Ex Parte Damien

Board of Patent Appeals and Interferences

Feb 27, 2002

08684871 (B.P.A.I. Feb. 27, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SOUAD DAMIEN
____________
Appeal No. 2000-0330
Application No. 08/684,871
____________
ON BRIEF
____________
Before THOMAS, GROSS, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
The examiner rejected the claims 18-37. The appellant
appeals therefrom under 35 U.S.C. § 134(a). We reverse and enter
a new ground of rejection under 37 C.F.R. § 1.196(b).
BACKGROUND
The invention at issue in this appeal relates to rerouting
Appeal No. 2000-0330 Page 2
Application No. 08/684,871
network. ATM cells received at the first switching node are
duplicated to be transmitted to the second switching node via
both paths. Normally, only cells arriving via the main path are
forwarded by the second node; cells arriving via the substitute
path are suppressed. Upon a malfunction of the main path,
however, cells arriving by the substitute path are forwarded by
the second node; cells arriving by the main path are suppressed.
The different routes of the main and substitute paths can
cause the paths to operate with different network transit times,
which results in a “shift” in the reception of cells arriving via
the paths. The appellant explains that for a high-rate network
featuring optical fibers, a 100 km route difference between the
two paths can cause a shift in transit time of a millisecond.
(Spec. at 1-2). For ATM cells comprising 53 octets and paths
having a rate of several Mbit/s, he adds, such a shift can cause
the loss or duplication of ten cells when a switch is made from
main to a substitute path. (Id. at 2.) To avoid such loss or
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Application No. 08/684,871
Claim 18, which is representative for present purposes,
follows:
18. A packet switching telecommunications network
comprising:
a plurality of switching nodes between which
packets are transported by logic paths, one of said
logic paths being a main path between a first and a
second switching node, and
means for linking at least a substitute logic path
to said main path for transporting the same packets as
packets transported by said main path,
said second node comprising switching means for
switching from the main path to the substitute path,
characterized in that the second node further
comprises:
calculation means for calculating a time shift
between packets received on said main path and on said
substitute path, and
check means, responsive to said time shift, for
checking the switching to avoid packet losses or packet
duplications.
(Paper No. 9 at 1-2.)
The prior art applied by the examiner in rejecting the
Appeal No. 2000-0330 Page 4
Application No. 08/684,871
Claims 18-37 stand rejected under 35 U.S.C. § 112, ¶ 2, as
indefinite. Claims 18-20 and 23-31 stand rejected under 35
U.S.C. § 102(e) as anticipated by Foglar. Claims 21, 22, and 32-
37 stand rejected under 35 U.S.C. § 103(a) as obvious over Foglar
in view of Edmaier.
OPINION
After considering the record, we are persuaded that the
examiner erred in rejecting claims 18-37. Accordingly, we
reverse. However, we enter a new ground of rejection under 37
C.F.R. § 1.196(b). We address the following rejections:
• indefiniteness rejection
• anticipation and obviousness rejections
• new ground of rejection.
We start with the indefiniteness rejection.
I. Indefiniteness Rejection
Rather than reiterate the arguments of the examiner or
appellant in toto, we address the two points of contention
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Application No. 08/684,871
argues, "[o]ne of ordinary skill would recognize this ‘linking’
involves connection within a module of the first switching node
between the main and substitute logic paths, and another
connection within the second switching node between these same
paths." (Appeal Br. at 8.)
“The test for definiteness is whether one skilled in the art
would understand the bounds of the claim when read in light of
the specification. Orthokinetics Inc., v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986).
If the claims read in light of the specification reasonably
apprise those skilled in the art of the scope of the invention,
Section 112 demands no more. Hybritech, Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1385, 231 USPQ 81, 94 (Fed. Cir.
1986).” Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875, 27
USPQ2d 1123, 1126 (Fed. Cir. 1993).
