Ex Parte Zinin

Patent Trial and Appeal Board

Sep 24, 2014

10782390 (P.T.A.B. Sep. 24, 2014)

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.
10/782,390 02/19/2004 Alexey D. Zinin 1400.1376750 4335
25697 7590 09/25/2014
ROSS D. SNYDER & ASSOCIATES, INC.
PO BOX 164075
AUSTIN, TX 78716-4075
EXAMINER
CHRISS, ANDREW W
ART UNIT PAPER NUMBER
2479
MAIL DATE DELIVERY MODE
09/25/2014 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 ALEXEY D. ZININ
____________

Appeal 2012–003769
Application 10/782,390
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Examiner rejected claims 1–38. Appellant appeals from the final
rejection under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse and set forth new grounds of rejection for claims 1–38
under 35 U.S.C. § 112, second paragraph, pursuant to our authority under 37
C.F.R. § 41.50(b).
Appeal 2012–003769
Application 10/782,390
2
INVENTION
This invention relates to "protection of network infrastructure and
secure communication of control information thereto." Spec. Title
(emphasis omitted). Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method for communicating Layer-3 control information in
a communications network comprising the steps of:
[a] marking packets carrying the Layer-3 control information;
[b] encapsulating the packets at Layer-2 to uniquely identify
Layer-2 frames as carrying trusted control information.
(Steps lettered).
REJECTIONS
R1. Claims 1, 2, 4, 17, 20, 21, 23, and 36 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over United States Patent Application
Publication US 2003/0112755 A1; June 19, 2003 ("McDysan") and United
States Patent Application Publication US 2002/0067725 A1; June 6, 2002
("Oguchi"). (Ans. 4)
R2. Claims 3 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over McDysan, Oguchi and United States Patent Application
Publication US 2002/0085498 A1; July 4, 2002 ("Nakamichi"). (Ans. 9).
R3. Claims 5–12 and 24–31 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over McDysan, Oguchi, and United States Patent
Application Publication US 2004/0010583 A1; Jan. 15, 2004 ("Yu").
(Ans. 9).
R4. Claims 13 and 32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over McDysan, Oguchi and United States Patent
5,802,178; Sept. 1, 1998 ("Holden"). (Ans. 12).
Appeal 2012–003769
Application 10/782,390
3
R5. Claims 14 and 33 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over McDysan, Oguchi, and United States Patent
7,336,615 B1; Feb. 26, 2008 ("Pan"). (Ans. 13).
R6. Claims 15 and 34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over McDysan, Oguchi, and United States Patent
Application Publication US 2004/0085965 A1; May 6, 2004 ("Fotedar").
(Ans. 13).
R7. Claims 16 and 35 stand rejected under 35 U.S.C.§ 103(a) as being
unpatentable over McDysan, Oguchi and United States Patent Application
Publication US 2002/0023210 A1; Feb. 21, 2002 ("Tuomenoksa").
(Ans. 14).
R8. Claims 18 and 37 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over McDysan, Oguchi and United States Patent
6,061,330; May 9, 2000 ("Johansson"). (Ans. 14).
R9. Claims 19 and 38 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over McDysan, Oguchi, and United States Patent
Application Publication US 2001/0049744 A1; Dec. 6, 2001 ("Hussey").
(Ans. 15).
ANALYSIS
R1. CLAIMS 1 AND 20
Claim 1 limitation [b], recites:
[b] [b1] encapsulating the packets at Layer-2 [b2] to uniquely
identify Layer-2 frames as carrying trusted control information.
Appellant contends claim 1 limitation [b2] is entitled to patentable
weight because limitation [b2] is not an "intended result." (Reply Br. 22–23;
See Ans. 17–18). Appellant urges that limitation [b2] informs how the
Appeal 2012–003769
Application 10/782,390
4
limitation [b1] of "encapsulating" is performed, and “is not merely a
laudatory remark characterizing a result of encapsulating the packets at
Layer-2.” (Reply Br. 23).
Appellant's contentions are persuasive. Turning to the Specification
for context, paragraphs 29–30 describe control encapsulation using a new
protocol identifier or a link-local MPSL label that is recognized by a
receiving router. We agree with Appellant that limitation [b2] “to uniquely
identify Layer-2 frames as carrying trusted control information,” further
limits limitation [b1] “encapsulating the packets at Layer-2.” (Claims 1 and
20; see also Spec. ¶27, ¶¶29–30). Contrary to the Examiner’s construction
(Ans. 17), we conclude limitation [b2] may not be disregarded as a statement
of intended result and must be accorded patentable weight.
Because the Examiner failed to make any finding of fact regarding a
teaching or suggestion of limitation [b2] by the cited prior art, we agree
with Appellant the Examiner failed to establish a prima facie case of
obviousness. (Ans. 17; App. Br. 23). Accordingly, on this record, we are
constrained to reverse the rejection R1 of independent claim 1, and also
rejection R1 of independent claim 20, which recites commensurate
limitations. Because the Examiner failed to establish a prima facie case of
obviousness for each independent claim, we additionally reverse the
rejections over the cited prior art of claims 2–19 and 21–38, that depend
from claims 1 and 20.

