Ex Parte Squire

Board of Patent Appeals and Interferences

Mar 9, 2010

10361242 (B.P.A.I. Mar. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MATTHEW B. SQUIRE
____________________

Appeal 2009-006128
Application 10/361,2421
Technology Center 2400
____________________

Decided: March 9, 2010
____________________

Before KENNETH W. HAIRSTON, MAHSHID D. SAADAT,
and MARC S. HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Horizon Technology Funding Company LLC.
Appeal 2009-006128
Application 10/361,242

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-60. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The Appellant’s invention concerns an improved aggregation device
having a plurality of ports that connect to a plurality of internal sub-
networks (Virtual Local Area Networks (VLAN)). When the aggregation
device receives a packet, it determines an internal sub-network identification
value based on the combination of an external sub-network identification
value (VLAN tag-ID) included within the packet and the port connected to
the one of the plurality of internal sub-networks. The aggregation device
may also determine an external sub-network identification value based on an
internal sub-network identification value that is associated with the port
connected to one of the plurality of internal sub-networks (Abstract, Spec.
4:12-18, 5:14-19).
Claim 1 is exemplary:
1. A method of processing a packet in an aggregation device that
connects a plurality of internal sub-networks, comprising:
receiving a packet that is destined for one of the plurality of internal
sub- networks; and
determining an internal sub-network identification value based on an
external sub- network identification value stored in the packet and a port of
the aggregation device to which the one of the plurality of internal sub-
networks is connected.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yip US 6,914,905 B1 Jul. 5, 2005

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Claims 41-60 stand rejected under 35 U.S.C. 101 as being directed to
non-statutory subject matter.
Claims 1-3, 5-13, 15-23, 25-33, 35-43, 45-53, and 55-60 stand
rejected under 35 U.S.C. 102(e) as being anticipated by Yip.
Claims 4, 14, 24, 34, 44, and 54 stand rejected under 35 U.S.C. 103(a)
as being unpatentable over Yip.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Appeal Brief (filed April 4, 2008) and the Examiner’s
Answer (mailed June 24, 2008) for their respective details.

