Ex Parte Relan

Board of Patent Appeals and Interferences

Mar 25, 2009

10317170 (B.P.A.I. Mar. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SANDEEP RELAN
____________

Appeal 2008-3542
Application 10/317,170
Technology Center 2400
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Decided:1 March 25, 2009
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Before LEE BARRETT, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).

Appeal 2008-3542
Application 10/317,170

STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-16. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM IN PART.

INVENTION
The invention on appeal is directed generally to a method and an
apparatus for high performance packet filtering in a communication network
environment such as token ring, ATM, Ethernet, Fast Ethernet, Gigabit
Ethernet and 10 Gigabit Ethernet or any other networking environment.
More particularly, Appellant’s invention relates to a packet filter and a
method for filtering a packet that can be implemented in a network
component, which may include discrete devices or which may be
implemented on a semiconductor substrate such as a silicon chip. (Spec. 1).

ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows:

1. A method of processing a packet in a
communication network,

said method comprising the steps of:

determining an initial bit position value within the
packet;

identifying a bit action length value;

calculating an extracted bit value based upon the
initial bit position value and the bit action length value;
and
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implementing at least one action on a packet by
using an action bit value to modify the extracted bit
value.

PRIOR ART
The Examiner relies upon the following references as evidence in
support of the rejections:
Salim US 6,628,653 B1 Sep. 30, 2003
Miller US 6,735,264 B2 May 11, 2004
Corl US 6,772,223 B1 Aug. 3, 2004

THE REJECTIONS
Claims 1-10 and 12-15 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Salim.
Claims 5, 11, and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Salim, Corl, and Miller.

APPELLANT’S CONTENTIONS
Appellant separately argues claims 1-16. (App. Br, 10-21). For each
claim on appeal, Appellant contends that certain claim limitations are not
disclosed by Salim (claims 1-10, and 12-15), or taught or suggested by the
Examiner’s proffered combination of Salim, Miller, and Corl (claims 5, 11,
and 16). We have enumerated the specific claim limitations argued by
Appellant in the ISSUES section infra. We address Appellant’s specific
arguments for each issue in our ANALYSIS section infra.

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EXAMINER’S RESPONSE
In the “Response to Arguments” section of the Answer, the Examiner
maintains that the limitations argued by Appellant are disclosed by Salim
alone for claims 1-10, and 12-15, and are taught (or suggested) by the
combination of Salim, Miller, and Corl for claims 5, 11, and 16. (Ans. 11-
30).
ISSUES
We consider the following issues that flow from the contentions of the
Appellant and the Examiner:

1. Has Appellant shown the Examiner erred in finding that
Salim discloses calculating an extracted bit value based
upon the initial bit position value and the bit action length
value? (See claim 1, see also the commensurate language
recited in independent claims 8 and 12).

2. Has Appellant shown the Examiner erred in finding that
Salim discloses implementing at least one action on a packet
by using an action bit value to modify the extracted bit
value? (See claim 1, see also the commensurate language
recited in independent claims 8 and 12).

3. Has Appellant shown the Examiner erred in finding that
Salim discloses a replacement action? (See dependent
claims 2, 3, 9, and 13-15).

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4. Has Appellant shown the Examiner erred in finding that
Salim discloses a mathematical operation that modifies the
extracted bit value? (See dependent claims 4, 10, and 15).

5. Has Appellant shown the Examiner erred in finding that the
combination of Salim, Miller, and Corl discloses an
encryption key that modifies the extracted bit value? (See
dependent claims 5, 11, 16).

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).
“Absence from the reference of any claimed element negates anticipation.”
Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir.
1986).

FINDINGS OF FACT
In our analysis infra, we rely on the following findings of fact (FF)
that are supported by a preponderance of the evidence:

THE SALIM REFERENCE
1. Salim discloses pseudo-code with associated comments that
indicate that 48 bits are extracted starting at an offset of zero.
(Col. 14, ll. 46-47).
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2. Salim discloses pseudo-code with associated comments that
indicate that the last 16 bits are extracted from the
aforementioned 48 bits. (Col. 14, ll. 61-67).

