Ex Parte Jha

Board of Patent Appeals and Interferences

May 15, 2007

09881367 (B.P.A.I. May. 15, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PANKAI K. JHA
____________

Appeal 2007-0708
Application 09/881,367
Technology Center 2100
____________

Decided: May 15, 2007
____________

Before LEE E. BARRETT, JEAN R. HOMERE, and JAY P. LUCAS
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 1 through 20. We have jurisdiction under 35 U.S.C.
§ 6(b) to decide this appeal.
Appellant invented a method and system for bridging an incoming
packet from a first network (104) to a second network (106). Particularly, a
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designated parameter of the incoming packet in the first network (104) is
processed to produce another parameter for an outgoing packet for use in the
second network (106). (Specification 6.)
Claim 1 is illustrative of the claimed invention, and it reads as
follows:
1. A method of bridging an incoming packet from a first network to a
second network, the method comprising the steps of:

(A) reading a pointer for a first parameter within said incoming
packet;

(B) processing said first parameter in accordance with said pointer
to produce a second parameter; and

(C) presenting an outgoing packet containing said second
parameter for said second network.

In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Ogawa US 5,936,966 B1 Aug. 10, 1999
Wilford US 6,687,247 B1 Feb. 3, 2004

The Examiner rejected the claims on appeal as follows:
A. Claims 1 through 8 and 10 through 17 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Ogawa.
B. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ogawa.
C. Claims 18 through 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Ogawa and Wilford.

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First, Appellant contends1 that Ogawa does not anticipate claims 1
through 8 and 10 through 17. Particularly, Appellant contends that Ogawa
does not teach any of the limitations of the cited claims. (Br. 6-29; Reply
Br. 5-8.) The Examiner, in contrast, contends that Ogawa teaches the
limitations of the cited claims. (Answer 5-8.) The Examiner therefore
concludes that Ogawa anticipates claims 1 through 8 and 10 through 17.
(id.)
Second, Appellant contends that Ogawa does not render claim 9
unpatentable. (Br. 31.) Particularly, Appellant contends that the Examiner
failed to establish a clear and particular showing of a teaching or motivation
to modify Ogawa to make processing of the first parameter non-
programmable. (Br. 31.) In response, the Examiner contends that it would
have been obvious to combine Ogawa’s teaching with knowledge of the
prior art to yield the invention, as recited claim 9. (Answer 9.) The
Examiner therefore concludes Ogawa renders claim 9 unpatentable. (Id.)
Third, Appellant contends that the combination of Ogawa and Wilford
does not render claims 18 through 20 unpatentable. (Br. 32-35.)
Particularly, Appellant contends that the Examiner failed to establish that the
combination of Ogawa and Wilford teaches a means for processing a first
parameter. (Id.) Further, Appellant contends that there is no motivation to
combine the teachings of the cited references. (Id.) In response, the
Examiner contends that the Ogawa-Wilford combination teaches the means

1 This decision considers only those arguments that Appellant submitted in
the Appeal and Reply Briefs. Arguments that Appellant could have made
but chose not to make in the Briefs are deemed to have been waived. See 37
C.F.R. § 41.37(c)(1) (vii)(eff. Sept. 13, 2004). See also In re Watts, 354
F.3d 1362, 1368, 69 USPQ2d 1453, 1458 (Fed. Cir. 2004).
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for processing the parameters of the incoming frame. (Answer 9-12.)
Therefore, it would have been obvious to combine the teachings of Ogawa
and Wilford to yield the invention, as recited in claims 18 through 20. (Id.)
We affirm.

ISSUES
The pivotal issues in the appeal before us are as follows:
(1) Has Appellant shown that the Examiner failed to establish that Ogawa
anticipates the claimed invention under 35 U.S.C. § 102(e), when
Ogawa teaches a receiving circuit that processes an incoming network
frame to produce an outgoing network frame to be used by an external
circuit?
(2) Has Appellant shown that the Examiner failed to establish that one of
ordinary skill in the art, at the time of the present invention, would have
found that the disclosure of Ogawa in combination with knowledge of
the prior art or the disclosure of Wilford renders the claimed invention
unpatentable under 35 U.S.C. § 103(a)?

