Ex Parte Thomas

Board of Patent Appeals and Interferences

Jun 9, 2010

10192609 (B.P.A.I. Jun. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID ANDREW THOMAS
____________

Appeal 2009-005834
Application 10/192,609
Technology Center 2400
____________

Decided: June 9, 2010
____________

Before KENNETH W. HAIRSTON, CARLA M. KRIVAK, and KARL D.
EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1-10, 21, and 23-30. No other claims are pending. We have
jurisdiction under 35 U.S.C. § 6(b). Appellant states that notices of appeal
have been filed in co-pending Application Numbers 10/192,631 and
Appeal 2009-005834
Application 10/192,609

2
10/192,632 containing related subject matter, and that the Board decision
here may affect future decisions there. (Br. 2.)1
We AFFIRM-IN-PART
Appellant’s Invention
Appellant’s disclosed invention translates a packet destination address
and virtual network identifier at a first network device 102 into an address
indicator, and then translates the address indicator back into the destination
address and virtual network identifier at a second network device 114. (¶
0005; Fig. 1)
Claim 1 is illustrative of the invention and reads as follows:
1. A computer network system for interconnecting nodes in a virtual
network, comprising:
a first network device configured to receive an information packet
including a destination address and a virtual network identifier from a source
node, the first network device including a first translation table for use in
translating the destination address and the virtual network identifier into an
address indicator which is used in a computer network system to replace the
destination address in the information packet and to denote a destination
node specified by the destination address; and
a second network device configured to receive the information packet
including the address indicator, the second network device including a
second translation table for use in translating the address indicator into the
destination address and the virtual network identifier, the address indicator
being replaced by the destination address and the virtual network identifier,
the second network device being configured to send the information packet
including the destination address and the virtual network identifier to the
destination node denoted by the address indicator.

1 According to EDAN (a USPTO computer system), appeals involving these
co-pending applications have been docketed and respectively assigned
Appeal Nos. 2009-015008 and 2009-007519.
Appeal 2009-005834
Application 10/192,609

3
The Examiner’s Rejections
The Examiner’s Answer cites the following prior art reference:2
Tingley US 2002/0138628 A1 Sept. 26, 2002
The Examiner finally rejected claims under 35 U.S.C. § 103(a) as
follows:
Claims 1, 3, 21, 23 based on Koshino and Tingley;
Claims 4, 5, 7, 8, 24, and 26-28 based on Koshino, Tingley, and
Arrow;
Claims 6 and 25 based on Koshino, Tingley, and Cisco;
Claim 2 based on Koshino, Tingley, Arrow, and Hatalkar;
Claims 9 and 10 based on Koshino, Tingley, Hatalkar, and Colley;
and,
Claims 29 and 30 based on Koshino, Tingley, Arrow, Hatalkar, and
Colley.
The Examiner also finally rejected claims 1, 2, 4, 5, 7-10, 21, 24, 26,
and 28-30 as being unpatentable under the judicially created doctrine of
obviousness-type double patenting based on claims 1-6, 8, 9, 26, 28-30, and
33 of copending Application No. 10/192,632 and claims 1-3, 16-18, and 31-
33 of Application No 10/192,631.

2 The Examiner also cites references to Koshino, Colley, Arrow, and
Hatalkar which are not listed here because they have no bearing on the
outcome. (See Ans. 3.)
Appeal 2009-005834
Application 10/192,609

4
ISSUES
Double Patenting
Appellant does not contest the double-patenting rejections, thereby
waiving any potential arguments against them.3 Accordingly, the double
patenting rejections of claims 1, 2, 4, 5, 7-10, 21, 24, 26, and 28-30 based on
claims 1-6, 8, 9, 26, 28-30, and 33 of copending Application No. 10/192,632
and claims 1-3, 16-18, and 31-33 of copending Application No. 10/192,631
are sustained pro forma.
Obviousness
Appellant contests the Examiner’s finding that Tingley discloses or
suggests a second network device configured to translate an address
indicator of a packet back into the same destination address and virtual
network identifier with which the packet arrived at a first network device.
(Br. 7-8.) The Examiner does not assert that any other reference teaches or
suggests this second translation. (See Ans. 15.) Appellant’s contention
raises the following issue: Did the Examiner err in finding that Tingley
discloses or suggests a second network device configured to translate a
packet address indicator back into the packet destination address and virtual
network identifier arriving at a first network device, as set forth in
independent claims 1 and 21?

