Ex Parte Crosson

Board of Patent Appeals and Interferences

Apr 23, 2009

09819911 (B.P.A.I. Apr. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL CROSSON
____________

Appeal 2009-1222
Application 09/819,911
Technology Center 2600
____________

Decided:1 April 23, 2009
____________

Before ROBERT E. NAPPI, KARL D. EASTHOM,
and ELENI MANTIS MERCADER Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1-53. (Br. 4).2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellant’s invention is directed to an internet protocol (IP) address
selection. Appellant’s system assigns a single domain name to a set of
server IP addresses. Upon receipt of a request for the domain name from a
client IP address, the system selects, from a set of routes linking the IP
server and client addresses, a route which meets predetermined criteria.
(Spec. Abstract; Fig. 1).
Claim 1, exemplary of the claims on appeal, follows:

1. A method for internet protocol (IP) address selection, comprising the
steps of:
assigning a single domain name to a set of server IP addresses
corresponding to plural servers;
receiving a request for the domain name from a client IP address;
retrieving a set of IP routes linking the server IP addresses, and the
client IP address; and
selecting an IP route from the set of routes which meets
predetermined criteria.

2 The Appeal Brief (filed Oct. 26, 2007) (“Br”) and Examiner’s Answer
(filed Mar. 5, 2008) (“Ans.”) are referenced in this opinion.
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The Examiner relies on the following prior art references:
Dynarski US 6,272,129 B1 Aug. 7, 2001
(filed Jan. 19, 1999)

Lamberton US 6,779,017 B1 Aug. 17, 2004
(filed Dec. 29, 1999)

Claims 1-53 stand rejected as obvious under 35 U.S.C. § 103 based on
Lamberton and Dynarski.

PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Under § 103, a holding of
obviousness can be based on a showing that “there was an apparent reason to
combine the known elements in the fashion claimed.” KSR Int’l v. Teleflex,
Inc., 127 S. Ct. 1727, 1740-41 (2007). Such a showing requires:
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id., 127 S. Ct. at 1741 (quoting Kahn, 441 F.3d at 988 (Fed. Cir.
2006)).
If the Examiner makes such a showing, the burden then shifts to
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
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the relative persuasiveness of the arguments. In re Oetiker, 977 F.2d at
1445.

OPINION
Claims 1-3, 5, 11, 12, 14-16, 18, 24-27, 29-32, 40-43, and 51-53
Issue
Appellant argues (Br. 6, 7) with respect to the above claims that the
references do not teach retrieving a set of IP routes linking the server IP
addresses and the client IP address as set forth in representative claim 1.3
The issue with respect to claim 1 is: Did the Appellant show that the
Examiner erred in finding that Lamberton teaches retrieving a set of IP
routes linking the server IP addresses and the client IP address as set forth in
representative claim 1?
Findings of Fact (FF)
1. Lamberton discloses as a background prior art system, a load
balancer wherein multiple servers share the same domain name (DNS –
Domain Name System). A load balancer at the DNS routes clients’ requests
to a designated server. (Lamberton, col. 4, l. 64 to col. 5, l. 27; Fig. 1).
2. In the system described above, the load balancer decides, based
upon the respective work loads of each server, which server is best able to
handle a client’s request (Lamberton, col. 5, ll. 4-8). Lamberton also
discloses generally choosing the best server “according to certain
dynamically set weights” (col. 2, ll. 39-42).

