Nicira, Inc.

Patent Trials and Appeals Board

Sep 22, 2021

2020003814 (P.T.A.B. Sep. 22, 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.
15/442,073 02/24/2017 Alexander Tessmer N082.02.C1
(NCRA.P0206C)
6439
109858 7590 09/22/2021
ADELI LLP
P.O. Box 516
Pacific Palisades, CA 90272
EXAMINER
MAK, RODRICK
ART UNIT PAPER NUMBER
2416
NOTIFICATION DATE DELIVERY MODE
09/22/2021 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):
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 ALEXANDER TESSMER, RAM DULAR SINGH,
and GANESAN CHANDRASHEKHAR

Appeal 2020-003814
Application 15/442,073
Technology Center 2400

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

PER CURIAM

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 25–32, 35–41, and 45.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“VMware, Inc., and Nicira, Inc.” Appeal Brief 2.
2 “Claims 33, 34, and 42–44 are objected to as being dependent upon a
rejected base claim, but would be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening
claims.” Final Action 6.
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Application 15/442,073

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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention is a “method for fully utilizing the multicast or
broadcast capability of a physical network” by “identif[ying] segments of
the network within which broadcast traffic, multicast traffic, or traffic to
unknown recipients (BUM traffic) is allowed or enabled.” Specification,
Abstract. Claims 25 and 35, reproduced below, are illustrative of argued
subject matter.
25. A method for identifying a network segment comprising
a first network node and a plurality of additional network
nodes, the method to be performed by the first network node,
the first network node storing a first identifier as identifying the
network segment, the method comprising:
sending, to the plurality of additional network nodes, a first
message that indicates the first identifier as a network segment
identifier;
in response to receiving a second message, sent by a first of
the additional network nodes and comprising a second
identifier for identifying the network segment, continuing to
use the stored first identifier to identify the network segment
based on the received second identifier ranking lower than the
stored first identifier; and
in response to receiving a third message, sent by a second of
the additional network nodes and comprising a third identifier
for identifying the network segment, replacing the first
identifier with the third identifier as identifying the network
segment based on the received third identifier ranking higher
than the stored first identifier.
35. A non-transitory machine readable medium storing a
program which when executed on a set of processing units of a
first network node identifies a network segment comprising the
first network node and a plurality of additional network nodes,
the first network node storing a first identifier as identifying the
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network segment, the program comprising sets of instructions
for:
sending, to the plurality of additional network nodes, a
first message that indicates the first identifier as a
network segment identifier;
receiving a second message, sent by one of the additional
network nodes, comprising a second identifier for
identifying the network segment;
when the received second identifier ranks higher than
the stored first identifier, replacing the first identifier
with the second identifier as identifying the network
segment; and
when the received second identifier ranks lower than
the stored first identifier, continuing to use the stored
first identifier to identify the network segment.
Appeal Brief 26–28 (emphases added).
Rejections3
Claims 25–27 and 35–37 are rejected under 35 U.S.C. § 103 as being
unpatentable over Yang (US 2015/0254190 A1; Sept. 10, 2015) and Kubsch
(US 2006/0045092 A1; Mar. 2, 2006). Final Action 7–11.
Claims 28–30 and 38–40 are rejected under 35 U.S.C. § 103 as being
unpatentable over Yang, Kubsch, and Nelson (US 2012/0185553 A1;
July 19, 2012). Final Action 12–13.
Claims 31 and 41 are rejected under 35 U.S.C. § 103 as being
unpatentable over Yang, Kubsch, and Challapali (US 2010/0271948 A1;
Oct. 28, 2010). Final Action 13–14.

3 Applicant filed a claim amendment overcoming a rejection of claim 45
under 35 U.S.C. § 112(b) for indefiniteness. See Advisory Act.,
Form PTOL-303; see also Final Act. 6 (rejection).
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Application 15/442,073

