Transmittal of Communication to
`Third Party Requester
`Inter Partes Reexamination
`
`Control No.
`
`95/000,659
`Examiner
`
`SALMAN AHMED
`
`Patent Under Reexamination
`
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address. --
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`IRELL & MANELLA, LLP
`DAVID MCPHIE
`840 NEWPORT CENTER DR., STE 400
`NEWPORT BEACH, CA 92660
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`in the above-identified reexamination prceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this communication,
`the third party requester of the inter partes reexamination may once file written comments within a
`period of 30 days from the date of service of the patent owner's response. This 30-day time period is
`statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no responsive
`submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of the
`communication enclosed with this transmittal.
`
`U.S. Patent and Trademark Office
`PTOL-2070 (Rev. 07-04)
`
`Paper No. 20120809
`
`Juniper Ex. 1019-p. 1
`Juniper v Implicit
`
`(cid:9)
`

`

`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. (cid:9)
`
`( (cid:9)
`
`FILING DATE
`
`FIRST NAMED INVENTOR (cid:9)
`
`ATTORNEY DOCKET NO.
`
`I
`
`CONFIRMATION NO.
`
`95/000,659
`
`02/13/2012
`
`6629163
`
`159291-0025(163)
`
`6219
`
`10/01/2012
`7590 (cid:9)
`HEIM, PAYNE & CHORUSH, LLP
`600 TRAVIS STREET
`SUITE 6710
`HOUSTON, TX 77002
`
`EXAMINER
`
`AHMED, SALMAN
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`10/01/2012
`
`DELIVERY MODE
`
`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)
`
`Juniper Ex. 1019-p. 2
`Juniper v Implicit
`
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`(cid:9)
`

`

`ACTION CLOSING PROSECUTION
`(37 CFR 1.949)
`
`Control No. (cid:9)
`
`95/000,659
`Examiner
`
`SALMAN AHMED
`
`Patent Under Reexamination
`
`6629163
`Art Unit
`
`3992
`
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address. --
`
`Responsive to the communication(s) filed by:
`Patent Owner on 04 June, 2012
`Third Party(ies) on 30 August, 2012
`
`Patent owner may once file a submission under 37 CFR 1.951(a) within 1 month(s) from the mailing date of this
`Office action. Where a submission is filed, third party requester may file responsive comments under 37 CFR
`1.951(b) within 30-days (not extendab)e- 35 U.S.C. § 314(b)(2)) from the date of service of the initial
`submission on the requester. Appeal cannot be taken from this action. Appeal can only be taken from a
`Right of Appeal Notice under 37 CFR 1.953.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.
`
`PART I. THE FOLLOWING ATTACHMENT(S)ARE PART OF THIS ACTION:
`1. Z Notice of References Cited by Examiner. PTO-892
`2.
`Information Disclosure Citation, PTO/S[3/08
`3. E (cid:9)
`
`
`PART II. SUMMARY OF ACTION:
`Claims 1,15 and 35 are subject to reexamination.
`Claims (cid:9)
`are not subject to reexamination.
`Claims (cid:9)
`have been canceled.
` are confirmed. [Unamended patent claims]
`Claims (cid:9)
`Claims (cid:9)
`are patentable. [Amended or new claims]
`Claims 1,15 and 35 are rejected.
`Claims (cid:9)
`are objected to.
`are not acceptable.
`are acceptable
`The drawings filed on (cid:9)
`
` disapproved.
` is:
`approved.
`The drawing correction request filed on (cid:9)
`Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has:
`E been filed in Application/Control No (cid:9)
`E been received. (cid:9)
`
`not been received. (cid:9)
`Other
`
`18.
`b.
`2.
`3.
`4.
`5.
`6.
`7.
`8
`
`10. (cid:9)
`
`...nnn ••n••
`
`...nnn ••n••
`
`U.S. Patent and Trademark Office
`PTOL-2065 (08/06)
`
`Paper No. 20120809
`
`Juniper Ex. 1019-p. 3
`Juniper v Implicit
`
`(cid:9)
`(cid:9)
`(cid:9)
`