ISSUES
Appellant contends that an electrical connection having one or more
wires is clearly a tangible apparatus. Appellant contends that Yip does not
disclose an aggregation device that determines an internal sub-network
identification value based on the external identification value and the port to
which the internal sub-network is connected as recited in claims 1 and 11.
(App. Br. 10).
The Examiner finds that the “computer readable storage medium” as
set forth in Appellant’s Specification is a “propagation medium” wherein
computer program instructions are embodied in a modulated data signal such
as a carrier wave traveling through an “electrical connection having one or
more wires” (Ans. 7). The Examiner concludes that the “computer readable
storage medium” is clearly defined as a signal, which is non-statutory
subject matter (Ans. 7). The Examiner finds further that Yip discloses
determining an internal sub-network identification value based on an
external sub-network identification value stored in the packet and a port of
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the aggregation device to which the one of the plurality of internal sub-
networks is connected, wherein SUB-VLAN P, Q, and R represent the
internal sub-networks, SUPER-VLAN Z represents the external sub-network
and subnet SN4 is equivalent to a port of switch 340 (Ans. 3).
Appellant’s contentions present us with the following three issues:
1. Is the scope of claims 41-60 intended to include embodiments
where the “computer readable storage medium” may include a carrier wave
or signal, both of which are non-statutory subject matter?
2. Does Yip disclose “determining an internal sub-network
identification value based on an external sub-network identification value
stored in the packet and a port of the aggregation device to which the one of
the plurality of internal sub-networks is connected”?
3. Does Yip disclose determining “an external sub-network
identification value used in a carrier network based on an internal sub-
network identification value that is associated with a port of the aggregation
device to which the one of the plurality of internal sub-networks is
connected”?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellant, the invention concerns an improved
aggregation device having a plurality of ports that connect to a plurality of
internal sub-networks (Virtual Local Area Networks (VLAN)). When the
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aggregation device receives a packet, it determines an internal sub-network
identification value based on the combination of an external sub-network
identification value (VLAN tag-ID) included within the packet and the port
connected to the one of the plurality of internal sub-networks. The
aggregation device may also determine an external sub-network
identification value based on an internal sub-network identification value
that is associated with the port connected to one of the plurality of internal
sub-networks (Abstract, Spec. 4:12-18, 5:14-19).
2. The aggregation device may take the form of a computer
program product on a computer-usable or computer-readable storage
medium having computer-usable or computer-readable program code
embodied in the medium for use by or in connection with an instruction
execution system. The computer-readable medium may be any medium that
can contain, store, communicate, propagate, or transport the program for use
by or in connection with the instruction execution system, apparatus, or
device. The computer-readable medium may be, for example, but not
limited to, an electronic, magnetic, optical, electromagnetic, infrared, or
semiconductor system, apparatus, device, or propagation medium. More
specific examples may include: an electrical connection having one or more
wires, a portable computer diskette, a random access memory (RAM), a
read-only memory (ROM), an erasable programmable read-only memory
(EPROM or Flash memory), an optical fiber, and a portable compact disc
read-only memory (CD-ROM) (Spec. 6:24-7:5).
3. Explicit VLAN membership is indicated by using a VLAN tag,
implemented as a 12-bit fixed position filed in each packet which limits the
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number of VLANs that may be supported by an aggregation device to 212 (or
4096) (Spec. 2:9-15).
4. Data structures 235 and 240, such as arrays, lists, tables or hash
tables, associate the port and the external sub-network identification value
(the VLAN tag) with the internal sub-network identification value (the
VLAN identification value) so as to not directly map the VLAN tag with the
VLAN identification value (as is done in conventional aggregation devices);
and, thereby, no longer limit the number of possible VLANs to 4096 (Spec.
10:19-28; 11:2-4).
Yip
5. Yip discloses an aggregated VLAN architecture that includes an
aggregation device 340 connected to three super-VLANs X, Y, and Z,
wherein SUPER VLAN Z includes sub-VLANs P, Q, and R. Super-VLAN
Z 350 has an IP address of 192.1.1, sub-VLAN P uses host IP addresses
192.1.1.1-3, sub-VLAN P uses host IP addresses 192.1.1.4-5, sub-VLAN P
uses host IP addresses 192.1.1.6-8. All of the sub-VLANs P, Q, and R share
a common gateway address of 192.1 (Fig. 3; col. 5, l. 36-col. 6, l. 9; col. 7, l.
62-col. 8, l. l0).
6. Yip discloses that the aggregation architecture uses “frame-
tagging” for communication of VLAN information, wherein each packet
origination from a host belonging to a VLAN acquires a VLAN identifier
(VLAN ID) as it is switched onto a shared backbone network. The VLAN
ID is what enables the receiving switch to forward the packet intelligently by
switching the packet to only those switches that are members of the same
VLAN. A non-proprietary VLAN communication protocol has been
incorporated into the IEEE 802.1Q standard, whereby the VLAN ID is part
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of the IEEE 802.1Q header inserted between the MAC header and the
frame's data. In one embodiment of the present invention, the VLAN ID is
modified to include the super-VLAN membership identification as well as
the sub-VLAN membership, regardless of the VLAN communication
protocol used to forward the VLAN packets (col. 6, l. 59- col. 7, l. 10).
7. Yip discloses that communication between the logically defined
sub-VLANs P, Q, and R requires routing through the super-VLAN Z 350.
The routing configurations include routing protocols, static routes, redundant
router protocols, subnet masks and access-lists. As part of the VLAN ID
stored in the packet, the super-VLAN membership identification provides
the necessary information to the virtual router interface 370 to apply the
proper routing configurations associated with the subnet to which the super-
VLAN Z is assigned, in this case the /24 subnet 192.1.1 (col. 7, ll. 11-10).