FINDINGS OF FACT
The following findings of fact are supported by a preponderance of the
evidence.
The invention
1. Appellant invented a method and system for bridging an incoming
packet from a first network (104) to a second network (106). (Specification
5.)
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2. As depicted in Figure 2, the disclosed system2 (100) includes an
assembly (102), a first network (104), a second network (106), and one or
more external circuits (108). (Id.)

3. Upon receiving an incoming packet, the first network (104) dispatches
a receive signal3 (RX1) via its interface (110) to a network interface (122),
which in turn forwards the signal to a processing circuit (128) to process the
parameters extracted4 from the packet within the receive signal. (Id 7.)

4. After processing the extracted parameters of the packet, the
processing circuit (128) frames outgoing parameters to generate a transmit
signal TX2 (112) containing an outgoing packet, which it presents to the
second network (104) via a network interface (124). (Id 9.)

The Prior Art Relied upon
5. Ogawa teaches a receiving device (e.g., bridge, router, gateway,
multi-layer switch) that receives an incoming network frame along with its
synchronizing signals, and simultaneously processes the parameters of the
network frame to determine which protocol from a hierarchy of protocols is

2 Appellant’s Specification indicates that the preferred embodiment of the
invention can be implemented as a router, a gateway, a network bridge, a
network switch, a concentrator or a multiplexer or any other assembly that
interfaces among two or more networks. (Specification 5.)
3 The signal RX1/TX1 may be implemented as one or more frames received/
transmitted from the first network. (Id 7.)
4 A user generally presents a signal download to direct processing of the
extracted parameters, which may include pointers, offset values and length
values. (Id 8.)
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the most suitable for carrying out the process indicated in the frame. (Title,
Abstract, col. 1, ll. 13-22, col. 2, ll. 15-19.)
6. The receiving device examines header information5 in the incoming
frame to determine the process to be carried out, such as forwarding the
frame to a designated destination address. (Col. 2, ll. 37-40 and ll. 57-64.)
7. As depicted in figures 1 and 2, the input frame data along with its
synchronization data are fed into the input data control circuit (22) having a
pipeline register (22A) and an encapsulation circuit (22B). (Col. 7, ll. 10-
15.)
8. The input frame data passes through pipeline register (22A) and the
encapsulation circuit (22B), which generates encapsulated data based on
protocol identification code obtained from the protocol recognition circuit
(26). (Col. 7, ll. 17-26.)
9. The input data is partially rewritten in the input control circuit (22) to
produce an output frame data signal DO6 for use by an external circuit (40)
(Col. 7, ll. 15-26.)

5 Protocol information (parameters) in a header of the received frame is
stored in a register having corresponding parameters. (Col. 8, ll. 16-21).
Header in a received frame data includes parameters indicating the type of
protocol, and the timing at which the parameter appears in the header. (Col.
11, ll. 58-62.) IP and TCP parameters include an offset/flag, an object
pointer (col. 13, 53-54), header length (col. 10, l. 27) that extracted from the
incoming frame.
6 As depicted in figures 12 through 19, DO and SB reference characters
designate an output frame data signal and a synchronizing signal which are
continuously output when the protocol recognition circuit recognizes a
protocol of the network layer. (Col. 12, ll.58-66.) The receiving circuit
submits the parameters of the incoming frame to a counter process and a
comparison process to produce parameters for an outgoing frame. (Col. 3, l.
48- col. 4, l. 11.)
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10. The synchronizing signal is used to output a destination address for
the received data to the external circuit (40), which may be a computer.
(Col. 7, ll. 31-37.)
11. If the data receiving device is a bridge, the destination address of the
received frame data is output to an external circuit (40), which may be on the
other side of a firewall. (Col. 7, ll. 60-65, col. 8, ll. 14-22.)

PRINCIPLES OF LAW
1. ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-76, 77 USPQ2d 1321, 1325-26 (Fed. Cir. 2005),
citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc.,
976 F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir. 1992). Anticipation
of a patent claim requires a finding that the claim at issue “reads on” a prior
art reference. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346, 51
USPQ2d 1943, 1945 (Fed Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
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of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).