THE MILLER REFERENCE
3. Miller teaches a bit stream that is encrypted. (Col. 14, ll. 47-
48).

THE CORL REFERENCE
4. Corl teaches key fields that are extracted from a packet. (Col.
1, ll. 35-36).
APPELLANT’S SPECIFICATION
5. Appellant’s Specification discloses that “[t]he action bit value
ABV can be a programmable value that can be used for
specifying an action to be performed on a packet stream 310.”
(Spec. 20, para. [0066]).
6. Appellant’s Specification discloses that “[t]he action bit value
ABV can be a value used to modify the extracted bit value EBV
in order to perform an action on a packet stream 310.” (Spec.
20, para. [0066]).
7. Appellant’s Specification discloses that “[t]he action bit value
ABV may be programmed as a replacement bit, which may be a
bit value that is inserted in place of the extracted bit value
within a packet stream 310.” (Spec. 20, para. [0066]).
8. Appellant’s Specification discloses that “[a]lternatively or
conjunctively, the action bit value ABV may be programmed as
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an algorithm that modifies the extracted bit value by applying a
mathematical function to the extracted bit value EBV.” (Spec.
20, para. [0066]).

ANALYSIS
At the outset, we consider Appellant’s arguments in the Briefs only to
the extent that such arguments are directed to claimed subject matter.

ISSUE 1
We decide the question of whether Appellant has shown that the
Examiner erred in finding that Salim discloses calculating an extracted bit
value based upon the initial bit position value and the bit action length
value. (See claim 1, see also the commensurate language recited in
independent claims 8 and 12).
Appellant contends in the principle Brief that the pseudo-code
portions of Salim relied on by the Examiner are insufficient to anticipate the
claimed invention because there is no explanation by Salim as to what the
pseudo-code represents. (App. Br. 11).
We disagree. We find that Salim’s comments provide sufficient
explanation as to what the pseudo-code represents. In particular, Salim
discloses pseudo-code with associated comments that indicate that 48 bits
are extracted starting at an offset of zero. (FF 1). We find the claimed
calculating an extracted bit value is met by Salim’s extraction of 48 bits
based upon an initial bit position value (i.e., Salim’s offset of zero) where
the recited bit action length value equals 48 bits. Therefore, we find that
Salim discloses calculating an extracted bit value based upon the initial bit
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position value and the bit action length value. (See claim 1, see also the
commensurate language recited in independent claims 8 and 12).

ISSUE 2
We decide the question of whether Appellant has shown that the
Examiner erred in finding that Salim discloses implementing at least one
action on a packet by using an action bit value to modify the extracted bit
value. (See claim 1, see also the commensurate language recited in
independent claims 8 and 12).
We begin our analysis by noting that Appellant’s Specification
discloses that the claimed “action bit value” may broadly represent: (1) a
programmable value that can be used for specifying an action to be
performed on a packet stream, or (2), a value used to modify the extracted
bit value in order to perform an action on a packet stream, or (3), a
replacement bit, which may be a bit value that is inserted in place of the
extracted bit value within a packet stream, or (4), the action bit value may be
programmed as an algorithm that modifies the extracted bit value by
applying a mathematical function to the extracted bit value. (See FF 5-8).
Consistent with Appellant’s Specification, we broadly but reasonably
construe the claimed “action bit value” as any value, algorithm, or function
that is used to modify or replace any extracted bit value.
As discussed above, we have found Appellant’s claimed extracted bit
value is met by Salim’s extraction of 48 bits. (FF 1). Salim also discloses
pseudo-code with associated comments that indicates that the last 16 bits are
further extracted from the aforementioned 48 bits. (FF 2). We find that
Salim’s extraction of the last 16 bits from the aforementioned 48 bits (i.e.,
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“extracted bit value”) inherently requires some algorithm or function (i.e.,
“action bit value”) to perform the extraction that modifies the extracted bit
value. Therefore, we find Salim discloses implementing at least one action
on a packet by using an action bit value to modify the extracted bit value.
(See claim 1, see also the commensurate language recited in independent
claims 8 and 12).
Consistent with our discussion of ISSUES 1-2, we find Appellant has
not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of independent
claims 1, 8, and 12 as being anticipated by Salim.

