HEWLETT PACKARD ENTERPRISE DEVELOPMENT LP

Patent Trials and Appeals Board

Jul 8, 2021

2020001055 (P.T.A.B. Jul. 8, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/464,522 03/21/2017 TATHAGATA NANDY 90289280 3465
56436 7590 07/08/2021
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
SEFCHECK, GREGORY B
ART UNIT PAPER NUMBER
2477
NOTIFICATION DATE DELIVERY MODE
07/08/2021 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):
chris.mania@hpe.com
hpe.ip.mail@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TATHAGATA NANDY and NILAY TRIPATHI
Appeal 2020-001055
Application 15/464,522
Technology Center 2400
Before JOSEPH L. DIXON, ELENI MANTIS MERCADER, and
SCOTT E. BAIN, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2018). Appellant identifies the real party in interest as Hewlett
Packard Enterprise Development LP. Appeal Br. 1.
Appeal 2020-001055
Application 15/464,522
2
CLAIMED SUBJECT MATTER
The claims are directed to a managing multicast scaling. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of managing multicast scaling, comprising:
receiving, on a network device, a request message to join
an Internet Protocol (IP) multicast group;
in response to receipt of the request message to join the IP
multicast group, determining, by the network device, whether
any hardware filters for processing IP multicast messages on the
network device are available to process the request message; and
in response to a determination that no hardware filters on
the network device are available to process the request message,
changing a current state of an IP multicast protocol associated
with the request message to an error state on the network device,
wherein in the error state, further request messages to join the IP
multicast group that are received by the network device are
discarded by the network device.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Srikanth US 6,556,547 B1 Apr. 29, 2003
Song US 7,593,402 B2 Sept. 22, 2009
Riddoch US 8,116,312 B2 Feb. 14, 2012
Bos US 9,331,861 B2 May 3, 2016

REJECTIONS
Claims 1, 3, 5–8, 11, and 12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Song and Riddoch. Final Act. 2, 3.
Claims 2, 4, 10, 13, and 14 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Song, Riddoch, and Bos. Final Act. 7.
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Application 15/464,522
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Claims 9 and 15 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Song, Riddoch, and Srikanth. Final Act. 8.

