Ex Parte Sampath et al

Patent Trial and Appeal Board

Jun 7, 2017

13748342 (P.T.A.B. Jun. 7, 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.
13/748,342 01/23/2013 Rangaprasad Sampath 83139742 3604
56436 7590 06/09/2017
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
WU, JIANYE
ART UNIT PAPER NUMBER
2462
NOTIFICATION DATE DELIVERY MODE
06/09/2017 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANGAPRASAD SAMPATH, ANOOP NAIR,
and SUDHIR KUMAR CHIMAKURTHYOM1
Appeal 2016-007001
Application 13/748,342
Technology Center 2400
Before ST. JOHN COURTENAY III, TERRENCE W. McMILLIN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1 and 3—21, which are all the claims pending in this
application.2 Claim 2 was cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
1 Appellants identify Hewlett-Packard Enterprise Development LP as the
real party in interest. Supp. App. Br. 2.
2 We refer herein to the Final Office Action (“Final Act.”) mailed August
24, 2015; the Supplemental Appeal Brief (“Supp. App. Br.”) filed on
February 12, 2016; the Examiner’s Answer (“Ans.”) mailed on May 5, 2016;
and the Reply Brief (“Reply Br.”) filed on July 1, 2016.
Appeal 2016-007001
Application 13/748,342
STATEMENT OF THE CASE
Invention
The disclosed and claimed invention on appeal relates to a Virtual
Router Redundancy Protocol (VRRP) network, which “is a network that has
two or more routers that support the VRRP protocol.” Spec. 11. The
invention is directed to “making a decision as to whether the first device
remains as the master gateway.” Abstract.
Claim 1 is exemplary, and is reproduced below:
1. A method for implementing gateway redundancy in a
network, comprising:
[LI] sending a message to a first device of multiple
devices of a network through a controller, where:
said first device is a master gateway; and
a second device of said multiple devices is a backup
gateway;
[L2] determining whether said controller receives a
response from said message; and
[L3] making a decision as to whether said first device
remains as said master gateway based on whether a response to
said message is received at said controller.
(Bracketed matter and emphasis added with respect to contested limitations
LI, L2, and L3.)
Rejections
A. Claims 1, 3—10, 15—17, and 21 are rejected under pre-AIA 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the inventor
regards as the invention.
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B. Claims 1, 3—10, 15—17, and 21 are rejected under pre-AIA 35 U.S.C.
§ 103(a), as being obvious over the combined teachings and
suggestions of Imai et al. (US 2008/0034112 Al, Feb. 7, 2008)
(hereinafter “Imai”) in view of Kumazawa et al. (US 2006/0248369
Al, Nov. 2, 2006) (hereinafter “Kumazawa”).
C. Claims 11—14 and 18—20 are rejected under pre-AIA 35 U.S.C.
§ 103(a), as being obvious over the teachings and suggestions of Imai.
Grouping of Claims
We address rejection A under § 112 of claims 1, 3—10, 15—17, and 21
at the outset, infra. Based upon Appellants’ arguments, we decide the
appeal of § 103 rejection C of claims 11—14 and 20 on the basis of
representative independent claim 11. See 37 C.F.R. § 41.37(c)(l)(iv). We
address rejection C of separately argued dependent claims 18 and 19, infra.
We decide the appeal of § 103 rejection B of claims 15 and 21 on the basis
of representative independent claim 15. We address § 103 rejection B of
claims 1, 3—10, 16, and 17, infra. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
Rejection A under pre-AIA § 112, second paragraph
The Examiner concludes the following limitations and issues render
claims 1, 3—10, 15—17, and 21 indefinite:
Claim 1 recites “sending a message to ..., where: said
first device is a master gateway, a second device of said
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multiple devices is a backup gateway; determining whether said
controller receives a response from said message . . . It is
unclear whether the response is included in the said message,
or the response is received in response to the said message.
Independent claim 15 recites “designate said first device
in said network as a backup gateway after said second response
is received”. There is insufficient antecedent basis for “said
second response” in the claim. The claim also recite[s] “a first
device” twice (line 1 and line 3 of page 5), which raises a
question on whether it refers to the same first device or two
different first devices. The claim is indefinite.
