Ex Parte Berndt et al

Board of Patent Appeals and Interferences

Sep 24, 2010

10891798 (B.P.A.I. Sep. 24, 2010)

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.
10/891,798 07/15/2004 Stefan Berndt 2003P11745US 1284
7590 09/27/2010
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
KIM, HEE SOO
ART UNIT PAPER NUMBER
2457
MAIL DATE DELIVERY MODE
09/27/2010 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 STEFAN BERNDT, THOMAS HANNA, THORSTEN LAUX,
and CHRISTIAN SCHEERING
____________

Appeal 2009-014805
Application 10/891,798
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD, JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-014805
Application 10/891,798

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 8-10, 12, 19, 21-24, and 26-28. Appeal Brief 7.2 We
have jurisdiction under 35 U.S.C. § 6(b) (2002). We affirm-in-part.

BACKGROUND OF THE INVENTION
Appellants’ invention is directed to a method for assigning clients
distributed across a plurality of subnetworks to a server. See Specification
[0007]. Claim 8, which further illustrates the invention, follows:
8. A method for assigning clients to a server, the clients distributed
across a plurality of subnetworks, each subnetwork having a plurality of
clients, comprising:
for each subnetwork:
selecting only one of the clients in the respective subnetwork;
and by at least one of the selected clients:
sending a query message to at least one other subnetwork in
order to search for the server,
receiving a positive response message to the query, the positive
response message having address information identifying the server,
storing the server address information,
transmitting the stored server address information to at least one
nonselected client in the respective subnetwork, and
storing an address of the client sending the positive response
message when the received positive response message is from the
selected client in one of the different subnetworks,
wherein the server provides a service.

2 Appellants omitted claim 12 in the “Grounds for Rejection to be
Reviewed” on page 7 of the Appeal Brief, but argued for claim 12 on page
20.
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The Rejection
Claims 8 and 24 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to point out and distinctly claim the
subject matter. Answer 3-4.
Claims 8-10, 12, 19, 21-24, and 26-28 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Traversat (US 2002/0184310 A1; Dec. 5,
2002) and Chen (US 2003/0097425 A1; May 22, 2003). Answer 4-11.

ISSUES
Are Claims 8 and 24 properly rejected as indefinite under 35 U.S.C. §
112, second paragraph?
Does Traversat’s peer to peer group disclose selecting only one of the
clients in a subnetwork as required by Appellants’ claims?

PRINCIPLE OF LAWS
Claims must “particularly point[] out and distinctly claim[] the subject
matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).

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ANALYSIS
35 U.S.C. § 112, second paragraph, rejection
“‘[T]he failure to provide explicit antecedent basis for terms does not
always render a claim indefinite.’ . . . [D]espite the absence of explicit
antecedent basis, ‘[i]f the scope of a claim would be reasonably
ascertainable by those skilled in the art, then the claim is not indefinite.’”
Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370-71
(Fed. Cir. 2006). Antecedent basis can also be implied. Id. (holding that the
term “anode gel” implicitly provided antecedent basis for a “zinc anode” in
the same claim).
Although the terms “selecting only one of the clients in the respective
subnetwork” and “storing an address of the client sending the positive
response message” in claim 8 may lack explicit antecedent basis since it is
the first instance of the terms in the claim, that fact alone is hardly
dispositive of whether the claim as a whole would be indefinite. See id.
Rather, the question is whether this lack of antecedent basis renders the
scope of claim 8 unascertainable by ordinarily skilled artisans.
Based on the record before us, we find the scope of the claim 8 to be
reasonably ascertainable. As Appellants indicate (Appeal Brief 12), claim 8
discloses a plurality of subnetworks, which is two or more things, and
therefore, the respective subnetwork is the individual subnetwork that
corresponds to the “for each subnetwork” claim limitation. Since the claim
clearly defines the relation of the subnetwork with the clients, skilled
artisans would have no trouble ascertaining the scope of claim 8 when
interpreted in light of the Specification, despite the lack of explicit
antecedent basis for the terms. See Energizer Holdings, 435 F.3d at 1370-
71. We further agree with Appellants that the claim is not indefinite because
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there is nothing in the claim that suggests the response received contains any
more information other than the address information of the server’s location.
Therefore, claim 8 is definite under § 112, second paragraph.
Appellants argue that claim 24 is definite because obtaining the
address from both a positive acknowledgement from a selected client in a
different subnetwork and from a negative acknowledgement from a selected
client in a different subnetwork is definite. See Appeal Brief 14. We do not
find Appellants’ arguments to be persuasive. We agree with the Examiner
that the determination of the positive or negative response messages from
the second address is confusing and indefinite. Independent claim 21, from
which claim 24 depends, addresses the second address obtained in “the
positive response” only. Therefore, claim 24 is indefinite under § 112,
second paragraph.

35 U.S.C. §103(a) rejection
The Examiner finds that Traversat discloses a peer in a peer group that
when a peer is selected to be a rendezvous peer, only one peer is selected
and therefore the claim limitation “selecting only one of the clients” recited
in claim 8 reads upon Traversat’s rendezvous peer. See Answer 13.
Appellants argue that Traversat discloses that a peer (any peer) in a peer
group may decide to become appointed or elected to be the rendezvous peer
in the group, and therefore Traversat does not disclose the only one
limitation of claim 8. See Appeal Brief 17. We find Appellants’ arguments
to be persuasive.
Traversat discloses that “[a] rendezvous peer may be described as a
meeting point where peers and/or peer groups may register to be discovered,
and may also discover other peers and/or peer groups” (Traversat [0315]).
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Traversat discloses the selection of one peer; however, Traversat does not
limit the selection of peers as required by claim 8 because the number of
Traversat’s rendezvous peers expands within the group. Id. Further,
independent claim 21 recites a limitation similar to the limitation in claim 8,
“selecting only one of the clients in the respective subnetwork” (emphasis
added). Therefore, we will not sustain the Examiner’s rejection of
independent claim 21 for the same reasons as we stated above.

DECISION
We reverse the Examiner’s rejection of claim 8 under 35 U.S.C. §
112, second paragraph.
We affirm the Examiner’s rejection of claim 24 under 35 U.S.C. §
112, second paragraph.
We reverse the Examiner’s rejection of claims 8-10, 12, 19, 21-24,
and 26-28 under 35 U.S.C. §103(a) over Traversat and Chen.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED-IN-PART

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Application 10/891,798
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SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830