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Patent Trials and Appeals Board

Dec 3, 2019

14870675 - (D) (P.T.A.B. Dec. 3, 2019)

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.
14/870,675 09/30/2015 ISAM AKKAWI 104-01502-000-US 6736
136455 7590 12/03/2019
Rimon Law - CAVIUM/MARVELL
2479 E. Bayshore Road
Suite 210
Palo Alto, CA 94303
EXAMINER
KHANAL, SANDARVA
ART UNIT PAPER NUMBER
2453
NOTIFICATION DATE DELIVERY MODE
12/03/2019 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):
David.Xue@Rimonlaw.com
SVDocketing@Rimonlaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ISAM AKKAWI, DARREN BRAUN,
WILSON PARKHURST SNYDER II, and BRYAN CHIN
____________________

Appeal 2019-001410
Application 14/870,675
Technology Center 2400
____________________
Before ALLEN R. MacDONALD, SCOTT RAEVSKY, and
IFTIKHAR AHMED, Administrative Patent Judges.
AHMED, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–38, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
SUMMARY OF THE CLAIMED INVENTION
The application relates to “systems and methods to support flexible
reconfiguration of a network chip by an external entity, such as a baseboard

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, the real party in interest is Cavium, Inc.
App. Br. 2.
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management controller (BMC), while maintaining a secured environment for
the chip so that it can booted securely.” Spec. ¶ 9.
Illustrative Claim
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1. A system to support flexible chip configuration while
maintaining a secured boot environment, comprising:
an external baseboard management controller (BMC) of a
network chip configured to:
directly access a plurality of registers of the network chip
in order to configure one or more networking ports
designated for communication with the external BMC
without violating secure areas of the network chip;
establish a data path to access a management software of
a platform of the network chip over a network through
the networking ports of the network chip;
said network chip configured to:
provide and designate the one or more networking
ports for communication with the external BMC;
receive and transmit data packets between the
external BMC and the management software through the
designated networking ports over the network along the
data path.
REJECTIONS
Claims 1, 2, 5–9, 21, and 24–27 stand rejected under 35 U.S.C. § 103
as obvious over the combination of Holm (US 2009/0055637 A1; Feb. 26,
2009), Ramey (US 2003/0126226 A1; July 3, 2003), and Greenstein (US
2009/0210601 A1; Aug. 20, 2009). Final Act. 7.
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Claims 3, 4, 10, 22, 23, and 28 stand rejected under 35 U.S.C. § 103
as obvious over the combination of Holm, Ramey, Greenstein, and Flynn
(US 8,417,774 B2; Apr. 9, 2013). Final Act. 13.
Claims 11–15, 17, 29–33, and 35 stand rejected under 35 U.S.C. § 103
as obvious over the combination of Holm, Ramey, Greenstein, and Shah (US
2013/0326039 A1; Dec. 5, 2013). Final Act. 16.
Claims 16 and 34 stand rejected under 35 U.S.C. § 103 as obvious
over the combination of Holm, Ramey, Greenstein, Shah, and Kitahara (US
2002/0087553 A1; July 4, 2002). Final Act. 22.
Claims 18–20 and 36–38 stand rejected under 35 U.S.C. § 103 as
obvious over the combination of Holm, Ramey, Greenstein, Shah, and
Network Controller Sideband Interface (NC-SI) Specification by the
Distributed Management Task Force, Inc. (“DMTF”). Final Act. 23, 25.
ISSUE
Did the Examiner err in finding that Greenstein teaches or suggests
“establish[ing] a data path to access a management software of a platform of
the network chip over a network through the networking ports of the
network chip,” as recited in claim 1?
ANALYSIS
Independent claim 1 recites an external BMC of a network chip
configured to “establish a data path to access a management software of a
platform of the network chip over a network through the networking ports of
the network chip.” App. Br. 19 (emphasis added). Claim 21, the only other
independent claim, is a method claim that similarly recites “establishing a
data path to access a management software of a platform of the network chip
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over a network through the networking ports of the network chip.” Id. at 23
(emphasis added).
The Examiner finds that Greenstein discloses this limitation.
According to the Examiner, “the links between BMC 302 and host operating
system 304 [in Greenstein] represent the established data path(s), and that
the traffic flow between BMC 302 and host operating system 304 indicate
that the access to the management software is provided using the established
data path.” Final Act. 9 (citing Greenstein ¶¶ 50–52, Fig. 3).
Appellant agrees with the Examiner that Greenstein discloses two data
paths in LOM 306: “a first data path is 313 which transfers data originating
in operating system 304 towards BMC 302,” and “a second data path is
315/317 which preferably transfers data originating in BMC 302 towards
operating system 304.” App. Br. 11 (citing Greenstein ¶¶ 50, 52). Appellant
however argues that “the data paths 313 and 315/317 are not established
over a network as defined in Claim 1.” Id. According to Appellant, other
portions of those data paths are also not over a network because, for
example, “there is a PCI Express connection between the memory that stores
the operating system 200/304 and the LOM 214/306.” Id. at 11–12 (citing
Greenstein ¶¶ 36, 48, 50) (emphasis omitted). The Examiner’s interpretation
of the term “over the network” as “across a series of points or nodes
interconnected by communications paths or connections,” Appellant argues,
is a broadest possible interpretation, not the broadest reasonable
interpretation, and has been improperly applied to Greenstein. Id. at 12
(citing In re Smith Int’l., Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017)). In
fact, Appellant argues, “Greenstein teaches against using a network.” Id. at
12–13 (citing Greenstein ¶¶ 23, 24).
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The Examiner responds that support for the claim interpretation
adopted by the Examiner can be found in other prior art references. Ans. 8.
For example, Examiner notes that one prior art publication discloses that “a
computer network may be simply defined as a collection of computers
connected together to permit sharing of hardware or software resources and
to increase overall reliability.” Id. (citing US Patent Publication
2007/0192593 ¶ 20). The Examiner also points to a second reference which
