Jayant Kotalwar et al.

Patent Trials and Appeals Board

Apr 30, 2020

14559442 - (D) (P.T.A.B. Apr. 30, 2020)

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.
14/559,442 12/03/2014 Jayant Kotalwar 817307-US-NP 3202
46304 7590 04/30/2020
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
EXAMINER
BOKHARI, SYED M
ART UNIT PAPER NUMBER
2473
NOTIFICATION DATE DELIVERY MODE
04/30/2020 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):
Nokia.IPR@nokia.com
jbr@rml-law.com
nyoffice@rml-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JAYANT KOTALWAR, ANDREW DOLGANOW, and
GITESH PATEL
____________________

Appeal 2018-008338
Application 14/559,442
Technology Center 2400
____________________

Before DENISE M. POTHIER, JENNIFER L. McKEOWN, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1–5 and 9–20. The Examiner has objected to claims 6–
8 as being dependent upon a rejected base claim, but has indicated these
claims would be allowable if rewritten in independent form. See Non-Final
Act. 24. We have jurisdiction over the remaining pending claims under

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies
Alcatel-Lucent USA Inc. and Alcatel-Lucent Canada Inc. as the real parties
in interest. Appeal Br. 1. “As of January 14, 2016, Alcatel Lucent operates
as part of the Nokia Group.” Appeal Br. 1.
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35 U.S.C. § 6(b). See Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI
1994) (precedential).
We reverse.

STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to
switching of network traffic between selective and inclusive routes in a
multicast transmission in response to multicast receiver tracking.
Spec. 2:13–18, Abstract. According to the Specification, although
extensions (e.g., RFC 6513) to standards (e.g., RFC 4364 and RFC 4659)
may include the capability to handle IP VPN (Internet Protocol Virtual
Private Network) multicast traffic, such arrangements may be “inefficient
when an inclusive route has been originated by a multicast sender to allow
multicast receivers to receive traffic for a multicast.” Spec. 1:14–2:8. This
is because some provider edge elements (i.e., network devices or multicast
receivers) may be included in an inclusive route even if the element did not
join the multicast. Spec. 2:8–10. In a disclosed embodiment, multicast
receivers in an IP VPN are tracked and a determination is made by the
multicast sender (i.e., a first network device) “to control switching of traffic
between the selective and inclusive routes for the multicast.” Spec. 2:23–24.
A selective route is used if the traffic for the multicast is at or above a
bandwidth threshold and the number of multicast receivers is below an add
threshold. Spec. 2:25–27. Conversely, an inclusive route is used if the
traffic for the multicast is below a bandwidth threshold or the number of
multicast receivers is above a delete threshold. Spec. 2:27–29.
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Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
1. An apparatus comprising:
a first network device adapted for communication with
one or more other network devices;
the first network device being configured:
to determine a number of receivers of a multicast;
and
to control switching of traffic between selective and
inclusive routes for the multicast based at least in part on
a comparison of the determined number of receivers to at
least one threshold number of receivers.

The Examiner’s Rejections
1. Claims 1, 15, and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Dorenbosch (US 2006/0007930 A1; Jan. 12, 2006)
and Pichumani et al. (US 9,100,201 B1; Aug. 4, 2015 (filed Aug. 11, 2009))
(“Pichumani”). Non-Final Act. 4–11.
2. Claims 2–5, 9–14, and 16–18 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Dorenbosch, Pichumani, and Aggarwal et
al. (US 8,571,029 B1; Oct. 29, 2013) (“Aggarwal ’029”). Non-Final
Act. 12–22.
3. Claim 19 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Dorenbosch, Pichumani, and Aggarwal et al. (US
7,570,605 B1; Aug. 4, 2009) (“Aggarwal ’605”). Non-Final Act. 22–24.

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ANALYSIS2
In rejecting independent claim 1 (and similarly for independent claims
15 and 20), the Examiner finds Dorenbosch teaches most of the limitations
of claim 1 but does not expressly teach “to control switching of traffic
between selective and inclusive routes for the multicast.” Non-Final Act. 5.
The Examiner relies on Pichumani for this teaching. Non-Final Act. 5
(citing Pichumani, col. 4, ll. 20–53, col. 5, l. 60–col. 6, l. 22, col. 7, ll. 11–
15, col. 10, ll. 53–67, Figs. 1, 2). The Examiner determines that an
ordinarily skilled artisan would have modified Dorenbosch’s system with the
switching between selective routes and inclusive routes of Pichumani “in
order to provide a more effective and efficient system,” which is more cost
effective and dynamic. Non-Final Act. 6.
Appellant disputes that Dorenbosch and Pichumani, alone or in
combination, teach or suggest “control switching of traffic between selective
and inclusive routes for the multicast based at least in part on a comparison
of the determined number of receivers to at least one threshold number of
receivers,” as recited in claim 1 (and commensurately recited in independent
claims 15 and 20). Appeal Br. 3–10; Reply Br. 2–4. In particular, Appellant
argues that Dorenbosch fails to teach switching between selective and
inclusive routes for a multicast, but instead describes techniques only for
determining whether to multicast or unicast packet data. Reply Br. 2–3
(citing Dorenbosch, Abstract); see also Dorenbosch ¶ 9. Moreover,

