Ex Parte Allan et al

Patent Trial and Appeal Board

Oct 26, 2016

13547326 (P.T.A.B. Oct. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/547,326 07 /12/2012
27820 7590 10/28/2016
WITHROW & TERRANOVA, PLLC
106 Pinedale Springs Way
Cary, NC 27511
FIRST NAMED INVENTOR
David Allan
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.
7000-698C 5634
EXAMINER
BIAGINI, CHRISTOPHER D
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
10/28/2016 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):
patents@wt-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ALLAN and NIGEL BRAGG
Appeal2014-009196
Application 13/547,326
Technology Center 2400
Before JOHN A. EV ANS, CATHERINE SHIANG, and JOYCE CRAIG,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of Claims 1-21. App. Br. 4. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART. 2
1 The Appeal Brief identifies Rockstar Consortium US LP, as the real party
in interest. App. Br. 1.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed February 12, 2014, "App. Br."), the Reply
Brief (filed August 18, 2014, "Reply Br."), the Examiner's Answer (mailed
June 16, 2014, "Ans."), the Final Action (mailed August 23, 2013, "Final
Act."), and the Specification (filed July 12, 2012, "Spec.") for their
respective details.
Appeal2014-009196
Application 13/547,326
STATEMENT OF THE CASE
The claims relate to a method and apparatus for accommodating
duplicate MAC addresses. See Abstract.
Claims 1, 11, and 21 are independent. The claims have not been
argued separately and therefore stand or fall together. 37 C.F.R.
§ 41.37(c)(l)(iv). An understanding of the invention can be derived from a
reading of exemplary Claim 1, which is reproduced below with some
formatting added:
1. A method of allocating Internet Protocol (IP) addresses
to client devices, the method comprising:
receiving requests for IP addresses for a plurality of
client devices, each client device being associated with a
respective Media Access Control (MAC) address, each client
device also being associated with a respective facility having a
respective default subnet and at least one respective different
subnet; and
allocating respective IP addresses to each of the plurality
of client devices based, at least in part, on the respective MAC
addresses of the plurality of client devices, the allocated
respective IP address for at least one of the plurality of client
devices being associated with the respective default subnet of
the respective facility associated with the at least one of the
plurality of client devices, and the allocated respective IP
address for at least one other of the plurality of client devices
being associated with the at least one respective different subnet
of the respective facility of the at least one of the plurality of
client devices.
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Application 13/547,326
References and Rejections
The Examiner relies upon the prior art as follows:
De Jaegher, et al.
Saunderson, et al.
Meier, et al.
Allan, et al.
US 2005/0198495 Al
US 2006/0248229 Al
US 7,356,009 Bl
US 8,224,946 B2
The claims stand rejected as follows:
Sept. 8, 2005
Nov. 2, 2006
Apr. 8, 2008
Filed Apr. 24, 2009
1. Claims 1-21 stand rejected on the ground ofnonstatutory
obviousness-type double patenting over Claims 1-19 of U.S. Patent
No. 8,224,946. Final Act. 5.
2. Claims 1, 6-11, and 16-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Saunderson and Meier. Final Act. 5-11.
3. Claims 2, 3, 12, and 13 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Saunderson, Meier, and De Jaegher. Final
Act. 11-14.
Allowable Subject Matter
The Examiner indicates Claims 4, 5, 14, 15, and 21 are free of the
prior art and would be allowable should Appellants overcome the double
patenting rejections. Final Act. 14.
ANALYSIS
We have reviewed the rejections of Claims 1-21 in light of
Appellants' arguments that the Examiner erred. We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments which Appellants could have made but chose not to make in
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Application 13/547,326
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). We
consider Appellants' arguments seriatim, as they are presented in the Appeal
Brief, pages 5-8.
CLAIMS 1-21: DOUBLE PATENTING
Appellants submit a terminal disclaimer was filed in order to obviate
the double patenting rejections. App. Br. 4. The Examiner finds,
notwithstanding Appellants' statement to the contrary, that no terminal
disclaimer has been filed in this case. Ans. 3.
Our review indicates the Application file comprises a Terminal
Disclaimer over US 8,224,946. In view thereof, we do not sustain the
double patenting rejection.
CLAIMS 1, 6-11, AND 16-20: OBVIOUSNESS OVER SAUNDERSON AND MEIER
Appellants argue these claims as a group in view of the limitations of
Claim 1. App. Br. 7.
Associated with the same facility.
Appellants submit Claim 1 recites, inter alia, "a respective facility
having a respective default subnet and at least one respective different
subnet" and further recites "the allocated respective IP address for at least
one other of the plurality of client devices being associated with the at least
one respective different subnet of the respective facility of the at least one of
the plurality of client devices." App. Br. 6. Appellants contend the
Examiner finds Saunderson does not teach these limitations and Appellants
