DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Reissue Applications
This application seeks to reissue US Patent No. 11,394,632 (“the ‘632 patent”). In a preliminary amendment, the applicant canceled claims 1-17 and introduced new claims 18-44. Claims 18-44 are pending. This is a broadening reissue application.
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,394,632 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
IETF Document Availability as Prior Art
The specification has been amended to include reference to an IETF document “Weighted HRW and its applications draft-mohanty-bess-weighted-hrw-00” by Mohanty et al. (“Mohanty”). Mohanty was published on March 11, 2019, which predates the earliest date of the current application by less than one year. This document is authored by co-inventors of the current application, as well as by “A. Lindem,” who is not an inventor of this application. Mohanty is therefore potentially available as prior art under 35 U.S.C. §102(a)(1).
The amended portion of the specification states that the Mohanty disclosure was “made by inventors Satya Ranjan Mohanty, Mankamana Prasad Mishra, and Ali Sajassi, and/or by another who obtained the subject matter publicly disclosed directly or indirectly from the inventors.” This is not a declaration by the inventors under 37 C.F.R. 1.130(a) and is not by itself sufficient to establish that only the inventors of this application contributed to the Mohanty document.
In a 09/19/2024 affidavit that was filed in related application 18/177,971, inventors Mohanty, Mishra, and Sajassi provided, in compliance with MPEP 717.01(a)(1), “an ‘unequivocal’ statement from the inventor or a joint inventor that he/she (or some specific combination of named joint inventors) invented the subject matter” of Mohanty. A separate 05/05/2025 affidavit provided “a reasonable explanation of the presence” of author A. Lindem. Based on these affidavits, the examiner in 18/177,971 determined Mohanty to be unavailable as prior art due to the exceptions of 35 U.S.C. §102(b)(1).
In the current reissue application, a copy has been provided of the affidavit from the 18/177,971 application that gave an explanation of the presence of author A. Lindem on the Mohanty document. But no affidavit has been filed in the current application showing that the joint inventors of this application were the sole contributors to Mohanty. To show that this document is not available as prior art, the applicant should file affidavits that provide “an ‘unequivocal’ statement from the inventor or a joint inventor that he/she (or some specific combination of named joint inventors) invented the subject matter of the disclosure, accompanied by a reasonable explanation of the presence of additional authors.” MPEP 717.01(a)(1).
Reissue Declaration
The applicant states that this is a broadening reissue application. See the “Transmittal of Declaration” letter filed with this application on January 25, 2023. In this letter, the applicant states that the “Declaration indicates a desire to seek broadened claims.” However, the Declaration that was filed with this application only describes amendments to the specification. While the Declaration refers to an “Appendix A” for further information, no such appendix was received that indicates a desire to seek broadened claims.
While the Declaration does not state that this is a broadening reissue application, the claims that were amended in the preliminary amendment are clearly of broader scope than the claims of the ‘632 patent. The presentation of these broader claims was sufficient to notify the public that the applicant intended to seek broader claims. This intent to broaden was received within two years of the issue date of the ‘632 patent, and as such the applicant is permitted to present broader claims. See MPEP 1412.02(IV). However, the declaration is objected to for failing to identify a claim that the application seeks to broaden. See below.
Objection, 37 CFR 1.175 – Defective Declaration
The declaration that was filed with this application is defective. Claims 18-44 are broader than the claims of the ‘632 patent, but this broadening is not identified in the declaration. 37 CFR 1.175(b) states: “[i]f the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor’s oath or declaration for a reissue application must identify a claim that the application seeks to broaden.”
The applicant must submit a supplemental declaration that conforms to the requirements of 37 CFR 1.175.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 18-44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 12,418,484. Although the claims at issue are not identical, they are not patentably distinct from each other because the broader claims of this application are anticipated by the claims of the patent. For example, claim 19 of the ‘484 patent contains all limitations found in claim 18 of this application. All other claims of this application find corresponding subject matter in the claims of the patent, or are only obvious variants thereof.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 18-44 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The written description has been amended to include the following language in column 2: “generate the first score (negating the weight or the final value by multiplying it by -1, or using the absolute value in place of the negative elements where necessary to make the score positive).” Similar language is added in numerous other locations of the specification. This subject matter was not present in application 16/696,203 or in provisional application 62/843,108, thus is new matter.
