Ex Parte Dolganow et al

Patent Trial and Appeal Board

Jul 26, 2017

14272007 (P.T.A.B. Jul. 26, 2017)

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.
14/272,007 05/07/2014 Andrew Dolganow ALC 3934 4253
76614 7590 07/28/2017
Terry W. Kramer, Esq.
Kramer & Amado, P.C.
330 John Carlyle Street
3rd Floor
Alexandria, VA 22314
EXAMINER
AYASH, MARWAN
ART UNIT PAPER NUMBER
2133
NOTIFICATION DATE DELIVERY MODE
07/28/2017 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 @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW DOLGANOW and MARK FRENCH
Appeal 2017-004730
Application 14/272,007
Technology Center 2100
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-004730
Application 14/272,007
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows:
1. A method for conditional filtering following a
TCAM lookup, the method comprising the steps of:
obtaining data;
generating a lookup key from the data;
performing a TCAM lookup using the lookup key;
wherein
in the event the TCAM lookup generates a match,
performing a test to determine if there is a condition
associated with the action associated with that match, and
in the event there is a condition, evaluating the
condition associated with the action of that match entry;
and
in the event that the condition is satisfied,
performing a conditional action.
Rejection on Appeal
The Examiner rejected claims 1—18 under 35 U.S.C. § 103 as being
unpatentable over the combination of Bitar (US 2005/0262294 Al;
published Nov. 24, 2005), and Cheriton (US 2004/0252693 Al; published
Dec. 16, 2004).1
1 The patentability of claims 2—18 is not separately argued from that of
independent claim 1. See App. Br. 12. Thus, except for our ultimate
decision, claims 2—18 are not discussed further herein.
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Application 14/272,007
Appellants ’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103 because, “the Office does not address each limitation
in the claim by relying upon a single element in the prior art reference to
disclose two separate claimed elements.” App. Br. 7 (emphasis omitted);
see also Reply Br. 2.
2. Appellants also contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103 because:
Given that step 500 is “class = 0” and step 520 is “class =
2”, step 500 and 520 cannot be both a test and a determination
of a condition, because ... this collective step (i.e. class - 0,
class -1 and class - 2) is the evaluation of the condition. Stated
a different way, no separate test is performed to determine
whether there is a condition associated with the action
associated with the match, steps 500 and 520 are considered
analogous steps, those steps being an evaluation of the condition.
. . . Steps 500 and 520 in FIG. 5 disclose evaluation (i.e.
a determination ofpacket classification) of a condition and do
not disclose “performing a test to determine if there is a
condition associated with the action associated with that
match.” Finally, both steps 500 and 520 are classified as a
determination of the packet's classification (i.e. evaluation of the
condition), even the Office suggests that step 500 is a test and
step 520 is a condition. Even further, “the preceding
configurations have been discussed in terms of a single
classification operation.”
App. Br. 9-10 (emphasis omitted and panel’s emphasis added) (citations
omitted); see also Reply Br. 4.
3. Appellants also contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103 because:
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Appeal 2017-004730
Application 14/272,007
The Office cannot rely upon step 520 to disclose
determination of the presence of a condition (discussed above),
evaluation of a condition, and whether there has been
satisfaction of the condition. Applicant asserts that steps 500
and 520 are analogous and are for the purpose of evaluation of
the condition, meaning if the condition (i.e. the class) is
evaluated to be class = 0, then the packet is dropped and if the
condition (i.e. the class) is evaluated to be class = 2, then the
packet is forwarded to the CPU and finally, if the condition is
evaluated to be class = 1, then the TTL is rewritten.
App. Br. 11 (emphasis added); see also Reply Br. 5.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
PRINCIPLES OF LAW
The mere existence of differences between the prior art and the claim
does not establish non-obviousness. See Dann v. Johnston, 425 U.S. 219,
230 (1976). Instead, the relevant question is “whether the difference
between the prior art and the subject matter in question is a [difference]
sufficient to render the claimed subject matter unobvious to one skilled in
the applicable art.” Dann, 425 U.S. at 228 (internal quotations and citations
omitted). Indeed, the Supreme Court made clear that when considering
obviousness, “the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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Appeal 2017-004730
Application 14/272,007
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. Except as noted herein, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which the appeal is
taken (Final Act. 2—7); and (2) the reasons set forth by the Examiner in the
Examiner’s Answer (Ans. 2—6) in response to the Appellants’ Appeal Brief.
We concur with the conclusions reached by the Examiner. We highlight the
following.
As to Appellants’ above contention 1, we are not persuaded the
Examiner erred. Contrary to Appellants’ contention, there is no requirement
that the Examiner rely on two separate and distinct disclosures within a prior
art reference to teach or suggest two separate claimed elements. See Ans. 2—
3. Rather, the relevant question is whether the differences between the
relied upon disclosure of the prior art reference and the claimed elements are
sufficient to render the claim unobvious to one of ordinary skill in the
relevant art. See Dann, 425 U.S. at 228. Thus, the reliance upon a single
disclosure within a prior art reference to teach or suggest two separate
claimed elements, by itself, is not reversible error.
As to Appellants’ above contentions 2 and 3, we are also not
persuaded the Examiner erred. As the Examiner correctly found, Bitar
discloses determining a packet match based on data within the packet and
performing an action based on a match. See Final Act. 3 (citing Bitar H 14-
lb). As the Examiner also correctly found, Cheriton discloses an evaluation
of conditions based on data contained within a matched packet. See id
(citing Cheriton 123, Figs. 3, 5); see also Ans. 4—5. In taking into account
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Application 14/272,007
the inferences that would have been made by one of ordinary skill in the art
in the field of network packet filtering via TCAMs, we conclude that
Cheriton’s disclosure of an evaluation of a condition also renders obvious a
determination that the condition exists. Thus, we agree with the Examiner
that the combination of Bitar and Cheriton teaches or suggests “in the event
the TCAM lookup generates a match, performing a test to determine if there
is a condition associated with the action associated with that match,” “in the
event there is a condition, evaluating the condition associated with the action
of that match entry,” and “in the event that the condition is satisfied,
performing a conditional action,” as recited in claim 1.
Accordingly, we conclude the Examiner did not err in rejecting
claim 1. Therefore, we sustain the rejection of claim 1 under
35 U.S.C. § 103.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1—18 as being
unpatentable under 35 U.S.C. § 103.
(2) Claims 1—18 are not patentable.
DECISION
We affirm the Examiner’s rejections of claims 1—18 as being
unpatentable under 35 U.S.C. § 103.
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Appeal 2017-004730
Application 14/272,007
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).
AFFIRMED2
2 Claim 1 is a method claim that contains conditional limitations (e.g., “in
the event the TCAM lookup generates a match,” “in the event there is a
condition,” and “in the event that the condition is satisfied”), which may not
need to be shown for determining patentability. See Ex parte Schulhauser,
No. 2013-007847, 2016 WL 6277792, at *4 (PTAB Apr. 28, 2016)
(precedential) (holding “[t]he Examiner did not need to present evidence of
the obviousness of the remaining method steps of claim 1 that are not
required to be performed under a broadest reasonable interpretation of the
claim”). Both Appellants and the Examiner treat the conditional limitations
in claim 1 as being required to be shown for determining patentability,
which is not consistent with Schulhauser. Although not required for
determining patentability of claim 1, we follow Appellants’ and the
Examiner’s treatment and reach the merits of Appellants’ arguments as to
these conditional limitations.
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