`

`Application/Control Number: 95/000,659 (cid:9)
`Art Unit: 3992
`
`Page 2
`
`DETAILED ACTION
`
`1.
`
`This Office action addresses claims 1, 15 and 35 of United States Patent No.
`
`6,629,163 (Balassanlan, Edward) in response to Patent Owner (hereinafter PO)
`
`response dated 6/4/2012 and Third Party Comment dated 8/30/2012 for inter partes
`
`reexamination.
`
`Information Disclosure Statement
`
`2.
`
`The information disclosure statements (IDS) submitted have been considered by
`
`the examiner to the extent that they have been explained in the submissions.
`
`3.
`
`Original claims 1, 15 and 35 are rejected.
`
`Status of the Claims
`
`Response to Arguments
`
`4.
`
`PO argues in pages 2-3:
`
`After Juniper Networks filed its reexamination request, United States District Judge
`
`Susan Iliston issued a .Markman Order in the Related Litigation (attached as Exhibit 2, February
`
`29, 2012). 2 The Court's Order—which was not before the PTO when it granted the
`
`reexamination request—construed several terms at issue in this reexamination. Although a
`
`Markman Order is not binding on the PTO, such an Order nonetheless reflects a decision from
`
`the District Court on the meaning of particular claim terms in light of the specification and other
`
`Juniper Ex. 1019-p. 4
`Juniper v Implicit
`
`

`

`Application/Control Number: 95/000,659 (cid:9)
`Art Unit: 3992
`
`Page 3
`
`intrinsic evidence, and thus should be considered when the PTO construes those same terms for
`
`the purpose of reexamination. In this case, Implicit respectfully submits that the PTO should
`
`follow the District Court's constructions, in part, because they were rendered after both Implicit
`
`and Juniper Networks fully briefed and argued the issues, and because they reflect the considered
`
`judgment of an Article III judge. There is no point in re-inventing the (claim construction) wheel
`
`in this reexamination.
`
`However, Examiner respectfully disagrees with PO's assertion. "[l]n PTO
`
`reexamination, the standard of proof- a preponderance of evidence — is substantially
`
`lower than in a civil case" and there is no presumption of validity in reexamination
`
`proceedings." 678 F.3d 1357, 1364 (Fed. Cir. 2012) (internal citations omitted); see also
`
`Old Reliable Wholesale, Inc. v. Cornell Corp., 635 F.3d 539, 548 n.6 (Fed. Cir. 2011)
`
`("Whereas clear and convincing evidence is required to invalidate a patent in district
`
`court, a patent can be invalidated during PTO reexamination by a simple
`
`preponderance of the evidence.").
`
`PO argues in page 11:
`
`The Examiner's positions regarding the proper constructions of the terms in claims 1, 15,
`
`and 35 are not clear. For example, while the Office Action includes statements to the effect that
`
`"Implicit has taken a broad view" or "under Implicit's apparent claim constructions" (see, e.g.,
`
`Office Action at 4, 9, 10, and 17), there is no indication how the Examiner believes the claims
`
`should be construed. Additionally, the Examiner did not have the benefit of the District Court's
`
`claim constructions when the Office Action was issued.
`
`Juniper Ex. 1019-p. 5
`Juniper v Implicit
`
`

