Ex Parte Bonen et alDownload PDFPatent Trial and Appeal BoardMar 9, 201814171936 (P.T.A.B. Mar. 9, 2018) Copy Citation 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. 14/171,936 02/04/2014 Adi Bonen HRMC.P151 9925 102107 7590 Brokaw Patent Law, PC 101 Church Street, Suite 50 Los Gatos, CA 95030 EXAMINER PATEL, HARDIKKUMAR D ART UNIT PAPER NUMBER 2473 NOTIFICATION DATE DELIVERY MODE 03/13/2018 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): chris@brokawpatentlaw.com amaloney @ brokawpatentlaw .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ADI BONEN and AMIR LEVENTER Appeal 2017-009343 Application 14/171,936 Technology Center 2400 Before ALLEN R. MacDONALD, BETH Z. SHAW, and JON M. JURGOVAN Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-009343 Application 14/171,936 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1—5, 7—13, and 15—23. Claims 6 and 14 have been cancelled. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). Representative Claim Representative claim 1 under appeal reads as follows (emphasis and bracketed material added): 1. A method for obtaining and utilizing internet protocol (IP) subnet information, comprising: [A.] a layer two cable modem termination system (L2 CMTS) receiving, from an edge router, one or more messages which identity IP subnets that comprise Dynamic Host Configuration Protocol (DHCP) leased IP addresses serviced by two or more layer two cable modem termination systems (L2 CMTSs), wherein said two or more L2 CMTSs include said L2 CMTS; [B.] said L2 CMTS determining which of said DHCP IP addresses, serviced by said two or more L2 CMTSs and identified by said one or more messages received from said edge router, are assigned to devices serviced by the L2 CMTS; [C.] the L2 CMTS maintaining electronic data records that identifies the IP subnets that comprise the IP addresses that are allocated to the devices serviced by the L2 CMTS; [D.] upon receiving a request, from a requesting entity, related to IP subnets serviced by the L2 CMTS, retrieving from the data structure information related to the IP subnets serviced by the L2 CMTS; and [E.] sending to the requesting entity a response indicative of the information related to the IP subnets serviced by the L2 CMTS. 2 Appeal 2017-009343 Application 14/171,936 Rejections on Appeal The Examiner rejected claims 1—5, 7, 9-13, 15, and 17—22 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Singh et al. (US 2009/0125957 Al, published May 14, 2009), Weaver et al. (US 2003/0145075 Al, published July 31, 2003), and Zeng et al. (US 2008/0126540 Al, published May 29, 2008)).1 The Examiner rejected claims 8, 16, and 23 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Singh, Weaver, Zeng, and Johnson et al. (US 2003/0172170 Al, published Sept. 11, 2003).2 Issue on Appeal Did the Examiner err in rejecting claim 1 as being obvious? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. Examiner finds as to claim 1: Singh discloses a layer two cable modem termination system (L2 CMTS) receiving, (Fig. 1 shows L2CMTS labeled as 104) from an edge router, (Fig. 1 Relay Agent 106;... relay agent 1 Although claim 7 is not included in the rejection heading (Final Act. 3), claim 7 is rejected at pages 10-11 of the Final Office Action. We select claim 1 as representative. Separate patentability is not argued for claims 2— 5, 7, 9-13, 15, and 17—23. Therefore, our decision as to claim 1 is determinative as to the rejection of these claims. Except for our ultimate decision, these claims are not discussed further herein. 2 Our decision as to claim 1 is determinative as to the rejections of these claims. Except for our ultimate decision, these claims are not discussed further herein. 3 Appeal 2017-009343 Application 14/171,936 106, is software ... 1 [0024] ... software stored in memory network device programmable machine like router or switch ... | [0046]) one or more messages which identify ... IP subnets that comprise Dynamic Host Configuration Protocol (DHCP) leased IP addresses, (DOCSIS provisioning is performed between CMTS and CM. At Step 202 in Fig. 2, the CMTS obtains MAC address of the modem/de vices. Final Act. 3 (emphasis omitted; emphasis added). /eng discloses serviced by two or more layer two cable modem termination systems (L2 CMTSs), (Fig. lb shows multiples CMTS per ROC 1 [0021-0022]... serviced by multiple CMTSs in ROC and NOC ... ) wherein said two or more L2 CMTSs include saidL2 CMTS, (1 [0054]... CMTS stores internal data store information such as MAC address, physical location ... CMTS does not mention altering/modifying the stored information which makes it a L2 CMTS ... ) said L2 CMTS determining which of said DHCP IP addresses, serviced by said two or more L2 CMTSs, (| [0052]... the information stored in the NOC can tell when the device is moved from one region to another ... | [0053]. .. when the devices have been connected to all the CMTS in a region ... | [0084] DHCP server passes location information data (such as IP address), MAC address to ROC ... 1 [0085, 0086] ... CMTS would perform clone detection based on the command of ROC and NOC (which implied the current CMTS would have the previous CMTSs from other ROC information such as DHCP ip address, mac address) ... ) and identified by said one or more messages received from said edge router, (ROC sends command to CMTS, 1 [0086] wherein in order for ROCs and NOCs to communicated with each other it requires edge devices means for communications such as border gateways, router, etc.), are assigned to devices serviced by the L2 CMTS, (1 [0076] ip address identifying cable interface of cable modem on CMTS for DHCP client...). Final Act. 6—7 (emphasis omitted; emphasis added). 