Based on this new matter that is added to the specification, the scope of the claims, all of which recite generating a score, includes this disclosure. Accordingly, the claims are rejected under §112(a) for reciting new matter. In addition, claims 20, 29, and 38 recite “negating or using the absolute value of any negative element where necessary to make the score positive” which was not present in the original patent application or the provisional application.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21-22, 30-31, and 39-40 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 21-22, 30-31, and 39-40 recite “the data identifier.” There is insufficient antecedent basis for this limitation in the claims. These claims are also indefinite because it is not clear which claim they depend from. For example, claim 21 depends from claim 18, but the term “data identifier” is first introduced in claim 19. By further limiting the “data identifier” that is described in claim 19, it appears, but is not certain, that the claim was intended to depend from claim 19. Similar uncertainty exists in the scope of claims 22, 30-31, and 39-40.
Rejection, 35 USC §251 – Defective Reissue Declaration
Claims 18-44 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175. The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Rejection, 35 U.S.C. §251 – New Matter
Claims 18-44 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The specification and the claims include new matter not found in the patent. See the §112(a) rejection above.
Rejection, 35 U.S.C. §251 – Recapture
Claims 18-44 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
The recapture analysis involve a three-step procedure:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
MPEP 1412.02 II.
Step 1: the claims of this application are broader than the claims of the ‘632 patent. The bolded limitations below are found in the broadest claims of the patent, but are absent from the broadest claims of this reissue application:
determining a first link bandwidth capacity between a first router and a host device;
determining a first router identifier for the first router;
determining a data identifier for the data;
calculating a normalized hash value of the first router identifier and the data identifier;
calculating the natural logarithm of the normalized hash value;
determining a first score for the first router by dividing the natural logarithm of the normalized hash value by the first link bandwidth capacity
determining a second link bandwidth capacity between a second router and the host device
Because the claims have been broadened, analysis proceeds to Step 2.
Step 2: various limitations that have been removed from the claims of this reissue application were surrendered during prosecution of application 16/696,203, from which the ‘836 patent issued. These limitations are:
determining a first router identifier for the first router;
determining a data identifier for the data;
calculating a normalized hash value of the first router identifier and the data identifier;
calculating the natural logarithm of the normalized hash value;
determining a first score for the first router by dividing the natural logarithm of the normalized hash value by the first link bandwidth capacity
During prosecution of application 16/696,203, these limitations were added in the March 03, 2022 claim amendment that was made in response to the December 07, 2021 final Office action. In the Remarks accompanying this response, the applicant described that this amendment was made in order to place the claims in condition for allowance. “If an original patent claim limitation now being omitted or broadened in the present reissue application was originally relied upon by applicant in the original application to make the claims allowable, the omitted limitation relates to subject matter previously surrendered by applicant.” MPEP 1412.02(II)(B)(1). These limitations were therefore surrendered, and analysis proceeds to Step 3.
Step 3: the claims are not materially narrower in other respects because they entirely omit the surrendered limitations. Therefore the claims are not “materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured.” See MPEP 1412.02(II)(C).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 18, 24-27, 33-36, and 42-44 are rejected under 35 U.S.C. 103 as being unpatentable over RFC 8584, “Framework for Ethernet VPN Designated Forwarded Election Extensibility” (cited in the 1/25/2023 IDS) (“Rabadan”), in view of “Weighted Multi-Path Procedures for EVPN All-Active Multi-Homing” – (cited in 1/25/2023 IDS) (“Malhotra”), and further in view of RFC 2991, “Multipath Issues in Unicast and Multicast Next-Hop Selection”, November 2000 (“Thaler”).
Claim 18: Rabadan discloses a system, comprising:
one or more processors, and one or more computer-readable non-transitory storage media coupled to the one or more processors and comprising instructions that, when executed by the one or more processors (See Fig. 1 and its description, which show that each device in the system is a computing device, known by the POSITA to include the claimed processor, memory, and instructions), cause one or more routers to perform operations comprising:
receiving data from a network component (PE1 is in communication with CE1, a network component, via ES1. See §6 and Fig. 3);
determining a first score for a first router; determining a second score for a second router; comparing at least the first score and the second score to determine a highest score; and assigning the router associated with the highest score to communicate the data to a host device (A weight, or score, is calculated for each PE. See §3.2. The scores are compared, and the PE having the highest weight, or score, is elected to be the designated forwarder, thus is assigned to communicate the data to a host. Id.).
