Transmittal of Communication to
`Third Party Requester
`Inter Partes Reexamination
`
`.
`
`.
`
`Control No.
`
`Patent Under
`
`Reexamination
`
`Examiner
`
`6629163
`Art Unit
`
`SALMAN AHMED
`3992
`The MAILING DATE of this communication appears on the cover sheet with the correspondence address.
`
`--
`
`po (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 infer 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
`it cannot be extended. See also 37 CFR 1.947.
`statutory (35 U.S.C. 314(b)(2)), and, as such,
`
`If an ex parte reexamination has been merged with the infer 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 endof the
`enclosed with this transmittal.
`communication
`
`U.S. Patent and Trademark Office
`PTOL-2070
`(Rev. 07-04)
`
`Paper No. 20120809
`
`JNPR-IMPL_30024_
`
`Page 1 of 146
`
`Implicit Exhibit 2003
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`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`APPLICATION
`
`NO.
`
`|
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`95/000,659
`
`02/13/2012
`
`6629163
`
`10/01/2012
`
`7590
`
`HEIM, PAYNE & CHORUSH, LLP
`600 TRAVIS STREET
`SUITE 6710
`HOUSTON, TX 77002
`
`UNITED STATES DEPARTMENT OF COMMERCE
`States Patent and Trademark
`United
`Office
`Address: COMMISSIONER FOR
`PATENTS
`P.O. Box
`1450
`Virginia
`Alexandria,
`uspto, gov
`
`22313-1450
`
`ATTORNEY DOCKET NO.| CONFIRMATION NO,
`
`6219
`
`EXAMINER
`
`AHMED,
`
`SALMAN
`
`ART UNIT
`
`3992
`
`MAIL DATE
`
`10/01/2012
`
`|
`
`|
`
`PAPER NUMBER
`
`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)
`
`JNPR-IMPL_30024_
`
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`

`ACTION CLOSING PROSECUTION
`(37 CFR 1.949)
`
`Control No.
`
`95/000,859
`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)
`Patent Owner on 04 June, 2012
`Third Party(ies) on 30 August, 2012
`
`filed by:
`
`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 extendable- 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 |. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`1. B Notice of References Cited by Examiner, PTO-892
`Information Disclosure Citation, PTO/SB/08
`2. [_]
`
`3.
`
`PART Il. SUMMARY OF ACTION:
`Claims 1,15 and 35 are subject to reexamination.
`1a.
`1b.[_] Claims
`are not subject to
`reexamination.
`Claims
`have been canceled.
`2.
`Claims
`are confirmed.
`[Unamended patent claims]
`Claims
`[Amended or new claims]
`are patentable.
`Claims 1,15 and 35 are rejected.
`Claims
`are objected to.
`[]are acceptable
`[_] The drawings filed on
`are not acceptable.
`The drawing correction request filed on
`is:
`approved.
`disapproved.
`Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d). The certified copy has:
`[|] been received.
`been filed in Application/Control No
`not been received.
`Other
`
`4,
`5.
`6.
`
`7.
`
`8
`
`9
`
`U.S. Patent and Trademark Office
`PTOL-2065
`(08/06)
`
`Paper No.
`
`20120809
`
`JNPR-IMPL_30024_
`
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`

`Application/Control Number: 95/000,659
`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
`
`(Balassanian,
`
`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.
`
`Status of the Claims
`
`Original claims 1, 15 and 35 are rejected.
`
`Response to Arguments
`
`PO argues in pages 2-3:
`
`3.
`
`4.
`
`After Juniper Networks filed its reexamination request, United States District Judge
`
`Susan Illston issued a Markman Order in the Related Litigation (attached as Exhibit 2, F ebruary
`
`29,
`
`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
`
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`Application/Control Number: 95/000,659
`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
`
`follow the District Court’s constructions,
`
`case, Implicit
`
`respectfully submits that the PTO should
`in part, because they were rendered after both Implicit
`
`and Juniper Networks fully briefed
`judgment of an Article IIT judge. There is no point in re-inventing the (claim construction) wheel
`
`and argued the issues, and because they reflect the considered
`
`in this reexamination.
`
`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.").
`
`PO arques 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,
`
`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.
