Ex parte BARE

Board of Patent Appeals and Interferences

Mar 22, 2000

08084668 (B.P.A.I. Mar. 22, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte BALLARD C. BARE
_____________
Appeal No. 1997-1194
Application 08/084,668
______________
ON BRIEF
_______________
Before URYNOWICZ, FLEMING and RUGGIERO, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1, 2, 4 through 10, 12 through 17, 19, and 20. Claims
3, 11, and 18 have been canceled.
The claimed invention relates to a method and system for
routing data packets between local area networks using a
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router. Router processing circuitry within the router
searches a routing table for a routing table entry for a
detected destination for the data packets. More particularly,
Appellant asserts at pages 4 through 6 of the specification
that, by associating a cost with each entry in a router table,
virtual circuit connections can be utilized as back-up
connections for a primary network.
Claim 1 is illustrative of the invention and reads as
follows:
1. A router comprising:
router processing circuitry for routing data
transferred between local areal networks;
a routing table, accessed by the processing circuitry,
the routing table including
a plurality of routing table entries, each routing
table entry including an address for a next hop
router, and
a reference to a cost value for a route represented
by the table entry; and,
a virtual connection map table accessed by the routing
processing circuitry, the virtual connection map table
having a plurality of virtual connection map table entries,
each virtual connection map table entry having a phone
number for a next hop router;
wherein for each virtual connection, a routing table
entry includes a reference to a virtual connection map table
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entry.
Appeal No. 1997-1194
Application No. 08/084,668
The Fisk reference was not specifically relied upon by1
the Examiner in the Answer but was relied upon in an earlier
Office action mailed April 12, 1995 (paper no. 5) to which the
Examiner makes reference in the Answer.
The Appeal Brief was filed April 8, 1996. In response2
to the Examiner’s Answer dated June 19, 1996, a Reply brief
was filed July 8, 1996 which was acknowledged and entered
without further comment on August 5, 1996.
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The Examiner relies on the following prior art:
Fisk 5,274,643 Dec. 28,1
1993
(Filed Dec. 11, 1992)
Hokari 5,289,536 Feb. 22,
1994
(Filed Mar. 20, 1992)
Shinohara 5,351,237 Sep.
27,
1994
(Filed Jun. 04, 1993)
Claims 1, 2, 4-10, 12-17, and 19-20 stand finally
rejected under 35 U.S.C. § 103 as being unpatentable over
Shinohara in view of Hokari.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Brief and Answer for the2
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the Examiner and the
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evidence of obviousness relied upon by the Examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellant’s arguments
set forth in the Briefs along with the Examiner’s rationale in
support of the rejection and arguments in rebuttal set forth
in the Examiner’s Answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
the particular art would have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth
in claims 1, 4 through 10, 12 through 14, 19, and 20. We
reach the opposite conclusion with respect to claims 2 and 15
through
17. Accordingly, we affirm-in-part.
Appellant has indicated (Brief, page 4) that, for
purposes of this appeal, claims 1, 2, 4 through 6, 8, 13, 15,
and 20 stand or fall separately and, accordingly, has provided
separate arguments for each of these claims. We will consider
the claims separately only to the extent that separate
arguments are of record in this appeal. Dependent claims 7,
9, 10, 12, 14, 16, 17, and 19 have not been argued separately
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and, accordingly, will stand or fall with their base claim.
As a general proposition in an appeal involving a
rejection under 35 U.S.C. § 103, an Examiner is under a burden
to make out a prima facie case of obviousness. If that burden
is met, the burden of going forward then shifts to Appellants
to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the
arguments. See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In
re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1051, 189
USPQ 143,
147 (CCPA 1976).
