Ex Parte Siripunkaw et al

Patent Trial and Appeal Board

Jun 18, 2018

13429962 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/429,962 03/26/2012
71867 7590 06/20/2018
BANNER & WITCOFF, LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
FIRST NAMED INVENTOR
Pak Siripunkaw
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.
007412.01680 7032
EXAMINER
MAGLO, EMMANUEL K
ART UNIT PAPER NUMBER
2414
NOTIFICATION DATE DELIVERY MODE
06/20/2018 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):
PTO-71867@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAK SIRIPUNKA W, JOHN JASON BRZOZOWSKI,
SRINIV AS A VIRNENI, and EMERY J. WEBER
Appeal 2017-011385
Application 13/429,962
Technology Center 2400
Before JUSTIN BUSCH, JAMES W. DEJMEK, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1-20, 23, 24, and 27-30, which
constitute all the claims pending in this application. We have jurisdiction
over the pending claims under 35 U.S.C. § 6(b ).
We reverse.
CLAIMED SUBJECT MATTER
Appellants' invention generally relates to "a method of initializing,
provisioning, and managing a cable modem and a customer premise
equipment device." Spec. ,r 3. More specifically, the claimed invention
includes the cable modem receiving a network address type in a modem
Appeal 2017-011385
Application 13/429,962
configuration file and sending the network address type to the customer
premise equipment to be used when the customer premise equipment
requests its own network address. Claim 1 is exemplary and reads as
follows:
1. A method comprising:
receiving, from a network server, and processing, by a first
device, a modem configuration file specifying a network address
type corresponding to a first protocol of a plurality of protocols;
and
sending, from the first device to a second device, a
message instructing the second device to use the network address
type corresponding to the first protocol when requesting, from
the network server, a network address for the second device.
REJECTION
Claims 1-20, 23, 24, and 27-30 stand rejected under 35 U.S.C.
§ I03(a) as obvious in view of Danforth (US 2005/0005154 Al; Jan. 6,
2005) and Borella (US 6,768,743 Bl; July 27, 2004). Final Act. 4--10.
ANALYSIS
Appellants contend the cited portions of Danforth and Borella do not
teach or suggest the sending step of claim 1. App. Br. 6-8. In particular,
Appellants argue Danforth only discloses the cable modem (CM) acquiring a
configuration file and does not disclose the CM sending any information, let
alone the recited message or any similar message, from the CM to the
customer premises equipment (CPE). App. Br. 6-7 (citing Final Act. 4--5
(citing Danforth ,r 47)). Appellants also assert Danforth's paragraphs 51, 53,
and 61 also refer only to configuration information the CM receives, not
information the CM sends to the CPE. Id. at 6. Appellants argue Borella,
alone or in combination with Danforth, also fails to teach or suggest the
2
Appeal 2017-011385
Application 13/429,962
sending limitation. Id. at 7-8. Specifically, Appellants contend Borella's
cited disclosures relate to a single network device acquiring multiple
network addresses to communicate with other network devices on two
different networks. Appellants argue Borella makes no mention of a
network address type and Borella's cited portions do not disclose the
network device sending the recited message because Borella's network
device merely sends a request for a secondary network address (to be used
by that same network device). Id. at 7. Given the cited teachings of
Danforth and Borella, Appellants assert the Examiner has not demonstrated
how the combination of Danforth and Borella teaches or suggests the
sending step. Id. at 7-8.
As argued by Appellants, both Danforth's Table 3 and Danforth's
second Table 3 1, disclose information received by Danforth's CM.
Danforth's modem configuration process includes a CM sending a DHCP
request to a DHCP server, sending a DHCP response from the DHCP server
to the CM, sending a request for a configuration file from the CM to a TFTP
(trivial file transfer protocol) server, sending the configuration file from the
TFTP server to the CM, and the CM performing setup operations using the
information in the received configuration file. Danforth ,r,r 33--48. More
specifically, Danforth's Table 3 describes the "parameters transmitted from
the DHCP server to a cable modem," which include the "IP address for the
cable modem's cable interface," the "IP address for the TFTP server," and
1 Danforth labels two consecutive but distinct tables as "Table 3." Compare