Appeal 2012–003769
Application 10/782,390
5
New Ground of Rejection for Claims 1–38 under § 112, second paragraph
Using our authority under 37 C.F.R. § 41.50(b), we set forth a new
ground of rejection under 35 U.S.C. § 112, second paragraph, for
claims 1–38.
A. Claims 1 and 20
Based upon our review of Appellant's independent claims, considered
in light of the Specification, we conclude the claim 1 and claim 20
limitations: "[a] marking packets carrying the Layer-3 control information;”
and [b] “encapsulating the packets at Layer-2 to uniquely identify Layer-2
frames as carrying trusted control information" are indefinite under §112,
second paragraph, for failing to particularly point out and distinctly claim
the subject matter which the applicant regards as the invention. 35 U.S.C.
§ 112, ¶ 2 (2006).
Specifically, the Specification at paragraph 27 describes the step [a] of
“marking” is the same as step [b] of “encapsulating.” Paragraph 27
describes: "[t]he marking of control packets is done by encapsulating the
packets at Layer-2 in a way that uniquely identifies the Layer-2 frames as
carrying trusted control information. This is referred to herein as control
encapsulation." (Emphasis added). We conclude limitations [a] and [b] are
indefinite because it is unclear how step [a] differentiates from step [b],
because the Specification describes marking as encapsulating.
1
(Spec. ¶27).

1
See MPEP 2173.03: “A claim, although clear on its face, may also be
indefinite when a conflict or inconsistency between the claimed subject
matter and the specification disclosure renders the scope of the claim
uncertain . . . .” In re Moore, 439 F.2d 1232, 1235-36 (CCPA 1971); In re
Cohn, 438 F.2d 989 (CCPA 1971); In reHammack, 427 F.2d 1378 (CCPA
1970).
Appeal 2012–003769
Application 10/782,390
6
B. Claims 1 and 20
Based upon our interpretation of Appellant's independent claims in
light of the Specification, we conclude the claim 1 and claim 20 terms: (1)
"Layer-3 control information," (2) "at Layer-2", and (3) "trusted control
information" are indefinite under §112, second paragraph, for failing to
particularly point out and distinctly claim the subject matter which the
applicant regards as the invention. 35 U.S.C. § 112, second paragraph
(2006).
Specifically, we are unable to ascertain the scope of the claim terms
“layer-3” and "at layer-2" that are recited in each independent claim on
appeal. (Claims 1 and 20). In particular, the claim terms “Layer-2" and
"Layer-3" are not defined in the claims. Although the “Background of the
Invention” section of the Specification (¶4) describes the seven layers of the
standard OSI model, the claims are silent regarding the OSI model.
Therefore, we conclude these claim terms (Layer-3, Layer-2) may have two
or more broad but reasonable interpretations because they read on any
network “layer” that is arbitrarily numbered. “[I]f a claim is amenable to
two or more plausible claim constructions, the USPTO is justified in
requiring the applicant to more precisely define the metes and bounds of the
claimed invention by holding the claim . . . indefinite.” Ex parte Miyazaki,
89 USPQ2d 1207, 1211 (BPAI 2008) (precedential).
2
We decline to engage
in speculative assumptions concerning the meaning of the claim language.

2
See also In re Packard, 2013-1204, WL 1775996 at *15 (Fed. Cir. May 6,
2014), (J. Plager concurring)(“ In my view (and that of the per curiam
court), it is within the authority of the USPTO to so interpret the applicable
standard”).
Appeal 2012–003769
Application 10/782,390
7
We also conclude the recited "trusted control information" is
indefinite because we are uncertain whether the "trusted control
information" refers back to "Layer-3 control information" for antecedent
basis, or to some different "control information." (Claims 1 and 20). We
further conclude the recited "trusted control information" is indefinite
because neither the claims nor the Specification define what "trusted"
means. (Spec. ¶27). Thus, we conclude the undefined claim term “trusted”
is indefinite because its scope depends solely on the unrestrained, subjective
opinion of a particular individual purportedly practicing the invention. See
Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir.
2005).
C. Claim 20
Claim 20 recites:
20. An apparatus comprising a network element for
communicating Layer-3 control information in a
communications network adapted to perform the steps of:
[a] marking packets carrying the Layer-3 control information;
[b] encapsulating the packets at Layer-2 to uniquely identify
Layer-2 frames as carrying trusted control information.
In addition to the reasons set forth above, we conclude apparatus
claim 20 is indefinite under § 112 second paragraph because claim 20 is a
hybrid claim which recites an apparatus, and steps ([a] and [b]) of using the
apparatus. See IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377,
1384 (Fed. Cir. 2005) (a claim reciting both a system and a method for using
that system held indefinite).
Appeal 2012–003769
Application 10/782,390
8
For these reasons, we enter a new ground of rejection under § 112,
second paragraph, for independent claims 1 and 20, and for associated
dependent claims 2–19 and 21–38.
3

DECISION
We reverse the Examiner's rejections R1–R9 of claims 1-38 under
§ 103.
This decision contains a new ground of rejection for claims 1–38
under § 112, second paragraph, pursuant to our authority under 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of

3
Claims 2 and 3 recite:
2. The method of claim 1 wherein the step of marking further
comprises: marking the packets using a unique protocol
identifier.
3. The method of claim 1 wherein the step of marking further
comprises: marking the packets using a link-local MPLS label.
Claims 21 and 22 recite commensurate language.
In the event of further prosecution, we leave it to the Examiner to
consider whether claims 2–3 and 21–22 should also be rejected under 35
U.S.C. § 112, first paragraph, written description. (See Specification ¶¶ 27–
29;). Specifically, the Specification at paragraph 29 describes
"encapsulating," not "marking" as "using the unique protocol identifier" and
"using a link-local MPLS label." While the Board is authorized to reject
claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the
Board elects not to do so. See Manual of Patent Examining Procedure
(MPEP) 1213.02.

Appeal 2012–003769
Application 10/782,390
9
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and
state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f).

REVERSE
37 C.F.R. § 41.50(b)

ELD