Ex Parte Lockridge et al

Board of Patent Appeals and Interferences

Apr 29, 2010

10223844 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TERRY WAYNE LOCKRIDGE, ROBERT EUGENE
TRZYBINSKI, and DOUGLAS HARRY MORGAN HUTCHINS
____________________

Appeal 2009-005941
Application 10/223,8441
Technology Center 2400
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Decided: April 30, 2010
____________________

Before MAHSHID D. SAADAT, MARC S. HOFF,
and KARL D. EASTHOM, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Thomson Licensing S.A.
Appeal 2009-005941
Application 10/223,844

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ invention concerns a method, a device, and a computer
readable medium for adaptively configuring a router that monitors data
packets propagating in a network to detect a statically configured network
device, wherein the network interface within the router is adapted to the
network parameters associated with the statically configured network device
to operatively couple the statically configured network device to the router
(Abstract).
Claim 1 is exemplary:
1. A configuration method, comprising: configuring an intermediate
communication device in a network without user intervention, the
intermediate communication device being neither an originating source or a
final destination for communications passing there through,
wherein said configuring step comprises:
monitoring, by said intermediate communication device, data packets
propagating in the network to detect a statically configured network device;
and
adapting, by said intermediate communication device, a network
interface in the intermediate communication device to network parameters
associated with the statically configured network device to operatively
couple the statically configured network device to the intermediate
communication device.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
David C. Plummer, “An Ethernet Address Resolution Protocol or
Converting Network Protocol Addresses to 48.bit Ethernet Address for
Transmission on Ethernet Hardware,” IETF, RFC 826, November 1982.

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Application 10/223,844

J. Mogul and J. Postel (Mogul), “Internet Standard Subnetting Procedure,”
IETF, RFC 950, August 1985.

The Examiner rejected claims 1-19 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.2
Claims 1-4, 7-10, 13-16, and 19 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Plummer.
Claims 5-6, 11-12, and 17-18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Plummer in view of Mogul.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Appeal Brief (filed September 19, 2007), the Reply
Brief (filed January 15, 2008), and the Examiner’s Answer (mailed
December 12, 2007) for their respective details.

ISSUE
The Examiner finds that Plummer shows that the Address Resolution
Protocol (ARP) serves as a routing function which may be used in a router
device (“intermediate communication device”) which is responsible for
routing Address Resolution packets (Ans. 9). The Examiner finds that the
ARP is used to setup a routing table, i.e. configure a routing device (Ans. 9).
Appellants contend that Plummer does not teach or suggest the step of
or means for "configuring an intermediate communication device in a
network without user intervention, the intermediate communication device
being neither an originating source or a final destination for communications
passing there through" (App. Br. 16). Appellants contend that the routing
mechanism disclosed in Plummer determines the address of the next hop for

2 The Examiner has withdrawn this rejection (Ans. 8).
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a packet, which does not relate to configuring a router but is rather the
normal operation performed by a host (App. Br. 17 (emphasis added)).
Appellants’ contentions present us with the following issue:
Did Appellants show that the Examiner erred in holding that Plummer
discloses "configuring an intermediate communication device in a network
without user intervention, the intermediate communication device being
neither an originating source nor a final destination for communications
passing there through?"

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellants, the invention concerns a method, a
device, and a computer readable medium for adaptively configuring a router
that monitors data packets propagating in a network to detect a statically
configured network device, wherein the network interface within the router
is adapted to the network parameters associated with the statically
configured network device to operatively couple the statically configured
network device to the router (Abstract).
Plummer
2. Plummer discloses an implementation of an Address Resolution
Protocol (ARP) which enables a sending host S to transmit an Ethernet
packet to a target host T, wherein the protocol allows dynamic distribution
of the information needed to build tables to translate the address of host S
into a 48-bit Ethernet address (Abstract).
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Application 10/223,844

