Nicira, Inc.

Patent Trials and Appeals Board

Jul 20, 2020

2019002675 (P.T.A.B. Jul. 20, 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.
15/441,205 02/23/2017 Martin Casado N039.C2 (NCRA.P0007C2) 3964
109858 7590 07/20/2020
ADELI LLP
11859 Wilshire Blvd.
Suite 408
Los Angeles, CA 90025
EXAMINER
CLAWSON, STEPHEN J
ART UNIT PAPER NUMBER
2461
NOTIFICATION DATE DELIVERY MODE
07/20/2020 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):
ipadmin@vmware.com
mail@adelillp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARTIN CASADO, PAUL INGRAM, KEITH E. AMIDON,
PETER J. BALLAND III, TEEMU KOPONEN, BENJAMIN L. PFAFF,
JUSTIN PETTIT, JESSE E. GROSS IV, and DANIEL J. WENDLANDT
____________

Appeal 2019-002675
Application 15/441,205
Technology Center 2400
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 27–46, i.e., all pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2018). Appellant identifies the real party in interest
as Nicira, Inc. Appeal Br. 2.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns the “design and
use of virtual switches in virtual networking.” Spec. ¶ 2.2 The Specification
explains that the “idea behind a distributed virtual switch is to provide a
logical view of a switch which is decoupled from the underlying hardware
and can extend across multiple switches or hypervisors.” Id. ¶ 3. The
Specification also explains that there are problems with “scalability,
mobility, and multi-tenancy” in large networks. Id. ¶ 5. For example, some
“domains cannot scale to large sizes,” and “retaining tenant isolation greatly
complicates mobility.” Id. Additionally, “[c]onventional distributed virtual
switches fall short of addressing these problems,” and “the concepts have
not effectively moved beyond virtual environments to include physical hosts
in a general and flexible manner.” Id. Hence, the invention endeavors to
provide a “distributed virtual networking platform” enabling the “virtual and
physical machines to more readily, securely, and efficiently communicate
with each other even if they are not located on the same physical host and/or
in the same subnet or VLAN [virtual local area network].” Id. ¶¶ 7, 16. The
invention further endeavors to “allow[] multiple different tenants sharing the
same physical network infrastructure to communicate and set configuration
state in isolation from each other.” Id. ¶ 16.

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed February 23, 2017; “Final Act.” for the Final Office
Action, mailed February 7, 2018; “Appeal Br.” for the Appeal Brief, filed
August 20, 2018; “Ans.” for the Examiner’s Answer, mailed December 14,
2018; and “Reply Br.” for the Reply Brief, filed February 14, 2019.
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Exemplary Claim
Independent claim 27 exemplifies the claims at issue and reads as
follows (with formatting added for clarity):
27. For a network controller of a system that comprises
a plurality of hosts and a plurality of physical forwarding
elements, a method comprising:
defining packet processing data for a set of physical
forwarding elements to use to implement a logical forwarding
element that handles communications between machines of a
first tenant while isolating the first tenant’s machines from the
machines of other tenants hosted within the system, the packet
processing data for a particular physical forwarding element
comprising
(i) data for identifying a logical egress port of the
logical forwarding element for a packet received by the
particular physical forwarding element and
(ii) data for mapping the logical egress port of
the logical forwarding element to a physical port of
the particular physical forwarding element; and
distributing the packet processing data to the set of
physical forwarding elements, wherein the particular physical
forwarding element uses the data to forward packets received
from a machine of the first tenant.
Appeal Br. 27 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability under 35 U.S.C. § 103(a),3 the
Examiner relies on the following prior art:

