Ex Parte Conta et al

Board of Patent Appeals and Interferences

Oct 1, 2009

10691109 (B.P.A.I. Oct. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALEX CONTA and SRIHARI VARADA
____________

Appeal 2009-005685
Application 10/691,109
Technology Center 2400
____________

Decided: October 1, 2009
____________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and KEVIN F.
TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-9 and 14-40. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appellants’ disclosure relates to methods and apparatus for tunneling
different types of packets over different types of networks (Spec. p. 1, ll. 7-
10). The instant claims are directed to implementing multiple tunneling
protocols in a switch or router (Spec. p. 9, ll. 9-10).
Independent claim 1 is illustrative of the invention and reads as
follows:

1. A uniform method for implementing multiple tunneling
protocols in a switch or router having a plurality of input
interfaces and a plurality of output interfaces, comprising:
a) providing a finite set of tunnel interfaces, each tunnel
interface characterized by a set of tunnel specific attributes, a
first of said tunnel interfaces being associated with one
tunneling protocol and a second of said tunnel interfaces being
associated with a second tunneling protocol different from said
first tunneling protocol;
b) mapping one of the input interfaces to one of said tunnel
interfaces; and
c) mapping said one of said tunnel interfaces to one of the
output interfaces,
whereby multiple tunneling protocols are implemented in a
uniform way.
App. Br. 27 Claims App’x.

The Examiner relies on the following prior art references to show
unpatentability:
Shrader US 5,864,666 Jan. 26, 1999
Rekhter US 6,339,595 B1 Jan. 15, 2002
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Tsirtsis US 2004/0148428 A1 Jul. 29, 2004
Miller US 6,873,627 B1 Mar. 29, 2005
Hauck US 6,977,932 B1 Dec. 20, 2005

D.J. Greaves, CBG Orangepath: Automated Design of Data Transfer
Protocols, Jan. 2003, http://www.cl.cam.ac.uk/~djg11/wwwhpr/
dsprotocol.html [hereinafter Greaves].

The Examiner references Appellants’ discussion of the prior art in the
Specification (Spec. p. 1, l. 22 – p. 2, l. 2; p. 7, ll. 5-10) as admitted prior art
[hereinafter APA-I], discussed below, and also references label mapping
discussed in the Specification (id. at p. 6, l. 21 – p. 7, l. 3) as admitted prior
art [hereinafter APA-II].

Claims 31, 32, and 36 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Shrader; claims 1-8, 15, 22, and 25 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Hauck and Greaves; claims 9
and 35 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Shrader and Hauck; claim 14 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shrader, Hauck, and APA-I; claims 16-21, 23, and
28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Hauck, Greaves, and Miller; claim 24 stands rejected under 35 U.S.C. §
103(a) as being unpatentable over Hauck, Greaves, Miller, and Rekhter;
claim 26 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hauck, Greaves, and Shrader; claim 27 stands rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hauck, Greaves, Shrader, and Tsirtsis;
claims 29 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hauck, Greaves, and APA-II; claims 33 and 38 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Shrader and
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Miller; claim 34 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shrader, Miller, and Rekhter; claim 37 stands rejected
under 35 U.S.C. § 103(a) as being unpatentable over Shrader and Tsirtsis;
and claims 39 and 40 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shrader and APA-II.

