Ex Parte Harrington et al

Patent Trial and Appeal Board

Oct 28, 2016

13210922 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/210,922 08/16/2011
62147 7590 11/01/2016
PATTERSON & SHERIDAN, LLP/CISC
24 Greenway Plaza
SUITE 1600
HOUSTON, TX 77046-2472
FIRST NAMED INVENTOR
KENDRA S. HARRINGTON
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.
CPOL973093 3108
EXAMINER
CELANI, NICHOLAS P
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
11/01/2016 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):
P AIR_eofficeaction@pattersonsheridan.com
PSDocketing@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENDRA S. HARRINGTON and DANT. WANG
Appeal2015-003859
Application 13/210,922 1
Technology Center 2400
Before SHARON PENICK, MICHAEL M. BARRY, and
AARON W. MOORE Administrative Patent Judges.
PENICK, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1, 2, 4--10, and 12-20. We have jurisdiction under 35
U.S.C. § 6(b )(1 ).
We affirm.
1 Appellants identify Cisco Technology, Inc. as the real party in interest.
(Appeal Br. 3.)
Appeal2015-003859
Application 13/210,922
Invention
Appellants' invention relates to assigning a network address to a
computing device. In IPv6, a network device provides a computing device
with a prefix used to generate a unique IP address for the computing device.
According to the invention, if no correct prefix is received, a network
address using a different communication protocol, such as IPv4, is assigned
to and transmitted to the computing device for use in communications over
the network. (Abstract.)
Representative Claims
Claims l and 9, reproduced below, are representative:
1. A method, comprising:
determining whether a prefix of a network address of a
first Internet Protocol (IP) version was received at a network
device via a communication network;
upon determining that the prefix was received:
transmitting the prefix from the network device to a
computing device, and
incorporating the prefix into a unique network
address of the first IP version adapted to be used by the
computing device to communicate with the
communication network; and
upon determining that the prefix was not received:
assigning to the computing device a network
address of a second IP version, wherein the first IP version
is different than the second IP version, and
transmitting the network address of the second IP
version from the network device to the computing device,
the network address of the second IP version is adapted to
permit the computing device to communicate with the
communication network.
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9. A network device, comprising:
a network address component configured to:
determine whether a prefix of a network address of
a first IP version was received via a communication
network;
upon determining the prefix was received, transmit
the prefix to a computing device, wherein the prefix is
adapted to be incorporated into a unique network address
of the first IP version adapted to be used by the computing
device to communicate with the communication; and
upon determining that the prefix was not received:
assign to the computing device a network
address of a second IP version, wherein the first IP
version is different than the second IP version, and
transmit the network address of the second IP
version from the network device to the computing
device, the network address of the second IP version
is adapted to permit the computing device to
communicate with the communication network.
Rejections
The Examiner rejects claims 9, 10, and 12-15 under 35 U.S.C. § 101
as directed to non-statutory subject matter. (Final Action 3.)
The Examiner rejects claims 1, 2, 5-10, 13-17, 19, and 20 under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement and
written description requirements. (Final Action 3-9.)
The Examiner rejects claims 1, 2, 4, 6-10, 12, 14--18, and 202 under
35 U.S.C. § 103(a) as unpatentable over R. Hinden & B. Haberman, Unique
Local IPv6 Unicast Addresses RFC 4193 (2005) (hereinafter "RFC 4193"),
R. Dr oms, Network Working Group Request For Comments: 2131 Dynamic
2 While the header in the Examiner's rejection does not indicate that Claims
10 and 17 are part of this rejection, the body of the rejection addresses these
claims. (Final Action 9, 19.)
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Host Configuration Protocol ( 1997) (hereinafter "RFC 2131 "), and Suzuki
(US 2010/0228813 Al; Sept. 9, 2010). (Final Action 9--20.)
The Examiner rejects claims 5, 13, and 19 under 35 U.S.C. § 103(a) as
unpatentable over RFC 4193, RFC 2131, Suzuki, and Yoshimoto (US
2008/0212609 Al; Sept. 4, 2008). (Final Action 20-21.)
Issues
(A) Did the Examiner err in rejecting claims 9, 10, and 12-15 as
directed to non-statutory subject matter?
(B) Did the Examiner err in rejecting certain claims directed to the use
of "a first Internet Protocol (IP) version" and "a second IP version" without
limitation to specific IP versions for failing to comply with the enablement
requirement of 35 U.S.C. 112, first paragraph?
