Ex Parte SANIVSKY et al

Patent Trial and Appeal Board

May 30, 2018

14275332 (P.T.A.B. May. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/275,332 05/12/2014
102722 7590 05/30/2018
Sughrue/Marvell
2100 Pennsylvania Avenue. N.W.
Washington, DC 20037
FIRST NAMED INVENTOR
Ievgeny SANIVSKY
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.
MP5277/A208519 4187
EXAMINER
LEVITAN, DMITRY
ART UNIT PAPER NUMBER
2461
MAIL DATE DELIVERY MODE
05/30/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IEVGENY SANIVSKY, TIMOR KARDASHOV,
and ANATOL! PLOTNIKOV
Appeal2017-010058
Application 14/275,332 1
Technology Center 2400
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-14, which are all the claims pending. 2 We have
jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify Marvell World Trade Ltd. as the real party in interest.
(App. Br. 2.)
2 Claims 15-20 were cancelled by Appellants in an amendment submitted
with the Reply. See Reply Br. 1.
Appeal2017-010058
Application 14/275,332
THE INVENTION
Appellants' disclosed and claimed invention is directed to a network
device having counters that are configured to generate for a plurality of byte
positions in a specified portion of data packets, a count indicative of a
correspondence of a value found at the byte position. (Abstract.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A network device, comprising:
a packet ingress configured to receive data packets
transmitted on a network;
a plurality of counters, ones of the counters being
configured to generate for corresponding one or more byte
positions that are located in predetermined portions of the data
packets, a count indicative of a number of occurrences in which
bytes in the plurality of byte positions have a predetermined
byte value; and
a packet classifier configured to receive from the
counters the counts of occurrences of the byte values and to
classify data packets based on the counts.
(App. Br., Claims Appendix, 15.)
REJECTIONS
The Examiner rejected claims 1-14 under 35 U.S.C. § 112(a) as
failing to comply with the enablement requirement. (Final Act. 2-3.)
The Examiner rejected claims 1, 5, 8, and 12 under 35 U.S.C.
§ 102(a)(2) as being anticipated by Wey (US 6,098,100, iss. Aug. 1, 2000).
(Final Act. 4.)
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Application 14/275,332
The Examiner rejected claims 7 and 14 under 35 U.S.C. § 103 as
being unpatentable over Wey (US 6,098,100, iss. Aug. 1, 2000). (Final Act.
5.)
ISSUES ON APPEAL
Appellants' arguments in the Appeal Brief present the following
dispositi ve issues: 3
Issue One: Whether the Examiner erred in rejecting claims 1-14 as
failing to comply with the enablement requirement. (App. Br. 8-11.)
Issue Two: Whether the Examiner erred in finding Wey teaches the
independent claim 1 limitation,
a plurality of counters, ones of the counters being configured to
generate for corresponding one or more byte positions that are
located in predetermined portions of the data packets, a count
indicative of a number of occurrences in which bytes in the
plurality of byte positions have a predetermined byte value,
and the related limitation in independent claim 8. (App. Br. 11-14.)
ANALYSIS
First Issue
"[E]nablement requires that the specification teach those in the art to
make and use the invention without 'undue experimentation.' . . . That some
3 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed June 22, 2016) (herein, "App.
Br."); the Reply Brief (filed Dec. 5, 2016) (herein, "Reply Br."); the Final
Office Action (mailed Mar. 1, 2016) (herein, "Final Act."); and the
Examiner's Answer (mailed Oct. 5, 2016) (herein, "Ans.") for the respective
details.
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Application 14/275,332
experimentation may be required is not fatal; the issue is whether the amount
of experimentation required is 'undue."' In re Vaeck, 947 F.2d 488, 495
(Fed. Cir. 1991) (internal citations omitted). "Whether undue
experimentation is needed is not a single, simple factual determination, but
rather is a conclusion reached by weighing many factual considerations." In
re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Appellants argue "the present rejection is improper at least for failing
to present a reasoned determination whether one of ordinary skill would
need to engage in undue experimentation to practice the claimed invention."
(App. Br. 10, emphasis in original.)
While the Examiner finds "[t]he claim(s) contains subject matter
which was not described in the specification in such a way as to enable one
skilled in the art to which it pertains, or with which it is most nearly
connected, to make and/or use the invention" (Final Act. 2-3), the Examiner
does not provide a Wands analysis as required of an enablement rejection.
See In re Wands, 858 at 737.
The Examiner's primary focus is that "[t]he examples of the
specification, Fig. 13 and 15, are limited to particular cases" and
[t]he disclosure describes a device, which divides the packets
into several intervals and counts particular symbols or patterns