With respect to independent claims 1, 6, and 13, the
Examiner proposes to modify the network system disclosure of
Shinohara which includes a router for transferring data
between local area networks (LANS) but which lacks any
suggestion of a consideration of a cost factor in the
selection of a particular route for data transfer. To address
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this deficiency, the Examiner turns to Hokari which is
directed to the selection of a least cost route for data
transfer in a ISDN (Integrated Services Digital Network)
network using stored least cost routing table information. In
the Examiner’s line of reasoning (Answer, page 3, which
references a previous Office action mailed April 12, 1995,
paper no. 5), the skilled artisan would have found it obvious
to incorporate a least cost router in the system of Shinohara
in order to provide rapid and economic route selection for the
transfer of data packets in view of the teachings of Hokari.
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In making the obviousness rejection, the Examiner,
therefore, has pointed out the teachings of Shinohara and
Hokari, has reasonably indicated the perceived differences
between this prior art and the claimed invention, and has
provided reasons as to how and why the prior art references
would have been modified and/or combined to arrive at the
claimed invention. In our view, the Examiner's analysis is
sufficiently reasonable that we find that the Examiner has at
least satisfied the burden of presenting a prima facie case of
obviousness. The burden is, therefore, upon Appellant to come
forward with evidence or arguments which persuasively rebut
the Examiner’s prima facie case of obviousness. Only those
arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but
elected not to make in the Brief have not been considered in
this decision (note 37 CFR § 1.192).
In response, Appellant, aside from a broad general
assertion at page 16 of the Brief, does not attack the
combinability of Shinohara and Hokari but, rather, initially
argues that Hokari does not disclose a key feature of the
claimed invention, i.e. “each routing table entry . . .
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including a reference to a cost value for a route represented
by the table entry;” (claim 1). In Appellant’s view (Brief,
page 7; Reply Brief, page 3), there is no cost value
associated with each table entry in the routing table in
Hokari, despite the fact that Hokari identifies his routing
table as a “least cost routing table.”
Appellant further attacks the Examiner’s position by
asserting that Shinohara, the primary reference utilized by
the Examiner to teach the routing of data packets between
LANS, does not suggest the use of virtual circuits or virtual
connections among a plurality of circuits (Brief, pages 8 and
9). After careful review of the Shinohara and Hokari
references in light of the arguments of record, we agree with
the Examiner’s stated position in the Answer. Although
Appellant would have us ignore Hokari’s designation of his
routing table as a “least cost routing table,” it is apparent
to us from the description of the operation of Hokari’s system
at column 1, lines 43 through 67 and column 3, lines 57
through 63, that such routing table clearly contains cost data
entries. These cost entries are referenced by the use of
digit conversion data which, on the receipt of a call setup
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message, converts the called party number and retrieves the
least cost routing data to select a particular ISDN trunk
circuit.
With regard to Shinohara’s use of “virtual” circuits, we
agree with the Examiner that the disclosure at column 6, line
31 to column 9, line 22 of Shinohara describes a plurality of
virtual circuits and selection means as claimed even though
the term “virtual” is not mentioned by Shinohara. We note
that Appellant’s specification at page 4, line 13 defines a
virtual circuit as follows:
Virtual circuits are circuits which represent
routes which are not always connected.
In our view, the disclosure of Shinohara which describes the
assigning of various circuits to routers with the selected
circuits using telephone connections for packet transmission
would clearly meet the above definition.
In view of the above discussion, it is our opinion that
the Examiner’s prima facie case of obviousness remains
unrebutted by any convincing arguments offered by Appellant
and, accordingly, the obviousness rejection of independent
claims 1, 6, and 13 is sustained. The rejection of dependent
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claims 7, 9, 10, and
12 (all dependent on independent claim 6), and claims 14 and
19 (both dependent on independent claim 13), grouped together
with their base claims by Appellant and not argued separately,
is also sustained.