4 Appeal 2017-009343 Application 14/171,936 Appellants contend3 that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: Singh does not teach or suggest the element of: [B.] said L2 CMTS determining which of said DHCP IP addresses, serviced by said two or more L2 CMTSs and identified by said one or more messages received from said edge router, are assigned to devices serviced by the L2 CMTS; In the approach of Singh, the CMTS informs the DHCP server of the cable modems which it handles. Consequently, there would be no need for the CMTS to perform the above element. Thus, it is respectfully submitted that Singh teaches away from the presented recited features of Claim 1. App. Br. 16 (emphasis added). Appellants also contend: Zeng cannot possibly disclose, teach, or suggest the element of: [B.] said L2 CMTS determining which of said DHCP IP addresses, serviced by said two or more L2 CMTSs and identified by said one or more messages received from said edge router, are assigned to devices serviced by the L2 CMTS; The portion of Zeng identified by the Office Action merely discusses retrieving information about a cable modem. A cable modem is not a L2 CMTS. Zeng contains no discussion of identifying which DHCP IP addresses are assigned to devices serviced by a L2 CMTS. Instead, the portion relied upon to show this concept is discussing a network Operations Center (NOC) retrieving information from a cable modem to determine whether the cable modem has been cloned. 3 The contentions we discuss are determinative as to the rejections on appeal. Therefore, Appellants’ other contentions are not discussed in detail herein. 5 Appeal 2017-009343 Application 14/171,936 The teaching identifying within Zeng (i.e., retrieving data from a cable modem) would not instruct anyone skilled in the art with a teaching to modify the approach of Weaver (which involves a L2 CMTS) to achieve the features of: [B.] said L2 CMTS determining which of said DHCP IP addresses, serviced by said two or more L2 CMTSs and identified by said one or more messages received from said edge router, are assigned to devices serviced by the L2 CMTS[.] App. Br. 17. We do not agree with Appellants assertion that “Singh teaches away from the presented recited [steps A and B] features of Claim 1.†As the United States Court of Appeals for the Federal Circuit has counseled: A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. . . . [I]n general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appellants have not attempted to persuade us that as to the argued limitation, any of the references suggest that the line of development flowing from the references’ disclosure is unlikely to be productive of the result sought by the Appellants. “A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.†DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quotation omitted). 6 Appeal 2017-009343 Application 14/171,936 We do not agree with Appellants that Singh teaches away from the recited features (steps A and B) of claim 1. We agree with Appellants’ more general underlying point that Singh does not teach, suggest, or render obvious all of the recited features of claim 1 for which the Examiner relies on Singh. As articulated by the Federal Circuit, the Examiner’s burden of proving non-patentability is by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the evidence is the standard that must be met by the PTO in making rejectionsâ€). “A rejection based on section 103 clearly must rest on a factual basis[.]†In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not. . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.†Id. Here, the Examiner’s analysis fails to meet this standard because the rejection does not adequately explain the Examiner’s finding of fact that Singh discloses an “(L2 CMTS) receiving, from an edge router, one or more messages which identity IP subnets that comprise Dynamic Host Configuration Protocol (DHCP) leased IP addresses.†Final Act. 3. Singh is explicit that the CMTS obtains the address from the cable modem during step 302 of figure 2. Singh does not explicitly teach or suggest receiving such addresses from an edge router, nor does the Examiner provide sufficiently articulated reasoning as to why this would otherwise be rendered obvious by the references. As to Appellants’ Zeng argument, although Zeng teaches plural CMTSs, we agree with Appellants that Zeng does not disclose, teach, or 7 Appeal 2017-009343 Application 14/171,936 suggest “said L2 CMTS determining which of said DHCP IP addresses, serviced by said two or more L2 CMTSs and identified by said one or more messages received from said edge router, are assigned to devices serviced by the L2 CMTS.†Nor does the Examiner provide sufficiently articulated reasoning as to why this would otherwise be rendered obvious by the references. We conclude, for the reasons discussed above as to claim 1 and consistent with Appellants’ arguments, there is insufficient articulated reasoning to support the Examiner’s findings. Therefore, we conclude that there is insufficient articulated reasoning to support the Examiner’s final conclusion that steps A and B of above claim 1 would have been obvious to one of ordinary skill in the art at the time of Appellants’ invention based on the teachings of Singh, Weaver, and Zeng. CONCLUSIONS (1) Appellants have established that the Examiner erred in rejecting claims 1—5, 7—13, and 15—23 as being unpatentable under 35 U.S.C. § 103(a). (2) On this record, claims 1—5, 7—13, and 15—23 have not been shown to be unpatentable. 8 Appeal 2017-009343 Application 14/171,936 DECISION The Examiner’s rejections of claims 1—5, 7—13, and 15—23 are reversed. REVERSED 9 Copy with citationCopy as parenthetical citation