2A. OBVIOUSNESS (Prima Facie)
The Supreme Court in Graham v. John Deere, 383 U.S. 1, 17-18, 148
USPQ 459, 467 (1966), stated that three factual inquiries underpin any
determination of obviousness:
Under § 103, (1) the scope and content of the prior art are to be
determined; (2) differences between the prior art and the claims
at issue are to be ascertained; and (3) the level of ordinary skill
in the pertinent art resolved. Against this background, the
obviousness or nonobviousness of the subject matter is
determined. Such secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented. As indicia
of obviousness or nonobviousness, these inquiries may have
relevancy.
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See
also In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984). The Examiner can satisfy this burden by showing some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. KSR Int’l. v. Teleflex Inc., No. 04-1350, 2007 WL 1237837 at
13, 82 USPQ2d 1385, 1396 (Apr. 30, 2007) (citing In re Kahn, 441 F.3d
977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)). Only if this initial
burden is met does the burden of coming forward with evidence or argument
shift to the Appellant. Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See
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also Piasecki, 745 F.2d at 1472, 223 USPQ at 788. Thus, the Examiner
must not only assure that the requisite findings are made, based on evidence
of record, but must also explain the reasoning by which the findings are
deemed to support the Examiner’s conclusion.

2B. OBVIOUSNESS (Motivation)
On appeal, Appellant bears the burden of showing that the Examiner
has not established a legally sufficient basis for combining the teachings of
the references that the Examiner relied upon. Appellant may sustain this
burden by showing that the Examiner failed to provide sufficient evidence to
support that one having ordinary skill in the art would have combined
disclosures of the references, as proposed by the Examiner, to yield
Appellant’s invention. In re Kahn, 441 F.3d at 987-88, 78 USPQ2d at 1336-
37; DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, Co.,
464 F.3d 1356, 1360-1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006). The
mere fact that all the claimed elements or steps appear in the prior art is not
per se sufficient to establish that it would have been obvious to combine
those elements. United States v. Adams, 383 U.S. 39, 50-52, 148 USPQ 479
(1966); Smith Industries Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d
1347, 1356, 51 USPQ2d 1415, 1420 (Fed. Cir. 1999). However, “[a]s long
as some motivation or suggestion to combine the references is provided by
the prior art taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventor.” In re Beattie, 974
F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992). Motivation to
combine references under 35 U.S.C. § 103 must come from a teaching or
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suggestion within the prior art, within the nature of the problem to be solved,
or within the general knowledge of a person of ordinary skill in the field of
the invention, to look to particular sources, to select particular elements, and
to combine them as combined by the inventor. Ruiz v. A.B. Chance Co., 234
F.3d 654, 665, 57 USPQ2d 1161, 1167 (Fed. Cir. 2000) .
“[A]n implicit motivation to combine exists not only when a suggestion
may be gleaned from the prior art as a whole, but when the ‘improvement’ is
technology-independent and the combination of references results in a
product or process that is more desirable, for example because it is stronger,
cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient . . . .
In such situations, the proper question is whether the ordinary artisan
possesses knowledge and skills rendering him capable of combining the
prior art references.” DyStar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir.
2006).

