Ex Parte Damm et al

Patent Trial and Appeal Board

Sep 28, 2012

10303882 (P.T.A.B. Sep. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GERARD DAMM, MILAN ZORANOVIC,
and QUNWEI CHEN1
____________

Appeal 2010-006368
Application 10/303,882
Technology Center 2400
____________

Before DENISE M. POTHIER, ERIC B. CHEN, and
TRENTON A. WARD, Administrative Patent Judges.

WARD, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20, all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).

We affirm-in-part.

1 Alcatel is the real party in interest.
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STATEMENT OF THE CASE
Appellants’ claims relate to topology management in a dual ring
network. See generally Abstract; Spec. 4-6; Figs. 2-3. Claim 1 is
representative, with disputed limitations emphasized:
1. In a packet ring network comprising a plurality of nodes and
links, each node holding a topology image of the network on a
database, a method of communicating network topology
information among the nodes, said network topology
information being included in topology discovery messages, the
method comprising steps of:
monitoring said topology discovery messages on the ring;
upon receipt of one of said topology discovery messages
at a respective node, determining whether the received topology
discovery message is from the respective node, from a
neighboring node, or is a broadcast topology discovery message
from any other node:
updating a plurality of timer settings in response to
receiving the topology discovery message if it is from the
respective node; and
updating the database in response to the received
topology discovery message if the message is either from the
neighboring node or from any other node, wherein all said
topology discovery messages contain a description of only one
node and an incoming link status for each clockwise and
counterclockwise incoming link of the node.

The Rejections
The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as
unpatentable over Cottreau (US 6,952,396 B1; Oct. 4, 2005, filed Sept. 27,
1999) in view of Zhang (US 6,810,259 B1; Oct. 26, 2004, filed Dec. 14,
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2000) and further in view of Mor (US 6,952,397 B2; Oct. 4, 2005, filed June
7, 2001). Ans. 3-16.2

THE OBVIOUSNESS REJECTION OVER COTTREAU, ZHANG, AND MOR
Claims 1-6, 8, and 10-20
Based on the arguments for claims 1-6, 8, and 10-20, we select
independent claim 1 as representative. The Examiner finds that Cottreau
discloses every recited feature of representative claim 1, except for (1)
topology discovery messages containing a description of only one node and
an incoming link status for each clockwise and counterclockwise incoming
link of the node, and (2) updating the database in response to the received
topology discovery message being from the neighboring node or from any
other node. Ans. 3-5. The Examiner relies upon the combination of
Cottreau with the teachings of Zhang and Mor in concluding that the claim
would have been obvious. Ans. 4-5.
Appellants argue that “that the topology discovery packets of Mor do
not contain a description of only one node and an incoming link status for
each clockwise and counter clockwise incoming link.” App. Br. 9
(emphases omitted). Additionally, Appellants argue that while Zhang “does
mention a database [Fig. 3B: 133], it fails to describe updating in this
database as recited in the subject matter of the independent claims.” App.
Br. 6 (brackets in original).

2 Throughout this opinion, we refer to (1) the Appeal Brief filed Nov. 19,
2009; (2) the Examiner’s Answer mailed Feb. 24, 2010; and (3) the Reply
Brief filed Mar. 23, 2010.
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ISSUES
(1) Has the Examiner erred by finding that the combination of
Cottreau, Zhang, and Mor would have taught or suggested “topology
discovery messages” that “contain a description of only one node and an
incoming link status for each clockwise and counterclockwise incoming link
of the node” as recited in claim 1?
(2) Has the Examiner erred by finding that the combination of
Cottreau and Zhang would have taught or suggested “updating the database
in response to the received topology discovery message if the message is
either from the neighboring node or from any other node” as recited in
claim 1?

