Ex Parte Majumdar et al

Patent Trial and Appeal Board

Feb 16, 2016

12534078 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/534,078 07/31/2009 Saugat Majumdar
56436 7590 02/18/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82259246 8915
EXAMINER
LAM, YEEF
ART UNIT PAPER NUMBER
2465
NOTIFICATION DATE DELIVERY MODE
02/18/2016 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
mkraft@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 SAUGAT MAJUMDAR,
SHAUN KAZUO W AKUMOTO, and
CHARLES F. CLARK1
Appeal2014-002502
Application 12/534,078
Technology Center 2400
Before ALLEN R. MacDONALD, CARLA M. KRIVAK, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify Hewlett-Packard Development Company, LP, as the
real party in interest. (App. Br. 3.)
Appeal2014-002502
Application 12/534,078
Introduction
The claims are directed to a "method and apparatus for processing a
Dynamic Host Configuration Protocol (DHCP) packet in a trusted network."
(Abstr.)
Exemplary Claim
Claim 1, reproduced below with the disputed limitation italicized, is
exemplary of the claimed subject matter:
1. A method for processing a Dynamic Host Configuration
Protocol (DHCP) packet in a trusted network, the trusted network
including a plurality of trusted network devices and a trusted
host, the method comprising:
receiving the DHCP packet at a network device of the
trusted network;
determining a port of the network device at which the
DHCP packet was received;
determining an identifier associated with the port;
marking, by the network device, an option in the DHCP
packet using the identifier, wherein marking comprises inserting
the option at a random location in the DHCP packet; and
transmitting the marked DHCP packet along a forwarding
path.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Noble
Kim
Bronnimann
Townsley
Boden, Jr.
("Boden")
US 2004/0064591 Al
US 2005/0005110 A 1
US 2006/0072582 Al
US 2007 /0203999 Al
US 7,869,394 Bl
2
Apr. 1, 2004
Jan. 6,2005
Apr. 6, 2006
Aug.30,2007
Jan. 11, 2011
Appeal2014-002502
Application 12/534,078
REJECTIONS
Claims 1, 2, 5-9, 12, and 13 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Boden and Townsley. (Final Act. 2-5.)
Claims 3, 4, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Boden, Townsley, and Noble. (Final Act. 6-7.)
Claims 14 and 16-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boden, Townsley, and Bronnimann. (Final Act. 7-9.)
Claims 15, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Boden, Townsley, Bronnimann, and Kim. (Final
Act. 9-10.)
ISSUES
(1) Whether the Examiner erred in finding the combination of
Boden and Townsley teaches or suggests "wherein marking comprises
inserting the option at a random location in the DHCP packet," as recited in
claim 1 and commensurately recited in claims 8 and 14.
(2) Whether the Examiner erred in finding the combination of
Boden and Townsley teaches or suggests "wherein marking further
comprises inserting the option at the random location within a list of DHCP
options of the DHCP packet," as recited in claim 5 and commensurately
recited in claim 12.
(3) Whether the Examiner erred in finding the combination of
Boden, Townsley, Bronnimann, and Kim teaches or suggests "wherein at
least one of the trusted network device and the port is disabled upon
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Application 12/534,078
determining the source of the DHCP packet," as recited in claim 15 and
commensurately recited in claims 19 and 20.
ANALYSIS
I. Claims 1-14 and 16--18
We have reviewed the Examiner's rejections of claims 1-14 and 16-
18 in light of the Appellants' arguments that the Examiner has erred. We
disagree with Appellants' conclusions 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 (Final Act. 3-9, 11-16); and (2) the reasons set forth by the
Examiner in the Examiner's Answer in response to Appellants' Appeal Brief.
(Ans. 4--9, 12-24.) We concur with the conclusions reached by the
Examiner, and we highlight the following for emphasis.2
A. Claims 1, 2, 6--9, and 13
The Examiner relies on the combination of Boden and Townsley as
teaching or suggesting the limitations of claim 1. The Examiner concedes
Boden does not disclose "marking an option in the DHCP packet, as well as
the marking comprises inserting the option at a random location." (Final
Act. 3.) The Examiner asserts, however, these steps are "well known in the
art and commonly used for improving the bandwidth utilization per
transmitted frame due to lower overhead." (Id.) The Examiner then cites
Townsley "from the similar field of endeavor" as teaching "marking an
option in the DHCP packet, as well as the marking comprises inserting the
2 Only those arguments made by Appellants have been considered in this
Decision. Arguments that Appellants did not make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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Application 12/534,078
option at a random location." (Id. (citing Townsley Fig. 3, iii! 49-50, and
Table 1).)