OPINION
Claims 1, 3, 5–8, 11, and 12
With respect to independent claims 1, 6, and 11, Appellant does not
present separate arguments for patentability of the claims and independent
claims 6 and 11 contain similar limitations as independent claim 1. Appeal
Br. 4. Therefore, we select independent claim 1 as the illustrative claim and
will address Appellant’s arguments thereto. Therefore, claims 3, 5, 7, 8, and
12 will stand or fall with illustrative independent claim 1.
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). Upon review of the
evidence and each of the respective positions set forth in the record, we find
that the preponderance of evidence supports Appellant’s position in the
record. Accordingly, we reverse each of the Examiner’s rejections on appeal
essentially for the reasons set forth in the record by Appellant, and add the
following for emphasis only.
Appellant’s claim 1 recites
in response to a determination that no hardware filters on the
network device are available to process the request message,
changing a current state of an IP multicast protocol associated
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Application 15/464,522
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with the request message to an error state on the network device,
wherein in the error state, further request messages to join the IP
multicast group that are received by the network device are
discarded by the network device.
Appellant argues that the Song reference fails to disclose discarding a
request message to join an IP multicast group in response to no hardware
filters being available to process the request message. Appeal Br. 5; Reply
Br. 2–3. Appellant further argues that the Riddoch reference fails to disclose
discarding a request to join an IP multicast group for any reason. Appeal Br.
7; Reply Br. 4. Appellant also argues that the Examiner failed to articulate a
valid reason that would lead to the modification of the Song reference based
upon the Riddoch reference so as to satisfy the actual claim limitations.
Appeal Br. 7; Reply Br. 4–5.
Appellant also argues that, at most, the teachings of Riddoch would
simply dictate where the filter that carries out block 305 in Figure 3 of Song
is located, where 1) if the NIC has sufficient capacity, the filter that carries
out block 305 would be stored in the NIC; and 2) if the NIC does not have
sufficient capacity, the filter that carries out block 305 would be stored in the
kernel/software. Appeal Br. 8; Reply Br. 5.
The Examiner finds that Appellant is arguing the references
individually rather than the combination as applied in the rejection by the
Examiner. Ans. 9–10. The Examiner further finds that the Song reference
at least implicitly discloses the determination of filter status, as well as the
“change of state report” event in response to that filter status (where the
“expiration” of the filter timer is considered an error state, as claimed, with
respect to filtering) and the discarding of those request messages. Ans. 10.
The Examiner further finds that the Song reference is admittedly deficient in
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expressly determining if any hardware filters are available to process the
request message, but the rejection illustrates the obviousness of remedying
this deficiency of Song by relying on Riddoch’s disclosure of
“acknowledging the physical limitations on hardware filtering in IP
multicast group processing by first determining if any hardware filters are
available before commencing with a filtering process, otherwise changing
the state to perform alternative processing, such as the discarding shown in
Song.” Ans. 10–11.
The Examiner also finds that the Riddoch reference informs skilled
artisan that IP multicast group filtering disclosures such as Song would
benefit from a step of determining whether any hardware filters are available
prior to proceeding with the filtering process, due to the physical hardware
capacity limitations shown expressly in Riddoch. Ans. 10–11.
The Examiner re-postulates the rejection and presents a modified
Figure 5 of the Song reference with the additional modifications from the
Riddoch reference. Ans. 11.
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Modified Figure 5 of the Song reference adds in an additional
decisional block and reformatting the decisional flow in the flowchart to
show the Examiner’s proffered combination. Ans. 11.
Appellant contends that the Examiner has failed to articulate a valid
rationale that would lead one skilled in the art to modify the Song reference
based upon the Riddoch reference so as to satisfy the actual claim
limitations. Reply Br. 5–6. Appellant further contends that the Examiner
engages in a complete and unsupported reconstruction of the Song reference
in an attempt to address the claim limitations. Reply Br. 5–8.
Appellant also contends that the Examiner has failed to articulate a
valid rationale for modifying Song to discard a packet in response to no
hardware filter being available. Reply Br. 7.
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Appellant also contends that the hypothetical modified Song would
simply first determine if a hardware filter could be used to determine
whether the packet is “from a legal source per blocks 504, 508 and, if not,
use a software filter to determine whether the packet is ‘from a legal
source’” and the Examiner’s new/modified Figure 5 is a clear example of
impermissible hindsight reasoning using Appellant’s own disclosure as a
blueprint for modifying the actual teachings of both Song and Riddoch.
Reply Br. 7.
We agree with Appellant’s arguments. We further agree with
Appellant the Examiner’s finding that the Song and Riddoch references
teach the disputed limitation is in error because it is not supported by a
preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed.
Cir. 1985) (Examiner’s burden of proving non-patentability is by a
preponderance of the evidence); see also In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (“The Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not, because it may doubt that the
invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.”).
We further agree with Appellant that the Examiner has relied upon
improper hindsight reconstruction in formulating the rejection, and we
cannot sustain the Examiner’s obviousness rejection of illustrative
independent claim 1 and the rejections of independent claims 6 and 11
which contain similar limitations.
Dependent claims 3, 5, 7, 8, and 12 contain the same claim language
as their respective dependent claims and Appellant has shown error in the
Examiner’s factual findings and conclusion of obviousness.

Appeal 2020-001055
Application 15/464,522
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Claims 2, 4, 9, 10, and 13–15
Because the Examiner has not shown how the Bos or Srikanth
references remedy the noted deficiency above, we cannot sustain the
Examiner’s obviousness rejection for the same reasons discussed above.
CONCLUSION
We reverse Examiner’s decision rejecting claims 1–15.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5–8,
11, 12
103 Song, Riddoch 1, 3, 5–8,
11, 12
2, 4, 10, 13,
14
103 Song, Riddoch,
Bos
2, 4, 10, 13,
14
9, 15 103 Song, Riddoch,
Srikanth
9, 15
Overall
Outcome
1–15

REVERSED