Ex Parte Watanabe

Patent Trial and Appeal Board

Jun 24, 2013

10716622 (P.T.A.B. Jun. 24, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/716,622 11/20/2003 Akira Watanabe Y2238.0054 6336
32172 7590 06/24/2013
DICKSTEIN SHAPIRO LLP
1633 Broadway
NEW YORK, NY 10019
EXAMINER
HOTELLING, HAROLD A
ART UNIT PAPER NUMBER
2164
MAIL DATE DELIVERY MODE
06/24/2013 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 AKIRA WATANABE
____________________

Appeal 2011-000227
Application 10/716,622
Technology Center 2100
____________________

Before KALYAN K. DESHPANDE, IRVIN E. BRANCH, and
STACEY G. WHITE, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1, 4-9, and 12-17. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 2, 3, 10, and 11 are canceled.
We affirm.
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STATEMENT OF CASE
Illustrative Claim
The claims are directed to a packet searching device and associated
method. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A packet search device that performs packet filter search for
an inputted packet, comprising:

[a] a first search processor that searches predetermined
conditional statements corresponding to a plurality of
information areas included in header information of said packet
using a first search method to generate first search results; and

[b] a second search processor that searches the first search
results of said first search processor using a second search
method that is different from said first search method,

[c] wherein said first search processor divides said packet
header information into a plurality of information areas and
searches across each search conditional statements structured as
binary search trees for each of said information areas
separately, and wherein said second search processor searches
aggregated search results of said first search processor using a
Hash method.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Li US 6,754,662 B1 June 22, 2004 (filed Dec. 20, 2000)
Kottisa US 2004/0049494 A1 Mar. 11, 2004 (filed Sep. 10, 2002)

Rejection
Claims 1, 4-9, and 12-17 stand rejected under 35 U.S.C §103(a) as
being unpatentable over Li and Kottisa. Ans. 4-15.
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Issues
Appellant’s contentions present us with the issue of whether the
Examiner erred in finding that the combination of Li and Kottisa teaches all
the elements of claim 1.
ANALYSIS
Appellant argues the independent claims as a group and does not
separately argue the dependent claims. Br. 6-10. Accordingly, we analyze
claim 1 as representative of all claims on appeal. See 37 C.F.R. §
41.37(c)(1)(iv).
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief. Rather than repeat the arguments here, we
refer to the Brief and the Answer for the respective positions of Appellant
and the Examiner. Only those arguments actually made by Appellant have
been considered in this decision. Arguments that Appellant did not make in
the Brief have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2010).
We disagree with Appellant’s conclusions that the Examiner has erred
and accordingly adopt the Examiner’s findings and conclusions. Ans. 4-6;
16-17. We highlight the following.
Appellant’s contention that Li “says nothing whatsoever about
[limitations (a)-(b)]” (Br. 7-9), is unpersuasive for at least two reasons.
First, Appellant’s argument is an attack on a single reference, while the
rejection is based on a combination of prior art disclosures. Attacking the
references individually is improper because the Examiner relies on the
combination of Li and Kottisa to teach or at least suggest these limitations.
Ans. 6. Nonobviousness cannot be established by individual attacks when,
as is the case here, the teaching comes from the combined disclosures found
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in the prior art. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). In addition, the Examiner has provided a reasonable explanation as
to how Li’s disclosure can be combined with Kottisa to disclose the disputed
limitations. Ans. 5-6, 14-15. As such, Appellant has not provided
persuasive evidence that the Examiner’s rejection is in error.
Regarding limitation [c], Appellant’s argument that Kottisa’s
“scrambling of the search results … does not amount to performing a new
search on the results of the search engine,” is also unpersuasive. Br. 9. We
agree with the Examiner that Kottisa’s rearrangement of search results “must
perform a second search that searches the results of the first search in order
to determine” the sequence of the reordered results. Ans. 17. Appellant has
not provided any further evidence that the Examiner’s construction of this
claim limitation is in error. As such, we sustain the Examiner’s rejection of
claims 1, 4-9, and 12-17 as unpatentable under 35 U.S.C. § 103(a).

CONCLUSIONS
On the record before us we conclude that the Examiner has not erred
in finding that the combination of Li and Kottisa teaches or at least suggests
the limitations of claims 1, 4-9, and 12-17.

DECISION
For the above reasons, the Examiner’s rejection of claims 1, 4-9, and
12-17 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).

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AFFIRMED

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