`
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`Application/Control Number: 95/000,659
`Art Unit: 3992
`
`Page 4
`
`Patent Owner submits thatthe 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 orderin 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
`
`of
`
`the “broadest
`
`the fact
`
`that
`
`actual
`
`should reflect
`reasonable interpretation”
`court. Cf In re Skvorece, 580 F. 3d 1262, 1267 (Fed. Cir.
`claims
`reasonable
`their broadest
`
`interpretation
`
`during
`
`interpretation.”).
`
`boundaries
`
`boundaries
`
`2009)
`
`have been identified by
`of
`
`a
`
`(The protocol
`giving
`examination does not include giving claimsa legally incorrect
`
`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.” /n re Trans Texas Holding Corp., 498 F.3d
`
`1290, 1298 (Fed. Cir. 2007) (quoting In re Yamamoto, 740 F.2d 1569, 1577 (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." /n re Am. Acad. ofSci. Tech
`
`367 F.3d 1359, 1365 (Fed. Cir. 2004)
`
`(quoting Yamamoto, 740 F.2d at 1571). "Construing claims broadly during prosecution
`
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`Application/Control Number: 95/000,659
`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." /n 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." /n 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 Z/etz,
`
`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." /n re Zletz, 893 F.2d 321.
`
`PO argues in pages 12-13:
`
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`Application/Control Number: 95/000,659
`Art Unit: 3992
`
`Page 6
`
`It is well-settled that the
`
`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. AWH Corp., 415 F.3d 1303,
`
`1316-17 (Fed. Cir. 2005) (en banc) (“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
`
`“broadest
`
`in the art.’”). While the PTO gives claim terms their
`reasonable interpretation,” it cannot give terms their broadest possible
`
`interpretation;
`
`zuise 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:
`
`reasonable interpretation,” see,
`Some cases state the standard as “the broadest
`e.g., Inre Van Geuns,
`(Fed.Cir.1993), others include the qualifier “consistent with
`In. re Bond, 910 F.2d 831,
`the specification” or similar language, see, e.g.,
`833
`Since it would be unreasonable for the PTO to ignore any
`(Fed.Cir.1990).
`afforded by the applicant's written description,
`either
`guidance
`interpretive
`the PTO applies to the
`phrasing connotes the same notion: as an initial matter,
`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.
`
`Jn re
`
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`

`Application/Control Number: 95/000,659
`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-ILL.
`
`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 Jn 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.” /d 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
`
`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." /n re
`
`Trans Texas Holding Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007) (quoting /n re
`
`Yamamoto, 740 F.2d 1569, 1577 (Fed. Cir. 1984). "Giving claims the broadest
`reasonable construction ‘serves the public interest by reducing the possibility that-
`
`JNPR-IMPL_30024_
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`
`

`

`Application/Control Number: 95/000,659
`Art Unit: 3992
`
`Page 8
`
`claims,
`
`finally allowed, will be given broader scope than is justified." Jn re Am. Acad.
`
`ofSei. 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." /n 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, 693
`
`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."
`
`re Am. Acad. ofSci. Tech
`
`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 Z/etz, 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." /n
`
`re Zletz, 893 F.2d 327.
`
`Within pages 13-17, PO describes various legal standard for anticipation
`
`rejection and legal standards for obviousness rejections.
`
`JNPR-IMPL_30024_
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`Application/Control Number: 95/000,659
`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 Verdegaa/Bros.
`
`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." /nnogenetics 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 modifyor 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
`
`JNPR-IMPL_30024_
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`Application/Control Number: 95/000,659
`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." /n
`
`re Icon Health And Fitness,
`
`Inc., 496 F.3d 1374, 1378 (Fed. Cir. 2006); see also KSR
`
`Int'l 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 arques in page 17:
`
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`Application/Control Number: 95/000,659
`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
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`received
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`by the router. As explained in the next section, the Decasper
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`router only processes one data
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`format
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`(IP). At the heart of Decasper’s router arckitecture lies an “IPv4/IPv6 core,” which
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`“contains the ... components required for packet processing which do not come in the form of
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`dynamically
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`loadable modules.” Decasper at 3, col. 2 (emphasis added). Decasper
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`expressly
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`states,
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`therefore, that the IP core “components” are not “dynamically” identified.
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`Examiner
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`respectfully disagrees with PO’s assertion. The Office Action clearly
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`identified Decasper98's "plugins" as the claimed "individual components" that are
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`dynamically selected to create a sequence in accordance with this claim limitation. The
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`Examiner explained in detail how the process of selection among the various available
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`plugins occurs dynamically, after the first packet is received. OA at 15-17.
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`PO arques in pages 17-18:
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`“The core is also responsible for demultiplexing individual packets to plugins” through a
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`series of gates within the IP core. Jd. When a packet arrives at the router,
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`it is passed to the IP
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`core by the network hardware.
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`Jd at 5, col. 2. All packets are processed through the IP core,
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`without exception. Figure 3 of Decasper, which depicts the overall system architecture and data
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`path for an IP router,
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`illustrates the processing path through the IP core via clock-wise arrows:
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`Excerpt from Figure 3 of Decasper
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`Each packet proceeds through the IP core in the same manner, until it encounters a gate.
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`“A gate is a point in the IP core where the flow of execution branches off to an instance of a
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`plugin.” Decasper at 4, col. 2. Gates are fixed at
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`locations within the routing system where
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`“interactions with plugins need to take place.” Decasper at 5, col. 1. Decasper denotes gates in
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`Figure 3 by an “IT” symbol within the IP core. See Figure 3 excerpt, above. Plugins are “bound”
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`to a gate during the configuration of the router. Decasper at 4, col 1. The “task” of a gate is to
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`determine if a packet (based only on its header) needs to be processed by a plugin bound to the
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`gate and—if so—which one. Decasper at 5, col 2, These
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`represent extensions to the IP
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`core of the
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`router that provide optional
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`scheduling.
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`plugins
`functions such as IP security and packet
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`Decasper at 6, col 2. As shown, the location of the gates within the IP core processing path is
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`fixed, and the location of optional plug-in function calls is also fixed (since plug-ins are bound to
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`the gates prior to the receipt of any packets).
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`Examiner
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`respectfully disagrees with the PO’s assertion and agrees with the
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`Third Party Requester’s response in pages 7-12. As desribed by the Third Party
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`Requester, PO virtually ignores discussion of these plugins in its Response, and instead
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`focuses on two other aspects of Decasper98:
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`the "IPv4/IPv6 core" (or "core") and the
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`"gates." PO suggests that certain aspects of the core and gates are not dynamic but
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`rather "fixed," and thus concludes that Decasper98 does not meet the "dynamically
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`identifying"
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`limitation. But even if it were true that all flows traversed the same path
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`through the core and the same sequence of gates (which, as shown below,
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`is incorrect),
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`that fact would have no bearing upon the dynamic identification of plugins in
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`Decasper98, which was the basis for the Examiner's findings regarding this limitation.
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`The plugins of Decasper98 are not the same thing as the core or gates. Decasper98
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`states that the core only "contains the (few) components required for packet processing
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`which do not come in the form of dynamically loadable modules.". These "few"
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`components
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`in the core are "mainly functions that interact with network devices.”. By
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`contrast,
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`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
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`dynamically
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`loadable kernel modules.” Similarly, although dynamic selection of a plugin
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`may happen at a "gate" (described as "a point in the IP core where the flow of execution
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`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:
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`It is clear,
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`therefore,
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`that all packets in Decasper
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`receive the same general processing
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`through the IP core, and all packets are processed by the same predetermined number of gates in
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`the same predetermined order. The only difference between the processing paths of packets is
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`whether or not they branch out at a specific location (a gate) to a plugin. As the Examiner points
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`out, “The processing of the first packet of a new flow with n gates involves n filter
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`table
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`lookups.” See, e.g., Office Action at 14, 19. Thus—prior to the receipt of the first packet—it has
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`been predetermined that packets will necessarily pass
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`through n gates.
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`Furthermore,
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`the
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`sequence of those gates has been predefined.
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`|
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`The above discussion makes clear that the sequence of components and gates within the
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`Decasper
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`IP core is fixed before the first packet arrives.
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`As such, Decasper. does
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`not
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`“dynamically identif[y] a non-predefined sequence of components for processing the packets ...,
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`wherein
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`dynamically identifying includes selecting individual components to create the non-
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`predefined sequence of components after the first packet is received.”?
