Ex Parte Susilo et alDownload PDFPatent Trial and Appeal BoardJan 6, 201611806116 (P.T.A.B. Jan. 6, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111806,116 0513012007 76614 7590 Terry W, Kramer, Esq, Kramer & Amado, P.C. 330 John Carlyle Street 3rd Floor Alexandria, VA 22314 01/08/2016 FIRST NAMED INVENTOR Gatot Susilo 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. ALC 3303 5915 EXAMINER KOROBOV, VITALI A ART UNIT PAPER NUMBER 2455 NOTIFICATION DATE DELIVERY MODE 01/08/2016 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): mail@krameramado.com ipsnarocp@alcatel-lucent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GA TOT SUSILO and GARY JOHN PUPP A Appeal2013-010462 Application 11/806, 116 1 Technology Center 2400 Before LARRY J. HUME, JEFFREY A. STEPHENS, and JAMES W. DEJMEK, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Alcatel Lucent. App. Br. 1. Appeal2013-010462 Application 11/806, 116 STATEMENT OF THE CASE2 The Invention Appellants' claimed invention "relates generally to communications and, in particular, to discovering data transfer capabilities along communication paths." Spec. 1, 11. 4---6 ("Field of the Invention"). Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphasis added): 1. An apparatus comprising: an interface configured to enable the apparatus to exchange tracing messages for tracing communication paths in a communication system, wherein the exchanged tracing messages are associated with a plurality of independently controlled domains of the communication system; and a tracing message processing module operatively coupled to the interface and configured to process a tracing message, received through the interface, by generating and sending through the interface a further tracing message in response to the received tracing message, wherein the further tracing message includes a minimum Maximum Transfer Unit (MTU) determined by discovering a plurality of MTUs, using an IEEE 802.1 ag framework, in a communication path being traced by the received tracing message. 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed Apr. 5, 2013); Reply Brief ("Reply Br.," filed Aug. 20, 2013); Examiner's Answer ("Ans.," mailed July 29, 2013); Final Office Action ("Final Act.," mailed Mar. 11, 2013); and the original Specification ("Spec.," filed May 30, 2007). 2 Appeal2013-010462 Application 11/806, 116 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Sadot et al. ("Sadot") Mohan et al.("Mohan") US 2004/0001444 Al Jan. 1, 2004 US 2005/0099952 Al May 12, 2005 McDade et al. ("McDade") US 2008/0140825 Al June 12, 2008 Rejections on Appeal Claims 1-30 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Mohan, Sadot, and McDade. Final Act. 2. CLAIM GROUPING Based on Appellants' arguments (App. Br. 5-9), we decide the appeal of the obviousness rejection of claims 1-30 on the basis of representative claim 1. Claims 2-30, which are not argued separately (App. Br. 9), fall with representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). ISSUE Appellants argue (App. Br. 5-8; Reply Br. 1--4) the Examiner's rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination of Mohan, Sadot, and McDade is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests an apparatus that includes a tracing message processing module configured to, inter alia, "process a tracing message ... by generating and sending ... a further tracing message in response to the received tracing message, wherein the further tracing message includes a minimum 3 Appeal2013-010462 Application 11/806, 116 Maximum Transfer Unit (MTU) determined by discovering a plurality of MTU s, using an IEEE 802 .1 ag framework," as recited in claim 1? ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments Appellants could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv). We disagree with Appellants' arguments with respect to claims 1-30, and we incorporate herein and adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. Appellants generally argue the cited prior art combination does not teach or suggest the contested limitation of claim 1. App. Br. 5. In particular, Appellants argue the Examiner, in citing Sadot paragraph 23, "fails to specifically identify ... a [further tracing] message in Sadot." App. Br. 6. As to the Examiner's stated motivation to combine Mohan, Sadot, and McDade (Final Act. 3--4; Ans. 6-7), Appellants specifically contend, "there is no need to prevent packet fragmentation in Mohan because Mohan does not have packets. Instead, Mohan's Ethernet network uses frames. Thus, there would be no motivation to use Sadot's teachings in the context of an Ethernet network." App. Br. 6. In addition, in response to the Examiner's 4 Appeal2013-010462 Application 11/806, 116 finding (Final Act. 7) that "Mohan also teaches packets precisely because he teaches Ethernet frames," Appellants allege, "the Examiner's conclusory statement is based upon an unreasonable interpretation of the term 