Ex Parte Fourcand

Patent Trial and Appeal Board

Aug 28, 2014

12040128 (P.T.A.B. Aug. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/040,128 02/29/2008 Serge F. FOURCAND 4194-10201 8808
89394 7590 08/29/2014
Futurewei Technologies, Inc.
c/o Conley Rose, P.C.
5601 Granite Parkway
Suite 500
Plano, TX 75024
EXAMINER
DECKER, CASSANDRA L
ART UNIT PAPER NUMBER
2466
MAIL DATE DELIVERY MODE
08/29/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SERGE F. FOURCAND
____________

Appeal 2012-003097
Application 12/040,128
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, BRUCE R. WINSOR,
and LINZY T. McCARTNEY, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1, 2, 4–6, and 9–24, which constitute all the claims pending in this
application. Claims 3, 7, and 8 are cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 The real party in interest identified by Appellant is Futurewei
Technologies, Inc., which is owned at least in part by Huawei Technologies
Co., Ltd. (App. Br. 3.)
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STATEMENT OF THE CASE
Appellant’s disclosure relates to time division multiplexed (TDM)
data carried by highly synchronized networks, such as synchronous optical
networks (SONET) and synchronous digital hierarchy (SDH) networks.
(See Spec. ¶ 5.) Claim 1, which is illustrative, reads as follows:

1. An apparatus comprising:
at least one processor coupled to a memory and
configured to:
insert best effort packet (BEP) data into a synchronous
digital hierarchy (SDH)/synchronous optical network (SONET)
frame without encapsulating or reframing the BEP data,
wherein the BEP data is inserted into a payload or an overhead
of the SDH/SONET frame.

The Examiner relies on the following prior art in rejecting the claims:
Wills US 6,011,779 Jan. 4, 2000
Goren US 2004/0240478 A1 Dec. 2, 2004
Nigam US 2005/0122969 A1 June 9, 2005
Tsang US 6,952,405 B2 Oct. 4, 2005
Stiles2 US 6,990,121 B1 Jan. 24, 2006
Luijten US 7,145,873 B2 Dec. 5, 2006
Dai US 2007/0171917 A1 July 26, 2007
(filed Apr. 4, 2006)
Foster US 2007/0268895 A1 Nov. 22, 2007
(filed May 19, 2006)

2 The disclosure of U.S. provisional patent application 60/258,760 (filed
Dec. 30, 2000), from which Stiles claims priority, is incorporated by
reference in Nigam. (See Nigam ¶ 37; App. Br. 16, n. 6; Ans. 16.)
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Fujitsu, “SONET Prerequisite Training” (Apr. 18, 2002),
available at http://www.fujitsu.com/downloads/TEL/fnc/
pdfservices/sonet-prerequisite.pdf (last accessed Oct. 25 2004).
Claims 1, 2, 4, 13, 14, and 24 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Nigam. (Ans. 5–7.)
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nigam and Foster.3 (Ans. 7–8.)
Claims 6 and 10–12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nigam and Goren. (Ans. 8–10.)
Claims 21– 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nigam and Fujitsu. (Ans. 10–11.)
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nigam, Goren, and Fujitsu. (Ans. 12.)
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nigam and Dai. (Ans. 12–13.)
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nigam, Wills, and Luijten. (Ans. 13–14.)
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nigam and Wills. (Ans. 14.)
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nigam and Luijten. (Ans. 14–15.)
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nigam and Tsang. (Ans. 16.)
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed July 28, 2011; “Reply Br.” filed Nov. 28, 2011) and the Answer

3 A rejection of claim 5 under 35 U.S.C. § 112, 1st paragraph, is withdrawn
by the Examiner. (Ans. 4.)
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(“Ans.” mailed Oct. 18, 2011) for the respective positions of Appellant and
the Examiner. Only those arguments actually made by Appellant have been
considered in this decision. Arguments that Appellant did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2011).

ISSUES
The issues presented by Appellant’s arguments are as follows:
Does Nigam disclose “insert[ing] best effort packet (BEP) data into a
synchronous digital hierarchy (SDH)/synchronous optical network (SONET)
frame without encapsulating or reframing the BEP data,” as recited in claim
1?
Does the combination of Nigam and Foster teach or suggest “the BEP
data is inserted into the SDH/SONET frame according to a timeslot map,
and wherein the SDH/SONET frame comprises the timeslot map,” as recited
in claim 5?
Does the combination of Nigam and Goren teach or suggest “a
multiplexer . . . configured to receive a native-form best effort packet (BEP)
data and a framed time division multiplexed (TDM) data,” as recited in
claim 6?