PRINCIPLES OF LAW
Under § 101, there are four categories of subject matter that are
eligible for patent protection: (1) processes; (2) machines; (3) manufactures;
and (4) compositions of matter. 35 U.S.C. § 101. But even if a claim fits
within one or more of the statutory categories, it may not be patent eligible.
In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009).
“[A]n applicant may show that a process claim satisfies § 101 either
by showing that his claim is tied to a particular machine, or by showing that
his claim transforms an article” into a different state or thing. In re Bilski,
545 F.3d 943, 961 (Fed. Cir. 2008) (en banc), cert. granted, 77 U.S.L.W.
3442, 3653, 3656 (U.S. June 1, 2009) (No. 08-964); see also Gottschalk v.
Benson, 409 U.S. 63, 70 (1972).
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“[A] machine is a concrete thing, consisting of parts, or of certain
devices and combination of devices. This includes every mechanical device
or combination of mechanical powers and devices to perform some function
and produce a certain effect or result.” Ferguson, 558 F.3d at 1364 (quoting
In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007), reh’g denied en banc,
515 F.3d 1361 (Fed. Cir. 2008), and cert. denied, 129 S. Ct. 70 (2008)).
Our reviewing court has found that transitory, propagating signals
such as carrier waves are not within any of the four statutory categories
(process, machine, manufacture, or composition of matter.) Therefore, a
claim directed to computer instructions embodied in a signal is not statutory
under 35 U.S.C. § 101. In re Nuijten, 84 USPQ2d 1495, 1503. (Fed. Cir.
2007.)
Anticipation pursuant to 35 U.S.C § 102 is established when a single
prior art reference discloses expressly or under the principles of inherency
each and every limitation of the claimed invention. Atlas Powder Co. v.
IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d
1475, 1478-79 (Fed. Cir. 1994).
Analysis of whether a claim is patentable over the prior art under 35
U.S.C. § 102 begins with a determination of the scope of the claim. We
determine the scope of the claims in patent applications not solely on the
basis of the claim language, but upon giving claims their broadest reasonable
construction in light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). The properly interpreted claim must then be
compared with the prior art.
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In an appeal from a rejection for anticipation, the Appellant must
explain which limitations are not found in the reference. See Gechter v.
Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997) ("[W]e expect that the
Board's anticipation analysis be conducted on a limitation by limitation
basis, with specific fact findings for each contested limitation and
satisfactory explanations for such findings.")(emphasis added). See also In
re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006)
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.
The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000).
Where the teachings of two or more prior art references conflict, the
Examiner must weigh the power of each reference to suggest solutions to
one of ordinary skill in the art, considering the degree to which one
reference might accurately discredit another. In re Young, 927 F.2d 588,
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591 (Fed. Cir. 1991). If the proposed modification would render the prior
art invention being modified unsatisfactory for its intended purpose, then
there is no suggestion or motivation to make the proposed modification. In
re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Further, our reviewing court
has held that “[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994); Para-Ordnance Mfg., Inc. v. SGS Importers
Int’l., Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995).