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`Examiner
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`respectfully disagrees with the PO’s assertion and agrees with the
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`Third Party Requester’s response in pages 7-12. As desribed by the Third Party
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`Requester, PO's arguments are clearly directed to the core and gates of Decasper98
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`and not the plugins. For example, PO argues that "all packets are processed by the
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`same predetermined number of gates in the same predetermined order." Response at
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`18. PO then jumps seemingly as a non sequitur to the conclusion that "[t]he above
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`discussion makes clear that the sequence of components and gates within the
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`Decasper IP core is fixed before the first packet arrives." Response at 19.
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`However, Decasper98 explicitly discloses an example in which plugin
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`components SEC2, PS3, RT1, and OPT2 are identified for a first flow, and plugin
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`components SEC1, PS1, RT1, OPT1 are identified for a second flow:
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`\
`| SEC?) pss| RTM| OpT2
`TCP, 1234, 80,0)| SECT| Pst|
`| opti
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`Flow table
`Flow
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`OPT
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`TCP, 1234, 25.0)
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`The fact that Decasper98 can be viewed loosely as performing the same general type of
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`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. Itis the
`selection of individual components (e.g., SEC2 or SEC1 plugin, PS3 or PS 1 plugin)
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`based on characteristics of the first packet received that matters for purposes of the
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`claims.
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`And indeed, Decasper98's repeated selection from pools of different possible
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`plugins is fundamental
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`to its design as can be seen from the figure below:
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`The Decasper98 approach also falls squarely within the scope of the claims as
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`interpreted by PO. For example, PO's Response provides specific examples of protocol
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`stacks as practicing the claims. E.g., Response at page 4 ("OSI model"), 8-9 ("Ethernet"
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`to "IP" to "TCP"; "identifies a sequence” by "examining the packets..,
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`layer by layer").
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`Thus, PO believes that its invention can cover protocol stacks conforming to the OSI
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`model, even where the same general type of processing is performed at each layer, and
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`in a predetermined order: e.g., a layer 2 component performs data link processing (such
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`as Ethemet), by a layer 3 component performs network processing (such as IP), anda
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`layer 4 component performs transport processing (such as TCP).
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`However, numerous are the possible sequences of plugins,
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`in fact, that it would
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`generally be "infeasible" to even list them in memory ahead of time.
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`Instead,
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`identification of the sequence of plugins for a flow must wait for the arrival of its first
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`packet, when the various filters can then be applied. Thus, Decasper98 clearly
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`discloses
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`"dynamically identifying a non-predefined sequence of components."
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`Decasper98 also clearly discloses “individual components" that are selected: each
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`individual plugin is selected on the basis of a separate,
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`individual filter table that is
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`matched against the first packet of the flow. Decasper98 also clearly discloses per the
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`claims that this selection is performed "after the first packet is received," since this’
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`matching against the first packet cannot take place until after the first packet is received.
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`Accordingly,
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`the plugins of Decasper98 clearly disclose this claim limitation.
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`Because Decasper98's plugins are dynamically identified and selected as
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`explained above,
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`that claim limitation is satisfied regardless of the characteristics of any
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`other components disclosed in Decasper98. But in any event, PO's argument
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`regarding
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`the core and gates of Decasper98 can also be disregarded on the independent basis
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`that PO's description of these aspects of Decasper98 is technologically incorrect,
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`in at
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`least two ways. First, PO mistakenly alleges that “all packets are processed by the
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`same predetermined number of gates in the same predetermined order" (Response at
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`18). PO provides no support for this statement, and it is in fact incorrect. Decasper98
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`does note that the first packet of a particular flow can pass through a sequence of
`
`gates, and that a plugin selection will be recorded for each of these gates. But
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`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
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`a packet arrives" and "makes its way through the core,
`
`it may encounter multiple
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`gates"), 7 ("since there is one filter table for every gate in our system, usually multiple
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`lookups (in different filter tables) are necessary for each packet that is received on an
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`uncached flow"). For example, Decasper98 discloses IP security processing in context
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`of a "virtual private network [VPN]." Page 5; Those of ordinary skill understood that for
`
`a router to provide a VPN, the VPN packets it receives from a protected network inside
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`must
`
`traverse a fundamentally different path than the VPN packets it receives from an
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`unprotected network on the outside. E.g., VPN packets from the protected segment can
`
`be encrypted and encapsulated for VPN tunneling only after any operations that require
`
`the router to examine or alter the original packet's contents (such as processing its IP
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`options).
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`Conversely, VPN packets from the outside must be unencapsulated and
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`decrypted before any op