AVAGO TECHNOLOGIES INTERNATIONAL SALES PTE.LIMITED

Patent Trials and Appeals Board

May 26, 2020

2019001317 (P.T.A.B. May. 26, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/741,150 06/16/2015 James Kwon 12172US07CON 7270
157376 7590 05/26/2020
Xsensus/Broadcom
200 Daingerfield Road, Suite 201
Alexandria, VA 22314
EXAMINER
CUNNINGHAM, KEVIN M
ART UNIT PAPER NUMBER
2461
NOTIFICATION DATE DELIVERY MODE
05/26/2020 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):
Faith.Baggett@Xsensus.com
Sandy.Miles@Xsensus.com
anaquadocketing@xsensus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES KWON and JOSEPH AMMIRATO
Appeal 2019-001317
Application 14/741,150
Technology Center 2400
Before ELENI MANTIS MERCADER, SCOTT E. BAIN, and
MICHAEL T. CYGAN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Avago Technologies
International Sales PTE, Limited. See Assignment Feb. 26, 2019.

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CLAIMED SUBJECT MATTER
The claims are directed to a network device with service software
instances deployment information distribution. See Spec. 1.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A network device comprising:
at least one processor core and associated memory;
a memory coupled to said at least one processor core and
storing a table containing the service software instance
deployment to network devices which execute the service
software instances, each software service instance performing a
network service; and
management tool software executing on said at least one
processor core and stored in said associated memory and coupled
to said memory storing the table containing the service software
instance deployment to network devices which execute the
service software instances, said management tool software
causing said at least one processor core to provide information to
network devices that add a services tag to packets provided to the
network and to network devices that route packets to service
software instances based on a services tag in packets received
from the network to store network services tables to allow such
services tag addition and packet routing, the services tag
specifying network services to be performed on the packet.
See Appeal Br., Claims App. 36.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Saito et al. US 2007/0165624 A1 July 19, 2007
Kakadia US 7,382,725 B1 June 3, 2008
Aybay et al. US 8,284,664 B1 Oct. 9, 2012

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REJECTIONS
Claims 1–4 are rejected under 35 U.S.C. § 101 as unpatentable as
directed to a judicial exception (e.g., a law of nature, a natural phenomenon,
or an abstract idea) without the claim amounting to significantly more than
the exception itself. Final Act. 2–3; Ans. 3–6.
Claims 1–4 are rejected under 35 U.S.C. § 1032 as being unpatentable
over Saito et al. (US Publication No. 2007/0165624), hereinafter referred to
as Saito, in view of Aybay et al. (US Patent No. 8,284,664), hereinafter
referred to as Aybay, and in view of Kakadia (US Patent No. 7,382,725),
hereinafter referred to as Kakadia. Final Act. 3–5; Ans. 6–14.

DISCUSSION
Patent-Ineligible Subject Matter
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).

2 We note the application is designated as an AIA application because of an
error in the priority claim at time of filing. See OFR June 26, 2015. While
priority claim was later corrected, see Corr. Filing Receipt Sept. 10, 2018,
the status was not changed to pre-AIA. Regardless of the application’s
status, our review remains the same because the prior art relied upon, and the
rationale supporting the rejection is the same, thereby not altering the merits
of our decision.
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In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.” Diehr,
450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
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attempt to patent a mathematical formula.”). Having said that, the Court also
indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
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internal agency management, expected to follow the guidance.” Id. at 51; see
also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, do we then look, under Step 2B, to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2),
84 Fed. Reg. 54–55.
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2019 Revised Guidance, 84 Fed. Reg. at 52–56.
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. See Revised Guidance. The Examiner finds, and we
agree, that claim 1 is an apparatus claim and claim 3 is a method claim.
Final Act. 2.
Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or
mental processes). See Revised Guidance.
The Examiner finds that the limitation of “storing a table containing
the service software instance deployment to network devices which execute
the service software instances, each software service instance performing a
network service” recites abstract ideas. Ans. 3. The Examiner concludes
that storing data in a table, in this case the deployed service software of the
network devices, is an idea of itself of relating to organizing information in a
way that can be performed mentally, meaning a person can remember data
and organize it in a table mentally. Id.
Our reviewing court has concluded that classifying and storing data
in an organized manner is a well-established “‘basic concept’” sufficient to
fall under Alice step 1. In re TLI Commc’ns LLC, 823 F.3d 607, 613
(Fed. Cir. 2016).
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We, therefore, conclude claim 1 recites a concept performed within
the human mind, which falls within the mental processes category of
abstract ideas identified in the Revised Guidance.
Revised Guidance Step 2A, Prong 2
Under Step 2A, Prong 2 of the Revised Guidance, we next determine
whether the claims recite additional elements that integrate the judicial
exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
The “additional elements” recited in claim 1 include the claimed “processor
core,” “memory,” “management tool software,” and the limitation of

said management tool software causing said at least one
processor core to provide information to network devices that
add a services tag to packets provided to the network and to
network devices that route packets to service software instances
based on a services tag in packets received from the network to
store network services tables to allow such services tag addition
and packet routing, the services tag specifying network services
to be performed on the packet.

