Ex Parte Kalapathy et al

Board of Patent Appeals and Interferences

Jan 14, 2009

09985763 (B.P.A.I. Jan. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PAUL KALPATHY and MIKE JORDA
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Appeal 2008-0013
Application 09/985,763
Technology Center 2600
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Decided: January 14, 2009
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Before MAHSHID D. SAADAT, ROBERT E. NAPPI,
and MARC S. HOFF, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request reconsideration of our Decision of June 26, 2008,
wherein we sustained the Examiner’s rejection of the appealed claims under
35 U.S.C. § § 102 and 103.
We have carefully considered the arguments presented by Appellants
in the Request and reviewed our decision. However, those arguments do not
persuade us that our decision was in error in any respect or we have
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overlooked any relevant points in reaching our decision that the Examiner
properly rejected claims 1, 2, 4, 6-8, 10, 12, 13, 15-17, 19, and 21 under 35
U.S.C. § 102 and claims 3, 5, 9, 11, 14, 18, 20, and 22-25 under 35 U.S.C.
§ 103.
1. Claim 1
Appellants argue that our analysis of the device shown in Figure 3 of
Michels that memory 58 is part of switching device 50 is incorrect (Request
3-4). Appellants assert that the switching device 50 of Michels is not the
same as the table search device recited in the preamble of claim 1, since
search engine 60 of Michels, which appears to be the table search device,
does not include a memory (Request 4). Additionally, it is Appellants’
belief that since the recitation of “a table search device” in the preamble of
claim 1 does “breathe life and vitality into the claim,” the claim cannot read
on the switching device of Michels (id.).
We disagree. Initially, we note that, as stated in our decision, memory
58 and search engine 60 are parts of port 52 which itself is part of switching
device 50 (Michels, col. 4, ll. 40-42). Therefore, switching device 50
comprises memory 58 and search engine 60. We also stated that search
engine 60 also includes memory 70 as the cache having a subset of entries
(Decision 7).
Second, we find Appellants’ contention that the claimed “table search
device” is not the same as a switching device to be inconsistent with
Appellants’ disclosure. Where a patentee uses the claim preamble to recite
structural limitations of his claimed invention, the PTO and courts give
effect to that usage. Bell Communications Research, Inc. v. Vitalink
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Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995). Conversely,
where a patentee defines a structurally complete invention in the claim body
and uses the preamble only to state a purpose or intended use for the
invention, the preamble is not a claim limitation. Id. In the case before us,
Appellants describe their invention as related to a “new switching
architecture” (Spec. ¶ [0003]) and show a network switch in Figure 6 (Spec.
¶ [0053]). Additionally, there are no recited features in the body of claim 1
that indicates the claimed “table search device” is different from a switching
device such as the switching device of Michels.
We also disagree with Appellants (Request 4) that since the search
engine of Michels is the table search device, which includes no memory,
there is no correspondence between Michels and what is claimed. In fact,
the switching device of Michels is what the Examiner characterized as the
claimed table search device. Such device comprises a table in memory 58, a
cache in memory 70 and a search engine 60 (Michels; Fig. 3; col. 5. ll. 33-
40). Therefore, as stated in our decision (Decision 7), the search engine 60
as a part of switching device 50 does not need to include memory 58, but
merely be connected to it.
2. Claim 3
Appellants argue that our decision discussed motivation for modifying
Michels to arrive at the invention recited in claim 3 that was incorrect and
different from what the Examiner had purported (Request 5). Appellants
assert that based on the alleged deviation from the Examiner’s stated
position our discussion of the rejection should be designated as a new
ground of rejection. We disagree.
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Our discussion related to the rejection of claim 3 was consistent with
the position stated by the Examiner (Ans. 5) relying on column 6, lines 22-
26 of Michels which stated that the partitioning of iterations across search
engines could be unequal while the lookup table could have any length. The
Examiner specifically stated (id.) that the skilled artisan would have
modified the number of iterations such that the first number of cycles to
search the cache (memory 70, containing 256 entries (col. 6, ll. 5-7)) may be
less than the second number of search cycles (memory 58, containing 64,000
entries (col. 6, ll. 1-2)). Our decision further justified (Decision 8) the
Examiner’s position as consistent with the holding in KSR, which allows for
the stated modification based on the number of entries and the unequal
partitioning of the iterations which predictably result in less search cycles for
fewer entries that are contained in the cache. Therefore, our decision
included no new ground of rejection.
3. Claim 22
Appellants appear (Request 6) to take our statement with respect to
the admitted prior art in the Decision as an acknowledgment that such
teachings have not been shown to exist in the prior art. We stated that:
… although not intended as admission of prior art, Appellants’
paragraph [0055] includes recognition by Appellants that, without any
need for further detailed explanation, one of ordinary skill in the art
would have been able to make the claimed implementation.

(Decision 8-9) (Emphasis added.) .

Such disclosure by Appellants is at least an acknowledgement that the
modification for arranging the claimed elements on a single substrate would
have been obvious to one of ordinary skill in the art. Again, consistent with
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the Examiner’s stated position (Ans. 5-6) that arranging the components of
Michels on one substrate would have been obvious to one of ordinary skill in
the art, we stated that such modification is further justified by the KSR
holding as an obvious solution for a known problem (Decision 9). Thus,
based on the state of the prior art as a whole, our decision with respect to
claim 22 did not amount to a new ground of rejection. As such, considering
the arguments made by Appellants and the legal precedence established by
the KSR holding, we disagree with Appellants’ assertion that more evidence
should be added to the record in support of the Examiner’s stated position.
In conclusion, based on the foregoing, we have granted Appellants’
request to the extent that we have reconsidered our decision, but we deny
Appellants’ request to make any change therein.
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).

DENIED

KIS

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