(C) Did the Examiner err in rejecting certain claims directed to the use
of "a first Internet Protocol (IP) version" and "a second IP version" without
limitation to specific IP versions for failing to comply with the written
description requirement of 35 U.S.C. 112, first paragraph?
(D) Did the Examiner err in finding that the combination of RFC
4193, RFC 2131, and Suzuki teaches or suggests assignment of "a network
address of a second IP version" upon determining that a prefix of a network
address of a first IP version was not received at a network device, as in claim
1?
(E) Did the Examiner err in finding, with respect to claim 9, that the
combination of RFC 4193, RFC 2131, and Suzuki teaches or suggests a
network device configured to determine whether a prefix of a network
address of a first IP version was received, and to transmit the prefix if
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Application 13/210,922
received or assign a network address of a second IP version if the prefix was
not received?
ANALYSIS
(A) Non-Statutory Subject Matter
With regard to claims 9, 10, and 12-15, the Examiner finds these
claims are directed to non-statutory subject matter because the network
device of claim 9 "'comprises' only limitations that could be code per se"
and "[a] claim to something limited only by code is non-statutory." (Final
Action 3.) With respect to the preamble's recitation of "a network device,"
the Examiner finds that "[g]enerally, the office does not give patentable
weight to the preamble of a claim." (Answer 2.) With respect to the
claimed "network address component," the Examiner finds "[a] component
is a nonce word which could (and given its functionality likely does)
comprise only code per se." (Id.)
Appellants argue that, "because the point of 35 U.S.C. § 101 is to
ensure the claimed invention falls within a statutory class - i.e., process,
machine, manufacture, or composition of matter, ignoring the preamble
(which defines the statutory class) is a critical error." (Reply Br. 2; Appeal
Br. 7.)
The Examiner finds that "[a Jn embodiment of claim 9 could be only
code per se." (Final Action 22). Claim 9 is directed to a network device
which comprises only one recited element: a network address component
which performs various steps of determination, transmission, and
assignment. With respect to the term "network address component," the
Specification discloses that "aspects of the present disclosure, such as the
first and second address components, may be implemented in hardware or
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software or in a combination of hardware and software. (Spec. il 60.) The
first network address component 312 is disclosed as being network address
component 255, which corresponds to the network address component in the
claim. (Id. if 40.)
Additionally, Fig. 2, of the specification depicts a router 120,
corresponding to the claimed network device, containing network address
component 255. (Id. iii! 13, 23.) The Specification discloses, with respect to
the block diagrams such as Fig. 2, that, "each block in the ... block
diagrams may represent a module, segment or portion of code, which
comprises one or more executable instructions for implementing the
specified logical function(s)." (Id. if 61.)
Thus, we conclude that one of ordinary skill in the art would
understand that the network address component of the claim could be
implemented in a non-statutory manner, as code. Cf Ex parte Mewherter,
2013 WL 4477509, *3, *6-7 (PTAB May 8, 2013) (precedential) (finding,
in the absence of express limitation in the specification, a term possibly
including non-statutory embodiments will be read to include such
embodiments, and distinguishing from cases in which the specification
contains express language excluding non-statutory embodiments.)
Therefore, we are not convinced of Examiner error in the determination that
claim 9, and dependent claims 10, and 12-15, are directed to non-statutory
subject matter.
Therefore, we affirm the rejection of claims 9, 10, and 12-15 under 35
U.S.C. § 101 as directed to non-statutory subject matter.
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(B) 35US.C.§112(1) Rejection-Enablement
With regard to claims 1, 2, 5-10, 13-17, 19, and 20, the Examiner
finds these claims are not enabled, as undue experimentation would be
required in order to determine how a generic Internet protocol could function
as the "first IP version" of the claim. (Final Action 3--4; Answer 4.)
Appellants argue that, "the lengthy discussion regarding these IP
versions clearly enable one of ordinary skill in the art to perform the claimed
techniques on any past or future IP protocols that have the functionality and
structure recited in the claims." (Appeal Br. 8.)
