Ex Parte Barthel et al

Board of Patent Appeals and Interferences

Apr 30, 2012

11035720 (B.P.A.I. Apr. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/035,720 01/15/2005 Herbert Barthel 2003P18331US 2915
7590 04/30/2012
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE, SOUTH
ISELIN, NJ 08830
EXAMINER
OVEISSI, MANSOUR
ART UNIT PAPER NUMBER
2464
MAIL DATE DELIVERY MODE
04/30/2012 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 HERBERT BARTHEL, JOACHIM FELD,
GUNTER STEINDL, and KARL WEBER
________________

Appeal 2009-010789
Application 11/035,720
Technology Center 2400
____________________________

Before CARLA M. KRIVAK, THOMAS S. HAHN, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants invoke our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejections of claims 10-28. We have jurisdiction under 35
U.S.C. § 6(b). We reverse, and enter a new ground of rejection.

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Application 11/035,720

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STATEMENT OF THE CASE
Introduction
Appellants claim a system and method for addressing at least two
subscribers in a redundant communications network by assigning a physical
address that is unique in the network. (See generally Spec. 1:5-9, 4:21-31).
Claim 10 is illustrative:
10. A system, comprising at least two subscribers and at least
one higher-order unit, for addressing at least two subscribers that are
redundant in respect of each other in a communication network,
wherein
the subscribers are each permanently assigned a first physical address
that is unique in the communication network, the subscribers forming
a group such that the subscribers in the group are redundant in respect
to each other, wherein
the group of subscribers is assigned a second physical address that is
unique in the communication network, wherein
the second address assigned to the group can be activated and
deactivated as the valid address in the communication network, for the
redundant subscribers in the group respectively, and wherein at least
one higher-order unit is provided respectively at one time to activate
the second address for just one of the redundant subscribers in the
group and to deactivate the second address for the remaining
redundant subscribers in the group.
Rejection
Claims 10-28 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by O’Riordan (US 7,227,838 B1; June 5, 2007 (filed Dec. 14,
2001)) (Final Action 3-6).

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Issue
Did the Examiner err in rejecting claim 10 under 35 U.S.C. § 102(e)
because O’Riordan fails to teach at least two subscribers that are “each
permanently assigned a first physical address that is unique in the
communication network, the subscribers forming a group such that the
subscribers in the group are redundant in respect to each other”? (App. Br.
12.)
ANALYSIS
Appellants separately argue the patentability of independent
claim 10 and rely on those arguments to contend all other rejected
claims are patentable (App. Br. 14).
Appellants contend that claim 10 covers “each subscriber
ha[ving] a unique physical address such that . . . each subscriber is
individually accessible in the communication network via their
respective physical address (see e.g., par [0014])” (App. Br. 12). We
disagree because claim 10 recites “the subscribers are each
permanently assigned a first physical address that is unique in the
communication network . . . .” Thus, the claim recites that plural
“subscribers” are assigned a singular “physical address.” No basis is
found in the record to support Appellants’ contention aside from
improperly reading an embodiment into the claim. SuperGuide Corp.
v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[I]t
is important not to import into a claim limitations that are not a part of
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Application 11/035,720

4
the claim.”). Accordingly, we construe claim 10 as covering multiple
subscribers being assigned to a singular address.
Appellants acknowledge O’Riordan teaches “routers shar[ing]
the same IP and MAC address on each of their corresponding pairs of
interfaces (see e.g., col. 2 lines 44-46)” (App. Br. 10).
The Examiner does not dispute Appellants’ assertion that claim
10 recites assigning different addresses to subscribers. The Examiner
addresses Appellants’ construction and contention that O’Riordan is
deficient by finding the reference teaches that background prior art
“routers each have their own MAC and IP addresses” (O’Riordan, col.
2, ll. 13-15; App. Br. 4, 9). The record problematically does not
identify the Examiner as relying on O’Riordan’s disclosure for
assigning the same IP and MAC address to multiple routers.
Consequently, the rejection fails to identify where a claimed limitation
is taught–see our construction supra. Verdegaal Bros., Inc. v. Union
Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987) (“A claim is
anticipated only if each and every element as set forth in the claim is
found . . . .”).
For the foregoing reason, we will not sustain the appealed
anticipation rejection of claim 10, nor will we sustain this rejection of
independent claim 14. Further, we will not sustain this rejection of
dependent claims 11-13 and 15-28.
New Ground of Rejection
We reject claims 10-28 under 35 U.S.C. § 102(e) as being
anticipated by O’Riordan.
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Our findings for this new ground of rejection are all of the
Examiner’s findings set forth in the final action for claims 10-28 from
which this appeal is taken that are not directed to the disputed
limitation (Final Action 3-6). Further, consistent with our above
identified interpretation for the disputed limitation, we also find
O’Riordan teaches multiple routers sharing the same IP and MAC
address (col. 2, ll. 44-46), and, therefore, we find the disputed
limitation reads on O’Riordan.
Additionally, we adopt as findings for this new ground of
rejection, those findings set forth in the Examiner’s Answer (Ans. 12)
in response to Appellants’ contention that O’Riordan fails to teach the
claim 10 recited limitation: “at least one higher-order unit is provided
respectively at one time to activate the second address for just one of
the redundant subscribers in the group and to deactivate the second
address for the remaining redundant subscribers in the group” (App.
Br. 13).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that "[a] new ground of
rejection . . . shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the prosecution will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record. . . .

(Emphasis added.)
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).
DECISION
The Examiner’s rejections of claims 10-28 are reversed.
REVERSED
37 C.F.R. § 41.50(b)

gvw