Ex Parte Pirbhai et al

Patent Trial and Appeal Board

Aug 22, 2018

12480456 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/480,456 06/08/2009
151091 7590 08/24/2018
WSOU Investments, LLC
11150 Santa Monica Blvd., Suite 1400
Los Angeles, CA 90025
FIRST NAMED INVENTOR
Shafiq Pirbhai
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.
ALC 3469 3416
EXAMINER
VU, HOANG-CHUONG Q
ART UNIT PAPER NUMBER
2476
NOTIFICATION DATE DELIVERY MODE
08/24/2018 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):
docketing@burdickpatents.com
PTOL-90A (Rev. 04/07)
I UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAFIQ PIRBHAI, RON HABERMAN,
and MUSTAPHA AISSAOUI
Appeal2016-005942
Application 12/480,456
Technology Center 2400
Before JOHN A. EV ANS, NATHAN A. ENGELS, and
CHRISTA P. ZADO, Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § I34(a) of the
Examiner's Final Rejection of Claims 1--4, 7-15, and 18-22. Claims
App.'x. Claims 5, 6, 16, and 17 are cancelled. Id. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE. 2
1 The Appeal Brief identifies Alcatel-Lucent, as the real party in interest.
App. Br. 1.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed October 16, 2015, "App. Br."), the Reply
Brief (filed May 18, 2016, "Reply Br."), the Examiner's Answer (mailed
April 20, 2016, "Ans."), the Final Action (mailed June 3, 2015, "Final
Appeal 2016-005942
Application 12/480,456
STATEMENT OF THE CASE
The claims relate to a provider edge node and methods performed
thereon. See Abstract.
Related Appeals
The present Application was the subject of Appeal 2012-007632,
mailed November 24, 2014 wherein the present Panel of the Board Affirmed
the Examiner ("Decision"). The claims were subsequently amended and
represented for examination.
Invention
Claims 1 and 12 are independent. An understanding of the invention
can be derived from a reading of exemplary Claim 1, which is reproduced
below:
1. A provider edge node for allowing a customer edge
device to access a Virtual Leased Line (VLL) service, the
provider edge node comprising:
a cache that is configured to store an association between
an Internet Protocol (IP) address of the customer edge device
and a Media Access Control (MAC) address of the customer
edge device;
a backup memory that maintains a persistent copy of a
last-known IP address of the customer edge device during a
cache-clearing event in the cache, wherein the backup memory
does not store the MAC address;
a communication interface that is configured to transmit
data packets to the MAC address of the customer edge device;
and
Act."), Specification (filed June 8, 2009, "Spec.") for their respective details.
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Appeal 2016-005942
Application 12/480,456
a processor that is configured to update the cache upon
receipt of an address update message from the customer edge
device, the address update message indicating the IP address
and the MAC address of the customer edge device, removes the
stored association from the cache in response to the cache-
clearing event, while maintaining the persistent copy of the last-
known IP address in the backup memory,
wherein the cache-clearing event temporarily
interrupts connectivity to the customer edge device, at a
time subsequent to removal of the stored association
from the cache, sends an address discovery message
using the communication interface, the address discovery
message requesting an updated MAC address
corresponding to the last-known IP address maintained in
the backup memory, and updates the cache to reflect the
updated MAC address upon receipt of an additional
address update message from the customer edge device,
wherein the address update message and the
additional address update message are Neighbor
Discovery Protocol advertisements and the address
discovery message is a Neighbor Discovery Protocol
solicitation.
References and Rejections
Chen, et al., US 6,987,743 B2 Jan. 17,2006
Takagaki, et al., US 2008/0008183 Al Jan. 10,2008
Haberman, et al., US 7,827,310 Bl Filed Apr. 27, 2008
Srinivasan US 2009/0285089 Al Filed May 15, 2008
Teng US 2009/0003241 Al Jan. 1,2009
Balus, et al., US 2008/0084891 Al Apr. 10, 2008
Haberman, et al., US 7,827,310 Bl Filed Apr. 27, 2008
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Application 12/480,456
The claims stand rejected as follows:
1. Claims 1 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chen and Takagaki. Final Act. 2-8.
2. Claims 2, 3, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chen, Takagaki, and Teng. Final Act. 8-10.
3. Claims 4, 7, 8, 15, 18, and 19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Chen, Takagaki, and Srinivasan. Final
Act. 10-13.
4. Claims 9, 10, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chen, Takagaki, and Haberman. Final Act.
13-14.
5. Claims 11 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chen, Takagaki, and Balus. Final Act. 15-16.
ANALYSIS
We have reviewed the rejections of Claims 1-3 and 5-20 in light of
Appellants' arguments that the Examiner erred. We consider Appellants'
arguments seriatim, as they are presented in the Appeal Brief, pages 5-11.
CLAIMS 1 AND 12: OBVIOUSNESS OVER CHEN AND T AKAGAKI
Independent claim 1 recites, inter alia, "a backup memory that
maintains a persistent copy of a last-known IP address of the customer edge
device during a cache-clearing event."