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
125 Stat. 284 (2011), amended 35 U.S.C. § 103 effective March 16, 2013.
Because the effective filing date for Application 15/441,205 predates the
AIA’s amendment to § 103, this decision refers to the pre-AIA version
of § 103.
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The Rejections on Appeal
Claims 27–46 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 2–3.
Claims 28, 31, 36, 38, 41, and 46 stand rejected under 35 U.S.C. § 112
¶ 2 as indefinite for failing to particularly point out and distinctly claim the
subject matter regarded as the invention. Final Act. 5–6.
Claims 27–29, 31–39, and 41–46 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lambeth and Yoon.4 Final Act. 7–16.
ANALYSIS
We have reviewed the rejections in light of Appellant’s arguments
that the Examiner erred. For the reasons explained below, we disagree with
the Examiner’s conclusions concerning ineligibility under § 101 and
unpatentability under § 103(a). We also disagree with the Examiner’s
conclusion concerning indefiniteness under § 112 for claims 28, 36, 38,
and 46. But we agree with the Examiner’s conclusion concerning
indefiniteness under § 112 for claims 31 and 41. We provide the following
to address and emphasize specific findings and arguments.

4 In the Final Office Action, the Examiner does not address the patentability
of claims 30 and 40 under 35 U.S.C. § 103(a). See Final Act. 7–16. In the
Answer, the Examiner clarifies that claims 30 and 40 “are not rejected under
art but remain[] rejected under 101.” Ans. 14.
Yoon et al. (“Yoon”) US 2004/0120326 A1 June 24, 2004
Lambeth et al. (“Lambeth”) US 2009/0292858 A1 Nov. 26, 2009
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The § 101 Rejection of Claims 27–46
INTRODUCTION
The Patent Act defines patent-eligible subject matter broadly:
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. In Mayo and Alice, the
Supreme Court explained that § 101 “contains an important implicit
exception” for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); see Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent eligibility. Mayo,
566 U.S. at 77–80; Alice, 573 U.S. at 217–18.
Under Mayo/Alice step one, we “determine whether the claims at
issue are directed to” a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the “focus” of the claims at issue and their “character as a whole.”
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Guidance”).5 The 2019 Guidance applies to the Board. Id. at 50–51,

5 In response to received public comments, the PTO issued further guidance
in October 2019 clarifying the 2019 Guidance. October 2019 Update:
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57 n.42; see 35 U.S.C. § 3(a)(2)(A) (investing the Director with
responsibility “for providing policy direction” for the PTO).
The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54–55. Prong one
requires evaluating “whether the claim recites a judicial exception, i.e., an
abstract idea, a law of nature, or a natural phenomenon.” Id. at 54. “If the
claim does not recite a judicial exception, it is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the claim does recite a judicial
exception, then it requires further analysis” under prong two. Id. Prong two
requires evaluating “whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception.” Id. “When
the exception is so integrated, then the claim is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the judicial exception,” and it “requires further analysis” under
Mayo/Alice step two (PTO step 2B). Id.
Under Mayo/Alice step two, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. Alice, 573 U.S. at 217–18,
221–22 (quoting Mayo, 566 U.S. at 78–79). Step two involves the search for
an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.

Subject Matter Eligibility (Oct. 17, 2019) (available at https://www.uspto.
gov/sites/default/files/documents/peg_oct_2019_update.pdf).
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Cir. 2019). “[A]n inventive concept must be evident in the claims.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
MAYO/ALICE STEP ONE: PTO STEP 2A PRONG ONE
Patent-ineligible abstract ideas include mental processes,
mathematical formulas, and fundamental economic practices. See, e.g.,
Alice, 573 U.S. at 219–20 (fundamental economic practice of intermediated
settlement); Bilski v. Kappos, 561 U.S. 593, 599, 611–12 (2010)
(fundamental economic practice of hedging or protecting against risk in
independent claim and mathematical formula in dependent claim); Parker v.
Flook, 437 U.S. 584, 585–86, 596–98 (1978) (mathematical formula for
calculating updated alarm limit); Gottschalk v. Benson, 409 U.S. 63, 65–67
(1972) (mental process of converting binary-coded-decimal representation to
binary representation). The 2019 Guidance specifies three groupings of
abstract ideas: (1) mental processes, (2) mathematical concepts, and
(3) certain methods of organizing human activity. 84 Fed. Reg. at 51–52.
In Alice, the Supreme Court “did not establish any ‘precise contours’
for defining whether claims are directed to ‘abstract ideas’ or something
else.” Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1315 (Fed. Cir.
2019) (citing Alice, 573 U.S. at 221). Further, for Mayo/Alice step one, the
Federal Circuit has noted that “[a]n abstract idea can generally be described
at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240 (Fed. Cir. 2016).
Here, the Examiner determines that the claims are directed to the
abstract idea of “organizing and manipulating information through
mathematical correlations.” Final Act. 2–3 (citing Digitech Image Techs.,
LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)); see Ans. 3.
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Appellant disputes that the claims are directed to an abstract idea. See
Appeal Br. 6–10; Reply Br. 2–5. Appellant asserts that “the claims are
directed to an improvement in virtual networking technology, specifically
providing solutions to problems of scalability, mobility, and multi-tenancy.”
Appeal Br. 9 (citing Spec. ¶¶ 5–9). In addition, Appellant contends that the
claims include limitations “more specific than the alleged abstract idea of
organizing and manipulating information through mathematical
correlations.” Id. at 10.
Based on the 2019 Guidance, we agree with Appellant that the
Examiner errs under Mayo/Alice step one. As discussed above, the 2019
Guidance specifies three groupings of abstract ideas: (1) mental processes,
(2) mathematical concepts, and (3) certain methods of organizing human
activity. 84 Fed. Reg. at 51–52. The 2019 Guidance describes mathematical
concepts as “mathematical relationships, mathematical formulas or
equations, [and] mathematical calculations.” 84 Fed. Reg. at 52.
Here, the claims do not recite “mathematical relationships,
mathematical formulas or equations, [or] mathematical calculations.” See
Appeal Br. 27–30. In addition, the Examiner does not determine that the
claims recite mental processes or certain methods of organizing human
activity ineligible for patenting. See Final Act. 2–3; Ans. 3–6. Hence, we
do not sustain the § 101 rejection of claims 27–46.
The § 112 ¶ 2 Rejection of Claims 28, 31, 36, 38, 41, and 46
INTRODUCTION
Section 112’s second paragraph requires that the specification
“conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.”
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35 U.S.C. § 112 ¶ 2. The definiteness requirement “strikes a ‘delicate
balance’ between ‘the inherent limitations of language’ and providing ‘clear
notice of what is claimed.’” Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d
1370, 1377 (Fed. Cir. 2017) (quoting Nautilus, Inc. v. Biosig Instruments,
Inc., 572 U.S. 898, 909 (2014)).
Due to the need for “particular[ity]” and “distinct[ness],” claim
language that “is ambiguous, vague, incoherent, opaque, or otherwise
unclear in describing and defining the claimed invention” warrants a
rejection under § 112 ¶ 2. In re Packard, 751 F.3d 1307, 1311, 1313
(Fed. Cir. 2014); see Ex parte McAward, Appeal 2015-006416, 2017 WL
3669566, at *5 (PTAB Aug. 25, 2017) (precedential); see also In re
Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994) (explaining that “[t]he
legal standard for definiteness is whether a claim reasonably apprises those
of skill in the art of its scope”); In re Moore, 439 F.2d 1232, 1235
(CCPA 1971) (requiring “a reasonable degree of precision and particularity”
in claims).
CLAIMS 28, 36, 38, AND 46
Claims 28 and 38 depend from claims 27 and 37, respectively, and
recite the following limitation: “wherein each of the physical forwarding
elements of the set of physical forwarding elements uses the packet
processing data to forward packets received from machines of the first
tenant.” Appeal Br. 27, 29. Claims 36 and 46 depend from claims 27
and 37, respectively, and recite the following limitation: “wherein the
physical forwarding elements comprise virtual switches operating in
hypervisors.” Id. at 28, 30.
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The Examiner determines that claims 27 and 37 concern “a network
controller that performs a series of steps,” whereas claims 28, 36, 38, and 46
“describe other parts of a system performing steps” not “actually claimed” in
claims 27 and 37. Final Act. 5–6; see Ans. 14. The Examiner reasons that
(1) “it is unclear how a network controller is related to other part[s] of a
system” and (2) “it is also unclear how descriptions of other devices in
a system in anyway limit a network controller.” Final Act. 3–4. The
Examiner explains that “the plain meaning of a method operated by a
network controller is that the network controller is performing a series
of steps” and that “other devices performing other steps do not . . . limit
a network controller.” Ans. 14.
Appellant contends that “dependent claims that place limitations on
other recited elements of the system do not cause the claim[s] to be unclear.”
Appeal Br. 23; see Reply Br. 11. Appellant also contends that “limiting the
‘machines’ and ‘physical forwarding elements’ recited in the independent
claim[s] as part of a system to the more specific ‘virtual machines’ and
‘virtual switches operating in hypervisors’ does not somehow render a claim
indefinite.” Appeal Br. 23. Further, Appellant argues that “[t]here is no
assertion in the Office Action that one of skill in the art would not
understand what is claimed.” Id.
We agree with Appellant that one of skill in the art would understand
the scope of claims 28, 36, 38, and 46. In each of claims 27 and 37, the term
“network controller” appears in the claim’s preamble but not in the claim’s
body. Appeal Br. 27–29. Generally, a preamble does not limit a claim.
Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir.
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2002). Here, the Examiner provides no explanation why the preamble
should limit either independent claim. See Final Act. 3–6; Ans. 14.
In each of claims 27 and 37, the claim’s preamble and body recite
“physical forwarding elements.” Appeal Br. 27, 29. Each of claims 28, 36,
38, and 46 refers to “the physical forwarding elements” and specifies how
those elements operate or what those elements comprise. Id. at 27–30.
Claims 28, 36, 38, and 46 do not suffer from a lack of clarity that warrants a
rejection for indefiniteness. Hence, we do not sustain the § 112 ¶ 2 rejection
of claims 28, 36, 38, and 46.
CLAIMS 31 AND 41
Claims 31 and 41 depend from claims 27 and 37, respectively, and
recite the following limitation: “wherein the plurality of machines comprises
a plurality of virtual machines.” Appeal Br. 28, 30.
The Examiner determines that the “metes and bounds of the claim[s]
are unclear.” Ans. 14. According to the Examiner, “[i]t’s not clear from the
claim[s]” or Appellant’s arguments “what are the metes and bounds of the
claim[s].” Id.
Appellant makes the same arguments for claims 31 and 41 as for
claims 28, 36, 38, and 46. See Appeal Br. 21–23; Reply Br. 11.
We agree with the Examiner that claims 31 and 41 are unclear. Each
of claims 31 and 41 recites “the plurality of machines.” Appeal Br. 28, 30.
But claims 27 and 37 do not recite “a plurality of machines,” and thus do not
provide an antecedent basis for “the plurality of machines” in claims 31
and 41. Id. at 27–29. So “the plurality of machines” in claims 31 and 41
could reference either (1) the “machines of a first tenant,” (2) the “machines
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of other tenants,” or (3) the machines of both the first tenant and the other
tenants recited in claims 27 and 37.
If an application claim is “amenable to two or more plausible claim
constructions,” the PTO “is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable” as indefinite. Ex parte Miyazaki, Appeal 2007-
003300, 2008 WL 5105055, at *5 (BPAI Nov. 19, 2008) (precedential).
