Ex Parte Murthy et al

Board of Patent Appeals and Interferences

Jul 16, 2002

08713046 (B.P.A.I. Jul. 16, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MANOHAR MURTHY, JOHN F. WAKERLY and ARTHUR I. LAURSEN
__________
Appeal No. 2000-2282
Application 08/713,046
___________
ON BRIEF
___________
Before KRASS, JERRY SMITH, and FLEMING, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 25-31. Claims 1-24 have been cancelled.
The invention relates to the monitoring of packet traffic
arriving at the bridges and routers. See Appellants’
specification, page 1, lines 3-13. Appellants disclose that
according to the invention, monitoring of any or all network
segments on a multi-port bridge or router may be carried out from
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a network segment on one port, referred to as a monitoring port.
In Appellants’ system of Figure 1, a single monitoring device (9)
can monitor traffic on multiple network segments (2) connected to
bridge (1). See Appellants’ Specification Page 3, lines 27-30
and Figure 1. The bridge (1) forwards packets to their normal
destination ports (ports 0,1,2,3, or 5 in Figure 1), and also to
the monitoring port (port 4 in Figure 1), to which monitoring
device (9) is connected.
Independent claim 25 and dependent claim 27 present in the
application are reproduced as follows:
25. A method for monitoring a network comprising an
apparatus interconnecting a plurality of network segments at
least one of which comprises a network monitor, the method
comprising:
(a) obtaining, from each packet received by the apparatus,
forwarding information to be used in determining the packet
destination;
(b) if a packet destination specified by the forwarding
information includes a station other than the apparatus, then
conducting one or more first transmissions of the packet to one
or more of the network segments in order to deliver the packet to
the packet destination; and
(c)conducting a second transmission of the packet to a
network segment comprising the network monitor, wherein said
second transmission is separate from said one or more first
transmissions.
Appeal No. 2000-2282
Application 08/713,046
1 Appellants filed an amended Appeal Brief on February 8,
2000. We will refer to this appeal brief as simply the Brief.
Appellants filed a reply brief on July 13, 2000. We will refer
to this reply brief as the Reply Brief.
2 The Examiner responded to Appellants’ Appeal Brief on May
11, 2000. We will refer to this answer as simply the Answer.
3
27. The method of Claim 25 further comprising specifying
which packets are to be delivered to a network monitor, wherein
the specifying step is performed more than once to yield
different specifications of packets to be delivered to a network
monitor.
References
The references relied on by the Examiner are as follows:
Bosack 5,088,032 Feb. 11, 1992
Douglas 5,097,469 Mar. 17, 1992
Rejections at Issue
Claims 25-31 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Bosack and Douglas.
Rather than repeat the arguments of Appellants or the
Examiner, we make reference to the brief1 and the answer2 for the
details thereof.
OPINION
We will sustain the rejection of claim 25 and 26 and 28-31,
and reverse the rejection of claim 27.
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Application 08/713,046
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At the outset, we note that Appellants have provided a
statement, on page 5, lines 9 and 10, that claims 25 and 26 and
claims 28-31 stand or fall together. Claim 27 stands or falls
together separately from the first group of claims. 37 CFR
§1.192 (c)(7)(July 1, 1999), which was controlling at the time of
Appellants’ filing the brief, states:
For each ground of rejection which appellant contests and
which applies to a group of two or more claims, the Board
shall select a single claim from the group and shall decide
the appeal as to the ground of rejection on the basis of
that claim alone unless a statement is included that the
claims of the group do not stand or fall together and, in
the argument under paragraph (c)(8) of this section,
appellant explains why the claims of the group are believed
to be separately patentable. Merely pointing out differences
in what the claims cover is not an argument as to why the
claims are separately patentable.
We will, thereby, consider claims 25, 26 and 28-31 as
standing or falling together as a group, and we will treat claim
25 as a representative claim of that group. Further, we will
consider claim 27 as its own group.
With regards to claim 25, Appellants argue that “attaching
Douglas’ monitor to Bosack’s system would not provide the
invention of Claim 25 because this would not provide two separate
steps (b) and (c).” See Appeal Brief page 6, lines 2-4.