traverse the Examiner's finding that Meier so teaches. Id.
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Application 13/547,326
As Appellants characterize Meier, "a home subnet is associated with a
home access point, and the guest home subnet is associated with the parent
access point." Id. However, Appellants contend that Meier does not teach
"that each of the foreign subnets and the home subnet are associated with the
same access points or the same respective facility." Id. Appellants
characterize Claim 1 as reciting "each of the foreign subnets and the home
subnet are associated with the same access points or the same respective
facility." According to Appellants, Meier teaches "a home subnet and a
foreign subnet are related to different access points," but Meier fails to teach
"that each of the foreign subnets and the home subnet are associated with the
same access points or the same respective facility." Reply Br. 3 (emphasis
added).
With respect to "access points," Appellants' arguments are not
commensurate in scope with the claims, which do not recite "access points."
See In re Self, 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's arguments
fail from the outset because ... they are not based on limitations appearing
in the claims.").
The claims do not define "facility," but that term is defined in the
Specification, at least by implication ("[ u ]se of a DHCP server is
advantageous since it is a central facility and can therefore coordinate
subnets that span multiple access nodes"). Spec. i-f 33 (emphasis added).
Iredeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed.
Cir. 2004) ("[ e ]ven when guidance is not provided in explicit definitional
format, the specification may define claim terms by implication such that the
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Appeal2014-009196
Application 13/547,326
meaning may be found in or ascertained by a reading of the patent
documents" (citation and internal quotation marks omitted)).
The Examiner finds Saunderson teaches a DHCP server storing a table
of MAC addresses, where each client device is also associated with a
respective facility having a respective default subnet, e.g., a client VLAN
having default subnet A, or a server VLAN having default subnet B, each
with an "allowed range of administrator configured IP addresses for each
subnet." Final Act. 5-6. The Examiner combines Saunderson with Meier,
which teaches a respective facility having at least one subnet that is different
from the default subnet. Id. at 6. Appellants present no persuasive
explanation or evidence to rebut the Examiner's findings.
For these reasons, we are not persuaded the Examiner errs.
Meier not compatible with Saunderson
Appellants contend Meier is not compatible with Saunderson because
Meier teaches a client device is assigned the same IP address regardless of
the subnet to which it is attached, while Saunderson teaches the IP address
assigned to a client device changes when the device is attached to a different
subnet. App. Br. 7; see Reply Br. 4.
The Examiner finds one of ordinary skill would have been motivated
modify the system of Saunderson with the teachings of Meier because the
combination would allow seamless, transparent roaming as client devices
transition to different portions of the network. Ans. 5. Moreover, the
Examiner explained that clients in Saunderson would have continued to
benefit from receiving the same IP each time they connected to the same
local subnet. Id. at 6. Thus, the Examiner provides some articulated
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reasoning with rational underpinning for an artisan of ordinary skill to have
modified the system of Saunderson with the teachings of Meier.
For these reasons, we are not persuaded the Examiner errs.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of
claims 1, 6-11, and 16-20.
CLAIMS 2, 3, 12, AND 13: OBVIOUSNESS OVER
SAUNDERSON, MEIER, AND DE JAEGHER
Appellants argue these claims as a group in view of the limitations of
Claims 2 and 11. App. Br. 8.
The Examiner finds the combination of Saunderson and Meier fails to
teach or suggest that, of a plurality of client devices, at least two have the
same MAC address. Final Act. 11. The Examiner finds De Jaegher teaches
that, where two devices have the same MAC address, they are allocated
respective IP addresses, each associated with a different VLAN. Id. The
Examiner finds Saunderson teaches that each VLAN has its own subnet. Id.
Appellants contend De Jaegher teaches MAC address duplicates are
often resolved by VLAN segregation, but that De Jaegher fails to teach how
to accomplish such VLAN segregation. App. Br. 8.
We do not find Appellants to be persuasive because the Examiner has
relied upon Saunderson to teach that each VLAN has its own subnet. See
Final Act. 11. "[O]ne cannot show non-obviousness by attacking references
individually where ... the rejections are based on combinations of
references." In re Keller, 642 F.2d 413, 426 (CCPA 1981).
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Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of claims 2, 3, 12, and 13.
DECISION
The rejection of Claims 1-21 under the grounds of non-statutory
double patenting is REVERSED.
The rejection of Claims 1-3, 6-11, 12, 13, and 16-20 under 35 U.S.C.
§ 103 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED-IN-PART
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