ISSUES
Appellants argue that claim 31 is directed to an application
programming interface (API) for implementing different tunneling protocols
in a switch or router, and Shrader provides for management of tunnels
having the same tunneling protocol (App. Br. 12). Appellants also argue
that Greaves is directed to non-analogous art and teaches away from the
claimed invention such that the rejection is improper (App. Br. 15-17).
Appellants also argue that neither Shrader nor Hauck teaches or suggests
implementing a plurality of tunneling protocols and that the rejection based
on Hauck and Shrader is therefore not well founded (App. Br. 19-20).
The Examiner finds that Shrader shows multiple tunnel definitions
defining different tunnels may be loaded and the system is capable of using
any set of tunnel and filter rules with minimal adaptation (Ans. 20-21). The
Examiner also finds that the combination of Hauck and Greaves teaches or
suggests all of the elements of the rejected claims and that both Hauck and
Greaves are analogous art because both are directed to data transfer (Ans.
21-22).
Only those arguments actually made by Appellants have been
considered in this decision. Arguments which Appellants could have made
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but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Thus, the issues arising from the respective positions of Appellants
and the Examiner are:
1) Have Appellants shown reversible error in that Shrader fails to
teach a plurality of different tunneling protocols as recited in the
independent claim 31?
2) Have Appellants shown reversible error in that Hauck and Greaves
fail to teach or suggest association of tunneling interfaces with different
tunneling protocols as recited in the independent claims 1, 15, and 22?
3) Have Appellants shown reversible error in that Shrader and Hauck
fail to teach or suggest associating interfaces with multiple tunneling
protocols as recited in the independent claim 9?
4) Have Appellants shown reversible error in that the APA-I, APA-II,
Miller, Rekhter, and Tsirtsis references fail to cure the alleged deficiencies
of Shrader, Hauck, and Greaves with respect to the independent claims such
that there is reversible error in the rejection of the dependent claims?

FINDINGS OF FACT
1. The instant Specification details methods and apparatus for
tunneling different types of packets over different types of networks (Spec.
p. 1, ll. 7-10). The instant claims are directed to implementing multiple
tunneling protocols in a switch or router (Spec. p. 9, ll. 9-10).
2. Shrader is directed to the web-based administration of IP tunneling
between firewalls (Abstract). Individual tunnels can be configured and filter
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rules applicable to selected tunnels can be easily discerned through the use
of a graphical interface (Shrader, col. 1, l. 43 – col. 2, l. 9).
3. Shrader discloses that its administration system has application to
“any set of tunnel and filter rules which may be imposed between secure and
nonsecure networks,” but does not disclose the management of multiple
tunneling protocols (Shrader, col. 16, ll. 44-52).
4. Hauck discloses a system and method for network tunneling
utilizing micro-flow state information. On ingress, a particular network
tunnel is selected for a micro-flow, as well as an egress port, based on a
tunnel identifier (Hauck, col. 3, ll. 29-45).
5. Greaves broadly describes network terminology by indicating that
a protocol operates over an interface that each interface operates its protocol
without reference to the other interfaces and that for each interface there is
an associated protocol (Greaves, p. 1, ¶¶ 4, 8).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987).
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988).
“[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness” . .
. . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim,
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for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
During examination, the claims must be interpreted as broadly as their
terms reasonably allow. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). When the specification states the meaning that a term
in the claim is intended to have, the claim is examined using that meaning,
in order to achieve a complete exploration of the applicant's invention and its
relation to the prior art. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).

ANALYSIS
Rejection under 35 U.S.C. § 102(e) over Shrader
Claims 31, 32, and 36
With respect to independent claim 31, Appellants argue that claim 31
is directed to an API for implementing different tunneling protocols in a
switch or router, while Shrader provides for management of tunnels having
the same tunneling protocol (App. Br. 12). The Examiner finds that Shrader
shows multiple tunnel definitions defining different tunnels may be loaded
and the system is capable of using any set of tunnel and filter rules with
minimal adaptation (Ans. 20-21). We agree with Appellants.
Shrader does disclose that multiple tunneling protocols may be
managed through its system, but such implantation is serial, i.e. one set of
protocols at a time (FF 3). The clear intent of Shrader is to manage tunnels
operating under a single set of protocols and not multiple tunneling
protocols. Shrader simply does not disclose a system “configurable to
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implement any one of said plurality of different tunneling protocols” as
recited in independent claim 31. As such, we find that Shrader does not
anticipate claim 31 and the rejection thereof is in error. Similarly, we find
the rejection of claims 32 and 36, dependent on claim 31, to also have been
made in error.