Specifically, Appellants argue that “Bosack’s broadcast cannot be
interpreted to include step (c) of claim 25. At best, Bosack’s
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broadcast might be interpreted to include step (b) (delivery of a
packet to packet destination).” See Brief page 6, lines 18-21.
Appellants argue that Bosack does not teach or suggest step (c)
because “Bosack does not teach or suggest a separate transmission
of the same packet in addition to his broadcast.” See Brief page
7, lines 3-6. In response to the Examiner’s argument that
Bosack’s multiple transmissions of a packet meet steps (b) and
(c), Appellants argue that Bosack’s multiple transmissions would
be conducted “in order to deliver the packet to the packet
destination” and none would be “separate,” as recited in step
(c). See Reply Brief page 2, lines 14-17.
In response to the Appellants’ argument that Bosack does not
teach the step (c) of claim 25, the Examiner, in reference to
Bosack’s Figure 4, argues that Bosack’s packet broadcasting could
anticipate both the limitation “one or more transmissions” in
step (b) and the limitation “a second transmission” in step (c)
of claim 25. See Answer, page 7, lines 1-5. The Examiner
provides an example to explain his position:
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Let us say [Bosack’s] packet broadcasting comprises three
transmissions in all. The first two transmissions of the
broadcast would anticipate the limitation “one or more first
transmissions” in step (b) and the last transmission of the
broadcast would anticipate the limitation “a second
transmission” in step (c).
See Answer page 7, lines 6-9.
Thus, the question presented before us is whether the
Examiner reasonably interpreted claim 25 steps (b) and (c) so as
to be met by Bosack’s multiple transmissions of a packet.
Claims will be given their broadest reasonable
interpretation consistent with the specification, and limitations
appearing in the specification are not to be read into the
claims. In re Etter, 756 F.2d 852, 858, 225 USPQ 1, 5 (Fed. Cir.
1985).
We find nothing in the claims or in the specification that
precludes an interpretation of steps (b) and (c) of claim 25 to
include multiple transmissions of a packet as conducted in
Bosack’s packet broadcasting. Step (b) of Claim 25 recites:
if a packet destination specified by the forwarding
information includes a station other than the apparatus,
then conducting one or more first transmissions of the
packet to one or more of the network segments in order to
deliver the packet to the packet destination.
Stress added. Step (b) requires sending the packet via one or
more transmissions to the packet’s destination, which is a
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station (ports 0,1,2,3, or 5 in Figure 1) on a network segment
(2). Since the claim language employs an “or”, step (b) is met
when “one” first transmission of the packet to a network segment
in order to deliver the packet to the packet destination is made.
A typical Bosack gateway circuit (76), shown in Bosack’s Figure
3, makes at least a first transmission of the packet in order to
deliver the packet to its destination station (for example 110).
We find that Bosack teaches the limitation of “conducting one or
more first transmissions of the packet to one or more of the
network segments in order to deliver the packet to the packet
destination.”
Step (c) of Claim 25 recites:
conducting a second transmission of the packet to a network
segment comprising the network monitor, wherein said second
transmission is separate from said one or more first
transmissions.
Step (c) requires conducting a separate transmission of the
packet to a network segment (2) comprising the network monitor
(9). Bosack’s specification discloses on column 8, lines 46-53,
in reference to Bosack’s Figure 4, that Step E computes the path
of the packet and if more than one path is acceptable, multiple
transmissions are made using several such paths in a weighted
form of a round robin alternation. A first of such multiple
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transmissions would satisfy step (b) and a second of such
multiple transmissions would satisfy step (c), since the second
transmission is separate from the first. Thus, a typical Bosack
gateway circuit (76), shown in Bosack’s Figure 3, makes a
separate transmission of the packet, as recited in step (c).