in the intervals, but the essential element of the classification
process, defining criteria for the counters of symbols to indicate
a particular class of the packets[,] is missing.
(Ans. 5.) However, claim 1 is broadly written, and only requires the packet
classifier to "classify data packets based on the counts." A single class for
all count values would satisfy the claim. The Examiner is correct that
disclosure only provides one working example, and we note that the
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Application 14/275,332
disclosure provides no context for (1) the particular "analysis instructions"
provided by configuration unit 300 and used in the example (see Spec. ,r 3 8),
(2) the type of data 110 used in the example (see Spec. ,r 42 and Fig. 3), and
(3) the quality of service classifications (see Spec. ,r,r 110-115 and Fig. 15).
However, such ambiguity i does not prevent one of ordinary skill in the art
from making and using a network device encompassed by the claims.
Accordingly, we are constrained by the record to reverse the
Examiner's enablement rejection of claims 1-14.
Second Issue
In finding Wey discloses the claim limitation at issue, the Examiner
relies, inter alia, on the disclosure in Wey of the "MAGIC PACKET"
technology used to wake a sleeping node on a networking environment, in
which a wake packet containing up to six bytes of hexadecimal "FF" is
followed by up to sixteen repetitions of the destination address assigned to
the selected sleeping node. (Final Act. 4, Ans. 6-7; Wey 1:28-2:7, 2:9-56,
Figs. 1-2.)
Appellants argue the Examiner erred, because "Wey merely discloses
a single counter 16, not the claimed plurality of counters." (App. Br. 11.)
Appellants also contend that Wey "fails to disclose the claimed
'predetermined portions of the data packets," because Wey "'merely scans
all incoming transmissions' until some desired repetitions are found." (App.
Br. 13, citing Wey 1:34--37.)
Regarding the number of counters disclosed in Wey, we agree with
Appellants that only one counter is disclosed. See Wey Fig. 1, pattern
counter 16. The Examiner is correct that the MAGIC PACKET method
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Application 14/275,332
"count[s] two patterns of bytes: sync and address." (Ans. 6.) But it is not
clear that two counters are necessary for Wey's system, as Wey's single
pattern counter 16 could perform both counts.
Regarding the claimed "predetermined portions of the data packets,"
the Examiner finds, and we agree, that "Wey clearly teaches detecting and
counting sync bits in a packet, as described on 1 :38--46, which are inherently
located in a packet and this location in the packet is the sync portion of the
packet." (Ans. 7.) Appellants contend that
if a so-called sync byte in Wey appears outside the Examiner's
so-called sync portion of a packet, Wey would count the byte.
Nothing in Wey prevents such a byte from being counted even
though it has the correct value albeit located at an "incorrect"
location.
(Reply Br. 6.) Appellants' argument ignores the fact that the MAGIC
PACKET technique is performed when the node is asleep, and searches for a
packet beginning with the set of "FF" bytes. A random "FF" byte appearing
elsewhere in the packet is not counted as a sync byte.
As we agree with Appellants that Wey does not disclose more than
one counter, we are constrained by the record to reverse the Examiner's
anticipation rejection of independent claim 1 and dependent claim 5, and
reverse the Examiner's obviousness rejection of dependent claim 7, which
require "a plurality of counters."
As we agree with the Examiner that ( 1) Wey discloses the claimed
"predetermined portions of the data packets" appearing in independent claim
8, and (2) independent claim 8 only requires one counter (Ans. 7), we affirm
the Examiner's anticipation rejection of claim 8, as well as the anticipation
rejection of claim 12 not separately argued by Appellants, and the
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Examiner's obviousness rejection of claim 14 not separately argued by
Appellants. See App. Br. 11-14.
CONCLUSION
For the reasons stated above, we:
1. reverse the enablement rejection of claims 1-14,
2. reverse the anticipation rejections of claims 1 and 5 by Wey,
3. reverse the obviousness rejection of claim 7 over Wey,
4. affirm the anticipation rejection of claims 8 and 12 by Wey, and
5. affirm the obviousness rejection of claim 14 over Wey.
DECISION
The Examiner's decision rejecting claims 1-14 under 35 U.S.C.
§ 112(a) is reversed.
The Examiner's decision rejecting claims 1 and 5 under 35 U.S.C.
§ 102(a)(2) is reversed.
The Examiner's decision rejecting claim 7 under 35 U.S.C. § 103 is
reversed.
The Examiner's decision rejecting claims 8 and 12 under 35 U.S.C.
§ 102(a)(2) is affirmed.
The Examiner's decision rejecting claim 14 under 35 U.S.C. § 103 is
affirmed.
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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
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