Ex Parte de Heer et al

Patent Trial and Appeal Board

Aug 5, 2013

11095121 (P.T.A.B. Aug. 5, 2013)

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.
11/095,121 03/31/2005 Arie Johannes de Heer A. J. de Heer 5-4 (LCNT/1 4615
46363 7590 08/05/2013
WALL & TONG, LLP/
ALCATEL-LUCENT USA INC.
25 James Way
Eatontown, NJ 07724
EXAMINER
ZHOU, YONG
ART UNIT PAPER NUMBER
2477
MAIL DATE DELIVERY MODE
08/05/2013 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 ARIE JOHANNES DE HEER and RONALD DE MAN
____________

Appeal 2010-004194
Application 11/095,121
Technology Center 2400
____________

Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-4, 6-13, and 16-20. (App. Br. 5). We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

Appeal 2010-004194
Application 11/095,121

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STATEMENT OF THE CASE
Appellants’ claimed invention “relates generally to the field of
communication systems and, more specifically, to bridged network devices
and methodology, such as bridged Ethernet networks.” (Spec. 1, ll. 5-7).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A method for adapting a network switching process for a
bridge comprising a plurality of ports, comprising:

logically partitioning the ports of the bridge into a plurality of
port subsets, wherein each port is associated with a respective port
identifier that identifies other ports belonging to its port subset; and

adapting the operation of said bridge to ensure that data is only
coupled between ports associated with the same port subset, wherein
the operation of the bridge is adapted to perform the following steps
for a received data frame:

comparing a destination address of the data frame with address
entries of an address table, wherein a match is made on an address
entry only if a port stored in the address entry is in the same port
subset as the source port on which the data frame is received; and

communicating the data frame from the source port to a
destination port on which the data frame is to be transmitted only
when the source and destination ports are part of the same port subset.

(Dispute limitations emphasized).
Appeal 2010-004194
Application 11/095,121

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REJECTIONS1
1. The Examiner rejected claims 1, 6-8, 10, 12, and 16-20 under 35 U.S.C.
§ 103(a) based upon the combined teachings and suggestions of Volpano
(U.S. Patent Application Publication No. 2003/0145118 A1, published
July 31, 2003) and Kloth (U.S. Patent Application Publication No.
2001/0005369 A1, published June 28, 2001). (Ans. 3-9).
2. The Examiner rejected claims 2 and 13 under 35 U.S.C. § 103(a) based
upon the combined teachings and suggestions of Volpano, Kloth, and
Holden (U.S. Patent No. 6,272,639 B1, issued Aug. 7, 2001). (Ans. 9-
10).
3. The Examiner rejected claims 3, 4, 9, and 11 under 35 U.S.C. § 103(a)
based upon the combined teachings and suggestions of Volpano, Kloth,
and Kadambi (U.S. Patent Application Publication No. 2002/0031090
A1, published Mar. 14, 2002). (Ans. 10-12).

ANALYSIS
We disagree with Appellants’ contentions regarding the Examiner’s
obviousness rejections of the claims. We adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken; and (2) the reasons set forth by the Examiner in the Answer in
response to arguments made in Appellants’ Appeal Brief. (Ans. 12-19). We
highlight and address specific findings and arguments below.

1 The Examiner indicates “[t]he rejection to claims 2 and 13 under 35 U.S.C.
§ 112, first paragraph, is withdrawn in response to the amendment after the
Final action in which the new matter was removed from claims 2 and 13.”
(Ans. 12).
Appeal 2010-004194
Application 11/095,121

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Claims 1, 6-8, 10, 12, and 16-20
Issue: Under § 103, did the Examiner err in finding that the
combination of Volpano and Kloth would have taught or suggested the
following disputed limitation:
comparing a destination address of the data frame with
address entries of an address table, wherein a match is made
on an address entry only if a port stored in the address entry is
in the same port subset as the source port on which the data
frame is received[,]
within the meaning of representative claim 1, and the commensurate
limitations of independent claims 12, 16, and 17 (emphasis added)? 2
Appellants contend the aforementioned “comparing” limitation, is not
taught or suggested by Volpano, and particularly Kloth, because “claim 1
indicates that a destination address is used as an input to search an address
table, by comparing a destination address of a data frame with address
entries of an address table” (App. Br. 21), and claim 1 indicates that a
destination address is used to search an address table.” (App. Br. 22)
(emphasis added). 3
At the outset, we observe that claim 1 does not recite the argued
searching limitation. (App. Br. 21-22). According to the plain language of
claim 1, a match only results if the “port stored in the address entry” (in an
address table) matches the “same port subset as the source port on which the
data frame is received” (emphasis added). Thus, even though a larger

2 Based upon Appellants’ arguments, we decide the appeal of the first-stated
§ 103 rejection on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2004).

