Ex Parte Bahren et al

Board of Patent Appeals and Interferences

Mar 14, 2012

09892783 (B.P.A.I. Mar. 14, 2012)

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. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/892,783 06/27/2001 Frank Bahren Westphal.6313 9614
50811 7590 03/14/2012
O''Shea Getz P.C.
1500 MAIN ST. SUITE 912
SPRINGFIELD, MA 01115
EXAMINER
CHANKONG, DOHM
ART UNIT PAPER NUMBER
2452
MAIL DATE DELIVERY MODE
03/14/2012 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)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte FRANK BAHREN, JOACHIM WIETZKE, HARALD SCHOPP,
JOACHIM BISCHOFF, DIRK LAPPE, and STEFAN WOLF
_____________

Appeal 2009-012284
Application 09/892,783
Technology Center 2400
______________

Before KRISTEN L. DROESCH, DENISE M. POTHIER, and
DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 7, 10-14, 18-23, and 25.1 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm the Examiner’s rejections of these claims.

1 Claims 1-6, 8, 9, 15-17, and 24 were previously cancelled.
Appeal 2009-012284
Application 09/892,783

2
INVENTION
The invention is directed to a method and system for generating a
second address for devices in a second network so that the devices can
communicate with devices in a first network. Abstract. Claim 7 is
representative of the invention and is reproduced below:
7. In a first network which can be linked to a second
network, the first network including a plurality of network
devices linked with one another and having an associated first
address for unique identification in the first network, a method
for generating a second address for each device comprising:
manipulating the first address of each device by
mathematically summing a predetermined number and the first
address to derive the second address which is the sum of the
first address and the predetermined number, the second address
uniquely identifying each such device in the second network,
the second address being different than the first address.

REFERENCES
Koning US 5,371,868 Dec. 6, 1994

Ford US 6,101,499 Aug. 8, 2000

Inoue US 6,163,843 Dec. 19, 2000

MOST Cooperation, “MOST Specification Framework Rev 1.1,
Version 1.1-07” 1999, pg. 1-60.

REJECTIONS AT ISSUE
Claims 7, 10, 12, 14, 18, and 20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Ford and Koning. Ans. 4-6.
Appeal 2009-012284
Application 09/892,783

3
Claims 11, 19, and 222 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Ford, Koning, and MOST. Ans. 6-9.
Claims 13, 21, 23, and 253 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Ford, Koning, MOST, and
Inoue. Ans. 7-10.

ISSUES
Did the Examiner err in finding that Ford and Koning teach or suggest
deriving a second address from a first address and assigning both the first
and second addresses to a single device?
Did the Examiner err in determining that it would have been obvious
to combine Ford and Koning?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
We disagree with Appellants’ conclusion. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur
with the conclusion reached by the Examiner. In addition, below we

2 For claim 22, the Examiner cites the references in a different order (i.e.,
MOST, Ford, and Kronig). However, the ordering of references in the
rejection is insignificant in the Examiner’s obviousness determination. See
In re Bush, 296 F.2d 491, 496 (CCPA 1961).
3 For claims 23 and 25, the order of the references differs from claims 13
and 21. See n. 2.
Appeal 2009-012284
Application 09/892,783

4
highlight and address a few of the Examiner’s specific findings and
Appellants’ arguments.
Appellants’ main argument is that Koning assigns the first and second
addresses to different devices. App. Br. 12. In doing so, Appellants are
interpreting Koning’s ports within the bridge as different devices. App. Br.
12. However, the Examiner interprets Koning’s bridge as the device, not the
bridge ports. Ans. 11. We agree with the Examiner and find this
interpretation to be reasonable. Additionally, the Examiner finds that
Koning’s bridge is a multi-port communication device comprising a plurality
of ports. Ans. 12. Each of Koning’s ports is assigned a different address
and is connected to a different network. Ans. 12-13. Thus, we agree with
the Examiner that Koning discloses a device, wherein an address can be
assigned to one port in order to communicate with a first network, and a
different port of the same device can be assigned a different address that
allows the device to communicate with a second network.
Additionally, Appellants argue that the improper interpretation of
Koning as explained above prevents an obviousness determination and that,
therefore, there is no motivation to combine Ford with Koning. App. Br. 9,
14. As indicated supra, we disagree with Appellants that the Examiner erred
in finding that Koning teaches the disputed limitation. Also, we note that the
Supreme Court stated that an explicitly stated motivation to combine the
references is seen as a “helpful insight,” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418, (2007), but that the combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results. Id. at 416. We agree with the Examiner that
the combination of Ford with Koning yields nothing more than just a
Appeal 2009-012284
Application 09/892,783

5
predictable result, such as combining Koning with Ford would predictably
improve Ford’s network device. See Ans. 12-13.
For the reasons stated supra, we sustain the Examiner’s rejection of
claim 7 and claims 10-14, 18-23, and 25 for similar reasons.
CONCLUSION
The Examiner did not err in finding that Ford and Koning teach or
suggest deriving a second address from a first address and assigning both the
first and second addresses to a single device.
The Examiner did not err in determining that it would have been
obvious to combine Ford and Koning.
SUMMARY
The Examiner’s decision to reject claims 7, 10-14, 18-23, and 25 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

msc