'Ethernet frame.' One of ordinary skill in the art would not regard Ethernet frames as equivalent to packets." App. Br. 6. We disagree with Appellants' contentions and agree with the Examiner's findings with respect to Mohan's teaching or suggestion of packets. See Mohan i-f 28 ("One or more forwarding engines 24 are provided in the network element to process frames received over the I/O cards 22. The forwarding engines 24 forward frames to a switch fabric interface 26, which passes the packets to a switch fabric 28."); see also Mohan i-f 236 ("Since intermediate receiving network elements may replicate the path trace request [Operation Administration and Maintenance] OAM frames, and thus the [Source Address] SA of packets used to perform the path trace."). We find it would be clearly understood by a person of ordinary skill in the art that a teaching of the use of Ethernet frames does not preclude a teaching of the use of data packets. On the contrary, we agree with the Examiner that Mohan teaches or at least suggests packets are used to perform tracing functions. Appellants' arguments, including the argument in the Reply Brief that frames are in the Network Access Layer and packets are in the Internet Layer and so are not equivalent (Reply Br. 4 ), does not dispute that the use of frames includes the use of packets. We note the Examiner clarifies in the Answer that Mohan is relied upon for teaching "a further tracing message" (see Ans. 4--5, 8 (citing Mohan Figs. 1, 10 and i-fi-1 6, 21, 24 ); see also Final Act. 3 (citing Mohan Fig. 10 and i-f 235)), and that Sadot is not relied upon for the "further tracing 5 Appeal2013-010462 Application 11/806, 116 message" portion of the contested limitation (see Ans. 13). The Answer (5) clarifies that the Examiner relies upon Mohan Figure 10 (element 78) and paragraph 21 for teaching or suggesting "a further tracing message." In the Reply Brief (2-3), Appellants contend the Examiner's reliance on Mohan is erroneous because the "further messages" in Mohan are not generated and sent in response to a received tracing message, but instead are merely request and response messages in Figure 10, and "there is no disclosure that such messages are equivalent to the claimed receiving tracing message. Moreover, the Examiner fails to show that the 'particular type of tracing messages' in Sadot is applicable to Mohan." Reply Br. 3. We disagree with Appellants' contentions, and adopt the Examiner's findings herein as our own. 3 We further disagree with Appellants because the Examiner rejects the claims as obvious over the combined teachings of Mohan, Sadot, and ivicDade, and the test for obviousness is not what the references show individually but what the combined teachings would have suggested to one of ordinary skill in the art. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants have not demonstrated that the Examiner's proffered combination of references would have been "uniquely challenging or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Nor have Appellants 3 The Examiner states "Sadot was not cited as teaching 'further tracing messages', which, as was shown above in response to Argument A[,] are taught by Mohan." Ans. 13. 6 Appeal2013-010462 Application 11/806, 116 provided objective evidence of secondary considerations, which our reviewing court guides "operates as a beneficial check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). In addition, Appellants' assertions amount to unsupported attorney argument, and therefore we give them little weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Huang, 100 F.3d 135, 139- 140 (Fed. Cir. 1996). Therefore, on this record, we do not find error in the Examiner's reliance on the combined teachings and suggestions of Mohan, Sadot, and McDade. While Appellants present additional arguments for patentability of claim 1 (see App. Br. 5 et seq.), we find that the Examiner has rebutted each of those arguments in the Answer by a preponderance of the evidence. Ans. 4 et seq. We adopt the Examiner's findings and legal conclusions, and incorporate them herein as our own. Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitations of claim 1, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 1, and grouped claims 2-30 which fall therewith. See Claim Grouping, supra. REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 1--4) not in response to a shift in the Examiner's position in 7 Appeal2013-010462 Application 11/806, 116 the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause (see 37 C.F.R. § 41.41(b)(2)), which Appellants have not shown. CONCLUSION The Examiner did not err with respect to the obviousness rejection of claims 1-30 under 35 U.S.C. § 103(a) over the cited prior art combination of record, and we sustain the rejection. DECISION We affirm the Examiner's decision rejecting claims 1-30. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED ap 8 Copy with citationCopy as parenthetical citation