3 See also e.g., Reply Br. 3-4 which restates the same argument.
Appeal 2010-004194
Application 11/095,121

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number of bits may be compared (i.e., the destination address and the
address entries of an address table), only the particular bits designating the
port subset are positively recited as functional descriptive material for
purposes of the claimed comparison. 4 Turning to Appellants’ Specification
for context:
In one embodiment of the invention a configurable
bridge supporting a partitioning into subsets per VLAN [
Virtual Local Area Network] protocols is provided.
Specifically, several conditions are established; namely (1) the
bridge provides for a way to record, per VLAN, the partitioning
of its Ethernet ports into subsets, (2) when matching the
destination MAC [Media Access Control] address of a frame F
with entries in the address table, a match is only made if the
port stored in the entry is in the same subset as the port on
which frame F was received, according to the partitioning
determined by the VLAN 10 of frame F, and (3) if the port set S
is a subset in a partitioning associated to a VLAN 10, and if the
Ethernet port P is a member of the port set S, then frames with
VLAN ID V received on port P is only forwarded on ports that
are included in the port set S.
(Spec. 10, ll. 10-20, emphasis added).
The Examiner supports the obviousness rejection by, inter alia,
relying on the teachings and suggestions of Kloth at paragraph [0020]:5

4 Cf. Functional descriptive material consists of data structures and computer
programs which impart functionality when employed as a computer
component. See Interim Guidelines for Examination of Patent Applications
for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off. Gaz. Pat.
Office 142 (November 22, 2005), especially pages 151-152. (The Manual of
Patent Examining Procedure (MPEP) includes substantively the same
guidance. See MPEP, 8th edition (Rev. 9, Aug. 2012), § 2106.01.)

5 See Ans. 13.
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Application 11/095,121

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[0020] The VLAN designation assigned (e.g.,
programmed) to each internal port is stored in a memory
portion of the switch such that every time a message is received
by the switch on an internal port the VLAN designation of that
port is associated with the message. Association is
accomplished by a flow processing element which looks up the
VLAN designation in a memory based on the internal port
where the message originated. In addition to the ’402 patent,
an IEEE standards committee is proposing a standard for
Virtual Bridged Local Area Networks. See IEEE Standard
802.1q.
(Kloth, ¶ [0020]) (emphasis added).
Kloth, at paragraph [0021], further describes a VLAN association of
ports:
[0021] In many cases, it may be desirable to
interconnect a plurality of switches in order to extend the
VLAN associations of ports in the internetwork. Ross, in fact,
states that an objective of his VLAN arrangement is to allow all
ports and entities of the network having the same VLAN
designation to interchange messages by associating a VLAN
designation with each message. Those entities having the same
VLAN designation function as if they are all part of the same
LAN [i.e., Local Area Network]. Each VLAN may be further
associated with a subnet or broadcast domain so as to constrain
broadcasting of frame messages to a defined subset of stations,
preferably through "bridging" operations of the switch.
(Kloth, ¶ [0021]) (emphasis added). Cf. Appellants’ Specification, page 2,
lines 27-31: “a method for adapting a network switching process according
to one embodiment of the invention comprises: logically partitioning the
ports of a bridge into a plurality of port subsets; and adapting the operation
of said bridge to ensure that data is only coupled between ports associated
with the same port subset” (emphasis added).
Appeal 2010-004194
Application 11/095,121

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We agree with the Examiner that the combined teachings of Volpano
and Kloth would have at least suggested Appellants’ disputed comparing
step to an artisan of ordinary skill at the time of Appellants’ invention. (See
Ans. 14). The Supreme Court guides that an obviousness analysis “need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). It is our view that Appellants’
disputed “comparing” limitation is no more than a simple arrangement of old
elements with each performing the same function it had been known to
perform, yielding no more than one would expect from such an arrangement.
Id. at 416. The skilled artisan would “be able to fit the teachings of multiple
patents together like pieces of a puzzle” since the skilled artisan is “a person
of ordinary creativity, not an automaton.” Id. at 420-21. Nor have
Appellants demonstrated that the Examiner’s proffered combination of
Volpano and Kloth would have been “uniquely challenging or difficult for
one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
For at least the aforementioned reasons, on this record, we are not
persuaded of error regarding the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness. For essentially the same reasons
articulated by the Examiner in the Answer (12-18), as discussed above, we
sustain the Examiner’s first-stated § 103 rejection of representative claim 1,
and independent claims 12, 16, and 17, which recite the disputed
“comparing” limitation in commensurate form. Associated dependent
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Application 11/095,121

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claims 6-8, 10, 12, and 18-20 (not argued separately) fall therewith. See 37
C.F.R. § 41.37(c)(1)(vii)(2004).
Claims 2-4, 9, 11, and 13
Regarding the second and third-stated rejections of the remaining
dependent claims (2 and 13), and (3, 4, 9, and 11), respectively, Appellants
merely refer back to the same arguments previously advanced for the
independent claims, and present no new arguments as to why the references
do not teach or suggest the limitations of these dependent claims (See App.
Br. 58). However, for the reasons discussed above, we do not find
Appellants’ arguments regarding the independent claims persuasive.
Therefore, on this record, we are therefore not persuaded that the Examiner
erred in rejecting dependent claims 2-4, 9, 11, and 13.

CONCLUSION OF LAW
The Examiner did not err in rejecting claims 1-4, 6-13, and 16-20
under 35 U.S.C. § 103(a).

DECISION
For the above reasons, we affirm the Examiner’s § 103 rejections of
claims 1-4, 6-13, and 16-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

ORDER
AFFIRMED
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