Ex Parte Jacobs et al

Board of Patent Appeals and Interferences

Jan 14, 2009

09561361 (B.P.A.I. Jan. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WYNONA PERSEPHONE JACOBS, STEVEN
EDWARD LEDFORD, ALEJANDRO EMILO VASQUEZ,
and COLIN MICHAEL WINEGARDEN
____________

Appeal 2008-2280
Application 09/561,361
Technology Center 2400
____________

Decided: January 14, 2009
____________
Before JOHN C. MARTIN, ST. JOHN COURTENAY III,
and STEPHEN C. SIU, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-11, 15, 17 and 19-23. Claims 12-14, 16
and 18 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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THE INVENTION
The disclosed invention relates generally to data processing networks.
More particularly, the present invention relates to a bridge utilized to couple
a plurality of local area networks. (Spec. 1, ll. 3-4).
Independent claim 1 is illustrative:
1. A bridge adaptable for coupling to one or more LANs,
comprising:

a first port adaptable for coupling to a first LAN;

circuitry operable for counting a number of GVRP PDUs
propagated through the first port.

THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the rejections:
Meier US 6,847,620 B1 Jan. 25, 2005
(filed May 12, 2000)
Smith US 6,515,969 B1 Feb. 4, 2003
(filed Mar. 1, 1999)
Drysdale US 6,058,102 May 2, 2000
(filed Nov. 6, 1998)

THE REJECTIONS
1. The Examiner rejected claims 1-11 and 20-23 under 35 U.S.C.
§ 103(a) as being unpatentable over Smith in view of Drysdale.

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2. The Examiner rejected claims 15, 17, and 19 under 35 U.S.C.
§ 102(e) as being anticipated by Meier.

Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006). Therefore, we look to Appellants’ Briefs to show error in
the proffered prima facie case.
Only those arguments actually made by Appellants have been
considered in this decision. Arguments which Appellants could have made
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).

PRINCIPLES OF LAW
Obviousness under 35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, “[w]hat matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1742
(2007). To be nonobvious, an improvement must be “more than the
predictable use of prior art elements according to their established
functions.” Id. at 1740.
Claims 1, 2, 4, 5, 7, 8, 10, and 11
We consider the Examiner’s rejection of claims 1, 2, 4, 5, 7, 8, 10, and
11 under 35 U.S.C. § 103(a) as being unpatentable over Smith in view of
Drysdale. Since Appellants’ arguments have treated these claims as a single
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group which stand or fall together, we select claim 1 as the representative
claim for this group. See 37 C.F.R. § 41.37(c)(1)(vii).

APPELLANTS’ CONTENTIONS
1. Appellants contend that the cited references fail to teach the
claimed “GVRP PDUs” (GARPVLAN Registration Protocol,
Protocol Data Units). (App. Br. p. 5).
2. Appellants contend that the references, most notably Drysdale,
merely teach “packet data units,” which differ from the claimed
“protocol data units,” in that a data packet is not limited to any
particular data transmission protocol. (App. Br. pp. 5-6).
3. Appellants contend that the Examiner failed to provide an adequate
motivation to combine Smith and Drysdale because the Examiner’s
stated motivation for the combination is not supported. (App. Br.
pp. 6-7).

ISSUES
Have Appellants shown the Examiner erred in determining that the
cited references teach GVRP PDUs?
Have Appellants shown that the Examiner failed to provide a proper
motivation to combine Smith and Drysdale?

FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
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Smith
1. Smith is directed to disseminating Virtual Local Area Network
(VLAN) membership information across computer networks
defining multiple spanning trees. (Abst. ll. 1-4).
2. Smith teaches GARP VLAN Registration Protocol application
components that define a plurality of contexts each of which is
associated with a spanning tree engine and one or more VLAN
designations. (Id. ll. 13-16).
3. Smith teaches that the GARP-PDU message typically includes a
Media Access Control header. (Col. 4, ll. 5-11).
Drysdale
4. Drysdale is directed to monitoring communication network
performance. (See Abst. ll. 1-2 and 10-14).
5. Drysdale teaches use of a counter that accumulates the count of the
total number of PDUs (packet data units) delivered by a network
over a virtual circuit. (Col. 8, ll. 25-31).
Specification
6. The Specification teaches that the GARP VLAN Registration
Protocol defines a GARP Application that provides the VLAN
registration service defined in IEEE 802.1Q, Clause 11.2.2. (Spec.
p. 9, ll. 14-16).
7. The Specification defines PDUs as “protocol data units.” (Spec. p.
4, ll. 9-10).

