Ex Parte 7,716,370 B1 et al

Patent Trial and Appeal Board

Sep 4, 2014

90011773 (P.T.A.B. Sep. 4, 2014)

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.
90/011,773 06/27/2011 7,716,370 B1 11517.0021-00000 3204
87916 7590 09/05/2014
2nd Reexam Group - Novak Druce + Quigg LLP
1000 Louisiana Street
Fifty-Third Floor
Houston, TX 77002
EXAMINER
CAMPBELL, JOSHUA D
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/05/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
______________

Ex parte BROCADE COMMUNICATIONS SYSTEMS, INC.
______________

Appeal 2013-010933
1

Reexamination Control No. 90/011,773
Patent 7,716,370 B1
2

Technology Center 3900
______________

Before JOHN C. MARTIN, JAMES T. MOORE,
and STANLEY M. WEINBERG, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(b) from the Examiner’s
rejection of original claims 1, 10, 18, 27, and 32. Final Office Action
(hereinafter “Final Action”), mailed June 27, 2012, at 3, paras. 7-8.

1
This is a Decision on Appeal in four related reexamination appeals, in
which all of the Decisions on Appeal are being mailed concurrently. The
other three appeals are 2014-001671, 2014-002493, and 2014-006002. The
decision in Appeal 2014-001671 is the principal decision.
2
This patent (hereinafter “’370 patent”) issued on May 11, 2010, based on
Application 11/657,981, filed January 24, 2007, as a divisional of
Application 10/273,657, filed October 18, 2002 (now Patent 7,647,427;
hereinafter “’427 patent”).
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Claims 1, 10, 18, and 27 constitute all of the independent claims of the ’370
patent.
We have jurisdiction under 35 U.S.C. §§ 6(b) and 306.
We AFFIRM.

I. STATEMENT OF THE CASE
A. The Related Reexamination Proceedings and Litigation
This ex parte reexamination proceeding is one of four related
reexamination proceedings that are the subjects of the pending PTAB
appeals identified in the following table and referred to hereinafter as the
’671 Ex Parte Appeal, ’493 Inter Partes Appeal, ’933 Ex Parte Appeal, and
’002 Inter Partes Appeal:
Patent No. 7,647,427 B1
(parent)
7,716,370 B1
(divisional)
Ex parte reexamination No.
Appeal No.
90/011,775
2014-001671
90/011,773
2013-010933
Inter partes reexamination No.
Appeal No.
95/001,803
2014-002493
95/001,805
2014-006002

The related litigation and Appellant’s unsuccessful petitions to
terminate the inter partes reexamination proceedings based on a final
decision in the litigation are described in section I.A (at pages 2-5) of the
Decision on Appeal in the ’671 Ex Parte Appeal (hereinafter “’671 Ex Parte
Appeal Decision”). As also explained therein, we are addressing the
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principal issues in the four appeals as follows in only the two decisions that
involve the parent ’427 patent:
1. The ’671 Ex Parte Appeal Decision:
(a) Whether Biswas
3
and Zwieback
4
have been
antedated by the evidence submitted under 37 C.F.R.
§ 1.131.
(b) The rejection of independent claims 1 and 8 for
anticipation by Biswas.
2. The ’493 Inter Partes Appeal Decision:
(a) The rejection of dependent claims 9 and 10 for
obviousness over Biswas in view of Nair.
5

(b) The rejection of independent claims 1 and 8 for
anticipation by Hunt.
6

(c) The rejection of dependent claims 4-6, 9, and 10 for
obviousness over Hunt as in view of Nair.

3
Biswas, et al., US 7,227,872 B1, issued on June 5, 2007, based on
Application 10/235,523, filed on September 4, 2002, as a divisional of
Application 10/187,168, filed on June 28, 2002.
4
Dave Zwieback, high availability firewall/VPN with VRRP, 8 ;login: The
Magazine of Usenix & Sage 41-46 (Dec. 2001).
5
Nair, et al., US 6,337,863 B1, issued on January 8, 2002.
6
Guerney D.H. Hunt, et al., Network Dispatcher: a connection router for
scalable Internet services, 30 Computer Networks and ISDN Systems 347-
57 (1998).
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The ’671 Ex Parte Appeal Decision is hereby are incorporated by
reference in this Decision on Appeal.

B. The Claims on Appeal
Claim 1, which is representative of the independent claims of the ’370
patent, reads as follows:
1. A method in a first network device, the method
comprising:
associating to said first network device a base address
corresponding to a first pool of first addresses that
are not owned by said first network device;
while said first network device does not said own said
first pool of first addresses, performing network
address translation (NAT), by said first network
device, for a second pool of second addresses;
detecting, by said first network device, a failure of a
second network device; and
asserting ownership, by said first network device, of a
plurality of said first addresses of said first pool
corresponding to said base address, in response to
detection by said first network device of said
failure.
’370 patent col. 9.
7

7
The claims as reproduced in the Claim Appendix (Appeal Br. 25-26) lack
the paragraph structure employed in the patent.
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As explained below, Appellant’s arguments against the rejection for
anticipation of claim 1 by Biswas are based on the second paragraph of
claim 1, which is similar to third paragraph of claim 1 of the ’427 patent.
That paragraph in claim 1 of the ’427 patent reads as follows:
perform network address translation (NAT) and routing,
by said back-up device, for a second pool of second
addresses while said master device is active;
’427 patent col. 9.

C. The Rejections
Claims 1, 10, 18, 27, and 32 stand rejected under 35 U.S.C. § 102(e)
for anticipation by Biswas.
8
Final Action 3, paras. 7-8.
Claims 27 and 32 stand rejected under 35 U.S.C. § 103(a) for
obviousness over Biswas in view of Zwieback. Id. at 3, para. 8.

II. DISCUSSION
A. Neither of Biswas And Zwieback Has Been Antedated (Appeal Br. 9-18
secs. IV.C-F)
For the reasons given in section II.A (at pages 19-46) of the ’671 Ex
Parte Appeal Decision, the evidence submitted under 37 C.F.R. § 1.131 is
insufficient to antedate either of Biswas and Zwieback.

8
Biswas, et al., US 7,227,872 B1, issued on June 5, 200, based on
Application 10/235,523, filed September 4, 2002, as a divisional of
(Continued on next page.)
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B. Anticipation by Biswas (Claims 1, 10, 18, 27, and 32) (Appeal Br. 18-21
sec. IV.G)
Appellant in discussing this ground of rejection argues independent
claims 1, 10, 18, and 27 as a group. Appeal Br. 19-22. We elect to limit our
analysis of the independent claims to claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
Furthermore, Appellant treats dependent claim 32 as standing or falling with
parent claim 27. Appeal Br. 22.
Biswas is described in section II.B (at pages 46-58) of the ’671 Ex
Parte Appeal Decision. Figure 5 of Biswas, on which the anticipation
rejection specifically is based, is reproduced below.

Application 10/187,168, filed June 28, 2002.
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Figure 5 shows an embodiment of a private network 500 that can be
configured to provide asymmetric traffic flow for both egress-to-ingress
packets and ingress-to-egress packets. Biswas 10:48-51. As shown in this
figure, the private network 500 includes a plurality of peer NAT routing
devices 504a-c, each of which is configured to take over the functionality of
one or more of the other peer NAT routers in case of failovers or for other
reasons. Id. at 10:51-55.
Appellant contends that Biswas fails to satisfy claim 1’s second
paragraph because “Biswas does not disclose performing network address
translation (NAT) and routing, by said back-up device, for a second pool of
second addresses while said master device is active” (Appeal Br. 23)
(bolding and underlining omitted), which is the same contention that
Appellant has directed at the third paragraph of claim 1 of the ’427 patent in
the ’671 Ex Parte Appeal (at Appeal Br. 20). Appellant (Appeal Br. 19-22;
Reply Br. 7-9) relies on the same arguments that were made regarding a
similar limitation in the ’671 Ex Parte Appeal (Appeal Brief 20-23; Reply
Br. 7-9). These arguments are unpersuasive for the reasons given in the ’671
Ex Parte Appeal Decision at section II.B, pages 55-57.
The rejection of claims 1, 10, 18, 27, and 32 for anticipation therefore
is sustained.

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C. Obviousness over Biswas and Zwieback (Claims 27 and 32) (Appeal
Br. 22-23 sec. IV.H)
Because we have sustained the rejection of claims 27 and 32 for
anticipation by Biswas, we also sustain the rejection of these claims for
obviousness over Biswas in view of Zwieback. Anticipation is the epitome
of obviousness. In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002).
Thus, Zwieback is cumulative to Biswas in this ground of rejection.

III. SUMMARY
1. The rejection of claims 1, 10, 18, 27, and 32 under 35 U.S.C.
§ 102(e) for anticipation by Biswas is sustained.
2. The rejection of claims 27 and 32 under 35 U.S.C. § 103(a) for
obviousness over Biswas in view of Zwieback is sustained.

IV. DECISION
The Examiner’s decision that claims 1, 10, 18, 27, and 32 are
unpatentable over the prior art is affirmed.

AFFIRMED

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Ack

For Appellant/Patent Owner:

2nd Reexam Group - Novak Druce + Quigg LLP
1000 Louisiana Street
Fifty-Third Floor
Houston TX 77002

For Third Party Requester:

Finnegan Henderson Farabow Garrett & Dunner LLP
901 New York Avenue, N.W.
Washington, DC 20001-4413