Ex Parte Tassinari et al

Patent Trial and Appeal Board

Jan 16, 2014

11590019 (P.T.A.B. Jan. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARK A. TASSINARI, DAVID P. MCMILLAN,
and SHAUN WAKUMOTO
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Appeal 2011-009168
Application 11/590,019
Technology Center 2400
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Before MICHAEL J. STRAUSS, IRVIN E. BRANCH, and
CATHERINE SHIANG, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-009168
Application 11/590,019
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–13 and 20–29. We have jurisdiction under 35
U.S.C. § 6(b). Claims 14–19 are canceled.
We affirm.
Illustrative Claim
Appellants’ disclosure relates to transmitting network packets from
and receiving packets with a network switch and copying transmitted and
received packets to a packet repository within a memory of the network
switch such that the packets are stored on the switch and available for later
retrieval. Abstract.
Claim 1, reproduced below with the disputed limitation italicized, is
illustrative of the claimed subject matter:
1. A method for capturing network packets transmitted over
a network, the method comprising:
transmitting packets from and receiving packets with a
network switch;
copying transmitted and received packets to a packet
repository within a memory of the network switch; and
keeping the copied packets in the packet repository after
the network switch has transmitted the received packets so that
the copied packets are available in the packet repository for
later retrieval by a separate device via the network.

Rejections
The Examiner rejected:
Claims 1, 5–7, 11, 13, 20, 21, 24–26, and 29 under 35 U.S.C. § 103(a)
as unpatentable over Bartoldus (US 6,560,227 B1) and Ono
(US 2003/0133457 A1) (Ans. 3–5);
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Claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over
Bartoldus, Ono, and Al-Shamma (US 6,215,705 B1) (Ans. 5–6);
Claims 4, 8, 9, 22 and 27 under 35 U.S.C. § 103(a) as unpatentable
over Bartoldus, Ono, and Masuda (US 2003/0078031 A1) (Ans. 6-9);
Claims 10 and 12 under 35 U.S.C. § 103(a) as unpatentable over
Bartoldus, Ono, and Holm (US 6,687,255 B1) (Ans. 9); and
Claims 23 and 28 under 35 U.S.C. § 103(a) as unpatentable over
Bartoldus, Ono, and Sorber (US 6,018,515) (Ans. 9-11).

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Appeal Brief (“App. Br.” filed Dec. 8, 2010) and Reply
Brief (“Reply Br.” filed Apr. 18, 2011) that the Examiner has erred. We
refer to the Briefs and the Answer (“Ans.” mailed Feb. 17, 2011) for the
respective positions of Appellants and the Examiner.
We disagree with Appellants’ conclusions. We adopt as our own (1)
the findings and reasons set forth by the Examiner in the action from which
this appeal is taken (Ans. 3–11) and (2) the reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief
(Ans. 11–14) and concur with the conclusions reached by the Examiner. We
highlight the following for emphasis.

35 U.S.C. § 103 Rejection of Claim 1 Over Bartoldus and Ono
Appellants argue the Examiner’s rejection of claim 1 is in error
“because in Ono, the copied packet is not available for later retrieval by a
separate device via the network . . .” App. Br. 9. Appellants support this
argument by stating “in Ono, the copied packet in the retransmit memory 14
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is deleted after the retransmission,” and “the packet scheduler 13 in Fig. 1 of
Ono is not the same as the ‘separate device’ recited in claim 1 because the
packet scheduler 13 does not retrieve the copied packet from the memory
‘via the network.’” Id. at 9–10; see also App. Br. 10–11; Reply Br. 5–8.
Appellants concede Ono teaches temporarily storing transmitted packets for
possible retransmission and do not dispute Ono’s destination mobile
terminal, to which packets may be retransmitted, is a separate device
connected by the network. Reply Br. 6–7.
We do not find persuasive Appellants’ argument that Ono’s
destination mobile terminal passively receives the retransmitted packet,
rather than retrieving it. Id. at 7. We agree with the Examiner that “the
claim language does not require a further active step of retrieval to be
performed by the separate device, but instead requires the claimed ‘packet
repository’ to have a capability [] of making packets available in the event of
the claimed ‘retrieval.’” Ans. 11. We further agree with the Examiner that
Appellants’ Specification supports the Examiner’s interpretation of
“retrieval” as including an automated process not requiring action by the
separate device. Id. at 12–13. We are not persuaded of error in the
Examiner’s finding that Ono teaches or suggests the broadest reasonable
interpretation of “the copied packets are available in the packet repository
for later retrieval by a separate device via the network.” Ans. 4, 13
(referring to Ono, ¶ 37). Accordingly, on the record before us, we sustain
the Examiner’s rejection of claim 1 and of claims 5–7, 11, 13, 20, 21, 24–26,
and 29 argued on the same grounds. App. Br. 11–12.
For claims 4, 8, 9, 22, and 27, Appellants argue only that Masuda does
not make up for the deficiencies of Bartoldus and Ono with respect to the
independent claims from which they depend. App. Br. 14–15. Similarly, for
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claims 10 and 12 Appellants argue only that Holm does not make up for the
deficiencies of Bartoldus and Ono. App. Br. 15–16. Likewise, for claims 23
and 28 Appellants argue only that Sorber does not make up for the
deficiencies of Bartoldus and Ono. App. Br. 16. Because we do not find
Bartoldus and Ono deficient, we sustain the Examiner’s rejections of claims
4, 8, 9, 10, 12, 22, 23, 27, and 28.

35 U.S.C. § 103 Rejection of Claims 2 and 3 Over Bartoldus, Ono, and
Al-Shamma
Claims 2 and 3 depend from claim 1 and further define from claim 1
“copying transmitted and received packets to a packet repository within
memory of the network switch” to be “storing the transmitted and received
packets within nonvolatile memory of the switch” and “storing the
transmitted and received packets within flash memory of the switch”
respectively. Appellants do not dispute Al-Shamma discloses “a nonvolatile
memory, such as a flash memory” but argue it would not have been obvious
to combine the memory of Al-Shamma with the LAN switch of Bartoldus
because “the nonvolatile or flash memory for long-term storage disclosed in
Al-Shamma is not suitable for the temporary-storage copy logic means 21 in
Bartoldus.” App. Br. 13–14; see also Reply Br. 8–10.
Appellants do not present persuasive evidence to support the
argument. Moreover, even if true, we are unpersuaded Appellants’
argument would show error in the Examiner’s rejection. Appellants do not
dispute that the Examiner has shown all elements exist in the prior art, and
the combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results. KSR
International Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, when
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considering obviousness of a combination of known elements, the operative
question is “whether the improvement is more than the predictable use of
prior-art elements according to their established functions.” Id. at 417.
Appellants do not present persuasive evidence or argument this is the case.
Accordingly, on the record before us, we sustain the Examiner’s
rejection of claims 2 and 3.

DECISION
For the above reasons, the Examiner’s rejection of claims 1–13 and
20–29 is affirmed.

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).

AFFIRMED

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