Here, claims 18 and 19 specify in pertinent part the
Appeal No. 2000-0330 Page 6
Application No. 08/684,871
ensured by duplicating certain virtual paths VP.” (Spec. at 4.)
More specifically, “cells arriving at said first switching node
are duplicated to be transmitted to said second switching node by
the main path and by the substitute path.” (Id. at 1.) We are
persuaded that one skilled in the art would understand that the
limitations, when read in light of the specification, require
duplicating cells that are to be transported over a main path and
then transmitting the duplicated cells over a substitute path.
Second, the examiner asserts, “it is not clear what is meant
by ‘a rank’ in the statement of ‘at least some packets are
assigned a rank.’” (Examiner’s Answer at 3.) The appellant
argues “[t]he clearest examples of rank of cells is the
distinction between OAM cells and data cells.” (Appeal Br. at 8)
Claims 26, 27, and 34 specify in pertinent part the
following limitations: "at least some packets are assigned a rank
. . . comparing means for comparing packets of a same rank
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Application No. 08/684,871
respectively, are compared.” (Spec. at 5.) In describing a
second method for determining a shift, it further discloses that
“the information fields of these [OAM] cells are compared.” (Id.
at 7.) We are persuaded that one skilled in the art would
understand that the limitations, when read in light of the
specification, require different types of cells, including data
cells and OAM cells, and comparing cells of the same type to each
other. Therefore, we reverse the rejection of claims 18-37 as
indefinite. We proceed to the anticipation and obviousness
rejections.
II. Anticipation and Obviousness Rejection
Rather than reiterate the positions of the examiner or
appellant in toto, we address the main point of contention
therebetween. The examiner asserts, "the message cells in a
slower path are determined to be delayed if the calculated
difference of receiving cells in two paths is larger than the
threshold." (Examiner's Answer at 9.) The appellant argues,
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Application No. 08/684,871
“Analysis begins with a key legal question -- what is the
invention claimed?” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d
1561, 1567, 1 USPQ2d 1593, 1597 (Fed. Cir. 1987). Here,
claims 18 and 19 specify in pertinent part the following
limitations: "calculation means for calculating a time shift
between packets received on said main path and on said substitute
path. . . ." Accordingly, the claims require inter alia
calculating a shift in time between packets received via a main
path and packets received via a substitute path.
“[H]aving ascertained exactly what subject matter is being
claimed, In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA
1970), we the turn to the anticipation and obviousness of the
subject matter. “A claim is anticipated only if each and every
element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.”
Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987) (citing Structural Rubber
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Application No. 08/684,871
Kimberly-Clark Corp., 713 F.2d 760, 771, 218 USPQ 781, 789 (Fed.
Cir. 1983)). Furthermore, "’[a] prima facie case of obviousness
is established when the teachings from the prior art itself would
appear to have suggested the claimed subject matter to a person
of ordinary skill in the art.’" In re Bell, 991 F.2d 781, 782,
26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart,
531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
Here, although Foglar calculates a shift between cells
received via an active path and cells received via an alternate
path, the shift is not a shift in time. To the contrary, it is a
shift in the number of cells received via each path.
Specifically, “the plurality of message cells arriving via the
active path and via the alternate path is separately and
continuously acquired at this interface means. Due to
differences in running time and due to the fluctuations in
running time that are unavoidable in the asynchronous transfer
mode, a difference between the acquired values will generally
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Application No. 08/684,871
between the momentary counter readings.” Col. 6, ll. 15-19. As
admitted, by the examiner, Foglar’s shift is “the difference
between the two calculated numbers of message cells. . . .”
(Examiner’s Answer at 9.)
