Ex Parte Cloonan

Patent Trial and Appeal Board

Jun 4, 2014

10423501 (P.T.A.B. Jun. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS J. CLOONAN
____________________

Appeal 2011-009097
Application 10/423,5011
Technology Center 2400
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, 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 1-31. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellant, the Real Party in Interest is ARRIS Group Inc.
App. Br. 2.
Appeal 2011-009097
Application 10/423,501

2
STATEMENT OF THE CASE2
The Invention
Appellant’s “invention relates to network communication systems
[and, m]ore specifically . . . relates to intelligently controlling a switching
device to dynamically distribute bandwidth among a plurality of virtual
network channels.” Spec. p. 1, ll. 23-26 (“FIELD OF THE INVENTION”).
Exemplary Claims
Claims 1, 17, and 30, reproduced below, are representative of the
subject matter on appeal (emphasis added):
1. A system for intelligently steering traffic along a
plurality of MAC domains based on bandwidth demand
between a central location and a plurality of distribution nodes
served by the central location in a communication network
comprising:
a plurality of switching means for providing a plurality of
changeable MAC domain level data paths for the MAC
domains between the central location and the nodes;
a means for determining the data throughput demand(s)
of any one or more of the nodes; and
a means for controlling the switching means in response
to the throughput demands to change the data paths so that the
collective number of bandwidth units of the MAC domains
directed to any one of the plurality of nodes corresponds to the
data throughput usage demands of that node.

2 Our decision relies upon Appellant’s Appeal Brief (“App. Br.,” filed
Oct. 5, 2010); Reply Brief (“Reply Br.,” filed Feb. 23, 2011); Examiner’s
Answer (“Ans.,” mailed Dec. 23, 2010); Final Office Action (“Final Act.,”
mailed Mar. 17, 2010); and the original Specification (“Spec.,” filed
Apr. 25, 3003).
Appeal 2011-009097
Application 10/423,501

3
17. A system for intelligently steering MAC domain
channels based on bandwidth demand between a CMTS and a
plurality of fiber nodes served by the CMTS in a HFC
communication network comprising:
an intelligently controlled dynamic RF combiner for
providing a plurality of changeable MAC domain level data
paths for the MAC domains between the CMTS and the nodes;
a means for sensing and determining the data throughput
demand(s) of any one or more of the nodes; and
a means for controlling the changeable data paths in
response to the throughput demands so that the collective
number of bandwidth units of the MAC domains directed to any
one of the plurality of nodes corresponds to the data throughput
usage demands of that node.
30. A method for intelligently steering the bandwidth
of an extra MAC domain channel to one or more of a plurality
of fiber nodes in an HFC communication network such that
greater bandwidth is provided to the node or nodes to which the
extra bandwidth is steered than the bandwidth amount that is
dedicated to said node or nodes, comprising:
periodically determining the bandwidth demand of each
of the nodes;
for each of the nodes, comparing the determined
bandwidth demand with predetermined criteria and generating a
data signal corresponding to the comparison;
determining whether extra bandwidth is available based
on comparisons of current usage demands and bandwidth
steering configurations for the other nodes; and
configuring a steering means to provide a MAC domain
level data path for directing the extra bandwidth to one or more
of the nodes based on the periodically determined bandwidth of
the nodes.
Appeal 2011-009097
Application 10/423,501

4
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Hou US 6,324,184 B1 Nov. 27, 2001
Farmer US 6,973,271 B2 Dec. 6, 2005
Spinar US 7,006,530 B2 Feb. 28, 2006
Eng US 7,194,009 B2 Mar. 20, 2007
Rejections on Appeal
1. Claims 1-5, 8-10, and 14 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Spinar and Eng.
Ans. 3.
2. Claims 6, 7, 11-13, and 16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Spinar, Eng, and
Hou. Ans. 7.
3. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Spinar, Eng, and Farmer. Ans. 10.
4. Claims 17-29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Spinar, Hou, and Eng. Ans. 10.
5. Claims 30 and 31 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Spinar, Eng, and Hou. Ans. 14.