Claim 1. To integrate the exception into a practical application, the
additional claim elements must, for example, improve the functioning of a
computer or any other technology or technical field (see MPEP
§ 2106.05(a)), apply the judicial exception with a particular machine (see
MPEP § 2106.05(b)), affect a transformation or reduction of a particular
article to a different state or thing (see MPEP § 2106.05(c)), or apply or use
the judicial exception in some other meaningful way beyond generally
linking the use of the judicial exception to a particular technological
environment (see MPEP § 2106.05(e)). See Revised Guidance.
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We agree with the Examiner’s conclusion that the processor core and
memory are generic components cited at a high level of functionality. See
Ans. 3–4. However we do not agree with the Examiner’s finding that
the functions of the other network devices in the claims: adding
service tags to packets and routing packets to service software
based on the service tag are not features of the claimed
apparatus, do not limit the structure of the claimed apparatus
and therefore carry no patentable weight. The processor core
transmits information to other network devices so that they can
perform their functions is just intended use, and still does not
specify what information is provided to these network devices.

Ans. 4. We agree with Appellant’s argument that under step 2A,
prong 2, the claim recites “an abstract idea combined with additional
elements,” as “the network device of the claims is part of a much larger
network system, with the operation of the claimed network device clearly a
necessary portion of improving the functioning of the overall network
system.” Reply 6. Here, the claim provides additional elements in the form
of the destination of the information sent by the management tool software.
See In re DiStefano, 808 F.3d 845, 850-851 (Fed. Cir 2015) (finding that
informational content is mere printed matter afforded no patentable weight,
but that the claimed origin of that information, itself bearing no
informational content, is given patentable weight). The claimed destinations
of the other network devices limit the type of information that is claimed to
be sent. By informing network devices of their capabilities and of those in
the network (Reply Br. 4), the management software, and the additional
limitations of the destination of the information being transmitted, provides
an improvement to network service and routing technology so as to improve
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the functioning of the network. We agree with Appellant that in this case the
additional elements improve the network system. Reply 8.
We also agree with Appellant’s argument that the information from
the management software, as claimed, is
needed information to allow the proper functioning of the
network, in this instance to properly add services tags and to
properly route packets to software service instances. Both of
these elements are an ‘improvement in computer-related
technology’ as they provide for the proper operation of the new
network functionality, the distributed software service instance
deployment.

Appeal Br. 14. The specification also provides additional examples of
improvements to the functioning of a network system, such as dynamic
creation of network service virtual machines (i.e., VM), purchase of VM
services from an online store, simplification of internal routing, and
deployment to branch offices. See, Spec. ¶¶ 37, 43, 58, and 59.
We conclude that claim 1 and claim 3, which recites a similar
limitation, include additional elements that integrate the abstract limitations
into a practical application. Accordingly, claims 1 and 3 as well as their
respective dependent claims describe patent eligible subject matter.
Obviousness Rejection
Appellant argues, inter alia, that the combination of Saito, Aybay, and
Kakadia does not disclose, as recited in claim 1:
said management tool software causing said at least one
processor core to provide information to network devices that
add a services tag to packets provided to the network and to
network devices that route packets to service software instances
based on a services tag in packets received from the network to
store network services tables to allow such services tag addition
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and packet routing, the services tag specifying network services
to be performed on the packet.

See Appeal Br. 24–25; Reply 25.
Appellant argues the Examiner improperly determined the claim
limitation as failing to carry patentable weight and merely reciting intended
use. Reply 12.
The Examiner determined that the “[i]nformation is a broad term and
could be any information such as a command from the management device.”
Ans. 7. The Examiner in particular finds that “[t]he claimed network device
provides information to these other network devices to store network service
tables, without specifying what the information is.” Id. at 9.
We agree with Appellant’s argument that the information has “a very
distinct meaning as specified in the claim itself, namely information to allow
the ingress network device to add the services tag and information to allow
the routing network device to route the packet to a service software instance
based on the services tag.” Reply 14 (emphasis added). Appellant argues,
and we agree, that the functions of the other network devices do limit the
structure of the claim by providing the meaning for the information that is
being provided. Id. at 4, 14.
“[W]hen evaluating claims for obviousness under 35 U.S.C. § 103, all
the limitations of the claims must be considered and given weight.” In re
Gardner, 449 F. App’x 914, 916 (Fed. Cir. 2011) (non-precedential) (citing
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983)); see In re
Glatt Air Techs., Inc., 630 F.3d 1026, 1030 (Fed. Cir. 2011) (holding
obviousness was not established where the prior art failed to teach the
claimed shielding).
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By failing to address the claim limitation by affording it no patentable
weight, the Examiner has not shown that Saito, alone or in combination,
teaches or suggests providing information to network devices “to store
network services tables to allow such services tag addition and packet
routing, the services tag specifying network services to be performed on the
packet”, as claimed.
Accordingly, constrained by the record before us, we reverse the
Examiner’s rejection of claim 1, and, for the same reasons, the rejections of
claims 2–4.
CONCLUSION
The Examiner’s rejections of claims 1–4 are reversed.
More specifically, the Examiner’s rejection of claims 1–4 under 35
U.S.C. § 101 is reversed, and the rejection of claims 1–4 under 35 U.S.C.
§ 103 is reversed.

DECISION SUMMARY

Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis  Affirmed Reversed
1–4 101 Eligibility 1–4
1–4 103 Saito, Aybay, Kakadia 1–4
Overall
Outcome

1–4
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED