Ex Parte Pirbhai et alDownload PDFPatent Trial and Appeal BoardAug 22, 201812480456 (P.T.A.B. Aug. 22, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/480,456 06/08/2009 151091 7590 08/24/2018 WSOU Investments, LLC 11150 Santa Monica Blvd., Suite 1400 Los Angeles, CA 90025 FIRST NAMED INVENTOR Shafiq Pirbhai 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. ALC 3469 3416 EXAMINER VU, HOANG-CHUONG Q ART UNIT PAPER NUMBER 2476 NOTIFICATION DATE DELIVERY MODE 08/24/2018 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): docketing@burdickpatents.com PTOL-90A (Rev. 04/07) I UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHAFIQ PIRBHAI, RON HABERMAN, and MUSTAPHA AISSAOUI Appeal2016-005942 Application 12/480,456 Technology Center 2400 Before JOHN A. EV ANS, NATHAN A. ENGELS, and CHRISTA P. ZADO, Administrative Patent Judges. EV ANS, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. § I34(a) of the Examiner's Final Rejection of Claims 1--4, 7-15, and 18-22. Claims App.'x. Claims 5, 6, 16, and 17 are cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 2 1 The Appeal Brief identifies Alcatel-Lucent, as the real party in interest. App. Br. 1. 2 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed October 16, 2015, "App. Br."), the Reply Brief (filed May 18, 2016, "Reply Br."), the Examiner's Answer (mailed April 20, 2016, "Ans."), the Final Action (mailed June 3, 2015, "Final Appeal 2016-005942 Application 12/480,456 STATEMENT OF THE CASE The claims relate to a provider edge node and methods performed thereon. See Abstract. Related Appeals The present Application was the subject of Appeal 2012-007632, mailed November 24, 2014 wherein the present Panel of the Board Affirmed the Examiner ("Decision"). The claims were subsequently amended and represented for examination. Invention Claims 1 and 12 are independent. An understanding of the invention can be derived from a reading of exemplary Claim 1, which is reproduced below: 1. A provider edge node for allowing a customer edge device to access a Virtual Leased Line (VLL) service, the provider edge node comprising: a cache that is configured to store an association between an Internet Protocol (IP) address of the customer edge device and a Media Access Control (MAC) address of the customer edge device; a backup memory that maintains a persistent copy of a last-known IP address of the customer edge device during a cache-clearing event in the cache, wherein the backup memory does not store the MAC address; a communication interface that is configured to transmit data packets to the MAC address of the customer edge device; and Act."), Specification (filed June 8, 2009, "Spec.") for their respective details. 2 Appeal 2016-005942 Application 12/480,456 a processor that is configured to update the cache upon receipt of an address update message from the customer edge device, the address update message indicating the IP address and the MAC address of the customer edge device, removes the stored association from the cache in response to the cache- clearing event, while maintaining the persistent copy of the last- known IP address in the backup memory, wherein the cache-clearing event temporarily interrupts connectivity to the customer edge device, at a time subsequent to removal of the stored association from the cache, sends an address discovery message using the communication interface, the address discovery message requesting an updated MAC address corresponding to the last-known IP address maintained in the backup memory, and updates the cache to reflect the updated MAC address upon receipt of an additional address update message from the customer edge device, wherein the address update message and the additional address update message are Neighbor Discovery Protocol advertisements and the address discovery message is a Neighbor Discovery Protocol solicitation. References and Rejections Chen, et al., US 6,987,743 B2 Jan. 17,2006 Takagaki, et al., US 2008/0008183 Al Jan. 10,2008 Haberman, et al., US 7,827,310 Bl Filed Apr. 27, 2008 Srinivasan US 2009/0285089 Al Filed May 15, 2008 Teng US 2009/0003241 Al Jan. 1,2009 Balus, et al., US 2008/0084891 Al Apr. 10, 2008 Haberman, et al., US 7,827,310 Bl Filed Apr. 27, 2008 3 Appeal 2016-005942 Application 12/480,456 The claims stand rejected as follows: 1. Claims 1 and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen and Takagaki. Final Act. 2-8. 2. Claims 2, 3, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen, Takagaki, and Teng. Final Act. 8-10. 3. Claims 4, 7, 8, 15, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen, Takagaki, and Srinivasan. Final Act. 10-13. 4. Claims 9, 10, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen, Takagaki, and Haberman. Final Act. 13-14. 5. Claims 11 and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen, Takagaki, and Balus. Final Act. 15-16. ANALYSIS We have reviewed the rejections of Claims 1-3 and 5-20 in light of Appellants' arguments that the Examiner erred. We consider Appellants' arguments seriatim, as they are presented in the Appeal Brief, pages 5-11. CLAIMS 1 AND 12: OBVIOUSNESS OVER CHEN AND T AKAGAKI Independent claim 1 recites, inter alia, "a backup memory that maintains a persistent copy of a last-known IP address of the customer edge device during a cache-clearing event." Appellants contend the prior art fails to teach or suggest this limitation. App. Br. 5. 