Appeal 2011-009097
Application 10/423,501

5
ISSUES AND ANALYSIS
We only consider those arguments actually made by Appellant in
reaching this decision, and we do not consider arguments which Appellant
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
contentions with respect to claims 1-31, and 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 and rebuttals set forth by the Examiner in
the Examiner’s Answer in response to Appellant’s arguments. However, we
highlight and address specific findings and arguments regarding claims 1,
17, and 30 for emphasis as follows.
1. § 103 Rejection of Claims 1-5, 8-10, and 14 over Spinar and Eng
Issue 1
Appellant argues (App. Br. 9-13; Reply Br. 9, 10) the Examiner’s
rejection of claims 1-5, 8-10, and 14 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of the cited prior art is in error. These
contentions present us with the following issue:
Did the Examiner err in combining Spinar and Eng because they
purportedly are directed to solving a different technical problem than the
invention recited in claim 1?
Appeal 2011-009097
Application 10/423,501

6
Analysis
Appellant contends, “Spinar describes a system for bandwidth
allocation between wireless base stations and user equipment, not between a
central location and a plurality of distribution nodes.” App. Br. 10.
Appellant further argues, “Spinar is directed to a different technical problem
(identifying allocation between a base station and user equipment vs
allocation between a central location and distribution nodes) and teaches a
different approaches [sic] to the problem.” Id.
With respect to Eng, Appellant contends, “Eng describes a system for
bandwidth allocation within a MAC domain between cable modems and
central location (CMTS), not between a central location and a plurality of
distribution nodes.” App. Br. 11. In addition, Appellant contends, “Eng is
thus directed to a different technical problem (bandwidth allocation within a
MAC domain between cable modems and central location vs allocation
between a central location and distribution nodes) and teaches a different
solution.” Id.
Specifically with respect to claim 1, Appellant contends, “[c]laim 1
for example describes a system for steering traffic along a plurality of MAC
domains based on bandwidth demand between a central location and a
plurality of distribution nodes served by the central location in a
communication network.” Id. Further,
Neither Spinar nor Eng is directed to the technical
problem of managing bandwidth between an [sic] central
location and distribution nodes. The Examiner states that
Spinar teaches bandwidth allocation and traffic demand. But
the Applicant is not claiming bandwidth allocation and traffic
demand generally. The Applicant is claiming steering traffic
Appeal 2011-009097
Application 10/423,501

7
along a plurality of MAC domains based on bandwidth demand
between a central location and a plurality of distribution nodes
served by the central location. These features are not disclosed
by Spinar (or Eng). They would not naturally arise from Spinar
and Eng at least because each reference describes a different
technical problem solved in a different way than what is
claimed.
App. Br. 11-12. Further, Appellant alleges,
Eng. Neither Eng or Spinar suggest how the technique of Eng
(using cable modems) could be applied in the claimed way to
switch MAC domain capacity between a central location and
distribution nodes. Neither Eng nor Spinar suggest how the
techniques of Spinar (e.g. polling users to allocate bandwidth
between the users and a wireless base station) could be applied
in the claimed way.
App. Br. 12.
In the Reply, Appellant further contends,
Spinar is relied upon primarily to show bandwidth
allocation and to determine demand of traffic in a system. Page
15 of Examiner’s Answer, section (10). The Examiner asserts
that a cable modem and a distribution node can be regarded as
the same thing with different names. The Applicant
respectfully does not agree. A cable modem would not
obviously or reasonably be considered a distribution node of a
central location, as that term is reasonably interpreted in light of
the Applicant’s claim language and use of that term in the
Applicant’s specification.
Reply Br. 9. We find Appellant’s argument against the Examiner’s reading
of the recited “distribution node” onto Spinar’s cable modem, presented for
the first time in the Reply Brief, to be untimely. Even if we were to consider
the argument to be timely, we find the argument is not persuasive, for the
reasons discussed infra.
Appeal 2011-009097
Application 10/423,501

