Ex Parte Majumdar et alDownload PDFPatent Trial and Appeal BoardFeb 16, 201612534078 (P.T.A.B. Feb. 16, 2016) Copy Citation 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 3 Appeal2014-002502 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). 4 Appeal2014-002502 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, 5 Appeal2014-002502 Application 12/534,078 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 6 Appeal2014-002502 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.) 7 Appeal2014-002502 Application 12/534,078 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 8 Appeal2014-002502 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: 9 Appeal2014-002502 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. 10 Appeal2014-002502 Application 12/534,078 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 11 Copy with citationCopy as parenthetical citation