Appellants contend the prior art fails to teach or suggest this
limitation. App. Br. 5.
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Appeal 2016-005942
Application 12/480,456
The Examiner finds this limitation is taught "inherently" by Chen.
The Examiner specifically finds the "IP address is inherently maintained in
'some memory' during the cache timeout because it was used in an ARP
request" and "Chen does not need to explicitly disclose a "backup memory'
in order to teach maintaining last known IP address." Final Act. 3 (citing
Decision, 4--5).
Appellants argue 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. App. Br. 6. ( citing In re Rijckaert3).
Appellants further argue the Examiner has not provided a basis in fact or
technical reasoning to reasonably support the finding that the allegedly
inherent characteristic necessarily flows from the teachings of Chen. Id.
( citing Ex parte Levy4). Appellants contend our Decision found Estrada, 5
not Chen, teaches "backing up an IP address," but that Estrada is not relied
upon for the present rejection. Id.
The Answer finds Chen teaches that after the cache entries have timed
out, host B sends an ARP (Address Resolution Protocol) request to
determine MAC address of host B. Ans. 19. The ARP request contains the
IP and MAC addresses of host A and the IP address of host B. Id. Thus, the
Examiner finds the IP address of host Bis inherently, and necessarily,
maintained during the cache timeout because it was used in the ARP
3 In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993).
4 Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990).
5 Estrada, et al., US 2009/0119414 Al, pub. May 7, 2009. The Examiner
does not apply Estrada in the present Appeal.
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Application 12/480,456
request. Id. ( emphasis added). The Examiner further finds the Final
Rejection of December 14, 2011 applied Estrada to show that it was well-
known to maintain a copy of the IP address in a back-up memory. Id.
However, the Examiner explains Estrada is not applied in the currently-
appealed rejection because the "Board implied that 'backup memory' can be
relied upon using the inherent disclosure of Chen." Id. at 19-20.
Appellants argue the Answer finds "Chen necessarily maintains an IP
address" by relying upon an ARP request, but submit that an ARP request is
not equivalent to a backup memory. Reply Br. 2. Furthermore, Appellants
contend the Examiner unreasonably broadened the claim language by
ignoring the requirement to maintain a persistent copy of a last-known IP
address of the customer edge device during a cache-clearing event. Id.
Appellants argue the claims recite "cache-clearing," but instead, the
Examiner cites "a cache timeout." Id. Appellants maintain Chen's cache
timeout is not equivalent to the claimed cache-clearing event.
Appellants further argue the Examiner does not accurately
characterize our prior Decision because, according to Appellants, the
Decision refers to Estrada for "backing up" rather than inherency. Id.
Our Decision found:
[ r ]ather than rely on an inherent disclosure of "backup
memory" in Chen to maintain the IP address, the Examiner
relies upon the teaching in Estrada of backing up an ARP cache
in data storage.
Decision, 5 (citing Ans. 5, 18-20).
Estrada provides that "it has been recognized that if the data
contents of the router 102 ARP cache 304 could be copied or
acquired before the cache was flushed or emptied, such data
could be used to identify each computer device that is connected
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Application 12/480,456
to router 102 to transmit data." Estrada ,r 29; see also ,r,r 30, 32.
Therefore, according to the Examiner, Estrada teaches backing
up an IP address in backup memory.
Decision, 5 (citing Ans. 5, 19-20).
We found that:
[i]n particular, Estrada teaches storing all contents of the ARP
cache, including IP addresses, in backup memory by taking a
snapshot of all ARP cache content prior to flushing the ARP
cache.
Id. at 6 (citing Estrada ,r 30, 32). However, notwithstanding that explicit
finding, the Examiner opted not to apply Estrada in the current set of
rejections. See Ans. 20.
In the absence of Estrada, the prior art before us fails to teach "a
backup memory that maintains a persistent copy of a last-known IP address
of the customer edge device during a cache-clearing event," as recited in
claim 1. Appellants contend independent claim 12 recites substantially
similar subject matter. App. Br. 5. The Examiner applies the same findings
to both independent claims 1 and 12. Ans. 21. In view of the foregoing, we
decline to sustain the rejection of claims 1 and 12.
CLAIMS 2--4, 7-11, 13-15, AND 18-22: OBVIOUSNESS OVER CHEN,
T AKAGAKI, AND VARIOUS OF TENG, SRINIVASAN, HABERMAN, AND BALUS
Appellants contend the secondary references fail to supply the
teachings missing from Chen. See App. Br. 8-11. The Examiner does not
apply the secondary references to the disputed limitation. See Ans. 22-23.
In view of the foregoing, we decline to sustain the rejection of claims
2--4, 7-11, 13-15, and 18-22.
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Appeal 2016-005942
Application 12/480,456
DECISION
The rejections of Claims 1--4, 7-15, and 18-22 under 35 U.S.C. §
103(a) are REVERSED.
REVERSED
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