8
The Examiner finds, and we agree, “[a] cable modem and a
distribution node can be regarded the same thing with different names . . .
[because t]hey are both capable of being configured to be a server and
forward, store and display information.” Ans. 15-16. The Examiner
concludes this is a reasonable interpretation because a cable modem is used
to transmit and receive information, i.e., it serves the same purpose as a
distribution node and, because it has feedback capability, it can be used as a
distribution node. Ans. 16.
Claim terms are to be given their broadest reasonable interpretation,
as understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). We note the only discussion of
“distribution nodes” in the Specification is in the context of an exemplary
embodiment, which we find does not provide an artisan with notice of a
limiting definition or disclaimer:
Turning now to the figures, FIG. 1 illustrates a system 2
for transferring data in a broadband network. The network may
comprise a fiber network 4 connecting a cable modem
termination system head end (“CMTS”) 6 to subscriber cable
modems 8AA - 8nn. The modems 8 are connected to CMTS 6
through distribution nodes 10A - 10n. In a hybrid fiber coaxial
system (“HFC”) know [sic] in the art, electrical radio frequency
(“RF”) signals are typically passed between each of the cable
modems 8 and their corresponding nodes 10 via coaxial cable
12. Optical signals are passed between the nodes 10 and the
CMTS 6 via optical fiber 14.
Spec. p. 10, ll. 16-24 (emphasis added.)
Thus, we find Appellant has not provided a definition of “distribution
node” in the Specification that would preclude the Examiner’s broader
Appeal 2011-009097
Application 10/423,501

9
interpretation that a distribution node reads on a cable modem.3
Accordingly, while broad, we find the Examiner’s interpretation that Eng’s
cable modem is equivalent to the recited distribution node to be reasonable.
The Examiner rejects the claims as obvious over the combined
teachings Spinar and Eng. We note the test for obviousness is not what the
references show individually but what the combined teachings would have
suggested to one of ordinary skill in the art. See In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (emphasis added). The Supreme Court has
determined the conclusion of obviousness can be based on the interrelated
teachings of multiple patents, the effects of demands known to the design
community or present in the marketplace, and the background knowledge
possessed by a person having ordinary skill in the art. KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007).
Further in this regard, the relevant inquiry is whether the Examiner
has set forth “some articulated reasoning with some rational underpinning to

3 Any special meaning assigned to a term “must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention.” Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) (“A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.”) (Citation omitted.) See also Phillips v. AWH Corp., 415 F.3d
1303, 1323 (Fed. Cir. 2005)(“[A]lthough the specification often describes
very specific embodiments of the invention, we have repeatedly warned
against confining the claims to those embodiments. . . . In particular, we
have expressly rejected the contention that if a patent describes only a single
embodiment, the claims of the patent must be construed as being limited to
that embodiment”) (citations omitted).
Appeal 2011-009097
Application 10/423,501

10
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). We find the
Examiner’s stated basis of motivation to combine Spinar with Eng has a
rational underpinning: i.e., “it would have been obvious . . . to modify Spinar
to include the teachings as taught by Eng . . . because it provides an efficient
system for using the available bandwidth of a communication system.”
Ans. 5.
Appellant argues, as cited above, the cited references are each directed
to the solution of a different technical problem. The Supreme Court has
stated, however, “if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.” KSR, 550 U.S. at 417.
In the present case, we find the Examiner’s proposed combination for
independent claim 1 applies the teachings of Spinar in a manner that would
have produced predictable results when used in the method of Eng. See Ans.
5. Further, “[i]n determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls.” KSR, 550 U.S. at 419. For a prima facie case of
obviousness to be established, the reference need not recognize the same
problem solved by the Appellant. See In re Kemps, 97 F.3d 1427, 1430
(Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); Ex
parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has
recognized another advantage which would flow naturally from following
the suggestion of the prior art cannot be the basis for patentability when the
Appeal 2011-009097
Application 10/423,501

11
differences would otherwise be obvious.”). Indeed, the Supreme Court
guides:
[It is error to] assum[e] that a person of ordinary skill
attempting to solve a problem will be led only to those elements
of prior art designed to solve the same problem. . . . Common
sense teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.
KSR, 550 U.S. at 420 (citation omitted). Additionally, Appellant has
presented no evidence that using the broadband wireless communication
system bandwidth allocation techniques of Spinar with the full-service
communications system (i.e., data, voice, and video) MAC domain level
switching techniques of Eng (see Ans. 4, 15, and 16), was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s reading of
the contested limitations on the cited prior art, or in the resulting legal
conclusion of obviousness. Therefore, we sustain the Examiner’s
obviousness rejection of independent claim 1. As Appellant has not
provided separate arguments with respect to dependent claims 2-5, 8-10, and
14, rejected on the same basis as claim 1, we similarly sustain the
Examiner’s rejection of these claims under 35 U.S.C. § 103(a).
Appeal 2011-009097
Application 10/423,501

