Ex Parte Correll

Patent Trial and Appeal Board

Oct 19, 2018

13979676 (P.T.A.B. Oct. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/979,676 10/28/2013
88087 7590 10/23/2018
Fritzsche Patent
c/o Buchanan Ingersoll & Rooney PC (SEN)
P. 0. Box 1404
Alexandria, VA 22313-1404
FIRST NAMED INVENTOR
Christian Correll
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
201 OP0044WOUS-796 8004
EXAMINER
KHAN, HASSAN ABDUR-RAHMAN
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
10/23/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN CORRELL
Appeal2017-002245 1
Application 13/979,676
Technology Center 2400
Before BRADLEY W. BAUMEISTER, JOSEPH P. LENTIVECH, and
DAVID J. CUTITTA II, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 1-20, the only claims pending in the
application on appeal. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection within the provisions
of 37 C.F.R. § 41.50(b).
1 An oral hearing was held on October 9, 2018.
2 According to Appellant, the real party in interest is Unify GmbH & Co.
KG. App. Br. 1.
Appeal2017-002245
Application 13/979,676
STATEMENT OF THE CASE
Appellant's Invention
Appellant's invention generally relates to creating multiple addresses
for a network element in a communication network. Spec. 1. Claim 1,
which is illustrative of the claimed invention, reads as follows:
1. A method for creating multiple addresses for a network
element in a communication network, comprising:
a) creating virtual identifiers for each of the addresses to
be created from an existing identifier for the network element
and at least one configured piece of additional information stored
on the network element, each of the virtual identifiers created by
a virtual identifier creation process comprising:
forming an initial identifier based on the existing
identifier and subsequently replacing a middle segment of
the initial identifier with a value derived from the formed
initial identifier to form the virtual identifier;
b) creating the addresses based on the created virtual
identifiers;
c) testing at least one of the created virtual identifiers and
the created addresses for collisions; and
d) discarding at least one of any of the created virtual
identifiers determined from the testing to be a colliding virtual
identifier and the created addresses created from those colliding
virtual identifiers; and
e) retaining at least one address that is determined from the
testing not to be a colliding address or that is created from a
virtual identifier that is determined from the testing to not be a
colliding virtual identifier.
Rejections
Claims 1, 2, 4--9, 11-17, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Vesterinen et al.
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Application 13/979,676
(US 7,974,311 B2; issued July 5, 2011) ("Vesterinen") and Narten et al.,
Privacy Extensions for Stateless Address Autoconfzguration in 1Pv6,
Network Working Group, IETF RFC 4941 (2007) ("Narten"). Final Act. 3-
12.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Vesterinen, Narten, and Thomson et
al., 1Pv6 Stateless Address Autoconfiguration, Network Working Group,
IETF RFC 4862 (2007) ("Thomson"). Final Act. 13.
Claims 10, 18, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Vesterinen, Narten, and Lappin,
Jr. (US 7,047,453 B2; issued May 16, 2006) ("Lappin"). Final Act. 13-16.
ANALYSIS
Appellant contends Vesterinen does not teach or suggest "each of the
virtual identifiers created by a virtual identifier creation process comprising:
forming an initial identifier based on the existing identifier and subsequently
replacing a middle segment of the initial identifier with a value derived from
the formed initial identifier to form the virtual identifier," as recited in
claim 1. App. Br. 9. Appellant argues Vesterinen's teaching of adding the
fixed value, FFFE, to a middle segment of a MAC address does not teach or
suggest "replacing any middle segment." App. Br. 9. Appellant further
argues V esterinen teaches that the FFFE value "is a value that is added to a
pre-existing MAC address," "is a 'fixed value' that is added to the 48 bit
MAC address," and "is not a value derived from a formed initial identifier,"
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as required by claim 1. App. Br. 9, 10 (citing Vesterinen 8:50-53).
Appellant argues:
No replacing of any middle segment occurs in Versterinen.
The plain meaning of "replace" is understood to be "to put
something new in the place of' (Merriam-Webster definition of
"replace" available at http://www.merriam-
webster.com/dictionary/replace) or "to put someone or
something in the place of another" (The Free Dictionary by
Farlex, available at http://www.thefreedictionary.com/replace.
No replacing of any middle segment of any address occurs in
Versterinen. For instance, the second half of the MAC address
is still present as shown in Figure 5. It has not been removed and
had something else put in its place.
App. Br. 10-11.
Appellant argues N arten "also fails to teach or suggest a virtual
identifier creation process in which an initial identifier is formed and a
middle segment of that identifier is then replaced with a value derived
from the formed initial identifier." App. Br. 9. According to Appellant,
N arten "is directed to a state address auto configuration in which an address
is formed by combining a network prefix with an interface identifier." Id.
(citing Narten, Abstract). Appellant argues Narten fails to teach or suggest
"formation of an initial identifier based on an existing identifier for a
network element that then has its middle segment replaced with a value
derived by that initial identifier" and that Narten "is silent with respect to
such a feature." Id.
Appellant further argues:
[T]he process disclosed by Section 3 .2.1 of [Narten] that
is relied upon by the Examiner fails to teach or suggest any
generation of a value that is to be added into a middle segment
of a formed initial identifier. To the contrary, the process of
Section 3 .2.1 is to form an entirely new identifier from appending
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Application 13/979,676
a stored historical value with a previously used identifier as an
input value into a calculation algorithm to form an entirely new
identifier. No replacement of any middle portion of any
identifier occurs in Section 3.2.1.
Further, no use of any left or right most section of a MD5
value as a history value is used as any middle segment for
inserting into anything. This left or right value is an initial value
to which a previously used identifier is appended to generate a
value for inputting to an algorithm to form an entirely new
identifier. There is no use of any middle segment of anything
