Ex Parte Park et al

Board of Patent Appeals and Interferences

May 1, 2008

10462778 (B.P.A.I. May. 1, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YOUNG-KEUN PARK, KANG-YOUNG MOON,
BYUNG-CHANG KANG, AND BYUNG-GU CHOE
____________

Appeal 2008-1190
Application 10/462,778
Technology Center 2100
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Decided: May 1, 2008
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Before, JOSEPH L. DIXON, LANCE LEONARD BARRY
and CAROLYN D. THOMAS, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-3 and 20. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

Appeal 2008-1190
Application 10/462,778

A. INVENTION
The invention at issue on appeal uses a ternary content addressable
memory ("CAM") to look up an Internet Protocol (IP) address. (Spec. 2.)

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. An Internet protocol address look-up device for looking up
an Internet protocol address of an Internet protocol packet in
order to forward the Internet protocol packet, the device
comprising:
a ternary content addressable memory including pairs of
data string and mask string, with the data string including a
prefix of an Internet protocol address and the mask string
representing a length of the prefix, and including routing entries
stored in physical segments, respectively, without regard to
order of prefix length, the ternary content addressable memory
functioning to compare a search key as a destination address of
the Internet protocol packet to be forwarded, with the routing
entries, set a match line of a matching routing entry, and output
a mask string of the matching routing entry; and
a priority encoder functioning to compare prefix lengths
of mask strings outputted in correspondence to set match lines
when at least one match line is set in the ternary content
addressable memory, determine, as a longest prefix matching
entry, a routing entry corresponding to a longest mask string,
and output a physical address of the longest prefix matching
entry on the basis of a match line of the longest prefix matching
entry.

C. REJECTION
Claims 1-3 and 20 stand rejected under 35 U.S.C. § 102(b) as
anticipated by U.S. Patent No. 5,920,886 ("Feldmeier").
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Application 10/462,778

II. PRELIMINARY ADVICE
As a preliminary matter, we advise the Appellants that copying the
Statement of Real Party in Interest, Related Appeals and Interferences,
Status of Claims, Status of Amendments after Final Rejection, Summary of
the Invention, and Grounds of Rejection to be Reviewed on Appeal sections
of their Appeal Brief into their Reply Brief (pp. 2-6) "is neither required by,
nor helpful to, the Board." Ex parte Moon, No. 2005-0247, 2005 WL
4122770, at *1 (BPAI 2005).

III. ISSUE
"Rather than reiterate the positions of the parties in toto, we focus on
an issue therebetween." Ex parte Kuruoglu, No. 2007-0666, 2007 WL
2745820, at *2 (BPAI 2007). The Examiner makes the following findings.
Feldmeier teaches . . . a ternary content addressable memory
(see column 5, lines 31-35) including pairs of data string and
mask string (see column 5, lines 46-48, where "data string" is
read on "binary address" and "mask string" is read on "binary
priority mask"), with the data string including a prefix of an
Internet protocol address (see figure 6A, column "Address
(Binary)") and the mask string representing a length of the
prefix (see figure 6A, column "Mask (Binary)") . . . .
(Ans. 3-4.) The Appellants argue "that col. 5, lines 46-48 of Feldmeier refer
to the use of a binary CAM not a ternary CAM." (Reply Br. 7.) Therefore,
the issue is whether the Examiner has shown that Feldmeier teaches a
ternary CAM including pairs of data strings and mask strings.

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Application 10/462,778

IV. ANALYSIS
"[A]n invention is anticipated if the same device, including all the
claim limitations, is shown in a single prior art reference. Every element of
the claimed invention must be literally present, arranged as in the claim."
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed.Cir. 1989)
(citing Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894
(Fed. Cir. 1984); Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771-72
(Fed. Cir. 1983)). "[A]bsence from the reference of any claimed element
negates anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d
1565, 1571 (Fed. Cir. 1986).

Here, in explaining that Feldmeier "provides methods and apparatus
for performing hierarchical address translation using either binary or ternary
CAMs" (col. 5, ll. 32-34), the first part of the reference cited by the
Examiner does disclose the use of a ternary CAM. We agree with the
Appellants, however, that Feldmeier "discloses that the ternary CAM
implementation is a separate embodiment from the embodiment using the
binary CAM implementation, and that they are separate devices." (Reply
Br. 8.)

For its part, Feldmeier supports the Appellants' argument that the part
of the reference relied on by the Examiner to disclose the "pairs of data
string and mask string" of claim 1 "refer[s] to the use of a binary CAM not a
ternary CAM." (Reply Br. 7.) To wit, Feldmeier teaches "translating each
ternary hierarchical address into a binary address and a binary priority mask
and storing the binary addresses in the binary CAM." (Col. 5, ll. 47-49
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(emphasis added).) Although the Examiner relies on Figure 6A to show the
"pairs of data string and mask string" of the claim, moreover, we agree with
the Appellants that "Figs. 5-7 in Feldmeier are directed towards the use of a
binary CAM." (Reply Br. 8.)

The Examiner has not shown that Feldmeier teaches a ternary CAM
including pairs of data strings and mask strings. The absence of a ternary
CAM including pairs of data strings and mask strings negates anticipation.

V. ORDER
For the aforementioned reasons, we reverse the rejection of claim 1
and of claims 2, 3, and 20, which depend therefrom.

REVERSED

pgc

Robert E. Bushnell
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