2019003589 (P.T.A.B. Dec. 4, 2020)

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Patent Trials and Appeals BoardDec 4, 2020

2019003589 (P.T.A.B. Dec. 4, 2020)

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. 14/514,690 10/15/2014 Andrew Warfield MER010 P308 7194 84646 7590 12/04/2020 Proactive Patents LLC 900 West Bethany Drive Suite 380 Allen, TX 75013 EXAMINER PARRY, CHRISTOPHER L ART UNIT PAPER NUMBER 2451 NOTIFICATION DATE DELIVERY MODE 12/04/2020 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): eofficeaction@appcoll.com jmakarewicz@proactivepatents.com mzarinelli@proactivepatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW WARFIELD, GEOFFREY LEFEBVRE, BRENDAN ANTHONY CULLY, and DANIEL STODDEN Appeal 2019-003589 Application 14/514,690 Technology Center 2400 Before JEREMY J. CURCURI, MICHAEL J. ENGLE, and PHILLIP A. BENNETT, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–21, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Coho Data Inc. as the real party in interest. Appeal Br. 3. Appeal 2019-003589 Application 14/514,690 2 TECHNOLOGY The application relates to “network communications, and in particular, . . . coordinating network-based communication in distributed server systems with software-defined networking (SDN) switching.” Spec. ¶ 1. ILLUSTRATIVE CLAIM Claim 1 is illustrative and reproduced below: 1. A network service node for use in a distributed network service system comprising a plurality of network service nodes supporting distributed network communications with a client via a network switch, the network service node comprising: a storage resource for use by at least one client-accessible service; a network interface to the network service system; and a processor configured to process a client request when related to said at least one client-accessible service upon both: direct receipt of said client request when received by the node via the network switch from the client; and indirect receipt of said client request received from another node of the distributed network service system, which received said client request via the network switch, along with related communication channel state information required for the node to become stateful with the client in directly fulfilling said client request with the client. Appeal 2019-003589 Application 14/514,690 3 REFERENCE The Examiner relies on the following prior art references: Name Number Date Allen US 2009/0271495 A1 Oct. 29, 2009 Frutiger US 8,127,018 B2 Feb. 28, 2012 Jardin US 6,912,588 B1 June 28, 2005 Sikdar US 8,285,961 B2 Oct. 9, 2012 Witt US 8,782,238 B2 July 15, 2014 REJECTIONS Claims 1–7, 9, 11–13, 15, 17, 19, and 20 stand rejected under 35 U.S.C. § 103 as obvious over Witt, Allen, and Frutiger. Final Act. 4. Claims 8, 14, 16, 18, and 21 stand rejected under 35 U.S.C. § 103 as obvious over Witt, Allen, Frutiger, and Sikdar. Final Act. 17. Claim 10 stands rejected under 35 U.S.C. § 103 as obvious over Witt, Allen, Frutiger, and Jardin. Final Act. 25. ISSUE Did the Examiner provide sufficient motivation to combine Witt and Allen for purposes of claim 1? ANALYSIS By regulation, “any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.” 37 C.F.R. § 41.37(c)(1)(iv). Moreover, “[a]ny argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, . . . will not be considered by the Board for purposes of the present appeal, unless good cause is shown.” 37 C.F.R. § 41.41(b)(2). Here, Appellant introduced a Appeal 2019-003589 Application 14/514,690 4 number of new arguments regarding the claimed “network switch” in the Reply Brief, which we do not consider. Nevertheless, in the Appeal Brief, Appellant did argue against the combination of Allen with Witt, contending that “the Office Action fails to include any motivation” for modifying Allen’s redirect request with Witt’s network switch inserted a specific location “beyond merely identifying that Witt . . . includes the possibility of including a switch device somewhere in the network.” Appeal Br. 21 (emphasis omitted). In the Final Office Action, the Examiner determines “it would have been obvious to one of ordinary skill in the art at the time of the applicants’ invention to modify the teachings of Witt with the teachings of Allen to provide dynamic client service connectivity to resource server.” Final Act. 6 (emphasis added). No citation or further explanation is provided. However, the same motivation is relied on for further combination with Frutiger, again without citation or further explanation. Id. at 7. In the Answer, the Examiner does not directly address Appellant’s argument regarding motivation to combine. “[T]he PTAB must make a finding of a motivation to combine when it is disputed.” In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016). A factfinder “need not seek out precise teachings directed to the specific subject matter of the challenged claim” and “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “However, rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of Appeal 2019-003589 Application 14/514,690 5 obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted by KSR, 550 U.S. at 418). Here, we agree with Appellant that the Examiner has not sufficiently explained the motivation to combine Witt and Allen, particularly given that the identical unexplained motivation was provided for the combination with Frutiger. The additions of Sikdar and Jardin do not cure this deficiency. Accordingly, we do not sustain the Examiner’s rejections of claims 1– 21. OUTCOME The following table summarizes the outcome of each rejection: Claims Rejected 35 U.S.C. § References Affirmed Reversed 1–7, 9, 11–13, 15, 17, 19, 20 103 Witt, Allen, Frutiger 1–7, 9, 11–13, 15, 17, 19, 20 8, 14, 16, 18, 21 103 Witt, Allen, Frutiger, Sikdar 8, 14, 16, 18, 21 10 103 Witt, Allen, Frutiger, Jardin 10 OVERALL 1–21 REVERSED