12
§ 103(a) Rejection of Claims 6, 7, 11-13, and 16 over Spinar, Eng, and Hou
In view of the lack of any substantive or separate arguments directed
to the unpatentability rejection of claims 6, 7, 11-13, and 16 under § 103 (see
App. Br. 13),4 we sustain the Examiner’s unpatentability rejection of these
claims, as they fall with their respective independent claim 1. When
Appellant does not separately argue the patentability of dependent claims,
the claims stand or fall with the claims from which they depend. In re King,
801 F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991
(Fed. Cir. 1983). Accordingly, we sustain the rejection of claims 6, 7, 11-
13, and 16.
§ 103(a) Rejection of Claim 15 over Spinar, Eng, and Farmer
In view of the lack of any substantive or separate arguments directed
to the unpatentability rejection of claim 15 under § 103 (see App. Br. 13),5
we sustain the Examiner’s unpatentability rejection of this claim, as it falls
with its respective independent claim 1. When Appellant does not
separately argue the patentability of dependent claims, the claims stand or
fall with the claims from which they depend. See In re King, 801 F.2d at
1325. Accordingly, we sustain the rejection of claim 15.

4 Appellant merely argues, “the disclosure of Hou does not render
dependent claims 6-7, 11-13, and 16 obvious in light of Spinar and Eng for
at least the reasons given for claim 1.” App. Br. 13.
5 Appellant merely argues, “[s]ee the Arguments for claim 1, supra. The
disclosure of Farmer does not teach the features of claim 1 lacking in and
nonobvious from the combination Spinar and Eng.” App. Br. 13.
Appeal 2011-009097
Application 10/423,501

13
2. § 103 Rejection of Claims 17-29 over Spinar, Hou, and Eng
Issue 2
Appellant argues (App. Br.14-15) the Examiner’s rejection of claims
17-29 under 35 U.S.C. § 103(a) as being unpatentable over the combination
of the cited prior art is in error. These contentions present us with the
following issues:
(a) Did the Examiner err in combining Spinar, Hou, and Eng, under
§103, and did the Examiner err in finding the cited combination of prior art
would have taught or suggested “an intelligently controlled dynamic RF
combiner for providing a plurality of changeable MAC domain level data
paths for the MAC domains between the CMTS and the nodes,” as recited in
claim 17?
(b) Did the Examiner err in finding the combination of Spinar,
Hou, and Eng would have taught or suggested, “means for controlling the
changeable data paths in response to the throughput demands so that the
collective number of bandwidth units of the MAC domains directed to any
one of the plurality of nodes corresponds to the data throughput usage
demands of that node,” as also recited in claim 17?
Analysis
2(a)
Appellant contends “[n]one of the references disclose an intelligently
controlled dynamic RF combiner providing a plurality of changeable MAC
domain level data paths for the MAC domains between the CMTS and the
Appeal 2011-009097
Application 10/423,501

14
nodes, and the Examiner has provided no basis showing why such a feature
would obviously arise from Spinar, Eng, and Hou.” App. Br. 14-15.
In response, the Examiner finds, and we agree, Spinar teaches the
recited “intelligently controlled dynamic RF combiner” at column 14,
lines 3-10. Ans. 10. In particular, we find Spinar’s disclosure of a base
station with several layers of control mechanisms or control stacks 502, 504
and 506 that control, inter alia, the bandwidth request and allocation
process, teaches, or at least suggests the limitation in dispute. See Spinar,
col. 13, l. 61 through col. 14, l. 28.
2(b)
With regard to the disputed “means for controlling” limitation,
Appellant refers to their arguments concerning the rejection of claim 1
“regarding the reasons why the combination of Spinar and Eng does not
render certain claim features obvious.” App. Br. 14. Appellant further
contends (App. Br. 15) the Examiner did not provide a basis for finding such
features would arise from the combination of Spinar, Hou, and Eng.
In response, the Examiner finds, and we agree, under KSR (cited,
supra), “all [recited] elements . . . could be combined by known methods to
yield predictable results. . . . Hou was used for teaching the hybrid coaxial
network . . . [; and Eng for] teach[ing] a plurality of changeable MAC
domain level data paths for the MAC domains between the CMTS and the
nodes.” Ans. 16.
We also note the Examiner’s findings concerning Issues 2(a) and 2(b)
in connection with claim 17 remain unrebutted by Appellant in their Reply
Brief. Accordingly, Appellant has not provided sufficient evidence or
Appeal 2011-009097
Application 10/423,501