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Claim 32 is rejected under 35 U.S.C. § 103 as being unpatentable over
Yang, Kubsch, and Li (US 2012/0254943 A1; Oct. 4, 2012). Final Action
14–15.
Claim 45 is rejected under 35 U.S.C. § 103 as being unpatentable over
Yang, Kubsch, and Tiwari (US 10,103,980 B1; Oct. 16, 2018).
Final Action 15–16.
35 U.S.C. § 103
Before turning to the presented issues, we note Appellant and the
Examiner had disagreed upon the scope of the independent claims.
Specifically, Appellant contested the Examiner’s pre-appeal interpretation of
the “in response to . . .” limitations (claim 25) and “when . . .” limitations
(claim 35) as conditional limitations. Appeal Brief 8–9; see also supra 2–3
(emphasizing these limitations within reproduced claims 25 and 35). In
response, the Examiner stopped interpreting the “in response to . . .” and
“when . . .” limitations as conditional limitations. Answer 4; but see
id. at 5–7 (still finding the limitations are obvious over the applied prior art).
We therefore will not address whether the “in response to . . .” and “when
. . .” limitations are conditional limitations.
The Examiner originally finds Yang teaches receiving a lower ranked
identifier as claimed. See Final Action 7, 9 (citing Yang ¶106). However, in
the Answer, the Examiner newly finds Kubsch teaches the “in response to
. . .” and “when . . .” limitations by disclosing: a broadcasting network node;
a reply network node; a reply message that includes a network segment
identifier and is received by the broadcasting node; and replacement of the
broadcasting node’s stored network segment identifier with the reply
message’s included identifier because the latter is higher-ranked by way of
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being the identifier most recently presented to the broadcasting node.
Answer 5–8. In addition, the Examiner newly finds, Kubsch also teaches
receiving an identifier ranked lower than the first identifier. See Answer 7.
Appellant contends the, “Answer’s argument addresses only a
limitation relating to a higher-ranked identifier, but not a limitation relating
to a lower-ranked identifier.” Reply Brief 2 (citing Answer 5–6).
The Examiner determines:
The rank due to recency or how new the identifier is taught by
Kubsch which teaches that it is known in the art to replace
stored IDs with a received new ID, where the stored ID of
Kubsch would represent the stored first identifier and the
received new ID of Kubsch would represent the third identifier
that replaces the first identifier because the “rank” is higher (the
ID is newer than the stored ID).
Answer 5–6.
However, based upon this determination, the Examiner addresses the
claim limitation relating to a lower-ranked identifier:
If the claim is to be interpreted as having required the claimed
second message that has the second identifier that ranks lower,
thus having the first network node continue to use the stored
identifier, followed by the first network node receiving a third
message that has the third identifier that ranks higher, so to
replace the first identifier with the third identifier, then the
examiner would make note of this different interpretation in
how the claim should always be interpreted as.
Answer 7 (emphasis added).
Appellant argues that, “the Answer asserts that the new ID of Kubsch
‘would represent the third identifier’ (of claim 25), then ignores the ‘ranking
lower’ limitation” whereas “Appellant submits that the Answer’s failure to
address this limitation is due to the failure of the art to disclose the continued
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use of a stored identifier because of the lower rank of the received
identifier.” Reply Brief 5–6, see Answer 5–6.
In sum, we agree with Appellant that the Examiner’s findings are
erred for: showing only the higher-rank aspect of the “in response to . . .”
and “when . . .” limitations in the applied prior art (i.e., for failing to show a
teaching or suggestion of the lower-rank aspect). We find the Examiner’s
reliance upon recency to teach replacing the first identifier based upon a
subsequent higher ranking identifier is not applicable for teaching the
continual use of the first identifier based upon receiving a lower ranking
identifier because the most recent identifier will never have a lower ranking,
based upon recency, than the first identifier. See Answer 5-6.
Consequently, Kubsch does not address Yang’s deficiencies as originally
determined by the Examiner. See Final Action 8–10.
We agree with at least one of the arguments advanced by Appellant
and therefore we need not reach the merits of Appellant’s other arguments
seeking to distinguish independent claim 25 from the cited prior art.
Accordingly, we are constrained by the record to reverse the Examiner’s
obviousness rejection of independent claims 25 and 35, commensurate in
scope, as well as dependent claims 32, 36–41, and 45.
CONCLUSION
For the foregoing reasons, we reverse the Examiner’s decision to
reject claims 25–32, 35–41, and 45.
Appeal 2020-003814
Application 15/442,073

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DECISION SUMMARY
Claims
Rejected 35 U.S.C. § References Affirmed Reversed
25–27, 35–37 103 Yang, Kubsch 25–27,
35–37
28–30, 38–40 103
Yang, Kubsch,
Nelson
28–30,
38–40
31, 41 103 Yang, Kubsch, Challapali 31, 41
32 103
Yang, Kubsch,
Li 32
45 103 Yang, Kubsch, Tiwari 45
Overall
Outcome

25–32,
35–41, 45

REVERSED