Ex Parte Bonen et al

Patent Trial and Appeal Board

Mar 9, 2018

14171936 (P.T.A.B. Mar. 9, 2018)

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.
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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.
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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).
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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.
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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).
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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 rejections”).
“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
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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.
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Appeal 2017-009343
Application 14/171,936
DECISION
The Examiner’s rejections of claims 1—5, 7—13, and 15—23 are
reversed.
REVERSED
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