We agree with Appellants. The Examiner notes (Final Action 4) that
the Wands factors of breadth of the claims, amount of direction provided by
the inventor, and existence of working examples were considered and weigh
against finding enablement. Determining whether any necessary
experimentation is undue involves considering relevant factors including,
but not limited to: (1) the quantity of experimentation necessary; (2) the
amount of direction or guidance presented; (3) the presence or absence of
working examples; (4) the nature of the invention; (5) the state of the prior
art; ( 6) the relative skill of those in the art; (7) the predictability or
unpredictability of the art; and (8) the breadth of the claims. In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988).
We note that both the Examiner and Appellants discuss the Wands
factor of "the presence or absence of working examples" - and we find that
this factor, and the balance of these Wands factors, indicate that one of
ordinary skill in the art, using the working example presented by Appellants
in the embodiment discussed in the Specification, would be able to
determine how to select IP versions which could work in the invention of
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claim 1. Thus, we find that claim 1 is enabled, and we reverse the
enablement rejection of this claim, and of claims 2, 5-10, 13-17, 19, and 20,
rejected on the same basis.
(C) 35 USC§ 112(1) Rejection- Written Description
With regard to claims 1, 2, 5-10, 13-17, 19, and 20, the Examiner
finds these claims are not supported by adequate written description in the
specification. (Final Action 4--9.) The Examiner cites LizardTech Inc. v.
Earth Resource Mapping Inc., 424 F.3d 1336 (Fed. Cir. 2005) in support. In
that case, the specification was "directed at describing a particular method
for" calculating an array of values while a claim was directed generally at
the creation of such an array. LizardTech at 1345. The Federal Circuit
offered the following analogy:
Id.
[S]uppose that an inventor created a particular fuel-efficient
automobile engine and described the engine in such detail in the
specification that a person of ordinary skill in the art would be
able to build the engine. Although the specification would meet
the requirements of section 112 with respect to a claim directed
to that particular engine, it would not necessarily support a
broad claim to every possible type of fuel-efficient engine, no
matter how different in structure or operation from the
inventor's engine.
We agree with Appellants that this is not analogous to the situation in
LizardTech. (See Appeal Br. 10-11; Reply Br. 3--4.) As Appellants argue,
claim 1 focuses on a technique which is described in the specification with
respect to a specific embodiment of the technique. In order to satisfy the
written description requirement, "the specification must describe an
invention understandable to [a] skilled artisan and show that the inventor
actually invented the invention claimed." Ariad Pharms., Inc. v. Eli Lilly &
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Application 13/210,922
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). "[T]he test for
sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Id. (citation
omitted). Appellants disclose a generic address assignment process (Spec. i-f
42, Fig. 4) and claim this process generally, in claim 1, and more
specifically, in claim 4.
Thus, we reverse the written description rejection of claim 1, and of
claims 2, 5-10, 13-17, 19, and 20, rejected on the same basis.
(D) 35 US.C. § 103 Rejection of Claim 1- assignment of "a
network address of a second IP version" upon determining that
a prefix of a network address of a first IP version was not
received
Appellants argue that the combination of references used by the
Examiner does not teach or suggest the use of the receipt of a prefix of a first
IP version in a determination of whether to assign a network address for a
first IP version or a second IP version, as recited in claim 1. (Appeal Br. 12-
16; Reply Br. 5---6.) Appellants argue that Suzuki teaches only conversion of
an IPv6 address to an IPv4 address, and compare the teachings of Suzuki (in
which "if the gateway device 1 does receive a URL from the terminal 4 that
includes an IPv6 IP address, the device 1 translates the IP address into an
IPv4 address") with claim 1 (in which "if the network device does not
receive the prefix of the first IP version then it assigns a network address of
the second, different IP version to the computing device"). (Appeal Br. 14.)
Appellants argue:
Claim 1 recites using the receipt of the prefix at the network
device (which is incorporated in the unique network address for
IPv6) as the trigger to determine whether to assign a network
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address using the first IP version (e.g., IPv6) or the second IP
version (e.g., 1Pv4).
(Appeal Br. 15.) Because, Appellants contend, none of the prior art
references teach the use of a receipt of a prefix as a trigger for determining
to convert between the versions of IP used for the network address assigned,
this rejection is flawed.
The Examiner explains:
[RFC 4193] shows that a system can determine not only whether
it has received an IPv6 prefix and then take an action after that
determination (such as configuring an address), but that it [has]
the further granularity to distinguish between types of IPv6
addresses ....
(Answer 10.)
