Ex Parte Iihoshi et al

Patent Trial and Appeal Board

Sep 25, 2018

14381834 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/381,834 08/28/2014
24395 7590 09/27/2018
WILMERHALE/DC
1875 PENNSYLVANIA AVE., NW
WASHINGTON, DC 20006
FIRST NAMED INVENTOR
Takahiro Iihoshi
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.
2209575.00147US1 9566
EXAMINER
PATEL, HARDIKKUMAR D
ART UNIT PAPER NUMBER
2473
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
whipusptopairs@wilmerhale.com
teresa.maia@wilmerhale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte T AKAHIRO IIHOSHI, SHUICHI KARIN 0, and AK.IRA TSUJI
Appeal 2018-003 606
Application 14/381,834
Technology Center 2400
Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JUSTIN BUSCH, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1-20, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Appellants' invention (1) searches a storage means for a process
corresponding to an incoming packet, and (2) determines a control apparatus
1 Appellants identify the real party in interest as NEC Corporation. Br. 2.
The inventors are the Applicants for the instant patent application. See Bib.
Data Sheet.
Appeal2018-003606
Application 14/381,834
to be queried for a process corresponding to the incoming packet from
among control apparatuses. See generally Abstract; Spec. ,r,r 131-151;
Figs. 26-30. Claim 1, reproduced below, is illustrative:
1. A communication apparatus, comprising:
a storage unit that stores a rule for identifying a packet
based on a header included in the packet and a process to be
executed on a packet corresponding to the rule;
a first unit that refers to a predetermined area in an
incoming packet and searches the storage unit for a process
corresponding to the incoming packet; and
a second unit that determines a control apparatus to be
queried for a process corresponding to the incoming packet
from among a plurality of control apparatuses for controlling
the communication apparatus, based on the predetermined area.
THE REJECTION
The Examiner rejected claims 1-20 under 35 U.S.C. § I03(a) as being
unpatentable over Dexter et al. (US 2009/0217168 Al; Aug. 27, 2009)
("Dexter"), Rama et al. (US 2012/0044935 Al; Feb. 23, 2012) ("Rama"),
and Pettey (US 2005/0053060 Al; Mar. 10, 2005). Final Act. 3-11.2
FINDINGS AND CONTENTIONS
The Examiner finds that Dexter discloses many recited elements of
independent claim 1 including, among other things, "a storage unit"
(database 50) that stores a rule for identifying "a packet" (unstructured
document), and "a first unit" that refers to a predetermined area in "an
incoming packet" ( chunks that satisfy a search request). Final Act. 3. The
2 Throughout this opinion, we refer to (1) the Final Rejection mailed Feb.
27, 2017 ("Final Act."); (2) the Appeal Brief filed Aug. 28, 2017 ("Br.");
and (3) the Examiner's Answer mailed Nov. 24, 2017 ("Ans.").
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Appeal2018-003606
Application 14/381,834
Examiner also finds Dexter discloses a "second unit" that determines "a
control apparatus" ( query engine) to be queried for a process corresponding
to the chunks from among a "plurality of control apparatuses" (a search
server and a web server). Id. at 3--4.
Although the Examiner acknowledges that Dexter's unstructured
document is not stored based on a header included in the unstructured
document, the Examiner cites Rama for teaching this feature. Id. at 4. The
Examiner also acknowledges that Dexter's search server and web server are
not for controlling a communication apparatus comprising the storage unit,
the first unit, and the second unit. Id. The Examiner, however, cites Pettey
for teaching this feature in concluding that the claim would have been
obvious. Id. at 4--5. According to the Examiner, Pettey's network controller
items 114, 116, and 118 are for controlling switch 122. Final Act. 4--5
(citing Pettey ,r 94; Fig. 1); Ans. 12-13.
Appellants argue, among other things, that Pettey does not teach or
suggest plural control apparatuses for controlling a communication
apparatus. Br. 5-7. Among other things, Appellants assert Pettey discloses
Figure 1 's network controller items 114, 116, and 118 as being conventional
unshared controllers. Id. at 6. Appellants further assert paragraph 66 of
Pettey explicitly distinguishes the existing unshared controllers illustrated in
Figure 1 from the shared controllers of Pettey's present invention illustrated
in Figure 6. Id. Appellants argue there is no motivation to combine the
teachings of Pettey's Figure 1 with those of Pettey's Figure 6, and Figure 6
teaches away from Figure 1. Id.
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Appeal2018-003606
Application 14/381,834
ISSUES
I. Under§ 103(a), has the Examiner erred in rejecting claim 1 by
finding that Dexter, Rama, and Pettey collectively would have taught or
suggested "a second unit that determines a control apparatus to be queried
for a process corresponding to the incoming packet from among a plurality
of control apparatuses for controlling the communication apparatus, based
on the predetermined area"?
II. Is the Examiner's proposed combination supported by articulated
reasoning with some rational underpinning to justify the Examiner's
obviousness conclusion?
ANALYSIS
We begin by noting that the Examiner's reliance on Dexter and Rama
in the obviousness rejection of claim 1 is undisputed. Rather, as noted
above, this dispute turns solely on the Examiner's reliance on Pettey for
teaching the recited control apparatuses for controlling a communication
apparatus. Therefore, we confine our discussion principally to Pettey.
We next note that the recited control apparatuses are/or controlling
the communication apparatus. We emphasize "for" here, for this term