2 Throughout this Decision, we have considered the Appeal Brief, filed
May 21, 2018 (“Appeal Br.”); the Reply Brief, filed August 21, 2018
(“Reply Br.”); the Examiner’s Answer, mailed July 12, 2018 (“Ans.”); and
the Non-Final Office Action, mailed February 22, 2018 (“Non-Final Act.”),
from which this Appeal is taken.
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Appellant argues that even if it were determined that Dorenbosch’s use of a
target set of multicast receivers corresponded to the claimed selective route
(as suggested by the Examiner in the Answer, see Ans. 25–26), Dorenbosch
still does not teach switching between the target set and an inclusive route,
but rather makes a determination as to whether it is more efficient to
transmit via multicast or unicast to each member of the target set. Reply
Br. 3 (citing Dorenbosch ¶¶ 38–40). In addition, Appellant asserts that
Pichumani fails to disclose switching traffic between selective and inclusive
routes based at least in part on a comparison of a determined number of
receivers for the multicast to a threshold value. Appeal Br. 8–10; Reply
Br. 3–4. Instead, Appellant argues, Pichumani does not maintain a multicast
state for receivers and, therefore, has “no knowledge of the number of
receivers of a multicast.” Appeal Br. 8–10 (citing Pichumani, col. 5, ll. 20–
59, col. 6, ll. 8–33, col. 7, ll. 4–37, col. 8, ll. 8–34, col. 10, l. 52–col. 11,
l. 13). Appellant asserts that Pichumani discloses that the decision to use a
selective service provider tunnel is based on whether an administrator has
marked a particular multicast group as requiring the selective routing (i.e.,
the determination is not based on a comparison of a determined number of
receivers to a threshold number of receivers). Appeal Br. 8.
In response to Appellant’s arguments, the Examiner explains that
“selective” and “inclusive” are very broad terms. Ans. 25–26. The
Examiner further finds Dorenbosch teaches controlling multicast data
transmission from the access point (AP) to the wireless terminals “by
exclusion or removal without any change of member [sic] of wireless
terminals from the subset for maintaining the determined target number set
to receive the multicast transmission.” Ans. 26. The Examiner explains the
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“technique of decreasing or not decreasing the number of receievrs [sic]
from the target set would indirectly control establishing of number of routes
required between the AP and the number of the receivers.” Ans. 26.
We disagree with the Examiner that Dorenbosch teaches switching
traffic between selective and inclusive routes for the multicast, as those
terms would be understood, in light of the Specification, by an ordinarily
skilled artisan. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). Instead, we find that Dorenbosch is directed to a method
for determining whether to unicast or multicast a packet “when transmitting
the packet to a multicast group.” Dorenbosch ¶ 9, Abstract. Dorenbosch
teaches that the decision to multicast or unicast is made by the APs (access
points) based on a cost comparison between the two transmissions.
Dorenbosch ¶¶ 9, 40–47. We do note, however, that as part of the cost
comparison exercise, Dorenbosch takes into account a number of multicast
receivers in a target set. See Dorenbosch ¶¶ 38–47.
Additionally, we find Pichumani teaches switching of traffic between
selective and inclusive routes for a multicast, but does not teach that the
switching is based on a comparison of a determined number of receivers to a
threshold number of receivers as claim 1 recites. Thus, we look to determine
whether the combined teachings of Dorenbosch and Pichumani—as
articulated by the Examiner—would have taught or suggested controlling the
switching of traffic between selective and inclusive routes of a multicast
based at least in part on a comparison of a determined number of receivers to
a threshold.
With respect to the combination, the relevant inquiry in an
obviousness analysis is whether the Examiner has set forth “some articulated
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reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)).
Moreover, although one of ordinary skill in the art may understand that two
references could be combined as reasoned by the Examiner, this does not
imply a motivation to combine the references. Personal Web Techs., LLC v.
Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017); see also Belden Inc. v.
Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness
concerns whether a skilled artisan not only could have made but would have
been motivated to make the combinations or modifications of prior art to
arrive at the claimed invention.”); InTouch Techs., Inc. v. VGO Commc’ns,
Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014).
Here, the Examiner’s proposed combination lacks the requisite
articulated reasoning with rational underpinnings to support a conclusion of
obviousness. In particular, the Examiner has not explained how the cost-
comparison system of Dorenbosch would be modified with the
administrator-marked multicast groups of Pichumani to control switching of
traffic between selective and inclusive routes of a multicast transmission
based in part on a comparison of a determined number of receivers to a
threshold number of receivers. Moreover, the Examiner does not provide
sufficient technical reasoning or evidence that a person of ordinary skill in
the art would have been motivated to combine the references as suggested
by the Examiner or that the combined system would be “more cost effective
and dynamic.” See Non-Final Act. 6.
Because we find it dispositive that the Examiner has not shown by a
preponderance of evidence that the cited prior art teaches or reasonably
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suggests a network device “to control switching of traffic between selective
and inclusive routes for the multicast based at least in part on a comparison
of the determined number of receivers to at least one threshold number of
receivers” as recited in claim 1, we do not address other issues raised by
Appellant’s arguments related to these claims. See Beloit Corp. v. Valmet
Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency
is at liberty to reach a decision based on “a single dispositive issue”).
For the reasons discussed supra, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner’s rejection of independent
claim 1. For similar reasons, we do not sustain the Examiner’s rejection of
independent claims 15 and 20, which recite commensurate limitations.
Additionally, we do not sustain the Examiner’s rejections of claims 2–5, 9–
14, and 16–19, which depend directly or indirectly therefrom.

CONCLUSION
We reverse the Examiner’s decision rejecting claims 1–5 and 9–20
under 35 U.S.C. § 103.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 15, 20 103 Dorenbosch,
Pichumani
1, 15, 20
2–5, 9–14,
16–18
103 Dorenbosch,
Pichumani,
Aggarwal ’029
2–5, 9–
14, 16–18
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
19 103 Dorenbosch,
Pichumani,
Aggarwal ’605
19
Overall
Outcome
1–5, 9–20

REVERSED