Dependent claims 4—10,17 and 21 are rejected because
they depend on either independent claim 1 or claim 15.
Claims 3 and 16 recite “The method of claim 2 . . .”.
However, claim 2 has been cancelled.
Final Act. 2—3 (emphasis in original omitted, emphasis in bold added).
Prosecution History
In response, Appellants attempted to correct the aforementioned § 112
issues by amendment. However, the Examiner declined to enter the after-
final amendment, filed on December 21,2015. Appellants explain the
pertinent prosecution history:
A single After-Final Amendment was filed after the
notice of appeal which [was] filed on October 26, 2015 and
prior to the filing of an Appeal Brief to address a few rejections
under 35 U.S.C. 112 in hopes of narrowing the issues for
review on appeal. Appellant believed that these after-final
amendments did not raise new issues requiring further search or
consideration and placed the claims in better form for appeal.
However, the Advisory Action [(mailed on February 8, 2016)]
denied entry of this after-final amendment.
Supp. App. Br. 5 (emphasis added).
Accordingly, throughout this opinion we refer to the version of the
claims considered by the Examiner in the Final Office Action, as
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Application 13/748,342
resubmitted by Appellants in the Supplemental Appeal Brief, as “Claims
Appendix” (29-33).
Claims 3 and 16 under §112 rejection A
We will sustain the Examiner’s rejection A under § 112, second
paragraph, of claims 3 and 16, because each of these claims depend directly
from cancelled claim 2, which we conclude renders the scope of claims 3
and 16 indefinite.
Claims 1, 4—10, 15, 17, and 21 under § 112 rejection A
Regarding claim 1 and the remaining claims rejected under § 112
rejection A, Appellants urge:
[Cjlaim 1 recites that “a message to a first device” is sent
through a controller and then the same controller “receives a
response from said message.” (Claim 1) (emphasis added). It
is illogical that the message sent by the controller would also
include a response received at the controller. Moreover, an
interpretation by one having ordinary skill in the art, and
common usage, indicates that a response is triggered by an
initial message, and not included in the initial message.
Supp. App. Br. 11—12 (emphasis in original omitted, emphasis added).
We note the problematic (“to” “from”) language of claim 1, in bold:
[LI] sending a message to a first device of multiple
devices of a network through a controller, where: . . .
[L2] determining whether said controller receives a
response from said message; and
[L3] making a decision as to whether said first device
remains as said master gateway based on whether a response to
said message is received at said controller.
Appellants amended limitation L2 of claim 1 to recite “to” instead of
“from.” However, this after-final amendment, filed on December 21, 2015,
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was not entered by the Examiner, as discussed above. Given the present
claim 1 language “receives a response from said message” (L2), the
Examiner concludes it is unclear whether the response is included in the
message, or the response is received in response to the message. (Final Act.
2).
We agree with the Examiner. Given the confusing usage of the
recited “to” and “from” language, we conclude claim 1 is amenable to two
or more plausible claim constructions under a broad but reasonable
interpretation. During examination before the USPTO, “if a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim . . . indefinite.”
Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008) (precedential).3
We additionally note claim 15 recites “a first device” twice, creating
an antecedent basis problem, as admitted by Appellants. See After-Final
Amendment, filed on Dec 21, 2015, page 7 — (not entered by the
Examiner).
Because Appellants have not separately addressed the remaining
claims rejected under rejection A, we sustain the Examiner’s rejection A
under 35 U.S.C. § 112, second paragraph, of claims 1, 4—10, 15, 17, and 21.
Therefore, combining our discussion of claims 3 and 16 above (as depending
3 See also In re Packard, 751 F.3d 1307, 1324 (Fed. Cir. 2014) (J. Plager
concurring) (“In my view (and that of the per curiam court), it is within the
authority of the USPTO to so interpret the applicable standard. Further, it is
my view that, as a policy matter, this court should support the USPTO in so
doing.”).
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from cancelled claim 2), we sustain rejection A, under § 112, second
paragraph, of all claims 1, 3—10, 15—17, and 21, rejected thereunder.
Rejection B of Dependent Claims 3 and 16 under §103
Because the scope of dependent claims 3 and 16 is indefinite for the
reasons discussed above regarding rejection A under § 112, we are unable to
reach the merits of § 103 rejection B of claims 3 and 16, over the cited Imai
and Kumazawa references. A prior art rejection cannot be sustained if the
hypothetical person of ordinary skill in the art would have to make
speculative assumptions concerning the meaning of the claim language. See
In re Steele, 305 F.2d 859, 862—863 (CCPA 1962). Therefore, we pro forma
reverse the Examiner’s § 103 rejection B of claims 3 and 16, which each
depend from cancelled claim 2.
Rejection B of Representative Independent Claim 1 under § 103
Issues: Under § 103(a), did the Examiner err in finding the
combination of Imai and Kumazawa would have taught or suggested
contested limitations:
[LI] sending a message to a first device of multiple
devices of a network through a controller, where:
said first device is a master gateway; and
a second device of said multiple devices is a backup
gateway;
[L2] determining whether said controller receives a
response from said message; and
[L3] making a decision as to whether said first device
remains as said master gateway based on whether a response
to said message is received at said controller[,]
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within the meaning of claim 1 ? 4
Regarding rejection B under § 103 of independent claim 1, Appellants
contend, inter alia:
Applicant submits that one having ordinary skill in the art
would understand that a heartbeat, being periodically sent out
regardless of incoming messages, is not a response, but an
independently initiated message, i.e., it is not initiated based on
a received message. Thus in summary, Imai at most describes
sending a heartbeat to a backup gateway. However, such a
heartbeat message is not “a response to said message” nor is
the backup gateway a “controller” that “receives [the]
response.” (Claim 1).
Still to this point, Appellant notes that the final Action is
improperly relying on one element, i.e., the heartbeat sent
from a master gateway to reject two separate, and distinctly
recited, components. It is improper for an Examiner to use
a single structure/element in the cited reference to disclose
two separate claimed elements. Ex parte Weideman (“[[I]]t is
improper to rely on the same structure in the Lohr reference as
being responsive to two different elements ... in claim 1”),
citing Lantech, Inc. v. Keip Machine Co., 32 F.3d 542 (Fed. Cir.
1994) (in infringement context, a single conveyor held to not
meet claim element requiring at least two conveyors); In re
Robertson, 169 F.3d 743 (Fed. Cir. 1999) (claim requiring three
separate means not anticipated by structure containing two
means where one of the two means was argued to meet two of
the three claimed means).
In this case, the final Action relies on the heartbeat to
reject the message found in the first recitation of the claim
4 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997). Cf. Spec. 1 60 (“The preceding description has
been presented only to illustrate and describe examples of the principles
described. This description is not intended to be exhaustive or to limit these
principles to any precise form disclosed. Many modifications and variations
are possible in light of the above teaching.”).
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(See final Action, p. 3). The final Action then relies on that
same heartbeat to reject the response to the message. (See
final Action, p. 4). It is unclear how one heartbeat can [be]
used to reject a message, as well as the response to that
message. Such a rejection of these different claim elements
based on a single element from Imai is improper.
Kumazawa fails to make up for this deficiency in Imai.
Kumazawa is cited to for “sending heart message[s] to the
master gateway/router and getting a response from it as the way
to ensure that the master gateway functions properly.” (Final
Action, p. 4).
Supp. App. Br. 14—15 (emphasis added).
The Examiner disagrees:
Imai teaches exchanging heartbeat messages between a
master/main gateway and a slave/backup gateway via a
controller, as disclosed by the claim 1. The difference]
between Imai and claim 1 is that heartbeat messages are sent
from the master/main gateway in claim 1, while in Imai
heartbeat messages are sent [to] the slave/backup gateway.
However, Kumazawa teaches sending heartbeat messages from
the master/main gateway, same as claim 1. It would be obvious
to modify Imai with Kumazawa to send heartbeat messages
[that] are sent from the master/main gateway because the
communication between a master/main gateway and a
slave/backup gateway can be maintained the same way whether
the heartbeat messages are sent from either side.