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ANALYSIS
Claim Construction
“[T]he PTO gives claims their ‘broadest reasonable interpretation.’”
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)).
At the outset, we note that the Specification does not define “protocol
data units” (PDUs). Thus, PDUs will be interpreted in accordance with
common usage of the term. Accordingly, a “protocol data unit” is
interpreted as a packet or unit of data that is passed across a network where
the unit of data may be specified in a protocol associated with a given layer
of the OSI (Open Systems Interconnection) seven layer model.
Based on the above claim construction, it is our view that the cited
references teach or suggest the claimed counting of GVRP PDUs, for the
reasons discussed infra. More particularly, we do not find Appellants’
contentions regarding the deficiencies of Drysdale to be persuasive.
After considering the evidence before us, it is our view that
Appellants’ argument does not take into account what the collective
teachings of the prior art would have suggested to one of ordinary skill in the
art and is therefore ineffective to rebut the Examiner’s prima facie case of
obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“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
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would have suggested to those of ordinary skill in the art.”) (citations
omitted). This reasoning is applicable in the present case.
As discussed above, we note that Smith teaches use of the GVRP
components, which is the same protocol recited in Appellants’ claims. (FF
2). According to Smith, the GVRP components are used to communicate
and exchange information between applications. It is our view that the
teaching of GVRP components at least suggests that data packets are
transmitted in the GVRP protocol. We further note that the Examiner relied
on Drysdale to teach counting data packets. (FF 5).
Thus, the combined teachings of Smith and Drysdale result in a
counter of data packets and GVRP components, which include GVRP data
packets. In light of the above, we do not find Appellants’ arguments that the
cited references fail to teach the limitation of counting GVRP PDUs to be
persuasive.
As mentioned supra, Appellants contend that the Examiner did not
provide an adequate motivation to combine the teachings of Smith and
Drysdale. However, as noted by the Examiner a proper motivation to
combine the teachings of references does not have to be found from the
teachings of the references themselves. (Ans. 8). The Examiner’s stated
motivation was to maximize the ability of PDUs forwarding at line speed
and provide high performance switching of PDUs. (Id.).
Appellants further assert that there is no reason why a skilled artisan
would modify Smith in the manner proposed by the Examiner. (Reply Br.
4). However, as discussed above, the Examiner did provide a motivation to
do so, even though the Examiner’s motivation to do so was not obtained
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from the references themselves. Appellants have not provided a substantive
counter argument as to why the proposed combination would not work or
that the references themselves teach away from each other. Thus, we do not
find Appellants’ arguments adequate to rebut the Examiner’s prima facie
case.
Based on the record before us, we conclude that Appellants have not
shown that the Examiner erred in determining that the cited references
render obvious the limitations of claim 1, and claims 2, 4, 5, 7, 8, 10, and 11
which fall therewith. Accordingly, we sustain the Examiner’s rejection of
claim 1, 2, 4, 5, 7, 8, 10, and 11 as being unpatentable under 35 U.S.C.
§ 103(a) over Smith and Drysdale.

Claims 3, 6, and 9
We consider next the Examiner’s rejection of claims 3, 6, and 9 under
35 U.S.C. § 103(a) as being unpatentable over Smith in view of Drysdale.
Since Appellants’ arguments have treated these claims as a single group
which stand or fall together, we select claim 3 as the representative claim for
this group. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants contend that the cited references fail to teach or suggest
the limitation of incrementing a counter when a received PDU has a
specified MAC address.
ISSUE
Have the Appellants shown the Examiner erred in determining that the
cited references teach the limitation of incrementing a counter when a
received PDU has a specified MAC address?
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ANALYSIS
Appellants contend that because the Examiner has not shown where
the limitations of claim 3 are explicitly taught in the cited references, the
Examiner has not provided a prima facie case of obviousness. We disagree.
As discussed supra, the test for obviousness is not that the claimed
invention must be expressly suggested in any one or all of the references.
Rather, the test is what the collective teachings of the references would have
suggested to those of ordinary skill in the art.
In the present case, we agree with the Examiner’s determination that
Smith teaches that the GARP-PDU message typically includes a Media
Access Control (MAC) header. (FF 3). The MAC header includes, among
other things, destination and source address fields. Thus, the Examiner’s
prima facie case of obviousness exists in that the PDUs can be monitored for
those containing MAC addresses, and the counter incremented accordingly.
(Ans. p. 9). For this reason, we do not find Appellants’ arguments that the
Examiner has not provided a prima facie case of obviousness to be
persuasive.
Based on the record before, we conclude that the Appellants have not
shown the Examiner failed to provide a prima facie case of obviousness.
Accordingly, we sustain the Examiner’s rejection of claim 3 and claims 6
and 9, which fall therewith, as being unpatentable over Smith and Drysdale.
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Claims 20-23
We consider next the Examiner’s rejection of claims 20-23 as being
unpatentable over Smith and Drysdale. Claims 20 and 22 recite limitations
that differ from the limitations recited in claims 21 and 23. Thus, claims
20-23 will be grouped accordingly, i.e., claim 20 with 22, and claim 21 with
23.
Regarding claims 20 and 22, Appellants contend that because
Drysdale teaches that all data packets are counted regardless of their type of
protocol, the cited references can not teach not counting any specific type of
PDU. We agree.
As noted by Appellants, the Examiner has not shown that the cited
references teach the limitation of not counting any types of data messages
other than GVRP PDUs. (Reply Br. 10). Accordingly, we agree with
Appellants’ contention that the Examiner did not provide a prima facie case
of obviousness in rejecting claims 20 and 22 because the cited references do
not teach or suggest the negative limitation of not counting any type of data
messages other that GVRP PDUs.
Regarding claims 21 and 23, similar to claims 20 and 22, Appellants
contend that the Examiner did not show where the cited references taught
counting only GVRP PDUs to the exclusion of other types of packets. It is
our view that the combined teachings of the references do not distinguish
between GVRP PDUs and any other types of data packets. For this reason,
we agree with Appellants’ contention that the Examiner did not provide a
prima facie case of obviousness in rejecting claims 21 and 23.
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Based on the record before us, we conclude that Appellants have
shown the Examiner erred regarding the obviousness rejection of claims 20-
23. Accordingly, we reverse the Examiner’s rejection of claims 20-23 as
being unpatentable over Smith and Drysdale.