15
argument to persuade us of any reversible error in the Examiner’s reading of
the contested limitations on the cited prior art, or of any error in the resulting
legal conclusion of obviousness. Therefore, we sustain the Examiner’s
obviousness rejection of independent claim 17. As Appellant has not
provided separate arguments with respect to independent claims 22 and 28,
or dependent claims 18-21, 23-27, and 29, rejected on the same basis as
claim 17, we similarly sustain the Examiner’s rejection of these claims under
35 U.S.C. § 103(a).
3. § 103 Rejection of Claims 30 and 31 over Spinar, Eng, and Hou
Issue 3
Appellant argues (App. Br. 15) the Examiner’s rejection of claims 30
and 31 under 35 U.S.C. § 103(a) as being unpatentable over the combination
of cited prior art is in error. These contentions present us with the following
issue:
Did the Examiner err in combining Spinar, Hou, and Eng to render
claim 30 unpatentable, in light of Appellants’ contention that Spinar and Eng
are purportedly “not directed to the technical problem of switching
bandwidth between a central location and distribution nodes?” App. Br. 15.
Analysis
Appellant contends, because “[t]he solutions described in Spinar and
Eng do not appear to be technically applicable to switching bandwidth
between a central location and distribution nodes,” and “Hou teaches a
hybrid fiber coax network but adds no disclosure that would render the
claimed features obvious when combined with Spinar and Eng,” the
Examiner erred in rejecting claim 30. Id.
Appeal 2011-009097
Application 10/423,501

16
We have addressed our findings regarding the combinability of Spinar
and Eng, supra, with respect to independent claim 1, based upon their
purportedly different technical solutions to different problems. In the
interests of brevity, we incorporate our previous findings herein by
reference, and find them to be equally relevant to Appellant’s arguments
regarding claim 30.
Further, the Examiner finds, and we agree, Spinar teaches or at least
suggests a method for bandwidth steering of an extra MAC domain channel
to a fiber node by its disclosure that a MAC control portion of the MAC
frame control header may include an uplink sub-frame map, a disclosure the
Examiner relies upon as teaching or at least suggesting “the manipulation of
an extra MAC domain channel or even multiple MAC domain channels as
shown in (figure 1).” Ans. 16 (citing Spinar, col. 15, ll. 13-18; and Fig. 1).
We also note the Examiner’s findings concerning claim 30 remain
unrebutted by Appellant in their Reply Brief. Accordingly, Appellant has
not provided sufficient evidence or argument to persuade us of any
reversible error in the Examiner’s reading of the contested limitations on the
cited prior art, or of any error in the resulting legal conclusion of
obviousness. Therefore, we sustain the Examiner’s obviousness rejection of
independent claim 30. As Appellant has not provided separate arguments
with respect to dependent claim 31, rejected on the same basis as claim 30,
we similarly sustain the Examiner’s rejection of this claim under 35 U.S.C.
§ 103(a).
Appeal 2011-009097
Application 10/423,501

17
REPLY BRIEF
To the extent Appellant advances new arguments in the Reply Brief
(Reply Br. 9, 10) not in response to a shift in the Examiner’s position in the
Answer, we note “[a]ny bases for asserting error, whether factual or legal,
that are not raised in the principal brief are waived.” Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech.,
Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“‘[A]n
issue not raised by an appellant in its opening brief . . . is waived.’”).
CONCLUSION
The Examiner did not err with respect to the various unpatentability
rejections of claims 1-31 under 35 U.S.C. § 103(a) over the combinations of
prior art of record, and we sustain the rejections.
DECISION
We affirm the Examiner’s decision rejecting claims 1-31 under § 103.
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) (2011).
AFFIRMED

cdc