Ex Parte G. Santos et alDownload PDFPatent Trial and Appeal BoardFeb 16, 201713599803 (P.T.A.B. Feb. 16, 2017) Copy Citation 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. 13/599,803 08/30/2012 Jose Renato G. Santos 82963661 7908 56436 7590 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 EXAMINER LOU, PEIAN ART UNIT PAPER NUMBER 2413 NOTIFICATION DATE DELIVERY MODE 02/21/2017 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): hpe.ip.mail@hpe.com chris. mania @ hpe. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSE RENATO G. SANTOS, MICHAEL SCHLANSKER, and JEAN TOURRILHES Appeal 2016-0028241 Application 13/599,803 Technology Center 2400 Before ELENI MANTIS MERCADER, JAMES W. DEJMEK, and ALEX S. YAP, Administrative Patent Judges. YAP, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—20, which are all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 According to Appellants, the real party in interest is Hewlett-Packard Development Company, LP. (App. Br. 1.) Appeal 2016-002824 Application 13/599,803 STATEMENT OF THE CASE Introduction Appellants’ invention “relate[s] to addition or modification to a forwarding table based on an address.” (Aug. 30, 2012 Specification (“Spec.”) Abstract.) Claim 1 is representative and is reproduced below: 1. A local switch, comprising: a controller to receive a first packet having a source address and a location value, the source address including a source of the first packet and the location value indicating at least part of a route along a network to the source address; and a forwarding table including a plurality of entries, each entry including a destination field and a location field, wherein the controller is to compare the source address of the first packet to values of the destination fields of the forwarding table, and the controller is to not add a new entry including the location value of the first packet to the forwarding table if none of the destination fields of the plurality of entries of the forwarding table include the source address of the first packet. The following table lists the prior art relied upon by the Examiner in rejecting the claims on appeal: Prior Art and Rejections on Appeal Edsall et al. US 6,735,198 B1 May 11,2004 (“Edsall”) Choi et al. US 2005/0141517 Al June 30, 2005(“Choi”) Huang et al. (“Huang”) US 8,788,823 B1 July 22,2014 (filed Oct.22, 2004) 2 Appeal 2016-002824 Application 13/599,803 Claims 1, 10, 11, and 13—20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Edsall in view of Huang. (See Final Office Action (mailed Jan. 2, 2015) (“Final Act.”) 5—13.) Claims 2—9 and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Edsall, in view of Huang, and further in view of Choi. (See Final Act. 13—19.) ANAFYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We are not persuaded that the Examiner erred in rejecting claims 1 and 4—20. We are persuaded that the Examiner erred in rejecting claims 2 and 3. Claims 1, 4—1 /, and 13—20 With respect to claim 1, the Examiner finds that “Edsall does not explicitly teach the controller is to not add a new entry including the location value of the first packet to the forwarding table if none of the destination fields of the plurality of entries of the forwarding table include the source address of the first packet.” (Final Act. 6.) The Examiner, however, finds that Huang teaches or suggests this limitation. (Id.) Specifically, according to the Examiner, Huang teaches or suggests that if the source address of an incoming message is not found in the lookup table (i.e., forwarding table), the source address is not stored and the message is immediately passed on to the address filtering module for processing: If the source address of an incoming message is not found by forwarding module 702 (i.e., if there is no matching entry for 3 Appeal 2016-002824 Application 13/599,803 that message, based on the message’s source address, in the lookup table), information included in and/or associated with the incoming message is passed to address filtering module 704 for additional processing. (Huang, 20:10-15.) Appellants disagree and contend that “because Huang teaches that the source address is stored in the lookup table each time a message is received, it logically follows that the source address is stored in the lookup table of Huang when the lookup table does not already include the source address.” (App. Br. 7; Huang, 19:65—20:4; Reply 4.) Appellants have not persuaded us the Examiner erred. We agree with the Examiner that Huang teaches or suggests if the source address of an incoming message is not found, the source address is not added to the lookup table (i.e., forwarding table). (Final Act. 6; Huang, 20:10-15; FIG. 7.) We do not agree with Appellants Huang requires “the source address Tbe] stored in the lookup table of Huang when the lookup table does not already include the source address.” (App. Br. 7.) Rather, we find Huang teaches or suggests “the source address . . . can be stored in a lookup table” but it is not required to store it. (Huang, 20:1—3, emphasis added.) This interpretation of Huang is reasonable because in the subsequent paragraph of Huang, pointed to by the Examiner, Huang states explicitly “[i]f the source address ... is not found by [the] forwarding module ... the incoming message is passed to address filtering module 704 for additional processing.” (Huang, 20:10-15.) In other words, nothing is done by the forwarding module. Moreover, if Appellants’ interpretation (i.e., the source address is always stored) were correct, then Huang’s explicit disclosure that “/ i/f the source address ... is not found by the forwarding module . . . the incoming message is passed to address filtering module 704 for additional 4 Appeal 2016-002824 Application 13/599,803 processing” would not make sense because this condition will never happen. (Huang, 20:10-15, emphasis added.) Appellants further contend “the provided rationale for the proposed combination of Edsall and Huang is insufficient to establish a prima facie case of obviousness.” (App. Br. 8—9; Reply 6—7.) According to Appellants, “provided rationale is merely a conclusory statement of an asserted benefit, and fails to provide the ‘articulated reasoning with some rational underpinning’ required to establish a prima facie case of obviousness.” (App. Br. 8—9; Reply 6—7.) Appellants further contend “Edsall explicitly teaches that the source address of a received packet is stored in the forwarding table if that address is not already present in the forwarding table.” (App. Br. 8—9; Edsall, 3:20-27; Reply 6—7.) In other words, Appellants are contending Edsall teaches away from not storing the source address of a received packet. We find that the Examiner provides sufficient articulated reasoning having a rational underpinning, such that a person of ordinary skill in the art would have been motivated to combine the teachings of Edsall and Huang. (Final Act. 7 (“it would have been obvious ... to provide a network device maintaining protocol status information and quickly receiving and forwarding data to maintain a high throughput by including a filtering module coupled to the binding table comparing message information with the protocol status information”), citations omitted.) See KSR Int’l Co., v. Teleflex, Inc., 550 U.S. 398, 415, 418 (2007). We are also not persuaded that Edsall teaches away from not storing the source address of a received packet. As explained in Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009): 5 Appeal 2016-002824 Application 13/599,803 A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)). A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Edsall at most “expresses a general preference for [storing the source address of a received packet] but does not ‘criticize, discredit, or otherwise discourage’ investigation into” not storing the source address of a received packet. In re Fulton, 391 F.3d at 1201. For the foregoing reasons, we are not persuaded of Examiner error in the rejection of claim 1. Thus, we sustain the 35 U.S.C. § 103 rejections of claim 1, as well as claims 4—11 and 13—20, which are not argued separately. (App. Br. 9.) Claims 2, 3, and 12 Claims 2 and 12 recite “location field of the new entry is to remain unknown.” (Emphasis added.) The Examiner finds that: However, the combination of Edsall and Huang does not explicitly teach the location field of the new entry is to remain unknown. In an analogous art, Choi teaches the location field of the new entry is to remain unknown (mapping destination address from data packet, checking whether a valid field value of secondary and third table entries, if the validfield value is not the predetermined value at the step, inputting a default route to a destination route information', Paragraph [0008]). 6 Appeal 2016-002824 Application 13/599,803 (Final Act. 14, emphasis added.) The Examiner explains that “one of ordinary skill in the art would have had no difficulty to understand that default value shown in Choi can be interpreted as the unknown value in claim 2.” (Ans. 8.) We agree, however, with Appellants that the portions of Choi cited by the Examiner “say[] nothing whatsoever about the ‘default route’ being an unknown value [and that the] ‘default route’ of [Choi] could have a known value.” (Reply 8—9; App. Br. 11—12.) We are also not persuaded that it would have been obvious to one of ordinary skill in the art, in view of paragraph 16 of the Specification, that an unknown value can interpreted as a default value. (Ans. 7—8.) Paragraph 16 does not mention any default value at all. (Spec. 116.) For the foregoing reasons, we are persuaded of Examiner error in the rejection of claim 2, as well as claim 3, which depends on claim 2. Therefore, we do not sustain the 35 U.S.C. § 103 rejection of claims 2 and 3. We note that while claim 12 recites a similar limitation, the limitation appears as part of a conditional step in a method claim. Conditional steps employed in a method claim need not be found in the prior art if, under the broadest reasonable construction, the method need not invoke the steps. Ex parte Schulhauser, No. 2013-007847, 2016 WL 6277792, at *3-6 (PTAB April 28, 2016) (concluding the broadest reasonable interpretation of a claim encompassed situations in which conditional method steps “need not be reached”) (precedential). Here, because the broadest reasonable interpretation of claim 12 does not require performing the conditional method steps at issue, the Examiner does not need to present evidence of obviousness for these steps. See Schulhauser, 2016 WL 6277792, at *4 (“The Examiner did not need to present evidence of the obviousness of the 7 Appeal 2016-002824 Application 13/599,803 remaining method steps of claim 1 that are not required to be performed under a broadest reasonable interpretation of the claim.”). Therefore, we sustain the 35 U.S.C. § 103 rejection of claim 12. DECISION We affirm the decision of the Examiner to reject claims 1 and 4—20 under 35 U.S.C. § 103(a). We reverse the decision of the Examiner to reject claims 2 and 3 under 35 U.S.C. § 103(a). 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). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation