Ex Parte Savarda

Patent Trial and Appeal BoardFeb 28, 2014

10120440 (P.T.A.B. Feb. 28, 2014)

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. 10/120,440 04/11/2002 Raymond Savarda 9387-11 9880 20792 7590 02/28/2014 MYERS BIGEL SIBLEY & SAJOVEC PO BOX 37428 RALEIGH, NC 27627 EXAMINER SURVILLO, OLEG ART UNIT PAPER NUMBER 2442 MAIL DATE DELIVERY MODE 02/28/2014 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 RAYMOND SAVARDA ____________ Appeal 2011-010663 Application 10/120,440 Technology Center 2400 ____________ Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W. FETTING, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010663 Application 10/120,440 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-9, 25-42, and 46-48. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND Appellant’s invention is directed to packet processing methods, systems, and computer programs products for processing packets with layered headers. Claim 1 is illustrative: 1. A method of processing a packet, comprising: performing operations as follows such that at least a portion of at least one of the operations is performed on at least one processor: obtaining a first protocol from a first header of the packet; reading a record from a data structure using the first protocol as a key, the record associating the first protocol with an offset in a second header of the packet relative to a known position in the second header of the packet; and obtaining a second protocol from a second header by using the offset in the second header. Appellant appeals the following rejections: Claims 1-9, 25-42, and 46-48 under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 1-9, 25-42, and 46-48 under 35 U.S.C. § 103(a) as unpatentable over S. Kent et al., Security Architecture for the Internet Protocol, Network Working Group—Request for Comments: 2401, 1-66 Appeal 2011-010663 Application 10/120,440 3 (Nov. 1998) (hereinafter “Kent”) and Gentry (US 6,356,951 B1; iss. Mar. 12, 2002). ISSUE Did the Examiner err in rejecting claim 1 as indefinite because the language of claim 1 is not indefinite when read in light of Appellant’s Specification at page 8, line 13 to page 9, line 17? ANALYSIS We are not persuaded of error on the part of the Examiner by Appellant’s argument that the disclosure in the Specification explains how a second protocol can be obtained from a second header by using the offset in the second header. The Examiner held that the language “using the offset in the second header” results in ambiguity as to position of the offset in relation to the beginning and ending of the packet (Ans. 4). We find that Appellant’s Specification discloses an IP packet with a first outer header and a second inner header (Spec. 7). The first header is processed to obtain a first protocol and the first protocol is used to obtain the offset or distance to the second header (Id. at 8). The second header may be processed to obtain the second protocol (Id. at 9). As such, we find that Appellant’s Specification discloses that the second header is used to point to the location of the second protocol. In this way, the offset to the second header is used to obtain the second protocol. Appellant’s Specification also discloses that the offset in the second header is used to obtain the second protocol (Spec. 3). Appeal 2011-010663 Application 10/120,440 4 As such, we agree with the Examiner that: it is unclear how can a position in the second header of the packet be known prior to a second protocol being obtained that allows to identify the structure of the second header and the payload. Examiner maintains that knowledge of the first protocol does not make a position in the second header "known". Knowledge of the first protocol only allows to offset to the end of the outer header and beginning of outer payload which is the beginning of the inner header. See Fig. 3. Applicant's specification fails to resolve the ambiguity as it inconsistently refers to "offset to a second header" (which is proper) and "offset in a second header" (which is claimed and is improper). (Ans. 4-5). The Appellant does not explain in the Brief or the Reply Brief how a second protocol can be obtained from an offset in the second header. We agree with the Examiner that the offset to the second header not the offset in the second header allows one to obtain the second protocol. However, as explained by the Examiner, resorting to the Specification does not clear up the confusion because the Specification uses in the second header and to the second header. As such, the meaning of the recitation in claim 1 of using the offset in the second header is not clear. Therefore, we will sustain the rejection of the Examiner as to claim 1. We will also sustain this rejection as it is directed to the remaining claims because each of the remaining claims contains the language we have found indefinite. We do not reach the merits of the obviousness rejections of the claims. A rejection should not be based on “speculations and assumptions.” In re Steele, 305 F.2d 859, 862 (CCPA 1962). “All words in a claim must be considered in judging the patentability of that claim against the prior art. Appeal 2011-010663 Application 10/120,440 5 If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious- the claim becomes indefinite.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). Speculations and assumptions would be required to decide the meaning of the terms employed in the claims and the scope of the claims. Therefore, we conclude that the indefiniteness of claims prevents us from reaching the issues of anticipation. Consequently, we reverse pro forma the obviousness rejection. It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter and does not reflect the adequacy or the inadequacy of the prior art evidence applied in support of the rejection before us. Once definite claims are presented, the Examiner is free to apply the same, different, or additional prior art if the Examiner so chooses. DECISION We affirm the Examiner’s § 112 rejection, second paragraph rejection. We do not affirm the Examiner’s § 103(a) rejection. 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. § 1.136(a)(1) (2011). AFFIRMED hh