Ex Parte G. Santos et al

Patent Trial and Appeal Board

Feb 16, 2017

13599803 (P.T.A.B. Feb. 16, 2017)

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.
13/599,803 08/30/2012 Jose Renato G. Santos 82963661 7908
56436 7590
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
LOU, PEIAN
ART UNIT PAPER NUMBER
2413
NOTIFICATION DATE DELIVERY MODE
02/21/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSE RENATO G. SANTOS,
MICHAEL SCHLANSKER, and JEAN TOURRILHES
Appeal 2016-0028241
Application 13/599,803
Technology Center 2400
Before ELENI MANTIS MERCADER, JAMES W. DEJMEK, and
ALEX S. YAP, Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—20, which are all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, LP. (App. Br. 1.)
Appeal 2016-002824
Application 13/599,803
STATEMENT OF THE CASE
Introduction
Appellants’ invention “relate[s] to addition or modification to a
forwarding table based on an address.” (Aug. 30, 2012 Specification
(“Spec.”) Abstract.) Claim 1 is representative and is reproduced below:
1. A local switch, comprising:
a controller to receive a first packet having a source
address and a location value, the source address including a
source of the first packet and the location value indicating at least
part of a route along a network to the source address; and
a forwarding table including a plurality of entries, each
entry including a destination field and a location field, wherein
the controller is to compare the source address of the first packet
to values of the destination fields of the forwarding table, and
the controller is to not add a new entry including the
location value of the first packet to the forwarding table if none
of the destination fields of the plurality of entries of the
forwarding table include the source address of the first packet.
The following table lists the prior art relied upon by the Examiner in
rejecting the claims on appeal:
Prior Art and Rejections on Appeal
Edsall et al. US 6,735,198 B1 May 11,2004
(“Edsall”)
Choi et al. US 2005/0141517 Al June 30, 2005(“Choi”)
Huang et al.
(“Huang”) US 8,788,823 B1
July 22,2014
(filed Oct.22,
2004)
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Application 13/599,803
Claims 1, 10, 11, and 13—20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Edsall in view of Huang. (See Final Office
Action (mailed Jan. 2, 2015) (“Final Act.”) 5—13.)
Claims 2—9 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Edsall, in view of Huang, and further in view of Choi.
(See Final Act. 13—19.)
ANAFYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We are not persuaded that the
Examiner erred in rejecting claims 1 and 4—20. We are persuaded that the
Examiner erred in rejecting claims 2 and 3.
Claims 1, 4—1 /, and 13—20
With respect to claim 1, the Examiner finds that “Edsall does not
explicitly teach the controller is to not add a new entry including the location
value of the first packet to the forwarding table if none of the destination
fields of the plurality of entries of the forwarding table include the source
address of the first packet.” (Final Act. 6.) The Examiner, however, finds
that Huang teaches or suggests this limitation. (Id.) Specifically, according
to the Examiner, Huang teaches or suggests that if the source address of an
incoming message is not found in the lookup table (i.e., forwarding table),
the source address is not stored and the message is immediately passed on to
the address filtering module for processing:
If the source address of an incoming message is not found
by forwarding module 702 (i.e., if there is no matching entry for
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Application 13/599,803
that message, based on the message’s source address, in the
lookup table), information included in and/or associated with the
incoming message is passed to address filtering module 704 for
additional processing.
(Huang, 20:10-15.) Appellants disagree and contend that “because Huang
teaches that the source address is stored in the lookup table each time a
message is received, it logically follows that the source address is stored in
the lookup table of Huang when the lookup table does not already include
the source address.” (App. Br. 7; Huang, 19:65—20:4; Reply 4.)
Appellants have not persuaded us the Examiner erred. We agree with
the Examiner that Huang teaches or suggests if the source address of an
incoming message is not found, the source address is not added to the
lookup table (i.e., forwarding table). (Final Act. 6; Huang, 20:10-15;
FIG. 7.) We do not agree with Appellants Huang requires “the source
address Tbe] stored in the lookup table of Huang when the lookup table does
not already include the source address.” (App. Br. 7.) Rather, we find
Huang teaches or suggests “the source address . . . can be stored in a lookup
table” but it is not required to store it. (Huang, 20:1—3, emphasis added.)
This interpretation of Huang is reasonable because in the subsequent
paragraph of Huang, pointed to by the Examiner, Huang states explicitly
“[i]f the source address ... is not found by [the] forwarding module ... the
incoming message is passed to address filtering module 704 for additional
processing.” (Huang, 20:10-15.) In other words, nothing is done by the
forwarding module. Moreover, if Appellants’ interpretation (i.e., the source
address is always stored) were correct, then Huang’s explicit disclosure that
“/ i/f the source address ... is not found by the forwarding module . . . the
incoming message is passed to address filtering module 704 for additional
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Application 13/599,803
processing” would not make sense because this condition will never happen.
(Huang, 20:10-15, emphasis added.)
