Ex Parte CloonanDownload PDFPatent Trial and Appeal BoardJun 4, 201410423501 (P.T.A.B. Jun. 4, 2014) Copy Citation 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 Copy with citationCopy as parenthetical citation