Ex Parte Varvello et al

Patent Trial and Appeal Board

Dec 19, 2016

13421379 (P.T.A.B. Dec. 19, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/421,379 03/15/2012 Matteo Varvello ALC 3780 6174
76614 7590
Terry W. Kramer, Esq.
Kramer & Amado, P.C.
330 John Carlyle Street
3rd Floor
Alexandria, VA 22314
12/21/2016 EXAMINER
MYERS, ERIC A
ART UNIT PAPER NUMBER
2474
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
mail@krameramado.com
ipsnarocp @ alcatel-lucent, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTEO VARVELLO, DIEGO PERINO, and JAIRO ESTEBAN
Appeal 2016-000975
Application 13/421,379
Technology Center 2400
Before STEPHEN C. SIU, JUSTIN BUSCH, and ALEX S. YAP,
Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1—20, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants did not list a real party in interest is its Appeal Brief; we assume
that the named inventors are the real party in interest pursuant to 37 C.F.R.
§41.37.
Appeal 2016-000975
Application 13/421,379
STATEMENT OF THE CASE
Introduction
Appellants’ invention “relate[s] generally to telecommunications
networks.” (Mar. 15, 2012, Specification (“Spec.”) 11.) Claim 1 is
representative and is reproduced below:
1. A method performed by a first network device for
forwarding a message, the method comprising:
receiving, at the first network device, a message to be
forwarded;
determining a destination address for the message;
determining whether that the destination address is not
assigned to the first network device;
when responsive to the determination that the destination
address is not assigned to the first network device,
querying a second network device for a next hop of the
destination address;
receiving, in response to the query, an indication of the
next hop for the destination address; and
forwarding, by the first network device in response to the
indication of the next hop, the message to the next hop.
Prior Art and Rejections on Appeal
The following table lists the prior art relied upon by the Examiner in
rejecting the claims on appeal:
Jacobson et al.
(“Jacobson ’653”)
Rembarz et al.
(“Rembarz”)
Jacobson
(“Jacobson ’912”)
US 2010/0195653 Al
US 2011/0286459 Al
US 2012/0158912 Al
Aug. 5, 2010
Nov. 24, 2011
June 21, 2012
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Appeal 2016-000975
Application 13/421,379
Jacobson et al.
(“Jacobson ’973”) US 2012/0158973 Al June 21, 2012
Claims 1—4, 6—8, 14—17, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Jacobson ‘653 in view of Jacobson ’973.
(See Final Office Action (mailed Oct. 23, 2014) (“Final Act.”) 7—13.)
Claims 5 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jacobson ’653 in view of Jacobson ’973, and further in
view of Jacobson ’912. (See Final Act. 13—16.)
Claims 9 and 11—13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rembarz in view of Jacobson ’653. (See Final Act. 16—
19.)
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rembarz, in view of Jacobson ’653, and further in view of
Jacobson ’973. (See Final Act. 19—20.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We are persuaded that the Examiner
erred in rejecting claims 1—8 and 14—20. We are not persuaded that the
Examiner erred in rejecting claims 9—13.
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Appeal 2016-000975
Application 13/421,379
Claims 1—8 and 14—20
With respect to claim 1, the Examiner finds that:
Jacobson [’653] does not specifically disclose responsive to the
determination that the destination address is not assigned to the
network device, query a second network device, via the network
interface, for a next hop of the destination address', and
Jacobson ’973 teaches responsive to the determination that the
destination address is not assigned to the network device . . . ,
query a second network device, via the network interface, for a
next hop of the destination address ....
(Final Act. 8—9, emphases added.) Appellants, however, contend that:
The cited portion [of Jacobson ’973] does not determine any next
hop value for the client request packet, and thereafter, it only
determines the end device with the request content. In other
words, Jacobson ‘973 is fundamentally different from the above-
emphasized subject matter because it is directed to locating a
destination server that stores requested content, and not toward
how to route a request toward that destination. As such,
Jacobson ‘973 includes no teachings on identifying, by an
intermediate device, a next hop to which a request message
should be forwarded, on the way to the ultimate destination.
Therefore, Jacobson ’973 fails to disclose, inter alia, “querying a
second network device for a next hop of the destination address.”
(App. Br. 7—8, emphasis in original.)
We agree with Appellants that the portions of Jacobson ’973 cited by
the Examiner do not query a second network device for a next hop of the
destination address. Specifically, the content-prefix-to-custodian mapping
information appears to contain only a mapping of the location of the server
that contains the desired content.2
2 Because we do not sustain the Examiner’s rejection for the reasons
discussed herein, we need not address Appellants’ further arguments (for
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Appeal 2016-000975
Application 13/421,379
For the foregoing reasons, we are persuaded of Examiner error in the
rejection of claim l.* * 3 Thus, we do not sustain the 35 U.S.C. § 103 rejection
of claim 1, as well as independent claim 14, which is not argued separately.
(App. Br. 7—9.) We also do not sustain the 35 U.S.C. § 103 rejections of
claims 2—8 and 15—20, which depend on either claim 1 or 14, and are not
argued separately. (Id.)
Claims 9 13
With respect to claim 9, the Examiner finds that:
Rembarz does not specifically disclose the query includes a
device identifier (ID) and a destination address', identifying a
next hop based on at least the device ID and the destination
address.
Jacobson [‘653] teaches the query includes a device identifier
(ID) and a destination address ....
identifying a next hop based on at least the device ID and the
destination address ....
(Final Act. 17—18, emphasis added.) Appellants, however, contend that
Rembarz is directed to locating a destination gateway. (App. Br. 11—12.)
example, whether the construction of “next hop” can be an endpoint alone).
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on “a
single dispositive issue”).
3 The Examiner, in the Answer, argues that it is the combination of Jacobson
’653 and Jacobson ’973 that teaches or suggests this limitation, instead of
Jacobson ’973 alone, as stated in the rejection. (Ans. 3—8; Final Act. 8—9.)
However, the rejection from which Appellants appeal found that Jacobson
’973 alone taught or suggested this limitation. (Final Act. 8—9.) In the event
of further prosecution of this Application, the Examiner should consider
whether to include a new ground of rejection based on the combination of
Jacobson ’653 and Jacobson ’973.
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Appeal 2016-000975
Application 13/421,379
We are not persuaded of Examiner error in the rejection of claim 9.
Appellants do not address the Examiner’s finding regarding Jacobson ’653,
which according to the Examiner, teaches or suggests the limitation at issue.
(Final Act. 17—18; Ans. 13—16; see App. Br. 11—12 (discussing only
Rembarz); Reply 4 (same).)
For the foregoing reasons, we are not persuaded of Examiner error in
the rejection of independent claim 9. Thus, we sustain the 35 U.S.C. § 103
rejection of claim 9, as well as claims 10-13, which depend on claim 9, and
are not argued separately. (App. Br. 12—13.)
DECISION
We reverse the decision of the Examiner to reject claims 1—8 and 14—
20. We affirm the decision of the Examiner to reject claims 9—13.
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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