Ex Parte Davis et al

Board of Patent Appeals and Interferences

Sep 15, 2011

10051928 (B.P.A.I. Sep. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NIGEL DAVIS and JOYCE DUNSTON
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Appeal 2010-007659
Application 10/051,928
Technology Center 3600
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Nigel Davis, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-20. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

Appeal 2010-007659
Application 10/051,928

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SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of identifying a connectivity
characteristic structure in a trail provided between
a plurality of nodes in a network, the method
comprising the steps of:
acquiring node information detailing for each port
of each node of the trail, a connectivity
characteristic;
collating for at least a plurality of nodes forming
the trail in said network each node[‘]s respective
acquired node information to form a set of
connectivity characteristics for the trail; and
analysing said set of connectivity characteristics to
determine a set of at least one rule for the trail
describing a connectivity characteristic structure of
said plurality of nodes.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Orr

US 5,727,157 Mar. 10, 1998
The following rejection is before us for review:

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Apr. 24, 2008) and Reply Brief (“Reply Br.,” filed Oct. 5, 2009),
and the Examiner’s Answer (“Answer,” mailed Aug. 4, 2009).
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Application 10/051,928

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1. Claims 1-20 are rejected under 35 U.S.C. §102(e) as being anticipated
by Orr.

ISSUES
Does Orr describe, expressly or inherently, collating and analyzing
connectivity characteristics for a “trail” as that term is reasonably broadly
construed?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
A determination that a claim is anticipated under 35 U.S.C.
§ 102(b) involves two analytical steps. First, the Board must
interpret the claim language, where necessary. Because the PTO
is entitled to give claims their broadest reasonable
interpretation, our review of the Board’s claim construction is
limited to determining whether it was reasonable. In re Morris,
127 F.3d 1048, 1055 (Fed. Cir. 1997). Secondly, the Board
must compare the construed claim to a prior art reference and
make factual findings that “each and every limitation is found
either expressly or inherently in [that] single prior art
reference.” Celeritas Techs. Ltd. v. Rockwell Int'l Corp., 150
F.3d 1354, 1360 (Fed. Cir. 1998).

In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).

There is no dispute that the claims are drawn to collating and
analyzing connectivity characteristics for a “trail.”
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There is also no dispute that Orr does not expressly describe a “trail.”
Rather, Orr describes a computer network.
The Appellants argue that the “trail” as claimed “clearly distinguishes
the trail from a network.” Reply Br. 6. According to the Appellants, the
claims define the trail as one “provided between a plurality of nodes in a
network.” Claim 1. Reply Br. 6. The Examiner disagrees, arguing that “the
claims do not require the collating or analyzing [sic] connectivity
characteristics for particular or specific trail, but merely for a trail provided
between a plurality of nodes” (Answer 8) and that “Orr et al teach
determining topology for a computer network and not the entire network as
argued” (Answer 8).
The issue is whether the claimed “trail” reads on Orr’s computer
network. “Assuming that a reference is properly ’prior art,’ it is only
necessary that the claims under attack, as construed by the court, “read on”
something disclosed in the reference, i.e., all limitations of the claim are
found in the reference, or ’fully met’ by it.” Kalman v. Kimberly-Clark
Corp., 713 F.2d 760, 772 (Fed. Cir. 1983).
The claim term “trail” is expressly defined in the Specification. “The
term trail refers herein to a circuit, line, path or section into which at a first
end a data stream can be inserted, and which at a second end a data stream
can be output. Within the trail, a data stream may be packaged into one or a
plurality of frames or protocols, eg [sic] an STM frame, an ATM frame or a
SONET frame.” Specification 12:20-23. See also Specification 3:26-27:
“trails (effectively end-to-end network connections).”
Further, the Specification describes networks and trails in a manner so
as to distinguish one from the other. For example, “[a] first object of the
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invention seek[s] to provide a means to identify connectivity characteristics
of a plurality of network elements, whether adjacently provided along a trail
or not . . . “ Specification 4:11-13. “A second aspect of the invention relates
to a method of identifying a connectivity characteristic structure in a
potential trail provided between a plurality of nodes in a network . . .”
Specification 6:14-16. And,
[g]enerally, in a physical resource environment, circuit switched
traffic follows paths and trails at various multiplex levels.
Connections are terminated at connection termination points, and
trails are terminated at trail termination points within physical
resources. For example, within a communications network, there may
be a restricted number of network elements which are capable of
processing voice data.
Specification 12:25-30.
Accordingly, the broadest reasonable construction of the claim term
“trail” in light of the Specification as it would be interpreted by one of
ordinary skill in the art is a circuit, line, path or section into which at a first
end a data stream can be inserted, and which at a second end a data stream
can be output, provided between a plurality of nodes in a network.
Turning now to Orr, it teaches a computer network with
interconnections between node devices in the network (2:25-42) as well as
network segments (7:26-27).
Orr does not, however, been shown to describe, expressly, a circuit,
line, path or section into which at a first end a data stream can be inserted,
and which at a second end a data stream can be output, provided between a
plurality of nodes in a network as the claim term “trail” has been reasonably
broadly construed.
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Orr may nevertheless inherently describe a “trail.” But “[i]nherent
anticipation requires that the missing descriptive material is ‘necessarily
present,’ not merely probably or possibly present, in the prior art.” Trintec
Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002)
(quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)). In that
regard, while it is possible that Orr’s computer network contains trails as
claimed, they are not necessarily present.
Even if we assume arguendo that Orr’s computer network contains
trails as claimed, nevertheless, at best, Orr is directed to the computer
network as a whole. It has not been shown to describe, expressly or
inherently, for example, “analysing [a] set of connectivity characteristics to
determine a set of at least one rule for the trail describing a connectivity
characteristic structure of [a] plurality of nodes” (claim 1, emphasis added).
For the foregoing reasons, we do not find that a prima facie case of
anticipation has been established.

DECISION
The decision of the Examiner to reject claims 1-20 is reversed.

REVERSED

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