Rejection under 35 U.S.C. § 103(a) over Hauck and Greaves
Claims 1-8, 15, 22, and 25
Appellants argue that Greaves is directed to non-analogous art and
teaches away from the claimed invention such that the rejection is improper
(App. Br. 15-17). The Examiner finds that the combination of Hauck and
Greaves teaches or suggests all of the elements of the rejected claims and
that both Hauck and Greaves are analogous art because both are directed to
data transfer (Ans. 21-22).
We need not decide whether Hauck and Greaves are analogous art
because we do not find Greaves to be pertinent to the instant claims and
Hauck. The generality of Greaves cannot be applied for what the Examiner
has applied it towards. Even if Greaves were taken at face value, such that
for each interface there is an associated protocol (FF 5), there is nothing
recited in Greaves that details that each interface has a different protocol.
Even if the Examiner were to argue that the disclosure of Greaves renders it
obvious to associate different protocols with interfaces, the Examiner has
supplied no rationale why different protocols would be selected. Thus, we
find that Greaves cannot be applied for what the Examiner has asserted that
reference teaches.
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As such, since the Examiner has acknowledged that Hauck fails to
disclose tunnel interfaces associated with different tunneling protocols, as
recited in different manners in independent claims 1, 15, and 22, and
Greaves does not teach or suggest the same, we find that the rejection of
independent claims 1, 15, and 22 was made in error. Likewise, by virtue of
their dependence, we find the rejection of claims 2-8 and 25 to have been
made in error also.

Rejection under 35 U.S.C. § 103(a) over Shrader and Hauck
Claims 9 and 35
Appellants argue that neither Shrader nor Hauck teaches or suggests
implementing a plurality of tunneling protocols and that the rejection is
therefore not well founded (App. Br. 19-20). The Examiner finds that
Shrader teaches multiple tunnel definitions and their use (Ans. 22).
However, as we have found supra, Shrader does not disclose the
management of multiple tunneling protocols, where claim 9 recites, in part,
“implementing multiple tunneling protocols in a switch or router.” As such,
we find that neither Hauck nor Shrader teaches or suggest this aspect of
claim 9 and that claim 9 was rejected in error, since the Examiner has
acknowledged that Hauck fails to disclose tunnel interfaces associated with
different tunneling protocols. By virtue of its dependence on claim 31, we
find that claim 35 was also improperly rejected.

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Rejections under 35 U.S.C. § 103(a) over Shrader, Hauck, Greaves, APA-I,
APA-II, Miller, Rekhter, and Tsirtsis
Claims 14, 16-21, 23, 24, 26-30, 33, 34, and 37-40
Appellants argue that the dependent claims recited in the above-cited
rejections all depend from independent claims which they argued were
rejected in error, and thus allowable by virtue of their dependence (App. Br.
20-26). We find that the secondary references fail to cure the deficiencies of
the base references discussed supra. As such, we find the rejections of these
latter claims to have been made in error as well.

CONCLUSION
The decision of the Examiner rejecting claims 31, 32, and 36 as being
anticipated by Shrader; claims 1-8, 15, 22, and 25 as being unpatentable over
Hauck and Greaves; claims 9 and 35 as being unpatentable over Shrader and
Hauck; claim 14 as being unpatentable over Shrader, Hauck, and APA-I;
claims 16-21, 23, and 28 as being unpatentable over Hauck, Greaves, and
Miller; claim 24 as being unpatentable over Hauck, Greaves, Miller, and
Rekhter; claim 26 as being unpatentable over Hauck, Greaves, and Shrader;
claim 27 as being unpatentable over Hauck, Greaves, Shrader, and Tsirtsis;
claims 29 and 30 as being unpatentable over Hauck, Greaves, and APA-II;
claims 33 and 38 as being unpatentable over Shrader and Miller; claim 34 as
being unpatentable over Shrader, Miller, and Rekhter; claim 37 as being
unpatentable over Shrader and Tsirtsis; and claims 39 and 40 as being
unpatentable over Shrader and APA-II, is reversed.

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DECISION
The Examiner’s rejection of claims 1-9 and 14-40 before us on appeal
is REVERSED.

REVERSED

KMF

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