Ex parte Dawson

Board of Patent Appeals and Interferences

Apr 27, 2001

08378745 (B.P.A.I. Apr. 27, 2001)

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publication and is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOHN E. DAWSON
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Appeal No. 1998-3405
Application No. 08/378,745
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ON BRIEF
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Before THOMAS, HAIRSTON, and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 57-88,
which are all of the claims pending in this application.
We REVERSE and REMAND.
Appeal No. 1998-3405
Application No. 08/378,745
This is the patent issued from the parent application 08/101,390, filed Aug. 2, 1993, from which1
the present application is a continuation application under 37 CFR 1.60.
2
BACKGROUND
The appellant's invention relates to a system for monitoring loss metrics in a
communication network. An understanding of the invention can be derived from a reading
of exemplary claim 57, which is reproduced below.
57. An apparatus for measuring performance of a port within a
communication network having a plurality of ports, said ports for individually
interfacing with attached stations or devices, said apparatus comprising:
a first packet detecting circuit operable within said port of said
network for detecting a message packet entering said port, said first packet
detecting circuit coupled to an input communication stream to said port;
a second packet detecting circuit operable within said port for
detecting a message packet exiting said port, said second packet detecting
circuit coupled to an output communication stream from said port; and
a counter for maintaining a count value indicating an amount of
messages lost or corrupted by said port and indicating an amount of
messages lost or corrupted by said network, said counter communicatively
coupled to said first packet detecting circuit and communicatively coupled to
said second packet detecting circuit.
The (prior) art reference of record relied upon by the examiner in rejecting the1
appealed claims is:
Dawson 5,390,188 Feb. 14, 1995
Claims 57-88 stand rejected under 35 U.S.C. § 101 as claiming the same invention
as that of claims 1-56 of prior U.S. Patent 5,390,188 to Dawson.
Appeal No. 1998-3405
Application No. 08/378,745
3
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 14, mailed Jan. 22, 1998) for the examiner's reasoning in support of
the rejections, and to the appellant's brief (Paper No. 13, filed Dec. 15, 1997) and reply
brief (Paper No. 15, filed Mar. 27, 1998) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art reference, and to the
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
The examiner maintains that claims 57-88 are directed to the same invention as
recited in claims 1-56 of the patent. (See answer at page 4.) We disagree with the
examiner. We agree with the examiner that the claims at issue are remarkably similar
to those claimed in the patent, but they may or may not be of the exact same scope as
recited in the patent. While the examiner maintains that the claims are the same, the
examiner has provided no interpretation of the scope of claims in the patent or in the
Appeal No. 1998-3405
Application No. 08/378,745
4
present application. The examiner maintains that there is no express language required to
invoke 35 U.S.C. § 112, sixth paragraph. (See answer at page 4.) We agree with the
examiner, but note that the examiner has only generically addressed the changes to the
language of the claims. Furthermore, the examiner has not interpreted all the changes in
light of the corresponding structure in the specification, and the examiner has not
addressed any specific claim limitations which are structural in nature, such as, a counter,
memory, comparator, etc. which may preclude the invocation of 35 U.S.C. § 112, sixth
paragraph since it recites specific structure and not a functional recitation of a claim
limitation. Here, the examiner has made no findings/evaluation concerning the appropriate
claim interpretation in the present prosecution history, and the prosecution history of the
parent prosecution history to the Dawson patent is completely silent with respect to claim
interpretation under 35 U.S.C. § 112, sixth paragraph. (See MPEP 2181 et seq. for a
discussion of 35 U.S.C. § 112,
sixth paragraph.) Therefore, we must reverse the rejection under 35 U.S.C. § 101
based on double patenting since the claims are not per se directed to the same invention
as recited by the express language of the claims.
Appeal No. 1998-3405
Application No. 08/378,745
5
We make no finding concerning the appropriateness of a rejection based upon
obvious-type double patenting since there is no evaluation concerning appropriate claim
interpretation at this time. Therefore, we remand the application to make the
appropriate findings concerning the scope of the claims in both the patent and the claims
at issue and to consider the appropriateness of a rejection under obvious-type double
patenting.
CONCLUSION
To summarize, the decision of the examiner to reject claims 57-88 under 35 U.S.C.
§ 101 is reversed, and the application is remanded to the examiner to make claim
interpretations concerning the scope of the claims and to consider a rejection under the
judicially created doctrine of obvious-type double patenting.
This application, by virtue of its “special” status, requires an immediate action.
MPEP § 708.01(D)(Rev. 1, Feb. 2000).
Appeal No. 1998-3405
Application No. 08/378,745
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REVERSED and REMANDED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
jld/vsh
Appeal No. 1998-3405
Application No. 08/378,745
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ANTHONY C. MURABITO
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