Appellants further contend “the provided rationale for the proposed
combination of Edsall and Huang is insufficient to establish a prima facie
case of obviousness.” (App. Br. 8—9; Reply 6—7.) According to Appellants,
“provided rationale is merely a conclusory statement of an asserted benefit,
and fails to provide the ‘articulated reasoning with some rational
underpinning’ required to establish a prima facie case of obviousness.”
(App. Br. 8—9; Reply 6—7.) Appellants further contend “Edsall explicitly
teaches that the source address of a received packet is stored in the
forwarding table if that address is not already present in the forwarding
table.” (App. Br. 8—9; Edsall, 3:20-27; Reply 6—7.) In other words,
Appellants are contending Edsall teaches away from not storing the source
address of a received packet.
We find that the Examiner provides sufficient articulated reasoning
having a rational underpinning, such that a person of ordinary skill in the art
would have been motivated to combine the teachings of Edsall and Huang.
(Final Act. 7 (“it would have been obvious ... to provide a network device
maintaining protocol status information and quickly receiving and
forwarding data to maintain a high throughput by including a filtering
module coupled to the binding table comparing message information with
the protocol status information”), citations omitted.) See KSR Int’l Co., v.
Teleflex, Inc., 550 U.S. 398, 415, 418 (2007). We are also not persuaded
that Edsall teaches away from not storing the source address of a received
packet. As explained in Depuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009):
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A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the
applicant.” Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d
1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn, 441 F.3d 977,
990 (Fed. Cir. 2006)). A reference does not teach away,
however, if it merely expresses a general preference for an
alternative invention but does not “criticize, discredit, or
otherwise discourage” investigation into the invention claimed.
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Here, Edsall at most “expresses a general preference for [storing the
source address of a received packet] but does not ‘criticize, discredit, or
otherwise discourage’ investigation into” not storing the source address of a
received packet. In re Fulton, 391 F.3d at 1201.
For the foregoing reasons, we are not persuaded of Examiner error in
the rejection of claim 1. Thus, we sustain the 35 U.S.C. § 103 rejections of
claim 1, as well as claims 4—11 and 13—20, which are not argued separately.
(App. Br. 9.)
Claims 2, 3, and 12
Claims 2 and 12 recite “location field of the new entry is to remain
unknown.” (Emphasis added.) The Examiner finds that:
However, the combination of Edsall and Huang does not
explicitly teach the location field of the new entry is to remain
unknown.
In an analogous art, Choi teaches the location field of the
new entry is to remain unknown (mapping destination address
from data packet, checking whether a valid field value of
secondary and third table entries, if the validfield value is not the
predetermined value at the step, inputting a default route to a
destination route information', Paragraph [0008]).
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(Final Act. 14, emphasis added.) The Examiner explains that “one of
ordinary skill in the art would have had no difficulty to understand that
default value shown in Choi can be interpreted as the unknown value in
claim 2.” (Ans. 8.) We agree, however, with Appellants that the portions of
Choi cited by the Examiner “say[] nothing whatsoever about the ‘default
route’ being an unknown value [and that the] ‘default route’ of [Choi] could
have a known value.” (Reply 8—9; App. Br. 11—12.) We are also not
persuaded that it would have been obvious to one of ordinary skill in the art,
in view of paragraph 16 of the Specification, that an unknown value can
interpreted as a default value. (Ans. 7—8.) Paragraph 16 does not mention
any default value at all. (Spec. 116.)
For the foregoing reasons, we are persuaded of Examiner error in the
rejection of claim 2, as well as claim 3, which depends on claim 2.
Therefore, we do not sustain the 35 U.S.C. § 103 rejection of claims 2 and 3.
We note that while claim 12 recites a similar limitation, the limitation
appears as part of a conditional step in a method claim. Conditional steps
employed in a method claim need not be found in the prior art if, under the
broadest reasonable construction, the method need not invoke the steps. Ex
parte Schulhauser, No. 2013-007847, 2016 WL 6277792, at *3-6 (PTAB
April 28, 2016) (concluding the broadest reasonable interpretation of a claim
encompassed situations in which conditional method steps “need not be
reached”) (precedential). Here, because the broadest reasonable
interpretation of claim 12 does not require performing the conditional
method steps at issue, the Examiner does not need to present evidence of
obviousness for these steps. See Schulhauser, 2016 WL 6277792, at *4
(“The Examiner did not need to present evidence of the obviousness of the
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Application 13/599,803
remaining method steps of claim 1 that are not required to be performed
under a broadest reasonable interpretation of the claim.”). Therefore, we
sustain the 35 U.S.C. § 103 rejection of claim 12.
DECISION
We affirm the decision of the Examiner to reject claims 1 and 4—20
under 35 U.S.C. § 103(a). We reverse the decision of the Examiner to reject
claims 2 and 3 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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