ANALYSIS
Issue (1)
Appellants’ claim 1 requires that “topology discovery messages
contain a description of only one node and an incoming link status for each
clockwise and counterclockwise incoming link of the node.” We note at the
outset that the type of information contained in the topology discovery
message (e.g., description of one node and incoming link status for each
clockwise and counterclockwise incoming link of the node as recited in
claim 1) is non-functional descriptive matter that merely describes the data
in the topology discovery messages. See In re Ngai, 367 F.3d 1336, 1338
(Fed. Cir. 2004); In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994); Ex
parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative), aff’d, No. 06-
1003 (Fed. Cir. June 12, 2006) (Rule 36). Furthermore, there is no claimed
functional relationship in claim 1 between the data and how the data is used
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in the method of claim 1. Since we find no functional relationship in claim 1
between the recited data contained in the message and how the data is used,
no patentable weight will be afforded to the type of data found within the
topology discovery message.
Furthermore, claim 1 requires that merely that the “topology
discovery message contain” the recited data (emphasis added). In this
context, the term “contain” is construed as an open ended term. See TAP
Pharm. Prods., Inc. v. Owl Pharms., L.L.C., 419 F.3d 1346, 1354 (Fed. Cir.
2005). Thus, the “topology discovery message” must have at least the
recited data but can have additional data. As such, Cottreau’s discussion of
messages that contain at least three types of data (see Ans. 5) adequately
teaches the recited topology discovery message.
Even if we, arguendo, were to ascribe some weight to the disputed
claim limitation of claim 1 concerning the topology discovery message,
Appellants do not persuade us of error in the Examiner’s obvious rejection.
Specifically, the Examiner found that Cottreau teaches that Link Path
Integrity Messages (“LPIMs”) “are used to maintain the state of a bi-
directional link between two adjacent” access points (e.g., incoming link
status for clockwise and counterclockwise links). Ans. 5, 19-20.
Furthermore, the Examiner found that Mor teaches sending “topology
discovery packets” around the ring, including a link status for clockwise and
counterclockwise links. Ans. 5, 21-24. The Examiner concluded that it
would have been obvious “to implement Mor’s teaching in Zhang’s and
Cottreau’s teaching to come up with having topology monitoring messages
contain a description of only one [node] and incoming link status for each
clockwise and counterclockwise.” Ans. 25; see also Ans. 5.
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Appellants argue that the Examiner’s rejection is improper because
the “Examiner relies on different messages for the recited subject matter,
while the claims clearly require that a single message contains both a node
description and incoming link status for both clockwise and
counterclockwise incoming links.” Reply Br. 5-6. Thus, Appellants do not
rebut that the recited subject matter is contained in different messages taught
in the cited prior art, but instead, argue that no singular piece of prior art
teaches that the recited subject matter is provided in a single message. See
Reply Br. 6. Appellants fail to present any arguments, however, why the
combination of the references, Cottreau, Zhang, and Mor, found by the
Examiner fails to teach or suggest the single “message” as recited in claim 1.
See App. Br. 8-9. One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re
Keller, 642 F.2d 413, 426 (CCPA 1981).
Appellants are silent with the respect to Examiner’s findings
regarding the Examiner’s proposed combination of Cottreau, Zhang, and
Mor. See App. Br. 8-9. Appellants argue simply that “Cottreau would
actually teach away from this subject matter by having information spread
across multiple types of messages.” Reply Br. 6. Appellants cite no
statement from Cottreau, however, that teaches against using a single
message having the recited description and statuses. See id. Additionally,
the other two cited prior art references, relied upon in combination by the
Examiner, teach the use of a single message. Zhang, col. 15, l. 53
(“[n]eighborhood hello message[]”); Mor, col. 6, l. 40 (“topology discovery
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packet”). Appellants’ argument also fails to rebut the Examiner’s prima
facie case of obviousness – a position we find reasonable.