3 Appellant groups these claims together and presents arguments with
respect to claim 1. Under 37 C.F.R. § 41.37(c) (1) (vii), we select claim 1 as
representative of the group.
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3. Lamberton discloses that load balancers as described above
typically automatically choose, for a certain period of time, a server already
connected to an IP client currently communicating with one of the servers,
even if other servers are not as busy as the connected server. The system
keeps track of the client IP address and sends requests from that address to
the same server within a cluster of servers, even if the other servers are less
busy. Therefore, ongoing communications/transactions continue between a
client and previously designated server. (Lamberton, col. 3, ll. 11-44; col. 5,
l. 28 to col. 6, l. 5).
4. Lamberton generally discloses keeping track of client server access
via a system memory or disk (col. 3, ll. 5-10). Lamberton also discloses
“caching” of traffic data at servers to obtain better system performance (col.
3, ll. 20-27).
Analysis
Appellant’s argument (Br. 5) that Lamberton fails to teach “retrieving
a set of IP routes linking the sever IP addresses and the client IP address”
turns on what is meant by “retrieving” (emphasis added). Appellant does
not argue that the claim requires retrieving the set from a database.
Appellant does not state what constitutes “retrieving.” Appellant merely
denies that Lamberton’s system performs “retrieving.” Such a mere denial
does not meet Appellant’s burden on appeal. “The problem in this case is
that the appellants failed to make their intended meaning explicitly clear.”
In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). “It is the applicant’s
burden to precisely define the invention, not the PTO’s.” Id.
Appellant acknowledges (Br. 6) that Lamberton’s system “selects one
of the servers of the cluster to use for processing the client request.” Prior to
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the acknowledged selection, Lamberton’s load balancer first determines
which server has the least workload (FF 1-3). Such a determination involves
retrieval of a set of IP routes, because Lamberton’s disclosure implies that
the load balancer must query each server in the clustered set of servers
connected to the load balancer which is connected to the client. At the end
of the queries, prior to determining which server is currently carrying the
least workload, the system has “retrieved” a set of servers for possible
connection to the client IP address.
Thus, at a minimum, Lamberton’s determination suggests a set of
clustered servers linked to the client, thereby meeting the disputed claim
limitation.4 Although claim 1 requires no physical link to each server,
Lamberton’s clustered servers are linked to a client IP address through the
load balancer for possible connection. Lamberton’s system also implies or
suggests that to perform load balancing of servers, the load balancer has a
system memory of the “weights” for decision making, for tracking the client
IP address, and for accessing specific servers in the cluster (see FF 1-4).
Accessing such a memory to perform load balancing also constitutes
retrieving.
Contrary to Appellant’s related assertion (Br. 7-9) that Lamberton’s
prior art load balancing systems described above (see FF 1-3) do not employ
predetermined criteria, Lamberton’s prior art systems select a connected
server having the least workload, as discussed above. Such a selection,

4 It is noted that claim 10, reciting “selecting the IP route from the set equal
to a default IP address,” indicates that a “set” does not preclude merely one
server and one client. Therefore, under alternative reasoning, connecting the
client IP address to one server constitutes retrieval of a set – as Lamberton
discloses.
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based on the criteria of being 1) grouped in the cluster and 2) least busy,
constitutes “selecting an IP route from the set of routes which meets
predetermined criteria” as set forth in claim 1. Lamberton also generally
discloses other criteria employed by the prior art systems; i.e., the systems
choose a server “according to certain dynamically set weights” (FF 3).
Therefore, Appellant has failed to establish that the Examiner erred in
finding (Ans. 3, 4) that Lamberton teaches the disputed elements of claim 1.
Accordingly, we will sustain the Examiner’s rejection of claim 1, and claims
2-3, 5, 11, 12, 14-16, 18, 24-27, 29-32, 40-43, and 51-53 which were not
separately argued and fall with claim 1.
Conclusion
Appellant has not demonstrated that the Examiner erred in finding that
Lamberton teaches retrieving a set of IP routes linking the server IP
addresses and the client IP address as set forth in representative claim 1.

Claims 4, 6, 7, 17, 19, 20, 36-38, 45, 47, and 50
Issue
The issue with respect to claims 4, 6, 7, 17, 19, 20, 36-38, 45, 47, and
50 is: Did Appellant demonstrate that the Examiner erred in finding that
Lamberton teaches or suggests retrieving the set of IP routes using a BGP
and Telnet protocol as respectively set forth in claims 4 and 6, and selecting
the IP route from the set which has a shortest AS path as set forth in claim
7?5