Appellants argue the Examiner's findings are in error because
Townsley "shows that the DHCP option 322 is inserted at a specific location
(i.e., in the payload 320) in the DHCP data packet 310, and not at a random
location." (App. Br. 8 (italicized emphasis added).)
The Examiner responds that a DHCP packet has several fields,
including a header and payload. (Ans. 12.) The Examiner concludes "[b ]y
broad interpretation a random location in the DHCP packet could mean
either the header or the payload (or even the other fields) in the DHCP
packet." (Ans. 12-13.)
The crux of the dispute lies in the meaning of "inserting the option at
a random location in the DHCP packet." (Claim 1 (emphasis added).) The
Examiner's findings are premised on reading this limitation as encompassing
inserting the option in one of a plurality of places, such as "either the header
or the payload (or even the other fields) in the DHCP packet." (Ans. 13.)
From this premise, the Examiner concludes this limitation is taught or
suggested by the prior art, which teaches a plurality of possible locations for
inserting a DHCP option, and further concludes any of those locations are a
"random location." (Ans. 12-23.)
Appellants' argument appears to be premised on the reading this
limitation more narrowly as requiring selecting the insertion location at
random: "'[A] random location in the DHCP packet' indicates that the
location for inserting the option in the packet is a random position. In other
words, from the claim, the location for inserting the option in the packet is
selected at random." (Reply Br. 4 (italicized emphasis added).) Thus,
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Appellants are reading claim 1 as requiring not just inserting the option at a
"random location," but also selecting that location at random-which would
presumably be done dynamically for each packet (or a group of packets).
Appellants' argument is not persuasive, however, because claim 1
does not require the location must be "selected at random," and certainly
does not require any selection to be done dynamically. Rather, the claim
requires only the insertion of the DHCP option at a "random location."
Even if the step of "inserting" implies the selection of an insertion point, the
claim does not specify when or how that selection is made. As the Examiner
finds, Boden and Townsley both teach a plurality of different possible
locations for the DHCP option to be inserted. (Ans. 12-23.) According to
the Examiner's findings and analysis, any one of those locations is "random"
in the sense it is one from among many different possible locations. (Id.)
We concur.
Appellants do not cite to any definition or usage appearing in the
Specification that constrains the construction of the term "random location"
to require selection of a location at random for inserting the DHCP option,
as Appellants are construing that limitation. Although the Specification at
paragraph 22 discusses a process for selecting a random location ("DHCP
traceback option 233 is inserted at a position DHCP Option i, where i is a
randomly picked number in the range 1 - (n + 1 )"),the term "random
location" does not necessarily require the selection process as described by
the Specification, nor can this selection process for choosing a random
location be read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d
1364, 1369 (Fed. Cir. 2003) (limitations not explicit or inherent in the
language of a claim cannot be imported from the specification); In re Van
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Application 12/534,078
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (noting that, although the
claims are interpreted in light of the specification, limitations from the
specification are not read into the claims.).
In short, we conclude Appellants' argument regarding the disputed
limitation of claim 1 is not commensurate with the scope of the claims. See
In re Self, 671 F.2d 1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail
from the outset because ... they are not based on limitations appearing in
the claims."). We are, therefore, not persuaded of Examiner error, and we
sustain the Examiner's 35 U.S.C. § 103(a) rejection of claim 1, as well as the
rejection of claims 2, 6-9, and 13, which Appellants argue collectively with
claim 1. (App. Br. 11.)
B. Claims 5 and 12
Claim 5 depends from claim 1 and adds the limitation "wherein
marking further comprises inserting the option at the random location within
a list of DHCP options of the DHCP packet." (Claims App. (emphasis
added).) Appellants argue "Boden fails to teach or suggest inserting the
option at a random location." (App. Br. 12.) Appellants further argue
Townsley discusses "inserting the DHCP option 322 in the payload of the
DHCP data packet 310. The payload is distinct and different from the
DHCP options of a DHCP data packet." (Id.)
The Examiner responds that "Townsley discloses, among other things,
a DHCP packet 310 contains multiple DHCP option fields 322" (Ans. 17
(citing Townsley Fig. 3, Table 1 and i-fi-149, 50, and 53)), and further
discloses new options may be "added to this list," and "this list of options
can be in any order." (Ans. 18.)