Issue (2)
As to the second issue for claim 1, Appellants separately argue that
Zhang fails to teach “updating the database in response to the received
topology discovery message if the message is either from the neighboring
node or from any other node.” App. Br. 6. In support of their position,
Appellants argue that Zhang “fails to describe updating in this database as
recited in the subject matter of the independent claims.” Id. Appellants’
argument merely points out what the claim recites, without any supporting
argument as to the requirements of the allegedly undisclosed database
updating method. This assertion does not constitute an argument on the
merits, because “[a] statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”
37 C.F.R. § 41.37(c)(1)(vii) (2006); see also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”).
Appellants also argue that Zhang’s columns fifteen and twenty fail “to
describe updating in this database as recited . . . .” App. Br. 6. Appellants
do not persuade us of error, as the Examiner’s findings (Ans. 4-5, 16-18) are
supported by the express disclosure in Zhang. In fact, Appellants concede
that Zhang “does mention a database [Fig. 3B: 133].” App. Br. 6 (brackets
in original). The Examiner finds that this database “contains local nodal
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hierarchy list (column 15 lines 24-28),” (Ans. 16) which is “updated upon
receiving a neighborhood hello message” (Ans. 17 (citing to column 20)).
The Examiner equated Zhang’s “neighborhood hello message” with
Appellants’ “topology discovery message which are the same kind of
message as known in the art.” Ans. 17. Furthermore, when combining
Zhang with Cottreau’s teachings, the combination predictably yields no
more than an ordinary skilled artisan would expect – updating in response to
the received topology discovery message as recited. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and claims 2-6, 8, and 10-20 not
separately argued with particularity (App. Br. 11-12).

Claim 7
ISSUE
Has the Examiner erred by finding that the combination of Cottreau,
Zhang, and Mor would have taught or suggested calculating the number of
nodes on the ring and round trip time as recited in claim 7?

ANALYSIS
Appellants argue that Cottreau fails to teach the required elements of
claim 7 regarding “calculating the number of nodes on the ring and round
trip time.” App. Br. 10. Appellants do not persuade us of error, as the
required elements of claim 7 are plainly disclosed in the cited portions of
Cottreau. As cited by Examiner (Ans. 7, 25-26), Cottreau explicitly
describes the following formula: “Tactivation ring=(Nlpim+1)*Tlpim+
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Trtd+(N–1)*Tmax frame. Where: Trtd is the round-trip delay of the ring; N
is the number of [access points] APs attached to the ring.” Cottreau, col. 29,
ll. 11-13. Applying this disclosure to the instant case, the Examiner finds
that “N is the number of APs (i.e. calculating the nodes), and the Trtd is the
round-trip time on the ring (i.e. calculating round trip time).” Ans. 25.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of dependent claim 7.

Claim 9
ISSUE
Has the Examiner erred by finding that the combination of Cottreau,
Zhang, and Mor would have taught or suggested the limitations of updating
the topology information of any of the other nodes upon reception of two
consecutive identical topology discovery messages from such other nodes as
recited in claim 9?

ANALYSIS
Appellants argue that neither Cottreau nor Zhang teaches the required
elements of claim 9 regarding “updating the topology information of any of
the other nodes upon reception of two consecutive identical topology
discovery messages from such other nodes.” App. Br. 10-11 (emphasis
altered). The Examiner “agrees with the Appellant that Cottreau does not
teach the above limitation,” but finds that “Zhang teaches updating the
topology information of any of the other nodes upon reception of two
consecutive identical topology discovery messages from such other nodes.”
Ans. 26. The Examiner cites to the disclosure in Zhang of broadcasting or
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flooding methods for sending the neighborhood hello messages among the
nodes of the ring. Ans. 26. Zhang discloses that with flooding, “the node
duplicates the message and sends the message via other interfaces of the
node.” Zhang, col. 15, ll. 57-59. Although Zhang discloses sending a
duplicate message, the portions of Zhang relied upon by the Examiner fail to
describe updating the topology information upon receiving two consecutive
identical topology discovery messages, as required by Appellants’ claim 9.
Also, the cited portions in columns 16, 19, and 21 do not teach the recited
feature. See Ans. 8, 26. Accordingly, we find that the Zhang disclosure
cited by the Examiner does not support the proposition.
For the foregoing reasons, Appellants have persuaded us of error in
the rejection of dependent claim 9 and we therefore reverse this rejection.

CONCLUSION
The Examiner did not err in rejecting claims 1-8 and 10-20 under
§ 103. The Examiner erred in rejecting claim 9 under § 103.

DECISION
The Examiner’s decision rejecting claims is affirmed-in-part.

AFFIRMED-IN-PART

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