5 Appellant groups these claims together and presents arguments directed
toward claims 4, 6, and 7. Claims 4 and 6 recite “retrieving the set of IP
routes” using respectively, a BGP protocol and a Telnet protocol. The
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Findings of Fact (FF)
5. Lamberton discloses an IP protocol (col. 2, l. 38) and a TCP
protocol (Transport Control Protocol) (col. 3, ll. 27-30).
6. Appellant states that the disclosed system may transmit selected IP
routes using selected BGP, SNMP or Telnet protocols. BGP code in server
software allows the server to peer with routers. (Spec. 3: 9-12; 9: 5-6).
Appellant refers to the AS path as “a BGP protocol attribute containing a
sequence of autonomous system numbers which a route has traversed to
reach a destination.” (Spec. 11: 7-9).
Analysis
In response to Appellant’s argument (Br. 10) that Lamberton’s
gateway or firewall does not inherently teach the BGP or Telnet protocol
and shortest AS path, the Examiner asserts (Ans. 11): “It is well-known in
the art. That a gateway or BGP, router provides the shortest path.”
Appellant does not dispute the finding that such named protocols are
well known. Lamberton discloses different protocols (FF 5) reasonably
suggesting a mere substitution of a different protocol. Appellant has not
presented evidence to show that replacing Lamberton’s disclosed protocols
with such known protocols would have been “uniquely challenging or
difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 127 S. Ct. at 1740-41).

remaining claims, except claims 7 and 20, recite similar limitations. Thus,
claim 4 represents claims 6, 17, 19, 36-38, 45, 47, and 50. Claim 7
represents claim 20 as each recite selecting the IP route from the set which
has the shortest AS path.
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Further, Appellant’s Specification also indicates that the system
operates similarly with respect to both the BGP and Telnet protocols (see
FF6). On one hand, different protocols imply that a system responds
differently to each protocol. On the other hand, regardless of the protocol
employed, Appellant’s system produces no claimed difference as a result of
using a different protocol. As such, the mere use of named protocols recited
in claims 4 and 6, without a recitation of a claimed response based on a
distinction between the different protocols, renders the protocols non-
functional descriptive material.6
Such is not the case with respect to the shortest path recited in claim
7. The shortest path implies a physical distinction. The Examiner provides
no evidence for the assertion, noted supra, that Lamberton’s gateway either
necessarily employs or suggests the shortest path.
Therefore, Appellant has established that the Examiner erred in
finding (Ans. 3, 4) that Lamberton teaches the disputed elements of
representative claim 7, but not those of claims 4 and 6. Accordingly, we will
sustain the Examiner’s rejection of claims 4 and 6, and also claims 17, 19,
36-38, 45, 47, and 50, which Appellant did not argue separately and which
contain similar limitations to those in claims 4 and 6. We will not sustain
the Examiner’s rejection of claim 7 nor of similar claim 20.

6 In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Ex parte Curry, 84
USPQ2d 1272, 1275 (BPAI 2005) (Informative Opinion) (Affirmed, Rule
36, Fed. Cir., slip op. 06-1003, June 2006) (“Common situations involving
non-functional descriptive material [include] . . . .a computer that differs
from the prior art solely with respect to nonfunctional descriptive material
that cannot alter how the machine functions (i.e., the descriptive material
does not reconfigure the computer) . . . .”).
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Conclusion
Appellant did not demonstrate that the Examiner erred in finding
(Ans. 4, 5) that Lamberton suggests retrieving the set of IP routes using a
BGP protocol as set forth in claim 4, and selecting the IP route from the set
which has a shortest AS path as set forth in claim 7.

Claims 8, 9, 21, and 22
Issue
Appellant argues (Br. 10, 11) with respect to these claims that the
Examiner erred in finding that selecting Lamberton’s least busy server meets
selecting an IP route which has the lowest origin type as set forth in claims 8
and 21, and which has the lowest MED as set forth in claims 9 and 22. The
issue is: Did Appellant demonstrate that the Examiner erred in finding that
selecting Lamberton’s least busy server constitutes selecting, from a set of
routes, an IP route which has the lowest origin type as set forth in claims 8
and 21, and which has the lowest MED as set forth in claims 9 and 22?
Finding of Fact (FF)
7. Appellant states that the disclosed system may transmit selected IP
routes using a selected MED. According to Appellant, a MED is a BGP
protocol attribute that describes an external metric of a route. Appellant also
discloses that the origin type is a BFP protocol attribute indicating an origin
of a routing update with respect to an autonomous system that originated it.
The system selects the lowest origin type or lowest MED type. (Spec. 11: 9-
17).