discloses that a “network is defined by a group of entities (nodes) connected
by links.” Id. (citing US Patent Publication 2014/0047091 Al ¶ 13).
According to the Examiner, “when plain meaning of the term is applied, if a
possible interpretation is a reasonable interpretation based on the plain
meaning of the term, then the possible interpretation is the broadest
reasonable interpretation of the term,” especially where “the specification is
diminutive of any express definition or disclaimer.” Id. The Examiner finds
that “the specification as filed teaches . . . that the network can be (broadly
interpreted to be) any network type” because it expressly states that the
claims are not limited to the example networks disclosed in the
Specification. Id. at 12 (citing Spec. ¶ 12).
The Examiner further determines that “Greenstein discloses that in
conventional computer hardware there is no way to send Ethernet packets
from the host operating system to the BMC without going through the
network,” demonstrating “that the host operating system and the BMC
sending Ethernet packets between them through the network already exist in
conventional computer hardware, and thus is well known in the art.” Id. at
10 (citing Greenstein ¶ 23). Therefore, the Examiner concludes, “not only
does Greenstein disclose the claim limitation . . . Greenstein actually
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demonstrates that this feature in well-known to one of ordinary skilled in the
art at the time of filing of this application.” Id.
The Examiner also finds that Greenstein discloses sending “Ethernet
packets using well known TCP or UDP protocols back and forth between the
operating system and the BMC,” further supporting that Greenstein discloses
the claim limitation. Id. at 12 (citing Greenstein ¶ 47).
We agree with Appellants that the Examiner has not sufficiently
explained how Greenstein teaches or suggests “establish[ing] a data path to
access a management software of a platform of the network chip over a
network through the networking ports of the network chip.” Although
Greenstein teaches establishing a data path between the BMC and the host
operating system (which the Examiner determines teaches the management
software) (Greenstein ¶¶ 50–52, Fig. 3), there is no indication that this data
path is established “over a network through the networking ports of the
network chip,” as recited in claim 1. In contrast, Greenstein teaches various
other interfaces that make up the data path between its BMC and the host
operating system:
It should be noted that the connection between LOM 306 and
BMC 302 may be implemented using an SMBus connector, an
MII interface, or an RMII interface. Operating system 302 may
be connected to LOM 306 using PCI-E or any other suitable
interface.
Greenstein ¶ 51 (emphasis added). The Examiner has not sufficiently
explained how these interfaces teach or suggest a “network.”
Although we agree with the Examiner that “the application as filed
does not provide a special definition to the limitation ‘over the network’ in
the specification,” and the term should be given its broadest reasonable
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interpretation (Ans. 12), we find that the Examiner’s interpretation of the
term “over the network” as broadly meaning “across a series of points or
nodes interconnected by communications paths or connections” reads out the
claim term’s requirement that such a network must relate to the “network
chip” recited in the claim. The broadest reasonable interpretation “is an
interpretation that corresponds with what and how the inventor describes his
invention in the specification, i.e., an interpretation that is ‘consistent with
the specification.’” In re Smith Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir.
2017) (citing In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); In re
Suitco Surface, Inc., 603 F.3d 1255, 1259–60 (Fed. Cir. 2010)). The very
portion of the Specification that the Examiner cites (Ans. 12) lists a number
of conventional networks: “the network 112 can be but is not limited to,
internet, intranet, wide area network (WAN), local area network (LAN),
wireless network, Bluetooth, WiFi, mobile communication network, or any
other network type.” Spec. ¶ 12. Figure 1 further depicts Network 112 as an
external network connected to Networking Port 110 of the Network Chip
102. Id. Fig. 1. The broadest reasonable interpretation of “over the
network” is one that is consistent with these descriptions, even though the
Specification fails to provide an explicit definition for the term.
Nor are we persuaded that the prior art references cited by the
Examiner support the Examiner’s broad interpretation of the term. For
example, the first reference that the Examiner cites defines a computer
network as “a collection of computers connected together to permit sharing
of hardware or software resources and to increase overall reliability.” Ans. 8
(citing US Patent Publication 2007/0192593 ¶ 20) (emphasis added). We
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are not persuaded that that definition supports interpreting a “network”
broadly, in the manner that the Examiner does.2
The Examiner’s interpretation also appears to be broader than at least
one dictionary definition of “network.” For example, the Microsoft Press
Computer Dictionary defines the word “network” as follows:
A group of computers and associated devices that
are connected by communications facilities. . . . A
network can be small as a local area network
consisting of a few computers, printers, and other
devices, or it can consist of many small and large
computers distributed over a vast geographic area.
MICROSOFT PRESS COMPUTER DICTIONARY at 238, Microsoft Press (1991)
(emphasis added).
We are therefore not persuaded that the Examiner’s interpretation is
the broadest reasonable interpretation of “over the network,” and that
Greenstein teaches or suggests establishing a data path “over a network,” as
recited in claim 1.
Moreover, it is not clear from the record before us that Greenstein
teaches or suggests establishing a data path “over a network through the
networking ports of the network chip.” The “links between BMC 302 and
host operating system 304” in Greenstein, that the Examiner relies on (Final
Act. 9), are internal to the controller disclosed in Greenstein. See
Greenstein ¶ 48 (noting that Figure 3 “shows one possible implementation of
an interface inside a LOM 306 gigabit controller” (emphasis added)). The
Examiner has not sufficiently explained why a person of ordinary skill in the

