Ex Parte Jain

Patent Trial and Appeal Board

Aug 21, 2017

13487932 (P.T.A.B. Aug. 21, 2017)

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.
13/487,932 06/04/2012 Nitin Jain BRCD-3129. l.US.NP 1572
73257 7590 08/23/2017
PVF — Brocade Communications Systems Inc.
c/o PARK, VAUGHAN, FLEMING & DOWLER LLP
2820 Fifth Street
Davis, CA 95618
EXAMINER
DIVITO, WALTER J
ART UNIT PAPER NUMBER
2465
NOTIFICATION DATE DELIVERY MODE
08/23/2017 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):
sy_incoming @parklegal.com
j eannie @parklegal. com
wendy@parklegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NITIN JAIN
Appeal 2017-001551
Application 13/487,9321
Technology Center 2400
Before BRUCE R. WINSOR, JEREMY J. CURCURI, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1—28. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Technology
The application relates to “network management” and “efficiently
managing . . . switches using a single point of configuration.” Spec. 12.
Illustrative Claims
Independent claims 1 and 28 are illustrative and reproduced below
with certain limitations at issue emphasized:
1 According to Appellant, the real party in interest is Brocade
Communications Systems, Inc. App. Br. 1.
Appeal 2017-001551
Application 13/487,932
1. A computing system, comprising:
a processor; and
a non-transitory computer-readable storage medium
storing instructions which when executed by the processor
causes the processor to perform a method, the method
comprising:
constructing a query message destined for a first
multicast group to which the computing system is
registered, wherein a multicast group includes one or more
devices registered to the multicast group, wherein the
query is a multicast message, and wherein a multicast
group is associated with a multicast distribution tree via
which a multicast message destined for the multicast
group is distributed;
extracting discovery information associated with a
remote switch from a query response message; and
constructing a client database, wherein a first entry
in the client database includes the discovery information
extracted from the query response message; and
associating the remote switch with a second
multicast group based on an attribute from the first entry,
wherein the attribute is in the discovery information.
28. A switch means, comprising:
one or more port means;
a packet processor means for extracting content of a
message received via one of the port means;
a discovery means for constructing a query response
message destined for a first multicast group in response to the
extracted content being a multicast query, wherein a multicast
group includes one or more devices registered to the multicast
group, wherein the query is a multicast message, and wherein a
multicast group is associated with a multicast distribution tree
via which a multicast messages destined for the multicast group
is distributed; and
a command means for locally executing a command in the
switch means, wherein the extracted content includes the
command.
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Application 13/487,932
Rejections
Claim 28 stands rejected under 35U.S.C. § 112, second paragraph, as
being indefinite for invoking 35 U.S.C. § 112, sixth paragraph but not
providing sufficient structure in the Specification. Final Act. 6.
Claims 1, 2, 4—6, 8, 12—14, 17, 18, 20-22, 24, and 28 stand rejected
under 35 U.S.C. § 103(a) as obvious over the combination of Pinto (US
2002/0133622 Al; Sept. 19, 2002) and Maenpaa et al. (US 2012/0271895
Al; Oct. 25, 2012). Final Act. 7.
Claims 3 and 19 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Pinto, Maenpaa, and Ammitzboll et al. (US
6,785,294 Bl; Aug. 31, 2004). Final Act. 14.
Claims 7 and 23 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Pinto, Maenpaa, and Brownell et al. (US
2007/0233825 Al; Oct. 4, 2007). Final Act. 16.
Claims 9, 15, and 25 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Pinto, Maenpaa, and Pan et al. (US
2004/0081104 Al; Apr. 29, 2004). Final Act. 17.
Claims 10, 16, and 26 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Pinto, Maenpaa, and Laevens et al. (US
2011/0258519 Al; Oct. 20,2011). Final Act. 18.
Claims 11 and 27 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Pinto, Maenpaa, and Nishida (US 2011/0261699
Al; Oct. 27, 2011). Final Act. 20.
ISSUES
1. Did the Examiner err in concluding claim 28 was indefinite for
failure to disclose sufficient structure for the means-plus-fimction limitations
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Application 13/487,932
“a discovery means for constructing a query response message destined for a
first multicast group in response to the extracted content being a multicast
query” and “a command means for locally executing a command in the
switch means”?
2. Did the Examiner err in finding the combination of Pinto and
Maenpaa teaches or suggests “associating the remote switch with a second
multicast group based on an attribute from the first entry, wherein the
attribute is in the discovery information,” as recited in claims 1 and 17?
3. Did the Examiner err in finding Pinto teaches or suggests “the
extracted content includes the command,” as recited in claims 12 and 28?
ANALYSIS
Indefiniteness
Independent claim 28 recites the means-plus-fimction limitations “a
discovery means for constructing a query response message destined for a
first multicast group in response to the extracted content being a multicast
query” and “a command means for locally executing a command in the
switch means.”
The Examiner concludes claim 28 is indefinite because “the claim
invokes 35 USC 112, sixth paragraph, but does not provide sufficient
structure in the Specification.” Final Act. 6; Ans. 20.
Appellant argues the Specification discloses a “discovery module” and
a “command management module,” and such modules may include a
processor, FPGA, or other programmable-logic device. App. Br. 14 (citing
Spec. H17, 90) (emphasis added); see also App. Br. 8—10, 12.
We agree with the Examiner. “‘Module’ is a well-known nonce word