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Analysis
Because the lowest MED is an attribute that describes an external
metric of a route (FF 7), the Examiner’s finding (Ans. 12) that a least busy
server describes an external metric of a route is reasonable. That is, least
busy constitutes an external metric of the route because it is a gauge of the
relative traffic on the route. The claim does not require, nor does Appellant
argue, that a MED necessarily invokes a specific protocol requiring a
response tied to that protocol. As such, least busy constitutes the lowest
MED – the lowest external busy metric. Thus, Appellant has not
demonstrated that the Examiner erred with respect to claims 9 and 22.
On the other hand, it is not apparent how Lamberton’s least busy
server corresponds to the lowest origin type. According to Appellant, the
origin type is related to an origination of a route (FF 7). The Examiner has
not explained how a least busy selection is related to an origination based
selection (see Ans. 5). Therefore, the Examiner’s response falls short of
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness” as required by KSR, 127 S. Ct. at 1741
(quoting Kahn, 441 F.3d at 988). Accordingly, Appellant has established
that the Examiner erred in with respect to claims 8 and 21.
Conclusion
Appellant did not demonstrate that the Examiner erred in finding that
Lamberton’s least busy server constitutes selecting, from a set of routes, an
IP route which has lowest MED, as set forth in claims 9 and 22. Appellant
did demonstrate that the Examiner erred in finding that Lamberton’s least
busy server constitutes selecting, from a set of routes, an IP route having the
lowest origin type as set forth in claims 8 and 21.
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Claims 10 and 23
Issue
Appellant argues (Br. 11) with respect to claims 10 and 23 that the
Examiner erred in finding that Lamberton discloses selecting a default IP
address. The issue is: Did Appellant demonstrate that the Examiner erred in
finding that Lamberton discloses selecting the IP route from the set equal to
a default IP address as set forth in claims 10 and 23?
Analysis
The Examiner found (Ans. 5, citing Lamberton, col. 6, ll. 6-15) that
Lamberton teaches a default. Lamberton discloses a load balancer system
that automatically chooses a server already connected to an IP client
currently communicating with one of the servers, even if other servers are
not as busy (FF 3). Such an automatic selection of an existing IP route, in
lieu of selecting a less busy server, reasonably constitutes a default selection.
As such, Appellant has not demonstrated that the Examiner erred with
respect to claims 9 and 22.
Conclusion
Appellant did not demonstrate that the Examiner erred in finding that
Lamberton discloses selecting the IP route from the set equal to a default IP
address as set forth in claims 10 and 23.

Claims 13 and 28
Issue
Appellant argues (Br. 11, 12) with respect to claims 13 and 28 that the
Examiner erred in finding that Dynarski teaches an enhanced address
resource record that includes the data elements of claim 13. The issue is:
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Did the Appellant show that the Examiner erred in finding that Dynarski
teaches an enhanced resource record as recited in claims 13 and 28?
Findings of Fact (FF)
8. Dynarski teaches storing, in a buffer, the status of different
communication states associated with a wireless connection: Idle, Active,
and Dormant (col. 12, l. 55 to col. 13, l.3).
9. Dynarski teaches that a home agent typically stores a mobility
binding record indicating whether a device, including a laptop 14 or 16, has
communicated, or has the authority to communicate, over a wireless system
(col. 6, ll. 61-65; Fig. 1).
10. An authentication server 28 stores attributes in a memory table
that maps a destination IP address found in an IP packet, destined for a
mobile wireless device 14, with information uniquely identifying the device.
Such information includes the IMSI and/or the ESN number assigned to the
device. Vendor-specific information indicating which network to use to find
the mobile device is also stored in the server 28. (Dynarski, col. 5, ll. 45-
61).
Analysis
As Appellant acknowledges (Br. 11-12), the Examiner found that
Dynarksi teaches storing certain data elements in a resource record.
Appellant challenges the finding as it pertains to the particular stored types
of data elements recited in claims 13 and 28. Therefore, it is undisputed that
Dynarski reasonably teaches storing certain data elements to facilitate
connections to wireless devices (FF 8-10). Whether the specific data
elements recited in the claims are taught by Dynarski, however, is not
material, because the type of data element constitutes non-functional
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descriptive material.7 The claims do not require a different operation based
on the different types of data elements. Lamberton also teaches storing data
records (FF 4). As such, Appellant has not demonstrated that the Examiner
erred with respect to claims 13 and 28.
Conclusion
Appellant did not demonstrate that the Examiner erred in finding that
Dynarski teaches an enhanced resource record as recited in claims 13 and
28.