ANALYSIS
Section 101 rejection of Claims 41-60
Independent claims 41 and 51 recite “a computer readable storage
medium having computer readable program code embodied therein.”
Appellant contends that the Examiner's Final Action cites no authority
for the assertion that a computer program product claim that recites a
computer readable storage medium in which the storage medium may be a
tangible medium, such as an electrical connection having one or more wires,
constitutes non-statutory subject matter (App. Br. 7). Appellant contends
that an electrical connection having one or more wires is clearly a tangible
apparatus (App. Br. 7).
The Examiner finds that the claims are rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter
since the “computer readable storage medium” as set forth in Appellant’s
Specification is a propagation medium that does not store the computer
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program instructions but carries these on a modulated data signal which can
be interpreted as a magnetic carrier wave or signal, both of which are non-
statutory under 35 U.S.C § 101 (Ans. 7).
Specifically, the Examiner finds that as set forth in Appellant’s
Specification, the “computer readable storage medium” may be a “magnetic,
optical, electromagnetic, infrared … propagation medium” which may be
implemented as an “electrical connection having one or more wires” (Ans. 7,
FF 2). The Examiner concludes that, in light of this disclosure, the
“computer readable storage medium” is not able to store computer program
instructions (Ans. 7). Rather, the Examiner finds that the “computer
readable storage medium” is simply a “propagation medium” wherein
computer program instructions are embodied in a modulated data signal such
as a carrier wave traveling through an “electrical connection having one or
more wires” (Ans. 7). The Examiner concludes that the “computer readable
storage medium” is clearly defined as a signal, which is non-statutory
subject matter (Ans. 7).
The issue, thus, turns on whether the Examiner properly determined
that the “computer readable storage medium” as it is recited in independent
claims 41 and 51 implicates a carrier wave or a network signal, both of
which are considered non-statutory.
Computer programs and data structures are deemed “functional
descriptive material,” which impart functionality when employed as a
computer component. When functional descriptive material is recorded on
some (tangible) computer-readable medium, it becomes structurally and
functionally interrelated to the medium and will be statutory in most cases
since use of technology permits the function of the descriptive material to be
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realized. Compare In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994)
(claim to data structure stored on a computer readable medium that increases
computer efficiency held statutory) with In re Warmerdam, 33 F.3d 1354,
1361-62 (Fed. Cir. 1994) (claim to computer having a specific data structure
stored in memory held statutory product-by-process claim but claim to a data
structure that referred to ideas reflected in nonstatutory process rather than
referring to a physical arrangement of the contents of a memory held
nonstatutory).
“A transitory, propagating signal [however] . . . is not a ‘process,
machine, manufacture, or composition of matter.’ [These] four categories
define the explicit scope and reach of subject matter patentable under 35
U.S.C. § 101; thus, such a signal cannot be patentable subject matter.” In re
Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Specifically, signals are
unpatentable as failing a tangibility requirement to be “manufactures”
because they are not tangible media. Nuijten 500 F.3d at 1366 (emphasis
added).
We agree with the Examiner’s finding that the Specification discloses
that the “computer readable storage medium” may be a “magnetic, optical,
electromagnetic, infrared … propagation medium” which may be
implemented as an “electrical connection having one or more wires” (FF 2).
Although wires are tangible items, they are not tangible storage media
capable of storing a computer program instruction. Conversely, wires may
serve as a “propagation medium” wherein computer program instructions are
embodied in a modulated data signal (FF 2). We agree with the Examiner’s
finding that the “computer readable storage medium” as set forth in
Appellant’s Specification may include a propagation medium that merely
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transports computer program instructions in a signal, which is non-statutory
subject matter.
We find that Appellant has not shown that the Examiner erred in
finding that the cited claims implicate the use of carrier waves that embody a
machine executable program or data structure. Therefore, we sustain the
Examiner’s rejection of claims 41-60 under 35 U.S.C. § 101 as being
directed to nonstatutory subject matter.
Section 102 rejection of claims 1- 3, 5-13, 15-23, 25-33, 35-43, 45-53 and
55-60
Independent claims 1, 21, and 41 recite determining “an internal sub-
network identification value based on an external sub-network identification
value stored in the packet and a port of the aggregation device to which the
one of the plurality of internal sub-networks is connected.”
Independent claims 11, 31, and 51 recite determining “an external
sub-network identification value used in a carrier network based on an
internal sub-network identification value that is associated with a port of the
aggregation device to which the one of the plurality of internal sub-networks
is connected.”
Appellant contends that Yip does not disclose an internal sub-network
identification value can be determined based on the external identification
value and the port to which the internal sub-network is connected to the
aggregation device as recited in claims 1 (App. Br. 10). Appellant further
contends that Yip does not disclose an external sub-network identification
value can be determined based on an internal sub-network identification
value and a port to which the internal sub-network is connected on an
aggregation device as recited in claims 11 (App. Br. 10). Appellant argues
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that the various associations between the IP addresses used to identify the
various super-VLANs and sub-VLANs shown in FIG. 3 of Yip do not
anticipate the use of a port to determine an internal sub-network