merely indicates an intended use of the control apparatuses. As such, the
recited intended use limits the control apparatuses to those that are capable
of controlling the communication apparatus. See In re Schreiber, 128 F.3d
1473, 1477-78 (Fed. Cir. 1997). Thus, so long as control apparatuses are
capable of performing this intended function, namely controlling the
communication apparatus, the control apparatuses fully meet this limitation.
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Appeal2018-003606
Application 14/381,834
On pages 12 and 13 of the Answer, the Examiner finds Pettey teaches
the recited control apparatuses for controlling a communication apparatus.
Specifically, the Examiner finds Pettey's "Fig. 1 and ,r [0094] shows [a]
plurality of network controllers (plurality of controller [apparatuses)] which
communicates via ... switch 122 (the communication apparatus). The
plurality of network [ controllers process] a packet and further guide[] the
switch to route the packet in [an] appropriate direction," (hereinafter "the
Examiner's response to arguments"). Ans. 12-13 (emphasis omitted).
Pettey' s Figure 1 shows conventional network interface controllers
and is reproduced below:
Fig. 1 (Prior art)
•• -%-4
PROCESSING
COMF'l:.:X
PROCESSING
COMPlfc>'.
/100
~·· 10s .,.- 110 ,__-~-__,, m
·-••••••••••_l•M .-L 114 ,-.-.-...........we,~/ 11$ ___ ...,.. ___ ,.11a ............... ,..,.,.,.......· ____ ,. __ 12\1
:-il':'.tWORI>: NETWWK i N8Vl'OOK
IN~R!'A.CS. INTER!'ACE I INTERFAC~
CONtROl.lF.R CONTROU.f.R j CONiROl.ll:R
W!TWCRK
lNi!::Rf:'ACO:
CONffiOU.f.!Z
Pettey's Figure 1 showing conventional network interface
controllers
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Appeal2018-003606
Application 14/381,834
As shown in Figure 1, Pettey discloses that conventional network
controllers 114, 116, 118, and 120 are unshared conventional network
controllers. Pettey ,r 66. That is, Pettey's admitted prior art discloses each
processing complexes 102, 104, and 106 requires its own respective network
interface controller(s). Id. ,r,r 66, 75; Figs. 1, 5.
Unlike Pettey' s admitted prior art, however, Pettey' s invention is
directed to a shared network interface controller among processing
complexes. Pettey, Title; Abstract. That is, Pettey discloses each processing
complex uses the same network interface controller. See id. ,r,r 67-74; Figs.
2--4. And paragraph 94 of Pettey discloses functionality of the single shared
network interface controller's association logic in connection with Figure 6.
Although the Examiner cites Pettey's paragraph 94 on page 12 of the
Answer, the associated discussion focuses solely on the functionality of
Pettey's Figure I-not Figure 6. Nevertheless, we deem any error
associated with this inconsistency harmless, for we see no error in the
Examiner's principal reliance on Petty's admitted prior art in Figure 1 in the
Answer.
Despite Appellants' arguments to the contrary (Br. 6-7), Appellants
do not persuasively rebut the Examiner's findings in this regard, at least to
the extent that Pettey' s Figure 1 itself suggests control apparatuses for
controlling a communication apparatus. Notably, Pettey's conventional
unshared network interface controllers 114, 116, and 118 allow processing
complexes 102, 104, and 106, respectively, to access network 126 via switch
122. Pettey ,r 66. Pettey, then, at least suggests the network interface
controllers in Figure 1 each send data to the switch. Thus, the network
interface controllers are each capable of exercising directing influence, or
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Appeal2018-003606
Application 14/381,834
control, over the switch when sending the data to the switch. See MERRIAM-
WEBSTER'S COLLEGIATE DICTIONARY 252 (vt. def 2a) (10th ed. 1993)
( defining the term "control" to mean "to exercise ... directing influence
over.").
But even assuming, without deciding, that the Examiner intended to
rely on Pettey's paragraph 94 in addition to Pettey's Figure 1 in the Answer,
we find unavailing Appellants' argument that Pettey's invention in Figure 6
teaches away from Pettey's admitted prior art in Figures 1 and 5. See Br. 6.
A reference teaches away when an ordinarily skilled artisan, upon reading
the reference, would be discouraged from following the path set out in the
reference, or led in a direction divergent from the path taken by Appellants.
In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006). Appellants direct attention
to paragraph 66 of Pettey, which explains that each processing complex 102,
104, and 106 requires its own network interface controller 114, 116, and 118
to access a network. Br. 6. Even if a skilled artisan would have inferred that
using such non-shared network interface controllers 114, 116, and 118
would somehow be disadvantageous or inferior to Pettey' s shared network
interface controller, that alone is not dispositive, for it is well settled that a
reference that describes something as inferior, without more, does not teach
away. See In re Gurley, 27 F.3d 551,553 (Fed. Cir. 1994) (noting that "[a]
known or obvious composition does not become patentable simply because
it has been described as somewhat inferior to some other product for the
same use").
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2-20 not argued separately with particularity.
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Application 14/381,834
CONCLUSION
The Examiner did not err in rejecting claims 1-20 under§ 103(a).
DECISION
The Examiner's decision to reject claims 1-20 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). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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