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 .
1. Claims 1 – 20 are currently pending in this application.
Claims 1-7 and 9-20 are amended as filed on 03/12/2026.
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.
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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,432,142 B1, hereinafter 142. Although the claims at issue are not identical, they are not patentably distinct from each other because.
18/620940
142
Claims 1, 8, and 15:
An apparatus, comprising: a control plane configured to perform non-routing functions; a data plane configured to perform routing functions, wherein the data plane is further configured to assign a local Internet Protocol (IP) address to the control plane and a public IP address to the data plane,
receive a packet from the control plane, where the packet includes the local IP address of the control plane,
and replace the local IP address of the control plane in the packet with the public IP address of the data plane
and transmit the packet to the Internet
Claim 1:
An apparatus, comprising: a storage configured to store a first Internet Protocol version 6 (IPv6) address of a router assigned by a first carrier and a second IPv6 address of the router assigned by a second carrier; and a processor configured to assign a plurality first set of IPv6 addresses of the first carrier and a second set of IPv6 address of the second carrier to a plurality of devices on a local area network (LAN) served by the router,
receive a packet from a device included on the LAN, where the packet comprises an IPv6 address of the first carrier assigned to the device,
replace the IPv6 address of the first carrier within the packet to the second IPv6 address of the router assigned by the second carrier,
transmit the packet to the Internet via an IPv6 connection of the second carrier
Accordingly, claims 2-7, 9-14, and 16-20 are rejected, at least, based on their respective dependencies on claims 1, 8, and 15.
Claim Rejections - 35 USC § 112
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 1-20 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.
More specifically, claims 1, 8, and 15 contain limitations that specify assigning a public IP address to a data plane. Does the system group all devices associated with a data plane and give them the same or different public IP addresses? Does the data plane include control servers that make said determinations? If traffic is being directed to the data plane, is it being directed generically to a public IP address that is associated with all devices in the group or is it being directed towards a specific management device that’s within the plane? For examination purposes, the data plane will be treated as if being directed towards a specific data plane device (such as a router or gateway). However, appropriate correction/clarification is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Shevade et al. (Patent No. US 11,159,344 B1), hereinafter Shevade, in view of Panchalingam et al. (Pre-Grant Publication No. US 2023/0046070 A1), hereinafter Panchal.
2. With respect to claims 1, 8, and 15, Shevade taught an apparatus, comprising: a control plane configured to perform non-routing functions (5:49-54); a data plane configured to perform routing functions (5:54-61), receive a packet from the control plane, where the packet includes the local IP address of the control plane (16:44-62 & figure 3, items 116a, 314), and replace the local IP address of the control plane in the packet with the public IP address of the data plane (16:44-62, where routing to the cloud includes ) and transmit the packet to the Internet (16:44-62).
However, Shevade did not explicitly state wherein the data plane is further configured to assign a local Internet Protocol address to the control plane and a public IP address to the data plane. On the other hand, Panchal did teach wherein the data plane is further configured to assign a local Internet Protocol address (0022) to the control plane and a public IP address to the data plane (0006). Both of the systems of Shevade and Panchal are directed towards network routing and therefore, it would have been obvious to a person having ordinary skill in the art, at the time of the effective filing of the invention, to modify the teachings of Shevade, to utilize the data plane devices assigning themselves public IP addresses, as doing so provides more control over traffic routing which can improve a system’s efficiency.
3. As for claims 2, 9, and 16, they are rejected on the same basis as claims 1, 8, and 15 (respectively). In addition, Shevade taught wherein the data plane is further configured to establish a virtual local area network between the control plane and the data plane based on the local IP address and the public IP address, wherein the control plane receives that packet via the VLAN (14:23-33 & 16:8-22, where the VLAN can be seen).
4. As for claims 3, 10, and 17, they are rejected on the same basis as claims 2, 9, and 16 (respectively). In addition, Shevade taught wherein the VLAN includes only the control plane and the data plane(16:8-22, where the different parts of the network means that each part can utilize its on VLAN).
5. As for claims 4, 11, and 18, they are rejected on the same basis as claims 1, 8, and 15 (respectively). In addition, Shevade taught wherein the data plane is configured to receive the packet from a control plane via a local area network and forward the packet to another network device without accessing the control plane (16:44-62, where the data plane forwards packets. Forwarding packets does not require the data plane device to access an external device as the packet is being sent. Also, the relay, part of the data plane, receives the packet from the manager which is part of the control plane).
6. As for claims 5, 12, and 19, they are rejected on the same basis as claims 1, 8, and 15 (respectively). In addition, Panchal taught wherein the data plane is configured to determine that the packet cannot be processed, and drop the packet without consulting the control plane (0043).
7. As for claims 6, 13, and 20, they are rejected on the same basis as claims 1, 8, and 15 (respectively). In addition, Shevade taught wherein the control plane is configured to transmit the packet, which comprises a destination address of an external device to the public IP address of the data plane, and the data plane is configured to transmit the packet to the destination address of the external device (16:44-62, where routing packets to the cloud network includes transmitting packets to external devices).
8. As for claims 7, 14, and 21what, they are rejected on the same basis as claims 1, 8, and 15 (respectively). In addition, Shevade taught wherein the data plane is configured to: receive a response packet from a device via the Internet, determine that the response packet is destined for the control plane based on a header of the response packet, and transmit the response packet to the control plane via a virtual local area network (16:44-62 & figure 3 & 16:8-22, where the different parts of the network means that each part can utilize its on VLAN).
Response to Arguments
Applicant's arguments filed 03/12/2026 have been fully considered but they are not persuasive.
9. The applicant argues on page 8 that “current claim 1 recites "a control plane configured to perform non-routing functions" and "a data plane configured to perform routing functions." The claims of the '142 patent make no mention of control or data planes; let alone what functions they perform. Furthermore, current claim 1 specifies specific operations performed by the data plane. The claims of the '142 patent fail to disclose or suggest these specific operations; instead, they refer to storing and assigning first and second IPv6 addresses. Additionally, current claim 1 recites that the data plane replaces the local IP address of the control plane in the packet with the public IP address of the data plane. The claims of the '142 patent fail to disclose or suggest either the control plane's local IP address or the data plane's public IP address. Instead, the claims of the '142 patent recite that a packet received from a device comprises "an IPv6 address of the first carrier assigned to the device."”.
However, 142 states that it replaces/assigns the IP address with a router and first carrier setup. As can be seen in the specification 3:43-67 (of 142), the router, which assigns the address, which is assigned by the carrier, utilizes the control and data plane to perform its functions. Thus, the limitations are directed towards the same technology. Furthermore, the claim of perform routing and non-routing functions is the intended use of the system. The actual claimed functionality is being shown by both references.
10. The applicant argues on page 9 that “Applicant disagrees that claim 1 is indefinite. Claim 1 is directed to an apparatus comprising a control plane and a data plane. In that context, the recited control plane and data plane are portions of the claimed apparatus, not an undefined set of external devices. Claim 1 then recites the specific packet-handling sequence performed by the data plane: the data plane assigns a local IP address to the control plane and a public IP address to the data plane, receives a packet from the control plane that includes the control plane's local IP address, replaces the control plane's local IP address in the packet with the data plane's public IP address, and transmits the packet to the Internet. A person of ordinary skill would understand from this sequence that the packet is transmitted to the Internet with the data plane's public IP address in place of the control plane's local IP address.”
However, Claim 8 is not directed towards an apparatus and would thus have an undefined scope for the data plane with respect to the currently applied 112 rejection. More importantly, even if the data plane is located within a single apparatus, the data play is an architectural layer as opposed to an individual device. Thus, the scope of assigning an IP address to a data plane remains unclear as it is not structurally established how the IP address is being assigned (i.e. an individual interface within an apparatus or a group of interfaces, etc.).
11. The applicant argues on page 10 that “Column 16, lines 44-62 of SHEVADE states that "the local network manager 318 can receive a packet from a compute instance 312." Thus, this section identifies the packet as originating from a compute instance rather than the control plane. It is also silent as to the packet including any local IP address of a control plane.” However, the local network manager is part of the control plane and it can also forward the packet, as claimed in the citation, to other parts of the of the systems such as the relay (i.e. data plane) to perform its functions.
12. The applicant argues on page 11 that “Encapsulating with an outer destination address does not reasonably correspond to "replac[ing] the local IP address of the control plane in the packet with the public IP address of the data plane." This section of SHEVADE does not identify any public IP address of the data plane, and it does not identify any replacement of a control-plane local IP address with such a public IP address.”
However, the examiner disagrees. Under broadest reasonable interpretation, from the perspective of the receiving device, the old IP address has been removed from consideration and replaced with the new IP address (that’s encapsulated) as the system can only see the encapsulation and not the original address.
13. The applicant argues on page 12 that “neither ¶¶ 6 nor 22 describes data plane devices assigning themselves public IP addresses. Paragraph 6 describes a router or NAT firewall assigning a public address to a computer or computers inside a private network. Paragraph 22 describes a controller assigning a private or public address to network devices such as routers and switches.” However, Panchal was utilized under 35 U.S.C. 103 to teach assigning the claimed addresses to the control and data planes. Routers (and etc.) are fundamental parts of the data plane. The claim does not define the scope of the data plane outside of the it being part of the apparatus (claim 1), which does not preclude it from being part of the greater routing network.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
(a) Yu (Pre-Grant Publication No. US 2022/0174038 A1), 0005-0007.
(b) Baillargeon (Pre-Grant Publication No. US 2014/0064246 A1), 0102.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH L GREENE whose telephone number is (571)270-3730. The examiner can normally be reached Monday - Thursday, 10:00am - 4:00pm.
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/JOSEPH L GREENE/Primary Examiner, Art Unit 2443
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