Anticipation under 35 U.S.C. § 102
We next consider the Examiner’s rejection of claims 15 and 17 under
35 U.S.C. § 102(e) as being anticipated by Meier. Since Appellants’
arguments have treated these claims as a single group which stand or fall
together, we select claim 15 as the representative claim for this group. See
37 C.F.R. § 41.37(c)(1)(vii).

PRINCIPLE OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).

Appellants’ Contentions
1. Meier fails to disclose static VLANs. (App. Br. 9).
2. Meier merely discloses a count field that is used to store the
number of stations that are active for a given VLAN ID. (Id).
3. Meier fails to teach circuitry that is operable for determining a
number of static VLANs supported in the bridge at any one
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time by subtracting a value of the first counter from a value of
the second counter. (Reply Br. 12).

ISSUE
Have the Appellants shown the Examiner erred in determining that
Meier discloses circuitry operable for determining a number of static
VLANs supported by the bridge at any one time by subtracting a value of a
first counter from a value of a second counter?”

FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Meier
8. Meier is directed to a mobile Virtual LAN in which multiple
protocols and proxy services are executed by an access point.
(See Abst. ll. 1-2).
9. Meier teaches that a VLAN table which includes several entries
including a count field. (Col. 10 ll. 15-19).
10. Meier teaches that the count field is used to store the number of
stations that are active for a given VLAN ID. The count field is
incremented when a station is added to the route table, and
decremented when a station is deleted from the route table (col.
10, ll. 20-24).

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ANALYSIS
As stated supra, Appellants contend that Meier fails to teach circuitry
that is operable for determining a number of static VLANs supported in the
bridge at any one time by subtracting a value of the first counter from a
value of the second counter (App. Br. 9). We agree.
The Examiner contends that Meier teaches subtracting a value from a
first counter from a value of the second counter in order to determine a
number of static VLANS. (Ans. 11). However, we do not find this teaching
in Meier. As discussed above, Meier teaches a “count entry” in a VLAN
table that is incremented and decremented as stations are added to, or deleted
from the route table. (FF 8-10). Thus, we find Appellants’ arguments
persuasive that there is no language in Meier that discloses circuitry operable
for determining a number of static VLANs supported in the bridge, as
recited in claim 15.
Based on the record before us, we find Appellants have shown the
Examiner erred in rejecting claim 15. We further note that independent
claim 17 recites “determining a number of static VLANs supported in the
bridge at the specified time by subtracting a value of the first counter from a
value of the second counter.” Thus, for the same reasons stated supra
regarding claim 15, we find Appellants have shown the Examiner erred in
rejecting independent claim 17 and claim 19 that depends therefrom.

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Accordingly, we reverse the Examiner’s rejection of claims 15, 17,
and 19 under 35 U.S.C. 102(e) as being anticipated by Meier.

CONCLUSIONS
Based on the findings of fact and analysis above, we conclude the
following:
Appellants have not established that the Examiner erred in
determining that the cited references teach “GVRP PDUs,” or in combining
Smith and Drysdale.
Appellants have not established that the Examiner erred in
determining that the cited references teach the limitation of incrementing a
counter when a received PDU has a specified MAC address.
Appellants have established that the Examiner erred in determining
that the cited references distinguish between different PDUs.
Appellants have established that the Examiner erred in determining
that Meier teaches circuitry operable for determining a number of static
VLANs supported by the bridge at any one time by subtracting a value of a
first counter from a value of a second counter.

DECISION
The decision of the Examiner rejecting claims 1-11 under
35 U.S.C. § 103(a) is affirmed.
The decision of the Examiner rejecting claims 20-23 under 35 U.S.C.
§ 103(a) is reversed.

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The decision of the Examiner rejecting claims 15, 17 and 19 under
35 U.S.C. § 102(e) is reversed.
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).

AFFIRMED-IN-PART

pgc

Robert A. Voigt, Jr.
WINSTEAD SECHREST & MINICK PC
PO BOX 50784
DALLAS TX 75201
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