Because claims 31 and 41 are “amenable to two or more plausible claim
constructions,” we sustain the § 112 ¶ 2 rejection of claims 31 and 41.
The § 103(a) Rejection of Claims 27–29, 31–39, and 41–46
As noted above, the § 103(a) rejection of claims 27 and 37 rests on
Lambeth and Yoon. See Final Act. 7–8, 12–13. Appellant argues that the
Examiner erred in rejecting claims 27 and 37 because the references do not
teach or suggest the following limitation in each claim:
the packet processing data for a particular physical forwarding
element comprising (i) data for identifying a logical egress port
of the logical forwarding element for a packet received by the
particular physical forwarding element and (ii) data for
mapping the logical egress port of the logical forwarding
element to a physical port of the particular physical forwarding
element.
See Appeal Br. 12–15, 17–20; Reply Br. 5–10.
In particular, Appellant contends that “neither Lambeth nor Yoon
discuss[es] any identification of logical egress ports or mapping logical
egress ports to physical ports.” Reply Br. 6, 9; see Appeal Br. 15. Appellant
also contends that “finding that a reference describes identifying ports for
ingress and egress” differs from “finding that a reference describes
identifying a logical egress port of a logical forwarding element for a packet
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and mapping the logical egress port of the logical forwarding element to a
physical port of a particular physical forwarding element.” Appeal Br. 14.
The Examiner finds that “Lambeth discloses virtual switches
possessing virtual ports (or logical ingress and/or egress ports) running on
top of an actual, physical switch with actual, physical ports.” Ans. 9; see
Final Act. 7, 12 (citing Lambeth ¶ 30, Fig. 3). The Examiner also finds that
“Yoon discloses a mapping between ports that provides [an] isolation of
resources.” Ans. 9; see id. at 8–9, 11–12 (citing Yoon ¶¶ 17–18, Fig. 2);
Final Act. 7–8, 13 (citing Yoon ¶¶ 17–18, Fig. 2).
In a portion cited by the Examiner, Lambeth explains that a
distributed virtual switch, i.e., DVSwitch 350, and its distributed virtual
ports, i.e., DVports 352 and 354, “are created based on physical resources
which should be available to physical [network interface cards] NICs 172,
172' in the managed domain of hosts 100-1, 100-2.” Lambeth ¶ 30. In
Lambeth, “database 370 stores the state of DVswitch 350 and DVports
352, 354.” Id.
In a portion cited by the Examiner, Yoon explains that an Optical
Link Terminal (OLT) determines the virtual local area network (VLAN)
group of “an input frame with reference to the generated VLAN membership
table, and provides the VLAN service.” Yoon ¶ 17. In Yoon, “if the VLAN
service is not applied, then the broadcasting traffic is transferred to all the
ports in the OLT system,” and “if the VLAN service is applied, then it is
transferred to only the member ports that belong to the same VLAN group.”
Id. ¶ 18.
Based on the record before us, we agree with Appellant that the
Examiner has not adequately explained how the cited portions of Lambeth
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and Yoon teach or suggest the disputed limitation in claims 27 and 37.
Although Lambeth discloses a DVswitch and DVports created on physical
resources, Lambeth does not disclose mapping logical egress ports to
physical ports. Yoon discloses transferring traffic to specific ports. Like
Lambeth, however, Yoon does not disclose mapping logical egress ports to
physical ports. Hence, we do not sustain the § 103(a) rejection of claims 27
and 37.
Claims 28, 29, and 31–36 depend from claim 27, while claims 38, 39,
and 41–46 depend from claim 37. For the reasons discussed for claims 27
and 37, we do not sustain the § 103(a) rejection of claims 28, 29, 31–36, 38,
39, and 41–46.
CONCLUSION
We reverse the § 101 rejection of claims 27–46.
We reverse the § 112 ¶ 2 rejection of claims 28, 36, 38, and 46.
We affirm the § 112 ¶ 2 rejection of claims 31 and 41.
We reverse the § 103(a) rejection of claims 27–29, 31–39, and 41–46.
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
27–46 101 Eligibility 27–46
28, 31, 36,
38, 41, 46 112 Indefiniteness 31, 41
28, 36,
38, 46
27–29,
31–39,
41–46
103(a) Lambeth, Yoon
27–29,
31–39,
41–46
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Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome 31, 41
27–30,
32–40,
42–46
TIME PERIOD FOR RESPONSE
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). See
37 C.F.R. § 41.50(f).
AFFIRMED IN PART