identification value or an external sub-network identification value as recited
in claims 1 and 11, since IP addresses and port numbers (disclosed within a
data packet) are completely different (App. Br. 10-11).
The Examiner finds that Yip discloses determining an internal sub-
network identification value based on an external sub-network identification
value stored in the packet and a port of the aggregation device to which the
one of the plurality of internal sub-networks is connected, wherein sub-
VLAN P, Q, and R represent the internal sub-networks, super-VLAN Z
represents the external sub-network and subnet SN4 is equivalent to a port of
switch 340 (Ans. 3). The Examiner finds that Yip clearly discloses that the
aggregated VLAN network architecture forwards data packets using a LAN
switch (layer-2 switch or layer-3 switch) connecting multiple VLANs by
sharing a subnet (or a port) (Ans. 8). The Examiner reasons that since a
layer-3 switch or a layer-2 switch is a device that provides packet-
forwarding services for packets destined for IP addresses connected to ports
of the switch, Yip discloses that the port is used in determining the internal
sub-network identification value (Ans. 8-9).
With respect to independent claims 1, 21, and 41, we agree with
Appellant that Yip does not disclose that both the external sub-network
identification value (the VLAN tag ID) and the port connected to the internal
sub-network are used to generate a VLAN ID (App. Br. 11). Yip discloses
the conventional method of “frame-tagging,” wherein packets originating
from a host belonging to a VLAN acquire a VLAN ID as they are switched
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through the use of direct mapping (FF 6, emphasis added). Specifically, Yip
discloses that a VLAN tag ID is inserted in the header of the packet between
the MAC header and the frame’s data (FF 6). Yip discloses that the VLAN
tag ID directly maps to the internal sub-network identification value as in a
conventional aggregation device, limiting the number of possible VLANs
that an aggregation device can support (FF 3, 4, and 6).
Appellant’s invention differs from the direct mapping used in
conventional aggregation devices in that the improved aggregation device
generates the internal sub-network identification value (VLAN ID) by
indexing a data structure using both the VLAN tag ID found in the header of
the packet and the identity of the port connected to the VLAN included
within the packet (FF 4, emphasis added).
With respect to independent claims 11, 31, and 51, however, we do
not agree with Appellant’s contention that Yip does not disclose determining
“an external sub-network identification value used in a carrier network based
on an internal sub-network identification value that is associated with a port
of the aggregation device to which the one of the plurality of internal sub-
networks is connected.” Specifically, as set forth in Appellant’s
Specification, when a VLAN tag ID is generated for an outgoing packet in a
conventional aggregation device, direct mapping to the internal sub-network
identification value is used to generate a VLAN tag ID (FF 4, emphasis
added). Independents claims 11, 31, and 51 only require determining “an
external sub-network identification value used in a carrier network based on
an internal sub-network identification value that is associated with a port;”
rather than requiring the use of both the internal sub-network identification
value and the port connected to the internal sub-network. As such, we find
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that independent claims 11, 31, and 51 merely implicate direct mapping to
determine the external sub-network identification value (VLAN tag ID),
similar to the conventional method of “frame-tagging” disclosed in Yip (FF
6).
Since Appellant has shown that Yip does not teach the subject matter
recited in independent claims 1, 21, and 41, we find error in the Examiner’s
rejection of claims 1, 21, and 41 under 35 U.S.C. § 102(e) as anticipated by
Yip, as well as that of depending claims 2, 3, 5-10, 22, 23, 25-30, 42, 43, and
45-50. Therefore, we will not sustain the rejection of these claims.
Appellant has not shown that Yip does not teach the subject matter
recited in independent claims 11, 31, and 51 under 35 U.S.C. § 102, nor that
of depending claims 12, 13, 15-20, 32, 33, 35-40, 52, 53, and 55-60 not
separately argued with particularity, and we will sustain the rejection of
these claims.
Section 103 rejection of claims 4, 14, 24, 34, 44, and 54
We affirm supra the rejection of parent claims 11, 31, and 51 because
Appellant did not show that the Examiner erred. Appellant presents no
separate argument for the patentability of dependent claims 14, 34, and 54.
We therefore affirm the rejection of claims 14, 34, and 54, under 35 U.S.C. §
103 as being unpatentable over Yip for the same reasons expressed with
respect to claims 11, 31, and 51.
In contrast, we reversed supra the rejection of parent claims 1, 21, and
41 because Appellant did show that the Examiner erred. We therefore
reverse the rejection of claims 4, 24, and 44, under 35 U.S.C. § 103 as being
unpatentable over Yip for the same reasons expressed with respect to claims
1, 21, and 41.
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CONCLUSIONS OF LAW
The scope of claims 41-60 is intended to include embodiments where
the ‘computer readable storage medium’ may include a carrier wave or
signal, both of which are non-statutory subject matter.
Yip does not disclose “determining an internal sub-network
identification value based on an external sub-network identification value
stored in the packet and a port of the aggregation device to which the one of
the plurality of internal sub-networks is connected.”
Yip does not disclose determining “an external sub-network
identification value used in a carrier network based on an internal sub-
network identification value that is associated with a port of the aggregation
device to which the one of the plurality of internal sub-networks is
connected.”
ORDER
The Examiner’s rejection of claims 11-20 and 31-60 is affirmed. The
Examiner’s rejection of claims 1-10 and 21-30 is reversed.
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).
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AFFIRMED-IN-PART

ELD

MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627

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