`

`Application/Control Number: 95/000,659 (cid:9)
`Art Unit: 3992
`
`Page 4
`
`Patent Owner submits that the PTO should follow the District Court's constructions,
`
`which have been fully vetted and argued by both parties. Although the Federal Circuit has held
`
`that a Markman order in a district court proceeding is not necessarily binding on the PTO, the
`
`District Court considered the same claim language and same intrinsic evidence at issue in this
`
`reexamination when reaching its constructions. Moreover, after a Markman order has issued, the
`
`boundaries of the "broadest reasonable interpretation" should reflect the fact that actual
`
`boundaries have been identified by a court. Cf. In re Skvorecz, 580 F. 3d 1262, 1267 (Fed. Cir.
`
`2009) ("The protocol of giving claims their broadest reasonable interpretation during
`
`examination does not include giving claims a legally incorrect interpretation.").
`
`However, Examiner respectfully disagrees with PO's assertion. Examiner has
`
`made clear in his office action, his postion by way of rejections, regarding the proper
`
`construction of the terms in the claims 1, 15 and 35. Examiner's claim construction in
`
`the rejections of the Office Action was based on the Third Party Requester's
`
`explaination on claim construciton in the original Request dated 02/13/2012, pages 21-
`
`23, incorporated here by reference.
`
`"Claims are given 'their broadest reasonable interpretation, consistent with the
`
`specification, in reexamination proceedings."' In re Trans Texas Holding Corp., 498 F.3d
`
`1290, 1298 (Fed. Cir. 2007) (quoting In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir.
`
`1984). "Giving claims the broadest reasonable construction 'serves the public interest
`
`by reducing the possibility that claims, finally allowed, will be given broader scope than
`
`is justified."' In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1365 (Fed. Cir. 2004)
`
`(quoting Yamamoto, 740 F.2d at 1571). "Construing claims broadly during prosecution
`
`Juniper Ex. 1019-p. 6
`Juniper v Implicit
`
`

`

`Application/Control Number: 95/000,659 (cid:9)
`Art Unit: 3992
`
`Page 5
`
`is not unfair to the applicant (or, in this case, the patentee), because the applicant has
`
`the opportunity to amend the claims to obtain more precise claim coverage." In re Trans
`
`Texas Holding Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007) (citing Yamamoto, 740 F.2d
`
`at 1571-72 and In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989)). "The Board is required
`
`to use a different standard for construing claims than that used by district courts." In re
`
`Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Indeed, the Federal
`
`Circuit has repeatedly held that "it is error for the Board to 'apply the mode of claim
`
`interpretation that is used by courts in litigation, when interpreting the claims of issued
`
`patents in connection with determinations of infringement and validity."' Id. (citing Zletz,
`
`893 F.2d at 321); see also In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) ("It would
`
`be inconsistent with the role assigned to the PTO in issuing a patent to require it to
`
`interpret the claims in the same manner as judges who, post-issuance, operate under
`
`the assumption that the patent is valid)." Instead, the PTO is empowered and "obligated
`
`to give claims their broadest reasonable interpretation during examination." Id. Thus, in
`
`the instant case "the pending claims must be interpreted as broadly as their terms
`
`reasonably allow." In re Zletz, 893 F.2d 321.
`
`PO argues in pages 12-13:
`
`Juniper Ex. 1019-p. 7
`Juniper v Implicit
`
`

`

`Application/Control Number: 95/000,659 (cid:9)
`Art Unit: 3992
`
`Page 6
`
`It is well-settled that the '163 claim terms must be interpreted as they would be by one
`
`skilled in the art based on the claim language and in light of the specification. This axiom
`
`applies equally to litigation and reexamination. See Phillips v. AWN Corp., 415 F.3d 1303,
`
`1316-17 (Fed. Cir. 2005) (en bane) ("The Patent and Trademark Office (PTO') determines the
`
`scope of claims in patent applications not solely on the basis of the claim language, but upon
`
`giving claims their broadest reasonable construction 'in light of the specification as it would be
`
`interpreted by one of ordinary skill in the art."). While the PTO gives claim terms their
`
`"broadest reasonable interpretation," it cannot give terms their broadest possible interpretation;
`
`nor is it permitted to ignore or re-wo d claim language under the guise of "interpretation."
`
`MPEP § 2111 states: "During patent examination, the pending claims must be 'given
`
`their broadest reasonable interpretation consistent with the specification." In re Morris, 127
`
`F.3d 1048, 1054 (Fed. Cir. 1997) (emphasis added). This statement contains two requirements:
`
`the interpretation must be "reasonable," and it must be "consistent with the specification."
`
`Moreover, the PTO must pay deference to any interpretive guidance offered in the specification,
`
`and must view the claims from the perspective of one skilled in the art:
`
`Some cases state the standard as "the broadest reasonable interpretation,"
`see,
`e.g., In re Van Geurzs, (Fed.Cir.1993), others include the qualifier "consistent with
`the specification" or similar language, see, e.g., In re Bond, 910 F.2d 831, 833
`(Fed.Cir.1990). Since it would be unreasonable for the PTO to ignore any
`interpretive guidance afforded by the applicant's written description, either
`phrasing connotes the same notion: as an initial matter, the PTO applies to the
`verbiage of the proposed claims the broadest reasonable meaning of the words in
`their ordinary usage as they would be understood by one of ordinary skill in
`the art, taking into account whatever enlightenment by way of definitions or
`otherwise that may be afforded by the written description contained in the
`applicant's specification.
`
`Id (emphasis added). Thus, the PTO's claim interpretation must follow the meaning accorded
`
`by one skilled in this art, when viewed in light of the entirety of the '163 specification.
`
`In re
`
`Juniper Ex. 1019-p. 8
`Juniper v Implicit
`
`

`

`Application/Control Number: 95/000,659 (cid:9)
`Art Unit: 3992
`
`Page 7
`
`Cortright, 165 F.3d 1353, 1359 (Fed. Cir. 1999); In re Morris, 127 F.3d at 1054; MPEP
`
`§ 2111.01-HI.
`
`Consistent with these principles, the Federal Circuit recently issued a strong
`
`admonishment that the "broadest reasonable interpretation" rule is not a "license" to ignore the
`
`words of the claims or the teachings of the specification. In In re Suitco Surface, Inc., 603 F.3d
`
`1255 (Fed. Cir. 2010), the court found that the PTO's construction "though certainly broad, is
`
`unreasonably broad." Id. at 1260. It stated that "[t]he broadest construction rubric ... does not
`
`give the PTO an unfettered license to interpret claims to embrace anything remotely related to
`
`the claimed invention. Rather, claims should always be read in light of the specification and
`
`teachings in the underlying patent." Id (emphasis added). All of these principles must be
`
`followed when construing the '163 claims.
`
`However, Examiner respectfully disagrees with PO's assertion. '"[I]n PTO
`
`reexamination, the standard of proof- a preponderance of evidence — is substantially
`
`lower than in a civil case" and there is no presumption of validity in reexamination
`
`proceedings." 678 F.3d 1357, 1364 (Fed. Cir. 2012) (internal citations omitted); see also
`
`Old Reliable Wholesale, Inc. v. Cornell Corp., 635 F.3d 539, 548 n.6 (Fed. Cir. 2011)
`
`("Whereas clear and convincing evidence is required to invalidate a patent in district
`
`court, a patent can be invalidated during PTO reexamination by a simple
`
`preponderance of the evidence."). "Claims are given 'their broadest reasonable
`
`interpretation, consistent with the specification, in reexamination proceedings."' In re
`
`Trans Texas Holding Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007) (quoting In re
`
`Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984). "Giving claims the broadest
`
`reasonable construction 'serves the public interest by reducing the possibility that
`
`Juniper Ex. 1019-p. 9
`Juniper v Implicit
`
`

`

`Application/Control Number: 95/000,659 (cid:9)
`Art Unit: 3992
`
`Page 8
`
`claims, finally allowed, will be given broader scope than is justified."' In re Am. Acad.
`
`ofSci. Tech Ctr., 367 F.3d 1359, 1365 (Fed. Cir. 2004) (quoting Yamamoto, 740 F.2d at
`
`1571). "Construing claims broadly during prosecution is not unfair to the applicant (or, in
`
`this case, the patentee), because the applicant has the opportunity to amend the claims
`
`to obtain more precise claim coverage." In re Trans Texas Holding Corp., 498 F.3d
`
`1290, 1298 (Fed. Cir. 2007) (citing Yamamoto, 740 F.2d at 1571-72 and In re Zletz, 893
`
`F.2d 319, 322 (Fed. Cir. 1989)). "The Board is required to use a different standard for
`
`construing claims than that used by district courts." In re Am. Acad. ofSci. Tech Ctr.,
`
`367 F.3d 1359, 1369 (Fed. Cir. 2004). Indeed, the Federal Circuit has repeatedly held
`
`that "it is error for the Board to 'apply the mode of claim interpretation that is used by
`
`courts in litigation, when interpreting the claims of issued patents in connection with
`
`determinations of infringement and validity.'" Id. (citing Zletz, 893 F.2d at 321); see also
`
`In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) ("It would be inconsistent with the
`
`role assigned to the PTO in issuing a patent to require it to interpret the claims in the
`
`same manner as judges who, post-issuance, operate under the assumption that the
`
`patent is valid)." Instead, the PTO is empowered and "obligated to give claims their
`
`broadest reasonable interpretation during examination." Id. Thus, in the instant case
`
`"the pending claims must be interpreted as broadly as their terms reasonably allow." In
`
`re Zletz, 893 F.2d 321.
`
`Within pages 13-17, PO describes various legal standard for anticipation
`
`rejection and legal standards for obviousness rejections.
`
`Juniper Ex. 1019-p. 10
`Juniper v Implicit
`
`

`

`Application/Control Number: 95/000,659 (cid:9)
`Art Unit: 3992
`
`Page 9
`
`In response, Examiner submits that, a claim is anticipated where "each and every
`
`element as set forth in the claim is found, either expressly or inherently described, in a
`
`single prior art reference." See MPEP § 2131, quoting VerdegaalBros. v. Union Oil Co.
`
`of California, 814 F.2d 628, 631 (Fed. Cir. 1987). "When the reference is silent about
`
`the asserted inherent characteristic, such gap in the reference may be filled with
`
`recourse to extrinsic evidence" without affecting the anticipatory nature of the reference.
`
`See
`
`MPEP § 2131.01, quoting Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264,
`
`1268 (Fed. Cir. 1991). "This modest flexibility in the rule.., accommodates situations in
`
`which the common knowledge of the technologists is not recorded in the reference." Id.
`
`Examiner further submits that, Obviousness may be shown by considering
`
`"whether two or more pieces of prior art could be combined, or a single piece of prior art
`
`could be modified, to produce the claimed invention." lnnogenetics v. Abbott Labs., 512
`
`F.3d 1363, 1373 (Fed. Cir. 2008). "Prior art is not limited just to the references being
`
`applied, but includes the understanding of one of ordinary skill in the art." See MPEP §
`
`2141. Indeed, "the rationale to modify or combine the prior art does not have to be
`
`expressly stated in the prior art; the rationale may be expressly or impliedly contained in
`
`the prior art or it may be reasoned from knowledge generally available to one of
`
`ordinary skill in the art, established scientific principles, or legal precedent established
`
`by prior case law. See MPEP § 2144.
`
`In fact, "[i]t is not necessary that the prior art suggest the combination to achieve
`
`the same advantage or result discovered by applicant." Id. Prior art from "a different
`
`Juniper Ex. 1019-p. 11
`Juniper v Implicit
`
`

`

`Application/Control Number: 95/000,659 (cid:9)
`Art Unit: 3992
`
`Page 10
`
`field" is combinable if "it is one which, because of the matter with which it deals, logically
`
`would have commended itself to an inventor's attention in considering his problem." In
`
`re Icon Health And Fitness, Inc., 496 F.3d 1374, 1378 (Fed. Cir. 2006); see also KSR
`
`Intl Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1742 (Fed. Cir. 2007) ("familiar items may
`
`have obvious uses beyond their primary purposes"). Examiner has duly provided
`
`support for its obviousness rejections in accordance with these principles. PO also
`
`urges the Examiner to consider and give weight to supposed secondary indicia of non-
`
`obviousness, relying on a declaration from Mr. Edward Balassanian. The law is clear
`
`that "[e]vidence of commercial success, or other secondary considerations, is only
`
`significant if there is a nexus between the claimed invention and the commercial
`
`success." Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006);
`
`see also Eurand, Inc. v. Mylan Pharms., Inc., 676 F.3d 1063, 1079 (Fed. Cir. 2012).
`
`("[C]ourts must exercise care in assessing proffered evidence of objective
`
`considerations, giving such evidence weight only where the objective indicia are
`
`attributable to the inventive characteristics of the discovery as claimed in the patent.").
`
`As will be shown below, PO has failed entirely to put forth any competent evidence of
`
`secondary indicia of non-obviousness.
`
`PO argues in page 17:
`
`Juniper Ex. 1019-p. 12
`Juniper v Implicit
`
`

`

`Application/Control Number: 95/000,659 (cid:9)
`Art Unit: 3992
`
`Page 11
`
`Decasper describes a router architecture that consists of an IP router core containing a
`
`predefined sequence of numerous "components" and "gates" that process each packet received
`
`by the router. As explained in the next section, the Decasper router only processes one data
`
`format (IP). At the heart of Decasper's router architecture lies an "IPv4/IPv6 core," which
`
`"contains the ... components required for packet processing which do not come in the form of
`
`dynamically loadable modules." Decasper at 3, col. 2 (emphasis added). Decasper expressly
`
`states, therefore, that the IP core "components" are not "dynamically" identified.
`
`Examiner respectfully disagrees with PO's assertion. The Office Action clearly
`
`identified Decasper98's "plugins" as the claimed "individual components" that are
`
`dynamically selected to create a sequence in accordance with this claim limitation: The
`
`Examiner explained in detail how the process of selection among the various available
`
`plugins occurs dynamically, after the first packet is received. OA at 15-17.
`
`PO argues in pages 17 - 18:
`
`"The core is also responsible for demultiplexing individual packets to plugins" through a
`
`series of gates within the IP core. Id. When a packet arrives at the router, it is passed to the IP
`
`core by the network hardware. Id at 5, col. 2. All packets are processed through the IP core,
`
`Juniper Ex. 1019-p. 13
`Juniper v Implicit
`
`

`

`Application/Control Number: 95/000,659
`Art Unit: 3992
`
`Page 12
`
`without exception. Figure 3 of Decasper, which depicts the overall system architecture and data
`
`path for an IP router, illustrates the processing path through the IP core via clock-wise arrows:
`
`Gate
`7 -
`I
`Gate
`
`n
`
`Jr
`
`1111 ' .V;i.
`
`Gate
`
`0 (cid:9)
`Excerpt from Figure 3 of Decasper
`
`
`
`Each packet proceeds through the IP core in the same manner, until it encounters a gate.
`
`"A gate is a point in the IP core where the flow of execution branches off to an instance of a
`
`plugin." Decasper at 4, col. 2. Gates are fixed at locations within the routing system where
`
`"interactions with plugins need to take place." Decasper at 5, col. 1. Decasper denotes gates in
`
`Figure 3 by an "II" symbol within the IP core. See Figure 3 excerpt, above. Plugins are "bound"
`
`to a gate during the configuration of the router. Decasper at 4, col 1. The "task" of a gate is to
`
`determine if a packet (based only on its header) needs to be processed by a plugin bound to the
`
`gate and—if so—which one. Decasper at 5, col 2. These plugins represent extensions to the IP
`
`core of the router that provide optional functions such as IP security and packet scheduling.
`
`Decasper at 6, col 2. As shown, the location of the gates within the IP core processing path is
`
`fixed, and the location of optional plug-in function calls is also fixed (since plug-ins are bound to
`
`the gates prior to the receipt of any packets).
`
`Examiner respectfully disagrees with the PO's assertion and agrees with the
`
`Third Party Requester's response in pages 7-12. As desribed by the Third Party
`
`Juniper Ex. 1019-p. 14
`Juniper v Implicit
`
`(cid:9)
`

`

`Application/Control Number: 95/000,659 (cid:9)
`Art Unit: 3992
`
`Page 13
`
`Requester, PO virtually ignores discussion of these plugins in its Response, and instead
`
`focuses on two other aspects of Decasper98: the "IPv4/1Pv6 core" (or "core") and the
`
`"gates." PO suggests that certain aspects of the core and gates are not dynamic but
`
`rather "fixed," and thus concludes that Decasper98 does not meet the "dynamically
`
`identifying" limitation. But even if it were true that all flows traversed the same path
`
`through the core and the same sequence of gates (which, as shown below, is incorrect),
`
`that fact would have no bearing upon the dynamic identification of plugins in
`
`Decasper98, which was the basis for the Examiner's findings regarding this limitation.
`
`The plugins of Decasper98 are not the same thing as the core or gates. Decasper98
`
`states that the core only "contains the (few) components required for packet processing
`
`which do not come in the form of dynamically loadable modules.". These "few"
`
`components in the core are "mainly functions that interact with network devices.". By
`
`contrast, the plugins cited in the Office Action are described separately from these few
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`core components, and Decasper98 explicitly states that "all plugins come in the form of
`
`dynamically loadable kernel modules." Similarly, although dynamic selection of a plugin
`
`may happen at a "gate" (described as "a point in the IP core where the flow of execution
`
`branches off to an instance of a plugin"), the gate is not the plugin itself.
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`PO argues in pages 18-19:
`
`It is clear, therefore, that all packets in Decasper receive the same general processing
`
`through the IP core, and all packets are processed by the same predetermined number of gates in
`
`the same predetermined order. The only difference between the processing paths of packets is
`
`Juniper Ex. 1019-p. 15
`Juniper v Implicit
`
`

`

`Application/Control Number: 95/000,659 (cid:9)
`Art Unit: 3992
`
`Page 14
`
`whether or not they branch out at a specific location (a gate) to a plugin. As the Examiner points
`
`out, "The processing of the first packet of a new flow with n gates involves n filter table
`
`lookups." See, e.g., Office Action at 14, 19. Thus—prior to the receipt of the first packet—it has
`
`been predetermined that packets will necessarily pass through n gates. Furthermore, the
`
`sequence of those gates has been predefined.
`
`The above discussion makes clear that the sequence of components and gates within the
`
`Decasper IP core is fixed before the first packet arrives. As such, Decasper does not
`
`"dynamically identify] a non-predefined sequence of components for processing the packets .
`
`wherein dynamically identifying includes selecting individual components to create the non-
`
`predefined sequence of components after the first packet is received." 9
`
`Examiner respectfully disagrees with the PO's assertion and agrees with the
`
`Third Party Requester's response in pages 7-12. As desribed by the Third Party
`
`Requester, PO's arguments are clearly directed to the core and gates of Decasper.98
`
`and not the pluqins. For example, PO argues that "all packets are processed by the
`
`same predetermined number of gates in the same predetermined order." Response at
`
`18. PO then jumps seemingly as a non sequitur to the conclusion that "[t]he above
`
`discussion makes clear that the sequence of components and gates within the
`
`Decasper IP core is fixed before the first packet arrives." Response at 19.
`
`However, Decasper98 explicitly discloses an example in which plugin
`
`components SEC2, PS3, RT1, and OPT2 are identified for a first flow, and plugin
`
`components SEC1, PS1, RT1, OPT1 are identified for a second flow:
`
`Juniper Ex. 1019-p. 16
`Juniper v Implicit
`
`

`

`Application/Control Number: 95/000,659 (cid:9)
`Art Unit: 3992
`
`Page 15
`
`/Flow table 0
`
`SEC
`
`(121.1
`125.132G&10,,
`
`TCP. 1234,110.0)
`
`(123.193.50.2.
`128.5021.
`T. 1234 24.0)
`
`P,S3
`
`PSI
`
`The fact that Decasper98 can be viewed loosely as performing the same general type of
`
`processing at a gate (e.g., security processing of some kind at a security gate, packet
`
`scheduler processing of some kind at a packet scheduling gate) is irrelevant.
`
`It is the
`
`selection of individual components (e.g., SEC2 or SEC1 pluqin, PS3 or PS 1 pluqin)
`
`based on characteristics of the first packet received that matters for purposes of the
`
`claims.
`
`And indeed, Decasper98's repeated selection from pools of different possible
`
`plugins is fundamental to its design as can be seen from the figure below:
`
`The Decasper98 approach also falls squarely within the scope of the claims as
`
`interpreted by PO. For example, PO's Response provides specific examples of protocol
`
`stacks as practicing the claims. E.g., Response at page 4 ("OSI model"), 8-9 ("Ethernet"
`
`to "IP" to "TCP"; "identifies a sequence" by "examining the packets.., layer by layer").
`
`Juniper Ex. 1019-p. 17
`Juniper v Implicit
`
`

`

`Application/Control Number: 95/000,659 (cid:9)
`Art Unit: 3992
`
`Page 16
`
`Thus, PO believes that its invention can cover protocol stacks conforming to the OSI
`
`model, even where the same general type of processing is performed at each layer, and
`
`in a predetermined order: e.g., a layer 2 component performs data link processing (such
`
`as Ethernet), by a layer 3 component performs network processing (such as IP), and a
`
`layer 4 component performs transport processing (such as TCP).
`
`However, numerous are the possible sequences of plugins, in fact, that it would
`
`generally be "infeasible" to even list them in memory ahead of time. Instead,
`
`identification of the sequence of plugins for a flow must wait for the arrival of its first
`
`packet, when the various filters can then be applied. Thus, Decasper98 clearly
`
`discloses "dynamically identifying a non-predefined sequence of components."
`
`Decasper98 also clearly discloses "individual components" that are selected: each
`
`individual plugin is selected on the basis of a separate, individual filter table that is
`
`matched against the first packet of the flow. Decasper98 also clearly discloses per the
`
`claims that this selection is performed "after the first packet is received," since this
`
`matching against the first packet cannot take place until after the first packet is received.
`
`Accordingly, the plugins of Decasper98 clearly disclose this claim limitation.
`
`Because Decasper98's plugins are dynamically identified and selected as
`
`explained above, that claim limitation is satisfied regardless of the characteristics of any
`
`other components disclosed in Decasper98. But in any event, PO's argument regarding
`
`the core and gates of Decasper98 can also be disregarded on the independent basis
`
`that PO's description of these aspects of Decasper98 is technologically incorrect, in at
`
`least two ways. First, PO mistakenly alleges that "all packets are processed by the.
`
`Juniper Ex. 1019-p. 18
`Juniper v Implicit
`
`

`

`Application/Control Number: 95/000,659 (cid:9)
`Art Unit: 3992
`
`Page 17
`
`same predetermined number of gates in the same predetermined order" (Response at
`
`18). PO provides no support for this statement, and it is in fact incorrect. Decasper98
`
`does note that the first packet of a particular flow can pass through a sequence of
`
`gates, and that a plug in selection will be recorded for each of these gates. But
`
`Decasper98 does not state that packets of every flow would pass through that same
`
`sequence of gates, and to the contrary, suggests just the opposite. See page 5 ("When
`
`a packet arrives" and "makes its way through the core, it may encounter multiple
`
`gates"), 7 ("since there is one filter table for every gate in our system, usually multiple
`
`lookups (in different filter tables) are necessary for each packet that is received on an
`
`uncached flow"). For example, Decasper98 discloses IP security processing in context
`
`of a "virtual private network [VPN]." Page 5; Those of ordinary skill understood th at for
`
`a router to provide a VPN, the VPN packets it receives from a protected network inside
`
`must traverse a fundamentally different path than the VPN packets it receiv