Ans. 15—16.
We find a preponderance of the evidence supports Appellants’
contentions (Supp. App. Br. 14—15), particularly in light of the case law
cited in support which guides that the two claim terms (a sent message, and
a received response) should be construed as separate, discrete claim
elements:
Ex parte Weideman (“[[I]]t is improper to rely on the same
structure in the Lohr reference as being responsive to two
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different elements ... in claim 1”), citing Lantech, Inc. v. Keip
Machine Co., 32 F.3d 542 (Fed. Cir. 1994) (in infringement
context, a single conveyor held to not meet claim element
requiring at least two conveyors); In re Robertson, 169 F.3d
743 (Fed. Cir. 1999) (claim requiring three separate means not
anticipated by structure containing two means where one of the
two means was argued to meet two of the three claimed means).
Supp. App. Br. 14—15.
Our reviewing court provides further guidance: “[T]he use of [two
similar but different] terms in close proximity in the same claim gives rise to
an inference that a different meaning should be assigned to each. . . . That
inference, however, is not conclusive; it is not unknown for different words
to be used to express similar concepts, even though it may be poor drafting
practice.” Bancorp Services, L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367,
1373 (Fed. Cir. 2004) (citing Ethicon Endo-Surgery, Inc. v. U.S. Surgical
Corp., 93 F.3d 1572, 1579 (Fed. Cir. 1996) (stating that “[i]f the terms
‘pusher assembly’ and ‘pusher bar’ described a single element, one would
expect the claim to consistently refer to this element as either a ‘pusher bar’
or a ‘pusher assembly,’ but not both, especially not within the same clause.
Therefore, in our view, the plain meaning of the claim will not bear a
reading that ‘pusher assembly’ and ‘pusher bar’ are synonyms.”)).
Applying this reasoning here, we find a preponderance of the
evidence supports Appellants’ contention: “It is unclear how one
heartbeat [(in Imai, Fig. 5,173)] can [be] used to reject a message, as
well as the response to that message. Such a rejection of these different
claim elements based on a single element from Imai is improper.” Supp.
App. Br. 15 (emphasis added). Accordingly, we reverse rejection B of
claims 1, 4—10, and 17.
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Rejection C of Claims 11—14 and 18—20 under § 103 over Imai
At the outset, we broadly but reasonably construe “system” claim 11
as an apparatus. We find unpersuasive Appellants’ contentions that Imai
does not teach or suggest “a topology engine to store a topology of said
network” (claim 11), because we find Appellants’ Specification (| 44)
describes the claimed “topology engine” using non-limiting, exemplary
functional language: “The topology engine (702) tracks and/or stores the
topology of the network, which allows the gateway redundancy system (700)
to know where to send messages in the network.” See also Appellants’
Figure 7, depicting “Topology Engine” 702 merely as a box labeled in
accordance with its intended function.
We find routers, such as those described in Imai (e.g., Fig. 5, 504,
505), refer to IP and/or MAC address tables to track and/or store the
topology of the network in some aspect, as is known in the art. See e.g.,
Imai (1120 “MAC address table”). Therefore, on this record, we are not
persuaded the Examiner’s interpretation of storing “a topology of said
network” as recited in independent claim 11, is overly broad or
unreasonable:
Imai discloses storing a topology of a network[] for example,
controller 503 in FIG. 5 stores topology information of both
master gateway/router 503 and backup gateway/router 505.
Note that topology of a network is a very broad term, any
information related to network devices can be interpreted as the
topology of a network.
Ans. 16 (emphasis added).5
5 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
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Although the features of an apparatus may be recited either
structurally or functionally, claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function.
Thus, the patentability of an apparatus “depends on the claimed structure,
not on the use or purpose of that structure.” Catalina Marketing Int 7, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see also Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990);
Roberts v. Ryer, 91 U.S. 150, 157 (1875) (“The inventor of a machine is
entitled to the benefit of all the uses to which it can be put, no matter
whether he had conceived the idea of the use or not.”). Thus, it is usually
improper to construe non-functional claim terms in system claims in a way
that makes infringement or validity turn on their function. Paragon
Solutions, LLCv. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).