3 Arguments which Appellant could have made but chose not to make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). “If an
appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.” Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010), available at
http://www.uspto.gov/ip/boards/bpai/decisions/prec/index.jsp (precedential).
Appeal 2009-005834
Application 10/192,609

5
PRINCIPLES OF LAW
“[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006).
FINDINGS OF FACT (FF)
Tingley discloses a virtual networking device (VND) 62 which
removes a packet header and inserts a virtual network identifier (VLAN ID)
into the packet before it transmits the packet onto an Ethernet link 64. In
some embodiments, VNDs use a translation table as depicted in Figure 5 to
obtain the VLAN ID. A switch 66 on the other side of the Ethernet link 66
from the VND 62 (Fig. 3) strips the VLAN ID inserted by VND 62 and
sends the packet to the correct virtual network specific Ethernet link 68, 70,
or 72 associated with the contents of the VLAN ID field. (¶¶ 0047, 0049,
0050.)
ANALYSIS
With respect to the Examiner’s obviousness rejection of independent
claims 1 and 21, Appellant’s arguments focus on the alleged deficiency of
Tingley in disclosing or suggesting that either the VND 62 or switch 66
performs what amounts to a second or reverse translation as required by the
second network device recited in claims 1 and 21. (Br. 7-9.) As indicated
supra, claims 1 and 21 require a second network device configured to
translate a packet so that information (i.e., a destination address and virtual
network identifier) stripped from the packet at a first network device is
placed back into the packet at the second network device.
The Examiner does not explain how this second translation occurs in
Tingley. The Examiner asserted that
Appeal 2009-005834
Application 10/192,609

6
. . . Tingley teaches of each virtual network device does have a
table and there are multiple virtual network devices in an
embodiment (paragraphs 27 and 29). Tingley further teaches of
bridges and switches can remove fields from packets and insert
fields into packets and when removing the VLAN ID fields the
packet uses the information translated from the indicator to
continue forwarding the packet to the appropriate destination
(paragraphs 47 and 49).
(Final Office Action 14 (Dec. 12, 2006).)
This passage reveals that the Examiner does not even assert that the
same information translated out of the packet at the first device, VND 62, is
replaced at the second device, switch 66.4 Even though switch 66 (a second
network device) strips the packet VLAND ID which was inserted at VND 62
(a first network device), as Appellant argues (Br. 8), Tingley does not
disclose or suggest that switch 66 reverse translates a packet so that it
comprises the same address indicator and virtual network identifier with
which it arrived at VND 62. (FF.) The Examiner provided no explanation
as to how Tingley discloses or suggests this reverse translation. (See Final
Office Action 3, 14; Ans. 6, 15.)
As such, the Examiner has failed to establish a valid articulated line of
reasoning with a rational underpinning to support the conclusion that an
ordinarily skilled artisan would have found it obvious to re-translate a packet
back to its original destination address and virtual network identifier as
required by claims 1 and 21. Therefore, the Examiner’s 35 U.S.C. § 103(a)

4 VNDs, such as switch 62, insert a VLAN field, and switch 66 removes the
VLAN field. (FF; see Tingley Fig. 3.) Based on this finding and the
Examiner’s remarks quoted supra, the Examiner’s rejection apparently reads
the first and second network devices recited in claims 1 and 21, respectively,
on VND 62 and switch 66.
Appeal 2009-005834
Application 10/192,609

7
rejection of independent claims 1 and 21, and further rejections of dependent
claims 2-10 and 23-30, are not sustained.
CONCLUSION
The double patenting rejections of claims 1, 2, 4, 5, 7-10, 21, 24, 26,
and 28-30 based on claims 1-6, 8, 9, 26, 28-30, and 33 of copending
Application No. 10/192,632 and based on claims 1-3, 16-18, and 31-33 of
Application No. 10/192,631 are sustained because Appellant has waived any
potential arguments against them.
The Examiner’s obviousness rejections of claims 1-10, 21, and 23-30
are not sustained because the Examiner erred in finding that Tingley
discloses or suggests a second network device configured to translate a
packet address indicator back into the packet destination address and virtual
network identifier arriving at a first network device, as set forth in
independent claims 1 and 21.
DECISION
The Examiner’s decision to reject claims 3, 6, 23, 25, and 27 is
reversed.
The Examiner’s decision to reject claims 1, 2, 4, 5, 7-10, 21, 24, 26,
and 28-30 is affirmed.
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

ack

cc:
Appeal 2009-005834
Application 10/192,609

8

HEWLETT-PACKARD COMPANY
Intellectual Property Administration
3404 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528