With respect to dependent claims 4, 5, 8, and 20, grouped
and argued separately by Appellant, we sustain the obviousness
rejection of these claims as well. Claims 4 and 20 are
directed to various entries in the virtual connection map
table including circuit numbers, state information, and next
hop router address. In addressing these limitations, the
Examiner points to the circuit entries in Shinohara’s Figure 4
and the router address information discussed at column 9,
lines 23 through 28 of Shinohara. The Examiner further
suggests (Answer, page 6) the obviousness to the skilled
artisan of including state information in the map table in
order to prevent attempted access to existing connected
circuits. In a related argument, the Examiner asserts the
obviousness of including status and configuration information
in the map table as recited in dependent claim 5 for
monitoring connection quality to ensure reliability. With
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regard to dependent claim 8, the Examiner reiterates the
argument concerning Shinohara’s disclosure of “virtual”
circuits discussed supra with respect to independent claims 1,
6, 13.
Appellants have responded to the Examiner’s assertion of
the obviousness of storing state and status information by
reiterating their previous argument concerning Shinohara’s
alleged deficiency in disclosing “virtual” circuits. In
Appellant’s view, since Shinohara lacks any teaching of
“virtual” circuits, no reason can be found for storing state
information or monitoring the status of such circuits.
After reviewing the arguments of Appellant, it is
apparent that, instead of arguing the question of obviousness
with respect to the particulars of dependent claims 4, 5, 8,
and 20, Appellant has based his arguments on the “virtual”
circuit feature recited in parent independent claims 1, 6, and
13. Our earlier discussion on this issue, however, found
Appellant’s arguments to be unpersuasive. Despite any
explicit teaching in the Shinohara and Hokari references, we
find the Examiner’s rationale with regard to the obviousness
of the stored state and status information to be reasonable so
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as to establish a prima facie case. In considering the
disclosure of a reference, it is proper to take into account
not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be
expected to draw therefrom. In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). Since the
Examiner’s prima facie case of obviousness has not been
overcome by any persuasive arguments by Appellant, the 35
U.S.C.
§ 103 rejection of dependent claims 4, 5, 8, and 20 is
sustained.
Turning now to a consideration of dependent claims 2 and
15 through 17, grouped and argued separately by Appellants, we
note that, while we found Appellant’s arguments to be
unpersuasive with respect to the obviousness rejection of
claims 1 through 10, 12 through 14, 19, and 20, we reach the
opposite conclusion with respect to claims 2 and 15 through
17. Claims
2 and 15 (from which claims 16 and 17 depend) both include
specific recitations to virtual connection circuits and
circuit allocation routines in combination with a virtual
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connection map queue for the placing of data packets to be
transferred through the virtual connection circuits. The
Examiner has attempted to address this claim language by
referring to the disclosure at columns 6 through 9 of
Shinohara. Our review of Shinohara, however, reveals no
disclosure of any such virtual map queue, let alone how such
might cooperate with the remaining elements of the claims.
The Examiner has provided no indication how the cited portions
of Shinohara might be interpreted to meet the requirements of
the claims. We are not inclined to dispense with proof by
evidence when the proposition at issue is not supported by a
teaching in a prior art reference, common knowledge or capable
of unquestionable demonstration. Our reviewing court requires
this evidence in order to establish a prima facie case. In re
Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA
1961); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72
(CCPA 1966).
As a final note, we make reference to the Fisk patent
which the Examiner relied upon in the Office action mailed
April 12, 1995 (paper no. 5) and which the Examiner makes
reference to in the Answer. Fisk was relied on solely to
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address the adapter/modem feature of claim 16. Fisk, however,
does not overcome the innate deficiencies of Shinohara and
Hokari with respect to the virtual connection map queue
feature as claimed.
Accordingly, since all of the limitations are not taught or
suggested by the prior art, we do not sustain the obviousness
rejection of dependent claims 2 and 15 through 17.
In summary, we have sustained the 35 U.S.C. § 103
rejection of claims 1, 4 through 10, 12 through 14, 19 and 20
but have not sustained the 35 U.S.C. § 103 rejection of claims
2 and
15 through 17. Therefore, the Examiner’s decision rejecting
claims 1, 2, 4 through 10, 12 through 17, 19, and 20 is
affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended
under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
)
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
Appeal No. 1997-1194
Application No. 08/084,668
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)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JFR:hh

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