We find this reasoning is applicable to Appellants’ remaining
arguments regarding the contested functional limitations recited in
independent claim 11. See Supp. App. Br. 24—25. Accordingly, we sustain
the Examiner’s rejection C of representative independent claim 11, and
rejection C of associated dependent claims 12—14 and 20 (not separately
argued). See Grouping of Claims, supra.
Regarding dependent claim 18 (also rejected under rejection C), we
find master router 504 in Imai (Fig. 5) at least suggests an initial priority
over backup router 505, contrary to Appellants’ contentions.* * 6 Supp. App.
patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
6 “[T]he question under 35 U.S.C. § 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made.” Merck & Co., Inc. v. Biocraft
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Br. 25—26. Dependent claim 19 recites: “The system of claim 11, further
comprising an action component to include actions that are taken based on
information contained in a state component.” (emphasis added). We
conclude the contested “actions” functional language fails to distinguish the
structure of the apparatus of “system” claim 19 over the Examiner’s findings
regarding Imai. See Final Act. 13—14. For these reasons, we also sustain
rejection C of dependent claims 18 and 19, which each depend directly from
independent claim 11.
Rejection B of Claims 15 and 21 under §103
For the same reasons discussed above regarding the stored topology
recited in claim 11, we are not persuaded the contested limitation of “store a
topology of said network” (claim 15) is unobvious over the cited
combination of Imai and Kumazawa. We will sustain rejection B of claim
15 for similar reasons discussed above regarding rejection C of independent
claim 11 (over Imai), and also because claim 15 recites contested
conditional limitations performed as executable instruction steps, which we
conclude are not positively recited as actually occurring:
designate said second device in said network as said master
gateway when [condition precedent is satisfied]:
no response is received at the controller from said first
device within said timeout period; and
a response to said message is received at the controller
from said second device;
designate said first device in said network as a backup gateway
after said second response is received.
Labs., Inc., 874 F. 2d 804, 807—08 (Fed. Cir. 1989), cert, denied, 493 U.S.
975 (1989); see also MPEP § 2123(F).
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Claim 15 (emphasis added); see Ex parte Schulhauser, No. 2013-007847,
2016 WL 6277792, at *4 (PTAB Apr. 28, 2016) (precedential) (holding
“[t]he Examiner did not need to present evidence of the obviousness of the
remaining method steps of claim 1 that are not required to be performed
under a broadest reasonable interpretation of the claim”); see also Ex parte
Katz, No. 2010-006083, 2011 WL 514314, at *A-5 (BPAI Jan. 27, 2011).
Applying this reasoning here, we find unavailing Appellants’
remaining arguments that the cited Imai and Kumazawa references fail to
teach or suggest the conditional language of claim 15 (performed by a
processor according to executable instruction steps), because such
arguments are not commensurate with the broadest reasonable interpretation
of claim 15. See Schulhauser, 2016 WL 6277792, at *4—5. We note claim
21 depends directly from claim 15, and is not separately argued. Therefore,
based upon a preponderance of the evidence, we are not persuaded the
Examiner erred. Accordingly, we sustain the Examiner’s rejection B under
§ 103 of claims 15 and 21, over the cited combination of Imai and
Kumazawa.
Reply Brief
To the extent Appellants may advance new arguments in the Reply
Brief not in response to a shift in the Examiner’s position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief or are not responsive to arguments raised in the Examiner’s Answer
will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
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DECISION
We affirm the Examiner’s decision rejecting claims 1, 3—10, 15—17,
and 21, under pre-AIA 35 U.S.C. § 112, second paragraph.
We reverse the Examiner’s decision rejecting claims 1, 3—10, 16, and
17, under pre-AIA 35 U.S.C. § 103(a).
We affirm the Examiner’s decision rejecting claims 11—15 and 18—21,
under pre-AIA 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.50(f).
AFFIRMED
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