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We agree the Examiner's findings are supported by the disclosure of
Townsley. In particular, as the Examiner correctly finds, in describing a
DHCP option field 322, Townsley states "[a] DHCP payload may carry
multiple data options fields like option field 322." (Townsley i-f 50
(italicized emphasis added); Ans. 17.) We are, therefore, unpersuaded by
Appellants' conclusory contention that "[t]he payload is distinct and
different from the DHCP options .... " (App. Br. 12.) We are further
unpersuaded by Appellants' additional arguments regarding claims 5 and 12
(e.g., Reply Br. 5-7), which reiterate arguments asserted regarding claim 1
that we have addressed supra.
We sustain the Examiner's 35 U.S.C. § 103(a) rejection of claim 5,
and also claim 12, which Appellants argue collectively with claim 5. (App.
Br. 11-12.)
C. Claims 3, 4, 10, 11, 14, and 16--18
Appellants do not present separate substantive arguments for the
patentability of dependent claims 3, 4, 10, or 11, which stand rejected over
Boden, Townsley, and Noble. As to these claims, Appellants only contend
"the Examiner has not and cannot reasonably assert that the disclosure
contained in Noble makes up for any of the deficiencies with respect to
Boden and Townsley" asserted with regard to claim 1. (App. Br. 13.)
Because, as stated above, we do not find the combination of Boden and
Townsley to be deficient with regard to claim 1, we also sustain the
Examiner's 35 U.S.C. § 103(a) rejections of claim 3, 4, 10, and 11.
Similarly, Appellants do not present separate substantive arguments
with regard to independent claim 14 or dependent claims 16-18. As to
claim 14, Appellants merely state "independent claim 14 [is] also believed to
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Application 12/534,078
be allowable for at least the same reasons as set forth above in connection
with independent claim 1." (App. Br. 14.) We, therefore, sustain the
rejection of claim 14, and claims 16-18, which Appellants argue collectively
with claim 14, for the same reasons stated above for claim 1.
II. Claims 15, 19, and 20
Claim 15 depends from independent claim 14, and adds the limitation
"wherein at least one of the trusted network device and the port is disabled
upon determining the source of the DHCP packet." (Claims App. (emphasis
added)) The Examiner finds Boden "teaches or suggests the claimed portion
of' ... determining the source of the DHCP packet.'" (Final Act. 17.) The
Examiner concedes Boden "does not specifically disclose disable a port,"
but asserts disabling a port "is well known in the art and commonly used for
enhancing security." (Final Act. 9.) The Examiner relies on Kim "for
disclosing a communication port can be disabled due to security reason[ sic]
(paragraph 34) which is well known in the art." (Final Act. 17.) The
Examiner concludes:
Therefore, it would have been obvious to one skilled in the art to
combine Kim with Boden-Townsley-Bronnimann. Therefore,
Boden-Townsley-Bronnimann-Kim indeed teaches or suggests
the claimed feature of "wherein at least one of the trusted
network device and the port is disabled upon determining the
source of the DHCP packet" as recited in claim 15.
(Final Act. 17-18.)
Appellants argue the Examiner's reliance on Kim for teaching
disabling a port "due to security reasons" is "not the same as disabling a port
'upon determining the source of the DHCP packet,"' as recited in claim 15.
(App. Br. 16.) Appellants further argue:
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Application 12/534,078
[l]n Kim, the port is disabled because the user has changed the
ports, and not because the system has determined the source from
which a DHCP packet marked with an identifier is transmitted.
Kim does not teach or suggest that a port is disabled upon
determining the source of a DHCP packet.
(App. Br. 15-16.)
The Examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness is the clear articulation of a reason why the
claimed invention would have been obvious. The Supreme Court in KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), noted that the analysis
supporting a rejection under 35 U.S.C. § 103 should be made explicit. The
Court also stated that "rejections 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, 550 U.S. at 418 (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)).
In the present case, the Examiner provides no legal conclusion as to
why it would be obvious to disable a port "upon determining the source of
the DHCP packet," as recited in claim 15 and commensurately recited in
claims 19 and 20. Nor has the Examiner provided any rational basis for
combining the teachings of the cited references to achieve the invention as
recited in claims 15, 19, and 20. We conclude, therefore, the Examiner has
not satisfied his burden of setting forth a prima facie case of obviousness of
claims 15, 19, and 20.
Accordingly, we do not sustain the rejection of claims 15, 19, and 20
as unpatentable over Boden, Townsley, Bronnimann, and Kim.
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DECISION
For the above reasons, the Examiner's 35 U.S.C. § 103(a) rejections
of claims 1-14 and 16-18 are affirmed.
The Examiner's 35 U.S.C. § 103(a) rejection of claims 15, 19, and 20
is reversed.
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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