Rabadan fails to disclose determining the first score based on a first link bandwidth capacity; determining the second score based on a second link bandwidth capacity.
Malhotra discloses determining a first score for a first router based on a first link bandwidth capacity and determining a second score for a second router based on a second link bandwidth capacity (Relative weight for each remote PE is calculated based on a link bandwidth capacity. See §§ 3.2, 4.3, and 4.4.).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Rabadan with the teachings in Malhotra, the rationale being to optimize traffic distribution. See Malhotra §4.3.3.
Rabadan-Malhotra fails to disclose that the first and second scores are determined based on a first normalized hash value associated with the first router and a second normalized hash value associated with the second router, respectively.
Thaler discloses determining a first score and a second score for a first and second router based on a first normalized hash value associated with the first router and a second normalized hash value associated with the second router (Using HRW, each of plural next-hop routers is assigned a key value (i.e., a score) based on a hash value. See pg. 4. The next-hop with the highest score is selected. Id. These hash values are associated with the routers, and are normalized1 because each hash is computed according to the same standard, using the same data: the header fields and the address of the next-hop.)
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Rabadan-Malhotra with this disclosure in Thaler, the rationale being to minimize the number of flows affected by a next-hop addition or deletion, and to maximize the stability of paths. Thaler pg. 4-5.
Claims 27 and 36: see rejection of claim 18.
Claim 24: Rabadan discloses that the router associated with the highest score is a designated forwarder (DF) (See §3.4).
Claim 25: Rabadan discloses that the data received from the network component is associated with a multicast flow (See Abstract).
Claim 26: Rabadan discloses that the network component is a router reflector for Border Gateway Protocol (BGP) (See §1.1).
Claims 33-35 and 42-44: see rejection of claims 24-26.
Claims 23, 32, and 41 are rejected under 35 U.S.C. 103 as being unpatentable over the Rabadan-Malhotra-Thaler combination described above, in view of Resch, “New Hashing Algorithms for Data Storage” (cited in 1/25/2023 IDS).
Claims 23, 32, and 41: The Rabadan-Malhotra-Thaler combination described above fails to disclose, but Resch discloses, determining that a second link bandwidth capacity between a second router and a host device has changed from a second link bandwidth capacity to a revised second link bandwidth capacity; revising a second score for the second router based on the revised second link bandwidth capacity to generate a revised second score for the second router; comparing at least a first score and the revised second score to determine a highest score; and reassigning the router associated with the highest score to communicate the data to the host device (see slides 19 and 28-31).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Rabadan-Malhotra-Thaler combination with Resch, the rationale being to quickly recover equilibrium after changes in bandwidth capacity between network elements. See Resch slide 29.
Allowable Subject Matter
Claims 19-22, 28-31, and 37-40 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art is identified in the claim rejections above. The prior art fails to teach or suggest that “determining the first score for the first router comprises: obtaining a first router identifier for the first router, obtaining a data identifier for the data; calculating a hash value of the first router identifier and the data identifier; normalizing the hash value of the first router identifier and the data identifier to create the first normalized hash value, calculating a logarithm of the first normalized hash value; and generating the first score by dividing the first link bandwidth capacity by the logarithm of the first normalized hash value” as recited in claim 19, and similarly found in claim 28 and 37.
Claims 21-22, 29-31, and 39-40 are rejected under §112(b) above. Because these claims refer to limitations in claims 19, 28, and 37 and appear to depend therefrom, they will be assumed to inherit the allowable limitations from these claims. See §112(b) rejection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J HANCE whose telephone number is (571)270-5319. The examiner can normally be reached M-F 11:00am-7:00pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached at (571) 270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J HANCE/ Primary Examiner, Art Unit 3992
Conferees: /JOSEPH R POKRZYWA/ Primary Examiner, Art Unit 3992
/M.F/ Supervisory Patent Examiner, Art Unit 3992
1 While the ‘632 patent specification includes an example of normalization (see e.g. ‘632 patent at 9:43-44), there is no lexicographical definition of “normalized” that would cause this claim term to be defined in a manner other than its plain meaning, which is “to cause to conform to a standard or a norm.” American Heritage Dictionary of the English Language, Fifth Edition. (2011). See MPEP 2111.