Ex Parte Diehl et al

Board of Patent Appeals and Interferences

Jan 26, 2012

10650538 (B.P.A.I. Jan. 26, 2012)

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.
10/650,538 08/28/2003 Gary A. Diehl ROC920030133US1 9039
7590 01/27/2012
Grant A. Johnson
IBM Corporation-Dept. 917
3605 Highway 52 North
Rochester, MN 55901
EXAMINER
CHRISTENSEN, SCOTT B
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
01/27/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GARY A. DIEHL, FRANKLIN A. GRUBER and
DANIEL A. VEGA
____________

Appeal 2009-012130
Application 10/650,538
Technology Center 2400
____________

Before ROBERT E. NAPPI, KRISTEN L. DROESCH and
JEFFREY S. SMITH, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 1-4 and 7-18.1 We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.
BACKGROUND
The invention relates to a method, apparatus and computer program
product for implementing enhanced proxy Address Resolution Protocol
(ARP) for Virtual Internet protocol (IP) addresses. Spec. 1, ll. 5-8; Abs.
Independent claim 1 is illustrative and is reproduced below:
1. A method for implementing enhanced proxy Address
Resolution Protocol (ARP) for Virtual Internet protocol (IP)
addresses comprising the steps of:
identifying a Virtual Internet protocol (IP) interface
requiring proxy ARP;
dynamically selecting a proxy agent for said Virtual
Internet protocol (IP) interface; said selected proxy agent and
said Virtual Internet protocol (IP) interface being in a same
subnet;
adding an IP address for said Virtual Internet protocol
(IP) interface to an address list of an associated physical adapter
for said selected proxy agent;
utilizing said physical adapter for said selected proxy
agent, and broadcasting said added IP address for said Virtual
Internet protocol (IP) interface with a media access control
(MAC) address of said associated physical adapter for said
selected proxy agent;
responsive to failure of said selected proxy agent,
dynamically selecting a new proxy agent for said Virtual
Internet protocol (IP) interface by Transmission Control
Protocol/Internet Protocol (TCP/IP) code; and
wherein dynamically selecting said proxy agent for said
Virtual Internet protocol (IP) interface includes checking for a

1 Claims 5 and 6 have been cancelled.
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proxy agent in the same subnet as said Virtual Internet protocol
(IP) interface; said same subnet being identified by a portion of
a Transmission Control Protocol/Internet Protocol (TCP/IP)
Internet address.

