant to rebut a prima facie case of obviousness is to make a showing of ‘unexpected results’ . . . . The basic principle behind this rule is straightforward—that which would have been surprising to a person of ordinary skill in a particular art would not have been obvious.”). However, we note Appellants’ assertions cited above amount to unsupported attorney argument without any evidence of secondary considerations, and therefore we give them little weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996). Accordingly, on the record before us, Appellants have not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner’s reading of the contested limitations on the cited prior art. Therefore, we sustain the Examiner’s obviousness rejection of independent claim 1. As Appellants have not provided separate arguments with respect to independent claims 16-18, rejected on the same basis as claim 1, or Appeal 2011-007779 Application 11/223,379 13 dependent claims 2, 3, 6-14, and 20-29, rejected over various combinations of the cited prior art (see App. Br. 11-12), we similarly sustain the Examiner’s rejection of these claims under 35 U.S.C. § 103(a). CONCLUSION The Examiner did not err with respect to all the unpatentability rejections of claims 1-3, 6-14, 16-18, and 20-29 under 35 U.S.C. § 103(a) over the various prior art combinations of record, and the rejections are sustained. DECISION We affirm the decision of the Examiner to reject claims 1-3, 6-14, 16- 18, and 20-29. 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) (2011). AFFIRMED kis Copy with citationCopy as parenthetical citation