nor any replacement of any middle segment of any previously
formed identifier in [N arten] or initially formed identifier in
[Narten].
App. Br. 12.
Appellant argues Narten's "history value having the appended
identifier value is not an initial interface identifier value that is formed" but,
instead, "is a step in forming an input value for a calculation methodology
for forming an entirely new identifier value." App. Br. 13.
Appellant's arguments are persuasive. The Examiner finds
Vesterinen teaches "forming an initial identifier ( a MAC address) based on
[a] serial number of the module such as [a] Cabinet ID (existing identifier)."
Ans. 3. The Examiner finds Vesterinen teaches "based on the EUI-64
identifier format in Fig. 5c, the MAC address (initial identifier) is taken as
the basis and a value (FFFE) is added in the middle." Ans. 3 ( citing
Vesterinen 8:41-54). The Examiner finds "Narten teaches using a portion
(leftmost, rightmost), i.e., using a first half and not using the second half or
using a second half and not using the first half, which the Examiner
considers as equivalent of using a (middle) portion and not using other
portions." Ans. 4. However, the Examiner's findings are insufficient to
show how "using a (middle) portion and not using other portions," as taught
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by Narten, either alone or in combination with the teachings ofVesterinen,
teaches or suggests replacing a middle segment of an initial identifier
(e.g., Vesterinen's "FF:FE") with a derived value, as required by claim 1.
Accordingly, we do not sustain the Examiner's rejection of claim 1;
and claims 2-20, which depend from claim 1.
We do not reach Appellant's further allegations of error because we
find the issue discussed above to be dispositive as to the rejection of all the
pending claims.
NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 4I.50(b)
Principles of Law
Claims 1-20 are newly rejected under 35 U.S.C. § 101 because the
claimed subject matter is judicially-excepted from patent eligibility under
§ 101.
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The
Supreme Court in Alice reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355.
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The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," such as an
abstract idea. Id. The inquiry often is whether the claims are directed to "a
specific means or method" for improving technology or whether they are
simply directed to an abstract end-result. McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). If the claims are not
directed to a patent-ineligible concept, the inquiry ends.
Otherwise, the inquiry proceeds to the second step, where the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 78-79). We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Analysis
Turning to the first step of the analysis, we find Appellant's
independent claim 1 is directed to a patent-ineligible abstract concept of
"creating multiple addresses for a network element." All the steps recited in
Appellant's claim 1, including, for example: (i) "creating virtual identifiers
for each of the addresses to be created from an existing identifier for the
network element and at least one configured piece of additional information
stored on the network element"; (ii) "forming an initial identifier based on
the existing identifier"; (iii) "replacing a middle segment of the initial
identifier with a value derived from the formed initial identifier to form the
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virtual identifier"; (iv) "creating the addresses"; (v) "testing at least one of
the created virtual identifiers and the created addresses for collisions"
( vi) "discarding at least one of any of the created virtual identifiers
determined from the testing to be a colliding virtual identifier and the
created addresses created from those colliding virtual identifiers"; and
(vii) "retaining at least one address that is determined from the testing not to
be a colliding address or that is created from a virtual identifier that is
determined from the testing to not be a colliding virtual identifier" are
abstract processes of collecting, storing, and analyzing information of a
specific content.
Information, as such, is intangible. See Microsoft Corp. v. AT & T
Corp., 550 U.S. 437, 451 n.12 (2007). Information collection and analysis,
including when limited to particular content, is within the realm of abstract
ideas. See, e.g., Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs.for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); and CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011).
Our conclusion that the claims are directed to an abstract idea is
buttressed by the fact that we see no reason why the method, as claimed,
could not be performed by a person using pen and paper. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011)
("[A] method that can be performed by human thought alone is merely an
abstract idea" and holding that a claim whose "steps can be performed in the
human mind, or by a human using a pen and paper" is directed to an
"unpatentable mental process[]").
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Turning to the second step of the analysis, we find nothing in
Appellant's claims 1, 9, and 15 that adds anything "significantly more" to
transform the abstract concept of collecting, storing, and analyzing
information into a patent-eligible application. Alice, 134 S. Ct. at 2357. The
claims fail to recite (1) any structure for performing the claimed process, or
(2) any limitation tying the recited steps to the network elements for which
the addresses are created. As such, none of the recited limitations, whether
individually or in an ordered combination, shows any inventive concept.
For similar reasons, we further find that the dependent claims, 2-20,
do not add anything materially more patent-eligible than the abstract
concepts recited in the independent claim.
Because Appellant's claims 1-20 are directed to a patent-ineligible
abstract concept, and because they do not recite something "significantly
more" under the second prong of the Alice analysis, we reject these claims
under 35 U.S.C. § 101.
DECISION
We reverse the Examiner's rejections of claims 1-20 under 35 U.S.C.
§ 103(a).
We newly reject claims 1-20 under 35 U.S.C. § 101.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b ). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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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.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED; 37 C.F.R. § 4I.50(b)
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