In response, Appellants argue that "[a ]t most, [RFC 4193] teaches if
an IPv6 [prefix] is not received, the system does not perform an action - i.e.,
the system cannot generate a global or local IPv6 address." (Reply Br. 5.)
Referring to RFC 4193 and Suzuki, Appellants argue that "[t]hese references
do not teach or hint at using the determination that an IPv6 address was not
received to trigger performance of any kind of affirmative action." (Id.)
However, as the Examiner finds, RFC 4193 describes a system
including a node receiving two kinds of prefixes (global and local IPv6
prefixes) and performing different actions based on which kind of IPv6
prefix is retrieved. (Answer 10 ("For the case where both global and Local
IPv6 prefixes are being advertised on a subnet, this will require a switch in
the devices to only autoconfigure Local IPv6 addresses.") (citing RFC 4193
§ 4.6).) Thus, the Examiner finds:
the "trigger" aspect of the invention is known: IPv6 prefixes are
known, and the ability to receive them is known, and the
determination of whether a prefix is received is known, and then
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using that determination (whether it returns a true or false value)
to drive other actions is known.
(Answer 11.)
Appellants' argument is addressed to the individual teachings of the
references, rather than the combination of the references. In re Keller, 642
F.2d 413, 426 (CCPA 1981) ("[O]ne cannot show nonobviousness by
attacking references individually where, as here, the rejections are based on
combinations of references." (citations omitted)); In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art. See Keller, 642 F.2d at 425.
Here, the Examiner finds that the different treatment of traffic on a
network, based on the receipt of a specific type of prefix, is taught or
suggested in the combination of the prior art. The Examiner's findings are
reasonable because the skilled artisan would "be able to fit the teachings of
multiple patents together like pieces of a puzzle" since the skilled artisan is
"a person of ordinary creativity, not an automaton." KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 420-21 (2007). On this record, Appellants do
not present sufficient evidence or persuasive argument that the combination
of the cited references was "uniquely challenging or difficult for one of
ordinary skill in the art" or "represented an unobvious step over the prior
art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418-19).
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On this issue, we are not convinced that the Examiner erred in
rejecting claim 1; independent claims 9 and 16, argued on the same basis
(Appeal Br. 15-16); or their dependent claims, which Appellants do not
separately argue. We therefore affirm the Examiner's rejection of claims 1,
2, 4--8, and 16-20 under 35 U.S.C. § 103(a) as unpatentable. 3
(E) 35 US. C. § 103 Rejection of Claim 9- network device
configured to either transmit a first IP version prefix if received
or assign a network address of a second IP version if the prefix
was not received
Appellants further argue that:
the cited references do not teach a network device capable of
providing information to the same computing device so that the
computing device is assigned either a network address of the first
IP version or a network address of the second IP version.
(Appeal Br. 17; see also id. at 16-18; Reply Br. 6-7.) Appellants stress that
the Suzuki gateway device "does not have the capability to assign network
addresses for different IP versions to the same computing device." (Appeal
Br. 17.)
However, the claim requires that, depending on whether a prefix of a
first IP version is received, the network address component must either
transmit the prefix (if a prefix is received) or assign a network address of a
second IP version and transmit that network address (if a prefix is not
received). There is no requirement in the claim that the same computing
device is assigned two network addresses, as Appellants argue. The
argument presented is not commensurate with the scope of the claim.
3 Appellants argue an additional basis for Examiner error in the rejection of
independent claim 9 and its dependent claims, which we address infra.
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Thus, we are not convinced that the Examiner erred in rejecting claim
9 or its dependent claims, and we therefore affirm the Examiner's rejection
of claims 9, 10, and 12-15 under 35 U.S.C. § 103(a) as unpatentable.
DECISION
We affirm the rejection of claims 9, 10, and 12-15 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
We reverse the rejection of claims 1, 2, 5-10, 13-17, 19, and 20 under
35 U.S.C. § 112, first paragraph as not enabled.
We reverse the written description rejection of claims 1, 2, 5-10, 13-
17, 19, and 20 under 35 U.S.C. § 112, first paragraph.
We affirm the Examiner's rejection of claims 1, 2, 4--10, 12-15, and
16-20 under 35 U.S.C. § 103(a) as unpatentable.
Pursuant to 37 C.F.R. § 1.136(a)(l )(iv), no time period for taking any
subsequent action in connection with this appeal may be extended.
AFFIRMED
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