Danforth 3--4 (between ,r 37 and ,r 38) with Danforth 4---6 (between ,r 47 and
,r 48). For clarity in distinguishing the tables, in this Decision we refer to the
Table 3 appearing after paragraph 47 as "second Table 3."
3
Appeal 2017-011385
Application 13/429,962
the "[c]omplete filename for the DOCSIS configuration file." Id. ,r 37,
Table 3. After establishing IP connectivity and time of day, the CM requests
the configuration file, which contains operational parameters, using the
filename and TFTP server address acquired in the DHCP response. Id.
,r,r 38--42. Once the CM receives and verifies the configuration file, the CM
"initialize[ s] the operational functions and options present in the
configuration file." Id. ,r 46; see id. ,r,r 43--45, 47, second Table 3. The
information identified in both Table 3 and second Table 3 relate to
information for configuring the CM. Contrary to the Examiner's finding
(see Final Act. 6 (citing Danforth ,r 47, Fig. 7); Ans. 5), Danforth does not
disclose that the CM sends the information it receives in either the DHCP
response or the configuration file to a CPE. Nor would there be a reason for
Danforth's CM to send that information to a CPE because the information is
used by the CM to configure itself.
We also agree with Appellants that Borella' s cited disclosures relate
only to acquiring multiple network addresses for a single device in order to
communicate with other network devices on multiple networks, but fail to
teach or suggest sending the recited message. See Borella 5:27-59, Figs. 4,
5. More specifically, Borella discloses a network device requesting both a
primary network address and an address of a secondary network address
server from a primary network address server. Id. at 5:20-26, 5:34--53.
Borella's network device uses the primary network address to communicate
with other network devices on the primary network. Id. at 5:26-28, 5:50-
5 5. The network device then may request a secondary network address from
a secondary network address server by sending a request to the address of
the secondary network address server provided in the same message sent to
4
Appeal 2017-011385
Application 13/429,962
the network device that provided the primary network address. Id. at 5:55-
58. After receiving the secondary network address from the secondary
network address server, the network device may communicate with other
network devices on both the primary network using its primary network
address and the secondary network using its secondary network address. Id.
at 5:58---64.
We see nothing in Borella's cited portions that would suggest a first
device receives a network address type (or even a network address) from a
server and sends a message to a second device directing the second device to
request an address for the second device from the same server. Rather,
Borella teaches a first network device obtaining from a first server a first
network address (for communicating with other devices on a first network)
and a second network address (of a second server) from which to request a
third network address (for communicating with other devices on a second
network). Borella then uses the second network address to request the third
network address from the second server.
As identified by the Examiner, neither Danforth nor Borella,
therefore, teaches or suggests a first device sending a message to a second
device that instructs the second device to use a network address type
received in the configuration information when requesting a network address
for the second device from a network server, as recited in claim 1.
Moreover, as Appellants argue, see App. Br. 7-8, the Examiner has not
explained how Danforth's and Borella's cited disparate disclosures would be
combined in a way that would have taught or suggest the recited sending
step.
5
Appeal 2017-011385
Application 13/429,962
Accordingly, constrained by this record, we do not sustain the
Examiner's rejection of independent claim 1 under 35 U.S.C. § 103(a) as
obvious in view of Danforth and Borella for the reasons discussed above.
Nor do we sustain the Examiner's rejection of independent claims 8 and 15,
which recite similar limitations and which Appellants argue are patentable
for the same reasons. App. Br. 6-8. Claims 2-7, 9-14, 16-20, 23, 24, and
27-30, which ultimately depend from one of claims 1, 8, and 15, and
incorporate the limitations therein, stand with their independent claims.
Because our determination is dispositive of this appeal, we do not address
Appellants' other arguments.
DECISION
We reverse the Examiner's decision rejecting claims 1-20, 23, 24, and
27-30.
REVERSED
6