that can operate as a substitute for ‘means’ in the context of § 112, para. 6.”
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Application 13/487,932
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015).
Nonce words such as module “typically do not connote sufficiently definite
structure.” Id. (quotation omitted). “Here, the word ‘module’ does not
provide any indication of structure because it sets forth the same black box
recitation of structure for providing the same specified function as if the
term ‘means’ had been used.” Id.', see also Spec. 117.
We next turn to Appellant’s reliance on a generic processor or other
logic device. For means-plus-fimction limitations,
[i]f special programming is required for a general-purpose
computer to perform the corresponding claimed function, then
the default rule requiring disclosure of an algorithm applies. It
is only in the rare circumstances where any general-purpose
computer without any special programming can perform the
function that an algorithm need not be disclosed.
Ergo Licensing, LLCv. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed.
Cir. 2012); see also Williamson, 792 F.3d at 1352.
The claimed function of the discovery means (“constructing a query
response message . . .”) requires special programming beyond the processor
alone. Thus, the default rule requiring disclosure of an algorithm applies.
Appellant has not identified any such algorithm in the Specification and
therefore has not identified the necessary structure to avoid indefmiteness.
“[T]he fact that one of skill in the art could program a computer to perform
the recited functions cannot create structure where none otherwise is
disclosed.” Williamson, 792 F.3d at 1351 (emphasis added).
For the “command means,” however, the claimed function of “locally
executing a command” is performed by a processor, ASIC, or FPGA alone
without any special programming. Spec. 190. Accordingly, we conclude
the “command means” is one of the “rare circumstances” where “an
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algorithm need not be disclosed.” Ergo, 673 F.3d at 1365. Thus, the
Specification does recite sufficient structure for the “command means”
(specifically, the hardware processor, ASIC, or FPGA in paragraph 90), but
does not recite sufficient structure for the “discovery means.”
Accordingly, we sustain the rejection of claim 28 as indefinite.
Obviousness
A) Claims 1—11 and 17—27
Independent claims 1 and 17 recite “associating the remote switch
with a second multicast group based on an attribute from the first entry,
wherein the attribute is in the discovery information.”
The Examiner finds Maenpaa discloses “[a] cluster that exceeds the
upper size is split into two clusters,” which the Examiner finds teaches the
first part of the limitation, i.e., “associating the remote switch with a second
multicast group.” Final Act. 9 (citing Maenpaa 72, 10, Fig. 4); Ans. 21.
For the remainder of the limitation (“based on an attribute from the first
entry, wherein the attribute is in the discovery information”), the Examiner
finds Pinto teaches “[t]he information is used to establish a table wherein the
entries include discovery information extracted (e.g., attribute).” Final Act.
8 (citing Pinto 155, Fig. 11).
“[I]t is incumbent upon the Patent Office in the first instance to set
forth clearly why it regards a claim to be anticipated, obvious or otherwise
defective.” In reMullin, 481 F.2d 1333, 1336 (CCPA 1973). “[Rjejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
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Application 13/487,932
441 F.3d 977, 988 (Fed. Cir. 2006); KSRInt’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (quoting Kahn).
Here, the claims expressly require “associating . . . based on an
attribute.” The Examiner addresses “associating” independently from
“based on an attribute.” The Examiner has not articulated any reasoning
how the findings for Maenpaa’s “associating” would have been tied to the
findings for Pinto’s “based on an attribute.” The Supreme Court has said “a
patent composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art.” KSR, 550 U.S. at 418. It may be possible that a combination of
Pinto and Maenpaa renders this limitation obvious, but the Examiner has not
sufficiently explained such obviousness here.
Accordingly, we are constrained by this record to reverse the rejection
of independent claims 1 and 17, and their dependent claims 2—11 and 18—27.
B) Claims 12—16 and 28
Independent claim 12 recites “command circuitry configured to
locally execute a command in the switch, wherein the extracted content
includes the command.” Independent claim 28 recites a commensurate
limitation.
The Examiner finds “Pinto discloses the message being sent to the
switches, which then repeat the packet using the hop count (i.e., extracted
from the packet).” Ans. 25; Final Act. 12 (citing Pinto 144).
Although we agree with the Examiner that Pinto discloses the hop
count is extracted from the packet and a switch may repeat the packet based
on the hop count (Pinto Tflf 43, 44, Table 1), we agree with Appellant that “a
command to repeat a packet is not extracted from the broadcast message of
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Pinto” because “the hop count value is not a command.” Reply Br. 11, 17.
In particular, a hop count cannot be “locally executed,” as required by the
claims. This is because a hop count is just data, not a command. See Spec.
1172, 68, Fig. 4 (disclosing examples of commands). Thus, the Examiner
has not addressed Appellant’s argument. Nor has the Examiner articulated
any explanation why it would have been obvious to extract a command to
repeat a packet rather than to extract a hop count.
Accordingly, we are constrained to reverse the rejection of
independent claims 12 and 28, and claims 13—16, which depend from claim
12.
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claim 28 as indefinite, but reverse the Examiner’s decision rejecting claims
1—28 as obvious.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED-IN-PART
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