Claims 1-4 and 7-18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee (US 7,088,689 B2, Aug. 8, 2006), Kirchner (US
6,263,370 B1, Jul. 17, 2001) and Smyk (6,289,001 B1, Sep. 11, 2001).
ISSUES
Did the Examiner err in determining that the combined teachings of
Lee, Kirchner and Smyk render obvious the claim invention?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Appeal Brief presented in response to the Final Office
Action and Appellants’ arguments in the Reply Brief presented in response
to the Answer. We disagree with Appellants’ conclusions 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 set forth by the
Examiner in the Answer in response to the Appeal Brief. However, with
respect to the claims argued by Appellants, we highlight and address specific
findings and arguments for emphasis as follows.
Claims 1, 3, 4 and 7
After lengthy individual characterizations of the Lee reference (App.
Br. 10-12), Kirchner reference (App. Br. 12) and Smyk reference (App. Br.
13) and the problems addressed by and merits of the disclosed invention
(App. Br. 13-14, 16; Reply Br. 2-3), Appellants make several assertions
about the teachings of the prior art. Appellants assert the following: (1) Lee
does not show or suggest “identifying a Virtual Internet Protocol (IP)
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interface requiring proxy ARP,” as recited in claim 1 (App. Br. 16; Reply
Br. 3); (2) Lee, Kirchner and Smyk do not teach or suggest “dynamically
selecting a proxy agent for said Virtual Internet Protocol (IP) interface . . .
adding an IP address for said Virtual Internet Protocol (IP) interface . . .
utilizing said physical adapter for said selected proxy agent and broadcasting
said added IP address for said Virtual Internet Protocol (IP) interface . . . ” as
recited in claim 1 (App. Br. 16-17; Reply Br. 3); and (3) Kirchner and Smyk
add nothing to suggest the method of the claimed invention in particular the
claim limitation “responsive to failure of said selected proxy agent,
dynamically selecting a new proxy agent for said Virtual Internet protocol
(IP) interface by Transmission Control Protocol/Internet Protocol (TCP/IP)
code,” as recited in claim 1 (App. Br. 17).
Appellants’ arguments are unpersuasive as they merely reiterate the
disputed claim limitations and make general allegations that Lee, Kirchner
and Smyk do not teach or suggest the disputed limitations. Merely reciting
the language of the claims and asserting that the cited prior art references do
not disclose or teach each claim limitation is insufficient. See 37 C.F.R. §
41.37(c)(vii) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the
claim.”);see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e
hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391
(Fed. Cir. 1991) (“It is not the function of this court to examine the claims in
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greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”).
Appellants also argue that Lee, Kirchner and Smyk, considered
together in combination do not provide a suggestion of “the same subnet
being identified by a portion of a Transmission Control Protocol/Internet
Protocol (TCP/IP) Internet address,” as recited in claim 1. App. Br. 19.
Appellants argue that a subnet in a TCP/IP carries a narrow meaning and
asserts that according to the IBM Dictionary of Computing a subnet in
TCP/IP is part of a network that is identified by a portion of the internet
address and that the address to all nodes in a subnet starts with the same
binary sequence. Ans. 20.
We are unpersuaded by Appellants arguments since Appellants do not
provide objective evidence of the definition of subnet in the Evidence
Appendix to support their arguments. See 37 C.F.R. §
41.37(c)(1)(ix)(“Reference to un-entered evidence is not permitted in the
brief.”). The Examiner’s broad construction of a “subnet” as a logically
visible sub-section of a single internet network (Ans. 4-5) is reasonable and
consistent with the use of “subnet” in Appellants’ Specification. See Spec. 6.
Appellants do not persuasively argue that the Examiner’s construction of
“subnet” is unreasonable or inconsistent with Appellants’ Specification.
After a lengthy review of obviousness case law predating KSR
International Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (App. Br. 17-
19), Appellants assert that the total teachings of Lee, Kirchner and Smyk
provide no motivation, suggestion or teaching to support the Examiner’s
proposed modification to provide the claimed invention. App Br. 19, 21.
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Appellants’ arguments are unpersuasive because the Supreme Court
has rejected the rigid application of the “teaching, suggestion, or motivation”
(TSM) test, instead favoring an “expansive and flexible approach.” Id. at
415. Contrary to Appellants’ assertions, it is not necessary to find precise
teachings in the prior art directed to the specific subject matter claimed
because inferences and creative steps that a person of ordinary skill in the art
would employ can be taken into account. KSR, 550 U.S. at 418. The
Examiner’s determination that one with ordinary skill in the art would have
been motivated to: (1) modify Lee by having the proxy agent and Virtual
Internet Protocol (IP) interface on the same subnet in order to use one
number for several networks and have a more direct communication line
with each other but still have access to the internet; (2) combine Kirchner’s
TCP/IP with the proxy Address Resolution Protocol (ARP) of Lee in order
to have the proxy Address Resolution Protocol (ARP) protocol be
compatible with more networks by using TCP/IP; and (3) combine Smyk’s
proxy selector with the proxy Address Resolution Protocol (ARP) of Lee as
modified by Kirchner in order to allow proxy signaling to continue
undisturbed in cases of failure (Ans. 5-6) is reasonable. Appellants do not
persuasively argue, nor direct us to objective evidence to demonstrate, that
the Examiner erred in determining that the claimed subject matter would
have been obvious.
For all these reasons, we sustain the rejection of claim 1 as obvious
over Lee, Kirchner and Smyk. We also sustain the rejection of dependent
claims 3, 4, and 7 for the same reasons since Appellants do not present
separate arguments addressing the limitations of claims 3, 4 and 7.
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Claim 2
Appellants separately address claim 2 which depends from claim 1.
App. Br. 21-23. For the same reasons explained above addressing claim 1,
we are unpersuaded by Appellants’ assertion that Lee, Kirchner and Smyk
fail to suggest “identifying a broadcast ARP response for said Virtual
Internet protocol (IP) interface, and continuing activation for said Virtual
Internet protocol (IP) interface including enqueuing said Virtual Internet
protocol (IP) interface to a proxy list of said selected proxy agent,” as recited
in dependent claim 2. App. Br. 22. Likewise, for the same reasons explained
before addressing claim 1, we are unpersuaded by Appellants’ argument that
Lee, Kirchner and Smyk do not provide a teaching, suggestion or motivation
to modify the applied prior art. App. Br. 22-23.
We are also unpersuaded by Appellants’ arguments that no general
knowledge in the art exists to achieve the subject matter of the claimed
invention. App. Br. 23. As explained before, the Examiner’s determination
of obviousness is reasonable. Appellants do not direct us to objective
evidence to demonstrate the lack of general knowledge in the art, for
example, by presenting testimony by one with ordinary skill in the art. We
are also unpersuaded by Appellants’ assertion that only through the use of
Appellants’ own disclosure would the art be modified in the manner
suggested by the Examiner. App. Br. 22-23; Reply Br. 3. Although we
recognize that any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, it is proper so long as it takes
into account only knowledge which was within the level of ordinary skill at
the time the claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure. In re McLaughlin, 443 F.2d 1392,
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1395 (CCPA 1971). Appellants do not meaningfully explain how the
Examiner’s determination of obviousness is based upon knowledge gleaned
from Appellants’ Specification.
For all these reasons, in addition to those addressing claim 1, we
sustain the rejection of claim 2 as obvious over Lee, Kirchner and Smyk.
Claims 8-12
Appellants separately address independent claim 8. App. 23-25.
However, for the same reasons explained above addressing claims 1 and 2,
we are unpersuaded by Appellants’ unsupported assertions that Lee,
Kirchner and Smyk do not: (1) disclose or suggest “a Transmission Control
Protocol/Internet Protocol (TCP/IP) code for dynamically selecting a proxy
agent for said Virtual Internet Protocol (IP) interface,” as recited in claim 8
(Ans. 23-24); and (2) teach or suggest “a proxy ARP for Virtual IP interface
initiation task for adding an IP address for said Virtual Internet protocol (IP)
interface to an address list of an associated one of said physical adapters for
said selected proxy agent; and for utilizing said physical adapter for said
selected proxy agent for broadcasting said added IP address for said Virtual
Internet protocol (IP) interface with a media access control (MAC) address
of said associated physical adapter for said selected proxy agent,” as recited
in claim 8” (App. Br. 25).
Accordingly, we sustain the rejection of claim 8 as obvious over Lee,
Kirchner and Smyk. We also sustain the rejection of dependent claims 9-12
as obvious over Lee, Kirchner and Smyk for the same reasons since
Appellants do not present separate arguments addressing the limitations of
claims 9-12.
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Claims 13 and 16-18
Appellants separately address independent claim 13, but assert that the
computer program product is patentable for the same reasons as the recited
method of claim 1. App. 25-26. Accordingly, for the same reasons as those
explained before addressing claim 1, we sustain the rejection of claim 13 as
obvious over Lee, Kirchner and Smyk. We also sustain the rejection of
dependent claims 16-18 for the same reasons since Appellants do not present
separate arguments addressing the limitations of claims 16-18.
Claims 14 and 15
Appellants present arguments addressing the limitations of claims 14
and 15 which depend from claim 13. For the same reasons explained before
addressing claims 1, 2 and 8 we are unpersuaded by Appellants’
unsupported assertions that Lee, Kirchner and Smyk fail to suggest: (1)
“enqueuing said Virtual Internet protocol (IP) interface to a proxy list of said
selected proxy agent,” as recited in dependent claim 14; and (2) “setting an
associated local IP address of said selected proxy agent in said Virtual
Internet protocol (IP) interface to complete activation for said Virtual
Internet protocol (IP) interface,” as recited in claim 15. App. Br. 27.
Accordingly, we sustain the rejection of claims 14 and 15 as obvious
over Lee, Kirchner and Smyk.
Claims 13-18
In the event of further prosecution, we direct attention to the claim 13
recitation of the “computer program product including a computer recording
medium for storing program means.” As stated in Appellants’ Specification,
“the computer program product [] includes a recording medium [], such as, a
floppy disk, a high capacity read only memory in the form of an optically
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read compact disk or CD-ROM, a tape, a transmission type media such as a
digital or analog communications link, or a similar computer program
product.” Spec. 7, ll. 28-32 (emphasis added). A transmission type media or
communications link encompasses signals that are transmitted or
communicated and does not define a tangible non-transitory medium for
storing the computer program product. Accordingly, upon further
prosecution, we leave it to the Examiner to determine whether the computer
recording medium recited in claims 13-18 is directed to non-statutory
subject matter, such as transitory propagating signals. See In re Nuitjen, 500
F.3d 1346, 1353-54 (Fed. Cir. 2007) (holding that transitory, propagating
signals are not patentable subject matter under § 101). Moreover, “[a] claim
that covers both statutory and non-statutory embodiments . . . embraces
subject matter that is not eligible for patent protection and therefore is
directed to non-statutory subject matter.” U.S. Patent & Trademark Office,
Interim Examination Instructions for Evaluating Subject Matter Eligibility
Under 35 U.S.C. § 101, Aug. 2009, at 2, available at http://
www.uspto.gov/web/offices/pac/dapp/opla/2009-08-25_interim_101_
instructions.pdf.
DECISION
We AFFIRM the rejection of claims 1-4 and 7-18 under
35 U.S.C. § 103(a) as unpatentable over Lee, Kirchner and Smyk.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
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AFFIRMED

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