Implicit in Appellants’ argument that Bosack’s multiple
transmissions of the packet only satisfy step (b) and do not meet
step (c) because step (b) is performed in order to deliver the
packet to its destination, is the argument that the transmission
in step (c) occurs not for delivery of the packet to its
destination, but for delivery of the packet to the network
monitor for monitoring purposes. However, step (c) does not
state why the second transmission is being made. As such, the
scope of step (c) includes a second transmission being made for
the purposes of delivering the packet to its destination, that is
for broadcasting. We appreciate that Appellants’ invention
relates to a single monitoring device (9) which obtains a copy of
a packet that is transmitted to its destination so that the
monitoring device (9) can monitor traffic on multiple network
segments (2). However, the language of step (c) of claim 25 is
broad enough to read on Bosack’s multiple transmissions of a
packet in order to deliver the packet to its destination station.
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Therefore, we find that Bosack teaches the limitation of
“conducting a second transmission of the packet to a network
segment.”
We thus find that the claimed first (step (b)) and second
transmissions (step (c)) read on the prior art teaching of
conducting more than one transmission by Bosack. For instance,
in case of two separate transmissions of a packet by Bosack’s
gateway circuit to network segments, both steps (b) and (c) would
be met. Specifically, there would be a first transmissions of
the packet to one network segments in order to deliver the packet
to the packet destination, and a second transmission of the
packet to a network segment comprising the network monitor.
Therefore, we affirm the Examiner’s rejection of claim 25.
Regarding claim 27, Appellants argue that Douglas does not
teach or suggest either “specifying which packets are to be
delivered to a network monitor” or that “the specifying step is
performed more than once to yield different specifications of
packets to be delivered to a network monitor,” as recited in
claim 27. See Appeal Brief page 7, lines 25-30.
The Examiner argues on page 8, lines 13-23 of the Answer
that Bosack’s system gateway specifies which packet is to be
delivered to which network segment based on the destination
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address of the packet. Thus, the Examiner argues the gateway
would specify which packet is to be delivered to the monitoring
port based on the destination address of the packet. With regard
to the requirement in claim 27 that the specifying step is
performed more than once, the Examiner argues that if the
destination network monitor is not on a network that is directly
connected to the gateway, the gateway will also specify more than
one transmission (first and second transmissions) using the round
robin technique to try all possible paths to deliver the packet
to the destination network monitor. See Answer, page 3, lines
19-22. These different transmissions to the network segments,
according to the Examiner, would yield different specifications
of packets. See Answer, page 3, lines 22-23.
We note that the Examiner, by arguing that the gateway would
specify which packet is to be delivered to the monitoring port
based on the destination address of the packet and that different
transmissions to the network segments would yield different
specifications, has tried to establish that the claimed invention
of claim 27 is inherent in Bosack.
“The inherent teaching of a prior art reference, a question
of fact, arises both in the context of anticipation and
obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782,
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1784 (Fed. Cir. 1995). See also In re Grasselli, 713 F.2d 731,
739, 218 USPQ 769, 775 (Fed. Cir. 1983). However, the Examiner
must show rationale or evidence tending to show inherency. The
fact that a certain result or characteristic may occur or be
present in the prior art is not sufficient to establish the
inherency of that result or characteristic. In re Rijckaert, 9
F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993). “To
establish inherency, the extrinsic evidence must make clear that
the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so
recognized by persons of ordinary skill. Inherency, however, may
not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of
circumstances is not sufficient.” In re Robertson, 169 F.3d 743,
745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999).
The Examiner has failed to provide such extrinsic evidence
as to make clear that Bosack’s gateway (bridge) would specify
which packets are to be delivered to a network monitor. In fact,
there is an equally likely possibility that Bosack’s gateway
would deliver all packets to a network monitor, thus making no
specifications as to which packets are to be delivered to a
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network monitor. The fact that a characteristic of specifying
which packets are to be delivered to a network monitor may be
present in Bosack is not sufficient to establish the inherency of
that characteristic.
Thus, we find that the Examiner has not met the burden of
establishing that the specification steps as recited in
Appellants’ claim 27 are necessarily present in Bosack.
Therefore, we cannot sustain the Examiner’s rejection of claim
27. However, we affirm the Examiner’ rejection of claims 25, 26
and 28-31.
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Application 08/713,046
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
MRF:pgg
Appeal No. 2000-2282
Application 08/713,046
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