3. Plummer discloses that as a packet is sent down through the
network layers, a routing mechanism determines the protocol address of the
next hop for the packet and on which piece of hardware it expects to find the
station with the immediate target protocol address. The Address Resolution
module converts the pair into a 48-
bit Ethernet address (p. 4, ll. 3-11).
4. Plummer discloses that the ARP allows a machine to gain
knowledge about the higher level protocol activity on an Ethernet cable,
wherein when a monitor receives an Address Resolution packet, it always
enters the
in a table (p. 8, ll. 3-12).
Mogul
5. Mogul discloses the utility of “subnets” in an Internet network,
wherein the “subnets” are logically visible sub-sections of a single Internet
network. The procedures for use of the subnets are disclosed for hosts and
not for gateways (p. 1, ll. 11-18).
6. Mogul discloses that when a host desires to obtain its Internet
address, it may use the Internet Control Message Protocol (ICMP) to gather
its address from a gateway. Specifically, the ICMP is used to provide
address mask information using two new pair of message types: “Address
Mask Request” and “Address Mask Reply.” When a gateway receives an
“Address Mask Request,” it responds by sending an “Address Mask Reply”
containing the host’s Internet address (p. 8, ll. 4-46).
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PRINCIPLES OF LAW
Anticipation pursuant to 35 U.S.C § 102 is established when a single
prior art reference discloses expressly or under the principles of inherency
each and every limitation of the claimed invention. Atlas Powder Co. v.
IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d
1475, 1478-79 (Fed. Cir. 1994).
Analysis of whether a claim is patentable over the prior art under 35
U.S.C. § 102 begins with a determination of the scope of the claim. We
determine the scope of the claims in patent applications not solely on the
basis of the claim language, but upon giving claims their broadest reasonable
construction in light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). The properly interpreted claim must then be
compared with the prior art.
In an appeal from a rejection for anticipation, Appellants must explain
which limitations are not found in the reference. See Gechter v. Davidson,
116 F.3d 1454, 1460 (Fed. Cir. 1997) ("[W]e expect that the Board's
anticipation analysis be conducted on a limitation by limitation basis, with
specific fact findings for each contested limitation and satisfactory
explanations for such findings.")(emphasis added). See also In re Kahn, 441
F.3d 977, 985-86 (Fed. Cir. 2006)
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
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it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.
The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000).
Where the teachings of two or more prior art references conflict, the
Examiner must weigh the power of each reference to suggest solutions to
one of ordinary skill in the art, considering the degree to which one
reference might accurately discredit another. In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991). If the proposed modification would render the prior
art invention being modified unsatisfactory for its intended purpose, then
there is no suggestion or motivation to make the proposed modification. In
re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Further, our reviewing court
has held that “[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.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994); Para-Ordnance Mfg., Inc. v. SGS Importers
Int’l., Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995).
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ANALYSIS
Claims 1-4, 7-10, 13-16, and 19
The Examiner finds that Plummer shows that the Address Resolution
Protocol (ARP) serves as a routing function which may be used in a router
device (“intermediate communication device”) which is responsible for
routing Address Resolution packets (Ans. 9). The Examiner finds that the
ARP is used to setup a routing table, i.e. configure a routing device (Ans. 9).
Independent claims 1 and 13 recite “configuring an intermediate
communication device in a network without user intervention, the
intermediate communication device being neither an originating source or a
final destination for communications passing there through.”
Independent claim 7 recites a processor configured to “configure the
intermediate communication device in a network without user intervention,
the intermediate communication device being neither an originating source
or a final destination for communications passing there through.”
Independent claim 19 recites “configuring the intermediate
communication device in a network without user intervention, the
intermediate communication device being neither an originating source or a
final destination for communications passing there through.”
Appellants contend that Plummer does not teach or suggest the step of
or means for "configuring an intermediate communication device in a
network without user intervention, the intermediate communication device
being neither an originating source or a final destination for communications
passing there through" as required by independent claims 1, 7, 13, and 19
(App. Br. 16). Specifically, Appellants contend that the ARP is used within
two hosts, wherein a sending host determines the address of a target host
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(App. Br. 16, FF 2). Appellants contend that the routing mechanism
disclosed in Plummer determines the address of the next hop for a packet,
which does not relate to configuring an intermediate communication device,
such as a router, but is rather the normal operation performed by a host
(App. Br. 17, FF 2 and 3 (emphasis added)).
We agree with Appellants that Plummer is simply directed to address
translation that converts network protocol addresses to 48 bit Ethernet
addresses, and not to configuring an intermediate device on a network
without user intervention, where the intermediate device is neither an
originating source nor a final destination for communications passing there
through (App. Br. 17). Specifically, Plummer discloses an implementation
of a protocol which enables a sending host S to transmit an Ethernet packet
to a target host T, wherein the protocol allows dynamic distribution of the
information needed to build tables to translate the address of host S into a 48
bit Ethernet address (FF 2). The ARP is used to convert the address of the
target host into a 48 bit Ethernet address in the example disclosed in
Plummer (FF 3). There is no “intermediate communication device,” such as
a router or a gateway, disclosed in the example or in the remainder of the
disclosure.
Appellants have shown that the Examiner erred in finding that
Plummer teaches all the limitations of independent claims 1, 7, 13, and 19.
Thus, we find error in the Examiner’s rejection of claims 1-4, 7-10, 13-16,
and 19 under 35 U.S.C. § 102(b) as anticipated by Plummer, and we will not
sustain the rejection.
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Claims 5-6, 11-12, and 17-18
As noted supra, we did not sustain the rejection of independent claims
1, 7, and 13 from which claims 5-6, 11-12, and 17-18 respectively depend.
We have reviewed the Examiner’s cited reference, Mogul, and find that it
does not remedy the deficiencies we noted with respect to Plummer. We
therefore reverse the Examiner’s rejection of claims 5-6, 11-12, and 17-18
under 35 U.S.C. § 103, for the same reasons expressed with respect to the
rejection of parent claims 1, 7, and 13 supra.

CONCLUSION OF LAW
Appellants have shown that the Examiner erred in holding that
Plummer discloses "configuring an intermediate communication device in a
network without user intervention, the intermediate communication device
being neither an originating source or a final destination for communications
passing there through".

ORDER
The Examiner’s rejection of claims 1-19 is reversed.

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REVERSED

ELD

JOSEPH S. TRIPOLI
THOMSON MULTIMEDIA LICENSING INC.
2 INDEPENDENCE WAY, SUITE #2
P. O. BOX 5312
PRINCETON, NJ 08543-5312

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