4 Appeal 2016-005942 Application 12/480,456 The Examiner finds this limitation is taught "inherently" by Chen. The Examiner specifically finds the "IP address is inherently maintained in 'some memory' during the cache timeout because it was used in an ARP request" and "Chen does not need to explicitly disclose a "backup memory' in order to teach maintaining last known IP address." Final Act. 3 (citing Decision, 4--5). Appellants argue the fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. App. Br. 6. ( citing In re Rijckaert3). Appellants further argue the Examiner has not provided a basis in fact or technical reasoning to reasonably support the finding that the allegedly inherent characteristic necessarily flows from the teachings of Chen. Id. ( citing Ex parte Levy4). Appellants contend our Decision found Estrada, 5 not Chen, teaches "backing up an IP address," but that Estrada is not relied upon for the present rejection. Id. The Answer finds Chen teaches that after the cache entries have timed out, host B sends an ARP (Address Resolution Protocol) request to determine MAC address of host B. Ans. 19. The ARP request contains the IP and MAC addresses of host A and the IP address of host B. Id. Thus, the Examiner finds the IP address of host Bis inherently, and necessarily, maintained during the cache timeout because it was used in the ARP 3 In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). 4 Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). 5 Estrada, et al., US 2009/0119414 Al, pub. May 7, 2009. The Examiner does not apply Estrada in the present Appeal. 5 Appeal 2016-005942 Application 12/480,456 request. Id. ( emphasis added). The Examiner further finds the Final Rejection of December 14, 2011 applied Estrada to show that it was well- known to maintain a copy of the IP address in a back-up memory. Id. However, the Examiner explains Estrada is not applied in the currently- appealed rejection because the "Board implied that 'backup memory' can be relied upon using the inherent disclosure of Chen." Id. at 19-20. Appellants argue the Answer finds "Chen necessarily maintains an IP address" by relying upon an ARP request, but submit that an ARP request is not equivalent to a backup memory. Reply Br. 2. Furthermore, Appellants contend the Examiner unreasonably broadened the claim language by ignoring the requirement to maintain a persistent copy of a last-known IP address of the customer edge device during a cache-clearing event. Id. Appellants argue the claims recite "cache-clearing," but instead, the Examiner cites "a cache timeout." Id. Appellants maintain Chen's cache timeout is not equivalent to the claimed cache-clearing event. Appellants further argue the Examiner does not accurately characterize our prior Decision because, according to Appellants, the Decision refers to Estrada for "backing up" rather than inherency. Id. Our Decision found: [ r ]ather than rely on an inherent disclosure of "backup memory" in Chen to maintain the IP address, the Examiner relies upon the teaching in Estrada of backing up an ARP cache in data storage. Decision, 5 (citing Ans. 5, 18-20). Estrada provides that "it has been recognized that if the data contents of the router 102 ARP cache 304 could be copied or acquired before the cache was flushed or emptied, such data could be used to identify each computer device that is connected 6 Appeal 2016-005942 Application 12/480,456 to router 102 to transmit data." Estrada ,r 29; see also ,r,r 30, 32. Therefore, according to the Examiner, Estrada teaches backing up an IP address in backup memory. Decision, 5 (citing Ans. 5, 19-20). We found that: [i]n particular, Estrada teaches storing all contents of the ARP cache, including IP addresses, in backup memory by taking a snapshot of all ARP cache content prior to flushing the ARP cache. Id. at 6 (citing Estrada ,r 30, 32). However, notwithstanding that explicit finding, the Examiner opted not to apply Estrada in the current set of rejections. See Ans. 20. In the absence of Estrada, the prior art before us fails to teach "a backup memory that maintains a persistent copy of a last-known IP address of the customer edge device during a cache-clearing event," as recited in claim 1. Appellants contend independent claim 12 recites substantially similar subject matter. App. Br. 5. The Examiner applies the same findings to both independent claims 1 and 12. Ans. 21. In view of the foregoing, we decline to sustain the rejection of claims 1 and 12. CLAIMS 2--4, 7-11, 13-15, AND 18-22: OBVIOUSNESS OVER CHEN, T AKAGAKI, AND VARIOUS OF TENG, SRINIVASAN, HABERMAN, AND BALUS Appellants contend the secondary references fail to supply the teachings missing from Chen. See App. Br. 8-11. The Examiner does not apply the secondary references to the disputed limitation. See Ans. 22-23. In view of the foregoing, we decline to sustain the rejection of claims 2--4, 7-11, 13-15, and 18-22. 7 Appeal 2016-005942 Application 12/480,456 DECISION The rejections of Claims 1--4, 7-15, and 18-22 under 35 U.S.C. § 103(a) are REVERSED. REVERSED 8 Copy with citationCopy as parenthetical citation