Claims 33 and 34
Issue
Appellant argues (Br. 12, 13) that Lamberton does not disclose
checking a database in a cache to find an IP route entry containing an IP
route previously indicated as being a best IP route. The issue is: Did the
Appellant show that the Examiner erred in finding that Lamberton and
Dynarski fail to collectively teach “checking a database in a cache to find an
IP route entry containing an IP route previously indicated as being a best IP
route” as recited in claim 33?8
Analysis
Appellant argues (Br. 13) that “[s]electing the least busy of the servers
has nothing to do with checking a database in a cache in the manner recited
in claim 33.” The Examiner found (Ans. 13) that Lamberton’s load
balancer “decides which server is best to accept requests [Lamberton, col. 5

7 See n.6 supra.
8 Appellant groups these claims together and presents arguments with
respect to claim 33. Claim 34 depends from claim 33. Under 37 C.F.R.
§ 41.37(c) (1) (vii), claim 34 stands or falls with claim 33.
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line 6].” Lamberton also teaches defaulting to the previously selected IP
route for ongoing communications (FF 3). Such a previously selected route
is the one that the system selected because it was the least busy – i.e., the
best. (See FF 1-3).
Appellant does not define a cache. Lamberton requires, or at a
minimum suggests, a memory to keep track of, and maintain, the current IP
route of an on-going communication link (see FF 3). Lamberton also
discloses “caching” and/or memory storing to enhance traffic
communications (FF 4). Further, as discussed above, Dynarski reasonably
teaches that storing certain data elements facilitates better performance and
connection for wireless communications (FF 7-9). A cache appears to
reasonably constitute memory storage (see FF 4). As such, Lamberton (with
or without Dynarski) reasonably suggests checking a cache for a previously
determined best route. Therefore, Appellant has not demonstrated that the
Examiner erred with respect to claims 33 and 34.
Conclusion
Appellant did not demonstrate that the Examiner erred in finding that
Lamberton and Dynarski fail to collectively teach an enhanced resource
record as recited in claim 33.

Claims 35, 39, 44, 46, 48, and 49
Issue
Appellant argues inter alia (Br. 13) that Lamberton does not disclose
accessing a field in a record, the field to indicate one of plural techniques for
downloading IP routes from routers to the DNS servers. The issue is: Did
Appellant show that the Examiner erred in finding that Lamberton discloses
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accessing a field in a record, the field to indicate one of plural techniques for
downloading IP routes from routers to the DNS servers, as set forth in the
claims?
Analysis
Appellant argues (Br. 13) that the Examiner’s cited passage of
Lamberton, which refers to applications which Web users can access, lacks
“any hint of accessing a field in a record to indicate one of plural techniques
for downloading IP routes from routers to the DNS servers” as required by
claims 35, 39, 44, 46, 48 and 49. In response, the Examiner states (Ans. 13)
that the prior art teaches “‘searching [a] database to determine if a session
already exists’ [Dynarski, col 15 lines 52-54]. It’s clearly the database
search provides the records of session or the set of IP route.”
The Examiner does not explain how searching the records for an
existing call constitutes a field indicating one of plural techniques for
downloading IP routes as set forth in claims 35, 39, 44, 46, 48 and 49. Nor
does the Examiner present any rationale as to how the combination of
Lamberton or Dynarski would teach the recited subject matter in issue. (The
claims also recite a functional relationship based on the technique).
Therefore, Appellant reasonably met the burden of asserting error in the
Examiner’s position. See Kahn, 441 F.3d at 985-86. As such, Appellant has
demonstrated that the Examiner erred with respect to claims 35, 39, 44, 46,
48 and 49.
Conclusion
Appellant has shown that the Examiner erred in finding that
Lamberton teaches accessing a field in a record, the field to indicate one of
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plural techniques for downloading IP routes from routers to the DNS
servers, as set forth in claim 35.

DECISION
We affirm the Examiner's decision rejecting claims 1-6, 9-19, 22-34,
36-38, 40-43, 45, 47, and 50-53. We reverse the Examiner’s decision
rejecting claims 7, 8, 20-21, 35, 39, and 44, 46, 48, and 49.
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-IN-PART

KIS

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