Ex Parte Asati et al

Patent Trial and Appeal BoardJul 8, 2015

12315454 (P.T.A.B. Jul. 8, 2015)

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. 12/315,454 12/03/2008 Rajiv Asati 50325-1670 3039 29989 7590 07/08/2015 HICKMAN PALERMO BECKER BINGHAM LLP 1 ALMADEN BOULEVARD FLOOR 12 SAN JOSE, CA 95113 EXAMINER RANDHAWA, MANDISH K ART UNIT PAPER NUMBER 2475 MAIL DATE DELIVERY MODE 07/08/2015 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 RAJIV ASATI, MOHAMED KHALID, and MANIKCHAND R. BAFNA ____________ Appeal 2013-001911 Application 12/315,454 Technology Center 2400 ____________ Before ROBERT E. NAPPI, CATHERINE SHIANG, and JON M. JURGOVAN, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–9 and 11–32. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejection, and the Examiner’s response to Appellants’ arguments. We concur with Appellants’ conclusion that the Examiner erred in finding Kalimuthu (US 2008/0229095 A1, Sept. 18, 2008) and Solomon Appeal 2013-001911 Application 12/315,454 2 (US 2003/0112808 A1, June 19, 2003) collectively teach “establishing an any-to-any multicast tunnel and any-to-any multicast forwarding via the any- to-any multicast tunnel, where the any-to-any multicast forwarding does not include a hub in the logical hub-and-spoke network,” as recited in independent claim 1.1 The Examiner cites Kalimuthu’s paragraphs 74–75, 80, 85, and 88 and Solomon’s paragraph 11 for the disputed claim limitation. See Ans. 3– 4. But the Examiner does not adequately explain, and we do not see, how such cited paragraphs teach the disputed claim limitation. Contrary to the claim requirement, we agree with Appellants that the cited paragraphs teach unicast . . . does not include a hub, not “multicast . . . does not include a hub,” as required by the claim. See Reply Br. 2. Accordingly, we are constrained by the record to reverse the Examiner’s rejection of claim 1, and claims 2–9 and 11–32 for similar reasons. DECISION The Examiner’s decision rejecting claims 1–9 and 11–32 is reversed. REVERSED msc 1 Appellants raise additional arguments. Because the identified issue is dispositive of the appeal, we do not need to address the additional arguments.