Relying on Edmaier merely to teach a “buffer memory P5 . . .
for storing packets on alternate path,” (Examiner's Answer at 4),
the examiner fails to allege, let alone show, that the secondary
reference cures the defect of the primary reference. Because
Foglar calculates a shift in the number of packets received via
two paths rather than a shift in time, we are not persuaded that
the applied prior art discloses or would appear to have suggested
the limitations of "calculation means for calculating a time
shift between packets received on said main path and on said
substitute path. . . ." Therefore, we reverse the rejection of
claims 18 and 19 and of claims 20 and 23-31, which depend from
claim 19, as anticipated by Foglar. We also reverse the
rejection of claims 21, 22, and 32-37, which depend from
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Application No. 08/684,871
III. New Ground of Rejection
Under 37 C.F.R. § 1.196(b)(2001), we enter a new ground of
rejection against claims 18-37. "’Although [the applicant] does
not have to describe exactly the subject matter claimed, . . .
the description must clearly allow persons of ordinary skill in
the art to recognize that [he or she] invented what is claimed.’"
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111,
1116 (Fed. Cir. 1991)(quoting In re Gosteli, 872 F.2d 1008, 1012,
10 USPQ2d 1614, 1618 (Fed. Cir. 1989)). "[T]he test for
sufficiency of support . . . is whether the disclosure of the
application relied upon 'reasonably conveys to the artisan that
the inventor had possession at that time of the later claimed
subject matter.'" Ralston Purina Co. v. Far-Mar-Co, Inc., 772
F.2d 1570, 1575, 227 USPQ 177, 179 (Fed. Cir. 1985)(quoting In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983)). “Application sufficiency under §112, first paragraph,
must be judged as of the filing date [of the application].” Vas-
Cath, 935 F.2d at 1566, 19 USPQ2d at 1119 (citing United States
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Application No. 08/684,871
Here, the appellant added claims 18-37 to his specification
by an amendment. (Paper No. 9.) Claims 18 and 19, the
independent claims among the added claims, specify in pertinent
part the following limitations: “calculation means for
calculating a time shift between packets received on said main
path and on said substitute path, and check means, responsive to
said time shift, for checking the switching to avoid packet
losses or packet duplications.” (Emphasis added.) In summary,
the amendment added means for calculating and means for
responding to a shift in time.
The appellant fails to show that the original specification,
which includes the original claims, disclosed the limitations.
In the amendment, he alleged that a description of the added
limitations could be found in the passage of the specification
spanning “line 28 of page 4 through line 20 of page 5. . . .”
(Paper No. 9 at 7.) The passage, however, teaches calculating a
shift between the number of cells received via a main path and
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Application No. 08/684,871
. . .” (Id.) The “shift between the main path and the
substitute path,” (id. at 5) “is equal to the difference between
the two counters CVPP and CVPS.” (Id.)
Accordingly, we are not persuaded that when the appellant’s
application was filed, the appellant had possession of
“calculation means for calculating a time shift between packets
received on said main path and on said substitute path, and check
means, responsive to said time shift, for checking the switching
to avoid packet losses or packet duplications.” Therefore, we
reject claims 18-37 as lacking an adequate written description.
CONCLUSION
In summary, the rejection of claims 18-37 under 35 U.S.C.
§ 112, ¶ 2, is reversed. The rejection of claims 18-20 and 23-31
under 35 U.S.C. § 102(e) and the rejection of claims 21, 22, and
32-37 under 35 U.S.C. § 103(a) are also reversed. A new
rejection of claims 18-37 under 35 U.S.C. § 112, ¶ 1, is added.
Appeal No. 2000-0330 Page 14
Application No. 08/684,871
purposes of judicial review." It also includes the following
provisions.
[T]he appellant, withing 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 proceedings (§ 1.197(c)) as to the
rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time for taking any action in connected with this
appeal may be extended under 37 C.F.R. § 1.136(a).
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Application No. 08/684,871
REVERSED
37 C.F.R. § 1.196(b)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 2000-0330 Page 16
Application No. 08/684,871
BARBARA KINNEY
U.S. PHILIPS CORP.
CORPORATE PATENT COUNSEL
580 WHITE PLAINS ROAD
TARRYTOWN, NY 10591