Ex Parte Del Regno et al

Patent Trial and Appeal Board

Oct 27, 2014

11747678 (P.T.A.B. Oct. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER N. DEL REGNO, HOWARD H. CHIU,
DONALD PITCHFORTH, JR., TERRY W. MCGINNIS,
and RONALD DENNIS DAY
____________

Appeal 2012-002488
Application 11/747,678
Technology Center 2400
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the rejection
of claims 9, 10, 14, 16, 22, and 23 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We REVERSE.

Appeal 2012-002488
Application 11/747,678

2

THE INVENTION
The Appellants’ claimed invention is directed to routing customer
traffic using packet switching (Spec., para. 9). Claim 9, reproduced below,
is representative of the subject matter on appeal.

9. A method, comprising:
establishing a first pseudowire between a first switching device and a
second switching device;
receiving customer traffic, the customer traffic including time
division multiplexed data;
formatting the time division multiplexed data as packets;
identifying a destination for the customer traffic;
identifying the first pseudowire for forwarding the customer
traffic;
forwarding the customer traffic as packets via the first
pseudowire to the second switching device;
provisioning changes associated with a customer by changing
an origination or a destination associated with the first pseudowire and
without having to make changes associated with circuit-switched
components associated with the customer;
aggregating data associated with emulated circuits, the data
being received at a first bandwidth and forwarded at a second
bandwidth higher than the first bandwidth, wherein the first
bandwidth corresponds to one or more of optical carrier level 3,
optical carrier level 12, optical carrier level 48 or gigabit Ethernet and
the second bandwidth corresponds to one of optical carrier level 192
or 10 gigabit Ethernet; and
forwarding the aggregated data via the first pseudowire.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Zelig US 7,113,415 B2 Nov. 7, 2006
White US 2007/0071029 A1 Mar. 29, 2007
Appeal 2012-002488
Application 11/747,678

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Lange US 2008/0270580 A1 Oct. 30, 2008
Sotobayashi, et al., Ultrafast Hierarchical OTDM/WDM Network,
Systemics, Cybernetics, and Informatics, vol. 1, number 6, 101–104 (2003)
(hereinafter “Sotobayashi”).

The following rejection is before us for review:
Claims 9, 10, 14, 16, 22, and 23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over White, Zelig, Sotobayashi, and Lange.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence1.

ANALYSIS
The Appellants argue that the rejection of claim 9 is improper because
the rejection fails to provide motivation for the four references to be
combined and meet the claimed limitation for “wherein the first bandwidth
corresponds to one or more of optical carrier level 3, optical carrier level 12,
optical carrier level 48 or gigabit Ethernet and the second bandwidth
corresponds to one of optical carrier level 192 or 10 gigabit Ethernet” as
required by the claim (Br. 11–16).
In contrast, the Examiner has determined that in the cited combination
that the particular claimed optical carrier levels for the first and second
bandwidths “are not given weight by the examiner unless a specific reason
why said values are essential is provided” (Ans. 7–8). The Examiner has

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2012-002488
Application 11/747,678

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also asserted that such a change in range is an obvious matter of design
choice (Ans. 8) and that the rejection is proper.
We agree with the Appellants. Here, the cited rejection requires not
only the combination of the four cited references, White, Zelig, Sotobayashi,
and Lange, but also to have both the particular claimed ranges for a first
bandwidth that corresponds to one or more of optical carrier level 3, optical
carrier level 12, optical carrier level 48 or gigabit Ethernet, and the second
bandwidth corresponds to one of optical carrier level 192 or 10 gigabit
Ethernet. These features, according to the claim, further need to be tied to
aggregating data associated with emulated circuits, the data being received at
a first bandwidth and forwarded at a second bandwidth higher than the first
bandwidth, which is not contemplated by the Examiner in his proposed
design choice finding. Also, there in the rejection of record there is no
articulated reasoning with rational underpinnings for the cited combination
of four references of White, Zelig, Sotobayashi, and Lange to further have
the cited claimed specific ranges for both the first and second bandwidths
without impermissible hindsight. A review of the rejection of record fails to
establish an articulated reasoning with rational underpinnings for the
combination of the four cited references further modified to have specific
ranges for both the first and second bandwidths and instead uses improper
hindsight.
For these reasons the rejection of claim 9 and its dependent claims is
not sustained. Claim 16 contains a similar limitation to that addressed above
and the rejection of this claim and its dependent claims is not sustained for
the same reasons given above.

Appeal 2012-002488
Application 11/747,678

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CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims as listed in the Rejection section above.

DECISION
The Examiner’s rejection of claims 9, 10, 14, 16, 22, and 23 is
reversed.

REVERSED

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