2 The definition of a “network” discussed in the second reference that the
Examiner cites relates more generally to social networks. See US Patent
Publication 2014/0047091 ¶¶ 5, 6.
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art would have considered the data paths disclosed in Figure 3 of Greenstein
to be established “through the networking ports of the network chip,” as
recited in claim 1.
The Examiner also does not rely on Holm or Ramey as teaching this
claim limitation in support of the obviousness rejection based on Holm,
Ramey, and Greenstein. Accordingly, given the record before us, we do not
sustain the Examiner’s rejection of independent claims 1 and 21, and their
dependent claims 2–20 and 22–38.
DECISION
For the reasons above, we reverse the Examiner’s decision rejecting
claims 1–38.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 2, 5–9,
21, 24–27
103 Holm, Ramey,
Greenstein
1, 2, 5–9,
21, 24–27
3, 4, 10, 22,
23, 28
103 Holm, Ramey,
Greenstein, Flynn
2, 4, 10,
22, 23, 28
11–15, 17,
29–33, 35
103 Holm, Ramey,
Greenstein, Shah
11–15, 17,
29–33, 35
16, 34 103 Holm, Ramey,
Greenstein, Shah,
Kitahara
16, 34
18–20, 36–
38
103 Holm, Ramey,
Greenstein, Shah,
DMTF
18–20, 36–
38
Overall
Outcome
1–38
REVERSED
Notice of References Cited
Application/Control No. Applicant(s)/Patent Under Patent
Appeal No.
Examiner Art Unit
Page 1 of 1
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U.S. Patent and Trademark Office
PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.
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MICROSOFT PRESS COMPUTER DICTIONARY at 238, Microsoft Press (1991)