ANALYSIS
35 U.S.C. § 102(e) REJECTION
As set forth above, claim 1 requires (1) reading a pointer for a first
parameter within an incoming packet, (2) processing the first parameter in
accordance with the pointer to produce a second parameter, and (3)
presenting an outgoing packet containing the second parameter for the
second network. As detailed in the findings of fact section above, we have
found that Ogawa teaches a receiving circuit (e.g., a bridge) for processing
parameters including an offset/flag or an object pointer pertaining to an
incoming frame. (Findings of fact 5 and 6.) We have also found that Ogawa
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teaches processing the parameters of the incoming frame to determine which
course of action to take, as well as to produce an outgoing frame for use by
an external circuit. (Findings of fact 6 and 9.) Additionally, we have found
that Ogawa teaches that the external circuit can be separated from the
receiving circuit by a firewall. (Finding of fact 11.) In light of these
findings, it is our view that Ogawa’s teachings amount to reading and
processing parameters of an incoming frame in a first network to produce an
outgoing frame for use in a second network. It follows that the Examiner
did not err in rejecting independent claim 1 as being anticipated by Ogawa.
As per claims 2 and 3, we have found that Ogawa teaches reading an
incoming parameter to extract the length and offset of the parameter prior to
processing the parameter. (Finding of fact 6, footnote 5.) It follows that the
Examiner did not err in rejecting claims 2 and 3 as being anticipated by
Ogawa.
As to claims 4 through 6, we have found that Ogawa teaches routing
the extracted parameters of an incoming frame to an encapsulation circuit
block and a data pipeline register block to process said parameters, as well
as to produce parameters for an outgoing frame to be used by an external
circuit, which may be separated from the receiving circuit by a firewall.
(Findings of fact 7 through 11.) It follows that the Examiner did not err in
rejecting claims 4 through 6 as being anticipated by Ogawa.
As to claim 7, we have found that Ogawa teaches at least two
processes including a counter process and a comparison process during
which the parameters of incoming frame are manipulated to produce
parameters for an outgoing frame for use in the external circuit. (Finding of
fact 9.)
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As to claims 8 and 10 through 15, we have found that Ogawa teaches a
receiving circuit for simultaneously processing the parameters of an
incoming frame in a first network to identify a suitable protocol from among
a plurality of protocols to produce parameters of an outgoing frame for use
in external circuit, which can be separated from the receiving circuit by a
firewall. (Findings of facts 5 through 11.) It follows that the Examiner did
not err in rejecting claims 8 and 10 through 15 as being anticipated by
Ogawa.
We have reviewed claims 16 and 17. We find that they are broader in
scope than claims 1 through 8 and 10 through 15, as discussed above. We
have also found that Ogawa teaches a circuit for executing the steps in the
cited claims. (Findings of fact 5 through 11.) It follows that the Examiner
did not err in rejecting claims 16 and 17 as being anticipated by Ogawa.

35 U.S.C. § 103(a) REJECTION
Now, we turn to the rejection of dependent claim 9 as being
unpatentable over Ogawa. We note that claim 9 depends directly from claim
1. Thus, claim 9 also requires reading and processing parameters of an
incoming frame in a first network to produce an outgoing frame for use in a
second network. For the reasons set forth in the discussion of claim 1 in the
preceding paragraph, we find that Ogawa teaches the cited limitations, as
discussed above. Further, claim 9 requires that the processing of such
incoming parameters be non-programmable. We find that there is no
indication in Ogawa that the processing of the incoming parameters as
performed by receiving circuit to be programmable. Absent such an
indication, it would not be unreasonable to assert that Ogawa’s disclosed
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processing is non- programmable. Nonetheless, we agree with the Examiner
that one of ordinary skill in the art would have readily recognized that
programmable processing devices were well-known in the art to help
increase the degree of freedom in circuit design. Therefore, the ordinarily
skilled artisan would have been motivated to combine the teachings of
Ogawa and knowledge of the prior art yield the invention as recited in claim
9. It follows that the Examiner did not err in rejecting claim 9 as being
unpatentable over Ogawa.
As to claims 18 through 20, we have found that Ogawa teaches a
receiving circuit including a pipeline register and an encapsulation circuit for
processing the parameters of an incoming frame to produce parameters of an
outgoing frame to be used by an external circuit. (Finding of fact 7 through
9). We nonetheless agree with the Examiner that Wilford teaches a plurality
of peripheral devices for processing parameters of incoming packet.
Therefore, the ordinarily skilled artisan would have been motivated to
combine the teachings of Ogawa and Wilford to yield the invention as
recited in claims 18 through 20. It follows that the Examiner did not err in
rejecting claims 18 through 20 as being unpatentable over the combination
of Ogawa and Wilford.

CONCLUSION OF LAW
On the record before us, Appellant has not shown that the Examiner
failed to establish that Ogawa anticipates the claimed invention under 35
U.S.C. § 102(e). Further, Appellant has not shown that the Examiner failed
to establish that one of ordinary skill in the art at the time of the present
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invention, would have concluded that Ogawa, alone or in combination with
Wilford, renders the claimed invention unpatentable under 35 U.S.C.
§ 103(a).

DECISION
We affirm the Examiner’s decision to reject claims 1 through 8 and 10
through 17 under 35 U.S.C. § 102(e) as being anticipated by Ogawa. We
also affirm the Examiner’s decision to reject claim 9 under 35 U.S.C.
§ 103(a) as being unpatentable over Ogawa. Additionally, we affirm the
Examiner’s decision to reject claims 18 through 20 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Ogawa and Wilford.

AFFIRMED

KIS

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