ISSUE 3
We decide the question of whether Appellant has shown that the
Examiner erred in finding that Salim discloses a replacement action. (See
dependent claims 2, 3, 9, and 13-15).
In the Answer, the Examiner points to Salim’s disclosure of
“REPLACE exitport with row.outport” (col. 15, l. 27) as purportedly
teaching the claimed replacement action. (Ans. 19, ¶1). However, we find
the Examiner has taken this teaching out of context. For Salim to meet the
similar limitations of claims 2, 3, 9, and 13-15, Salim would have to disclose
performing a replacement action on the 16-bit portion extracted from the
48-bit word discussed above (see FF 2). We find Salim does not disclose
such replacement. Because Appellant has shown the Examiner erred, we
reverse the Examiner’s rejection of dependent claims 2, 3, 9, and 13-15 as
being anticipated by Salim.

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ISSUE 4
We decide the question of whether Appellant has shown that the
Examiner erred in finding that Salim discloses a mathematical operation that
modifies the extracted bit value. (See dependent claims 4 and 10).
We conclude that the claimed “mathematical operation” broadly but
reasonably encompasses any type of mathematical operation. We have
found supra that Salim’s extraction of the last 16 bits from the
aforementioned 48 bits (i.e., “extracted bit value”) inherently requires some
algorithm or function (i.e., “action bit value”) to perform the extraction that
modifies the extracted bit value. See discussion of ISSUE 2.
Here, given the broad scope of the claimed “mathematical operation,”
we find that Salim’s extraction of the last 16 bits from the previously
extracted 48 bits (see FF 2) inherently involves a mathematical operation (of
some type) to modify the original 48-bit extracted value (claim 4).
Therefore, we find Appellant has not sustained the requisite burden on
appeal in providing arguments or evidence persuasive of error in the
Examiner’s rejection of dependent claims 4 and 10 as being anticipated by
Salim. Consistent with our findings regarding ISSUE 4, we also find
Appellant has not shown the Examiner erred in rejecting dependent claims 6
and 7. In particular, we find modifying Salim’s extracted 48-bit word
inherently involves determining and modifying the format of the packet.

ISSUE 5
We decide the question of whether Appellant has shown that the
Examiner erred in finding that the combination of Salim, Miller, and Corl
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teaches and/or suggests an encryption key that modifies the extracted bit
value. (See dependent claims 5, 11, 16).
As pointed out by the Examiner, Corl teaches the feature of key fields
that are extracted from a packet (FF 4), and Miller teaches a bit stream that
is encrypted (i.e., modified) (FF 3; see also Ans. 8). Appellant grounds
his/her argument on the premise that neither Miller nor Corl overcomes the
deficiencies of Salim (App. Br. 20-21). However, we find no deficiencies
with Salim, as discussed supra. Therefore, we find Appellant has not
sustained the requisite burden on appeal in providing arguments or evidence
persuasive of error in the Examiner’s rejection of dependent claims 5, 11,
and 16 as being unpatentable over the combination of Salim, Corl, and
Miller.

CONCLUSION
Based on the findings of facts and analysis above, Appellant has not
established that the Examiner erred in rejecting claims 1, 4, 6-8, 10, and 12
under 35 U.S.C. § 102(e) for anticipation.
Based on the findings of facts and analysis above, Appellant has
established that the Examiner erred in rejecting claims 2, 3, 9, and 13-15
under 35 U.S.C. § 102(e) for anticipation.
Based on the findings of facts and analysis above, Appellant has not
established that the Examiner erred in rejecting claims 5, 11, and 16 under
35 U.S.C. § 103(a) for obviousness.

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DECISION
We affirm the Examiner’s decision rejecting claims 1, 4-8, 10-12, and
16.
We reverse the Examiner’s decision rejecting claims 2, 3, 9, and
13-15.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

pgc

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