Ex Parte Wong

Board of Patent Appeals and Interferences

May 11, 2012

10746750 (B.P.A.I. May. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ISAAC WONG
____________________

Appeal 2009-010810
Application 10/746,750
Technology Center 2400
____________________

Before MAHSHID D. SAADAT, THOMAS S. HAHN, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant invokes our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-31 (Final Action 2-31).1 We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

1 Claim 31 is not listed in the statement of rejection (Final Action 2), but it is
addressed in the reasons (Final Action 30-31). The absence from the
statement is found to be harmless error.
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STATEMENT OF CASE
Reproduced claim 1 is exemplary of the claims on appeal:
1. A method for forwarding a data packet addressed to a
cluster of servers comprising:
receiving a connection request from a client;
creating a connection identifier according to the connection request;
forwarding the connection request to a first identified server in
the cluster of servers;
receiving, from a responding server, a response to the
connection request;
associating the connection identifier with a physical address of
the responding server that generated the response in the cluster of
servers;
receiving subsequent traffic from the client associated with the
connection identifier;
forwarding the subsequent traffic to the responding server
associated with the connection identifier.
Rejection
Claims 1-31 stand rejected under 35 U.S.C. § 103(a) as being obvious
over Albert (US 6,742,045 B1; May 25, 2004 (filed July 2, 1999)) and
Richard W. Stevens, TCP/IP Illustrated Volume 1: The Protocols, Addison
Wesley Professional, Section 2.2, pp. 1-2, 1993 (hereafter “Stevens”).

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Appellant’s Contentions
Appellant solely argues claim 1 (App. Br. 8-11) and relies on those
arguments to contend all other appealed claims are patentable (App. Br. 11).
Appellant argues:
[A] prima facie case of obviousness has not been established with
respect to claim 1 for at least the following reasons: (1) no motivation
or suggestion existed to combine the teachings of Albert and Stevens;
and (2) the references when combined do not teach or suggest all
elements of claim 1.

(App. Br. 8).
Issues
Has the Examiner erred under 35 U.S.C. § 103(a) in (1) combining
Albert and Stevens, and (2) concluding that the so combined references
teach or suggest claim 1 limitations?
ANALYSIS
Appellant’s argument as to lack of motivation or suggestion for
combining Albert and Stevens is first addressed (App. Br. 8-9; Reply Br. 10-
11).
The Examiner finds Albert teaches or suggests claim 1 limitations
(App. Br. 4-5) except for “doing . . . actions based on an explicit physical
address (in contrast to an IP [Internet Protocol] address), particularly
‘associating the connection identifier with a physical address of the
responding server that generated the response in the cluster of servers’”
(Ans. 5). The Examiner, though, identifies that it is known in the art of
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computer network protocols that “a physical address is usually the MAC
[Media Access Control] address, which uniquely identifies a physical device
in a network” (id.). Appellant does not contest this finding. The Examiner
next finds that using MAC physical addresses is discussed in Albert with
disclosures that “a packet fragment may include one or more lower layer
headers including for example a MAC header that facilitates routing the
packet in the MAC layer” (id.; see Albert col. 28, ll. 5-8). Concluding, the
Examiner reasons and finds:
Both the IP address and MAC address are essentially labels used as
identifiers for the elements in a network, but used under different
layers. To one of ordinary skill in the art, an IP and MAC address
have the same exact functional purpose under the realm of
source/destination identification. In fact, the two are easily
interchangeable under the very well known concept of Address
Resolution Protocol [ARP] (Stevens Page 2, 1st Paragraph, ARP and
it's associated Reverse-ARP). Therefore, it would have been obvious
to one of ordinary skill at the time the invention was made to simply
interchange the IP address with the MAC or Physical address as such
identifiers are an obvious substitution in the art and would yield
identical predictable results.
(Ans. 6-7). The Examiner thus modifies Albert to use MAC physical
addresses based on finding and reasoning that (1) Albert suggests using
packet headers including MAC addresses, and (2) Stevens teaches
interchangeability of ARP and Reverse-ARP protocols for mapping between
IP addresses and MAC physical addresses.
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Appellant argues:
Since Albert discloses the translation of a cluster IP
destination address to a host IP destination address, a
person of ordinary skill in the art clearly would not have
been motivated to incorporate the very different feature of
MAC address types, as taught by Stevens, in the context of
mapping/translating between IP addresses based on the host
selected by the server manager, as taught by Albert. It is
improper to combine Albert and Stevens because the Albert
reference teaches away from their combination.
(App. Br. 9). Appellant continues this same argument in the Reply Brief
(Reply Br. 10-11). We agree with Appellant as to Albert disclosing an IP
address based embodiment, but we find Appellant’s teaching away argument
unavailing.
Our reviewing court has held that a reference does not teach away if it
merely expresses a general preference for an alternative embodiment from
amongst options available to an ordinarily skilled artisan, and if the
reference does not discredit or discourage investigation into other claimed
subject matter. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Commensurately, we find nothing in the record concerning the references
that would discourage an ordinarily skilled person from interchanging IP and
MAC addresses as suggested in Albert and taught in Stevens or lead an
artisan in a divergent direction from the claimed subject matter.
We, accordingly, conclude that the Examiner did not err in combining
Albert and Stevens.
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We reviewed Appellant’s additional contentions that the references,
even if combined, do not teach or suggest all elements of claim 1 (App. Br.
9-11; Reply Br. 11-15). We disagree with Appellant’s conclusions.
As the result of our review, we adopt as our own (1) the findings and
reasons set forth by the Examiner for claim 1 in the action from which this
appeal is taken (Final Action 2-6) and (2) the reasons set forth by the
Examiner in the Examiner’s Answer (Ans. 9-11) in response to the above
referenced arguments in the Appeal Brief (App. Br. 9-11). We concur with
the conclusions reached by the Examiner.
As exemplary, Appellant, in part, responds to the Response to
Argument section in the Answer by noting that the Examiner identified
Albert’s host 306 as both the claimed “first identified server” and
“responding server” (Reply Br. 13; see Ans. 10). Based on Appellant’s
arguments, claim 1 does not require separate servers functioning as a “first
identified server” and a “responding server” or from performing the
respectively recited functions. Indeed, we do not find claim 1 precluding the
Albert host 306 from being read on by both the claimed “first identified
server” and “responding server.” Further, Appellant argues by pointing out
what the claim recites (Reply Br. 13) without particularly explaining why
Albert is deficient in teaching or suggesting the claimed subject matter.
Accordingly, Appellant’s argument is found to be unavailing. 37 C.F.R. §
41.37 (c)(1)(vii); see In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011).
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We also, accordingly, conclude that the Examiner did not err in
finding the combined references teach or suggest claim 1 limitations.
For the foregoing reasons, we will sustain the rejection of claim 1 and
the other independent claims 7, 13, 19, 25, and 31 that are not separately
argued. We also will sustain the rejection of the dependent claims 2-6, 8-12,
14-18, 20-24, and 26-30 that also are not separately argued.
ORDER
The Examiner’s decision rejecting claims 1-31 is affirmed.
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

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