ANALYSIS
Claim 1
We note as an initial matter that Appellant and the Examiner have
both treated the disclosure and teaching of Nigam as incorporating the
disclosure and teaching of Stiles. (See e.g., App. Br. 16, n. 6; Ans. 16.) As
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it is undisputed, we consider Nigam and Stiles together as a single reference
under 35 U.S.C. §§ 102 and 103.
The Examiner finds Nigam discloses all the elements of claim 1 (Ans.
5), and, in particular, discloses “insert[ing] best effort packet (BEP) data into
a synchronous digital hierarchy (SDH)/synchronous optical network
(SONET) frame without encapsulating or reframing the BEP data”
(emphasis added) (id. (citing Nigam ¶¶ 33, 35–37)).4 Appellant contends
“Nigam fails to teach inserting BEP data into an SDH/SONET frame without
encapsulating or reframing the BEP data.” (App. Br. 17.) We are not
persuaded of error.
Appellant points to various passages of Nigam and Stiles which
Appellant contends demonstrate that Nigam teaches encapsulating or
reframing BEP packets before they are inserted in to an SDH/ SONET
frame. (App. Br. 14–17 (citing Nigam Fig. 2, ¶¶ 21, 37, 40; Stiles Abstract,
Figs. 2, 9).) The Examiner explains as follows:
[T]he encapsulation/decapsulation operations mentioned in
Nigam and detailed in Stiles et al. (US 6990121) are optional.
Nigam repeatedly recites that these operations “may” be
performed, but does not teach any requirement that these
operations be performed (see Nigam, paragraphs 37, 38, 40).
Moreover, in Stiles, Figure 9 and the related description also
indicate that a packet may pass through these steps without

4 For purposes of considering the rejection of claim 1 under 35 U.S.C.
§ 102(b), we employ, arguendo, and without deciding, Appellant’s claim
construction (App. Br. 17–18; Reply Br. 8–13). We conclude the claim
constructions proffered by the Examiner (Ans. 17–18) potentially implicate
35 U.S.C. §§ 101 and 112. There are no rejections before us on appeal
under § 101 or § 112. In the event of further prosecution, we leave to the
Examiner to determine whether such rejections are appropriate in view of
the Examiner’s claim construction.
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these operations being performed at all. The portions of Nigam
cited by applicant clearly indicate that these operations are
possible and can be performed, but do not teach that the
operations must be performed. The fact that the encapsulation/
decapsulation operations are optional rather than mandatory
means that in some situations encapsulation/decapsulation will
not be performed.
(Ans. 18.)
We agree with the Examiner. For example, Nigam discloses “[i]n an
embodiment, ingress packet processing circuitry 212 can perform mapping,
possible multiple de-encapsulating and/or multiple encapsulating of different
protocol headers of the given packet . . . .” (Nigam ¶ 37 (emphases added).)
Figure 9 of Stiles (cited by Appellant at App. Br. 17, 22, 23) discloses a flow
chart for packet processing (Stiles col. 2, ll. 59–61) in which a decision is
made at step 904 to de-encapsulate the packet being processed or to not de-
encapsulate the packet, and a decision is made at step 918 to encapsulate the
packet or to not encapsulate the packet. (See Stiles col. 17, ll. 20–22; col.
19, ll. 53–55 (explaining Fig. 9).)
Appellant contends the Nigam’s use of the word “possible” (Nigam
¶ 37) “applies specifically to encapsulation of the packet data by the ingress
packet processing circuitry, and is intended to allow encapsulation of the
various protocol header [sic] to be selectively performed by either the
ingress processing circuitry or the egress processing circuitry.” (App. Br.
19; see also App. Br. 20, n. 8.) Although we agree that “Nigam’s network
element may selectively encapsulate the packet data at the ingress
processing circuitry, the egress processing circuitry, or both . . . ,” we find
that Nigam, incorporating Stiles, discloses that the network element need not
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encapsulate the packet at either the ingress or egress processing circuitry
(see Stiles Fig. 9 (ref. 918)).
Appellant contends “Nigam does not provide an enabling disclosure
for inserting BEP data into an SDH/SONET frame without encapsulating the
BEP data because Nigam provides no means for differentiating BEP data
from TDM data upon reception other than the addition of non-native
protocol headers.” (App. Br. 24.) In view of the clear disclosure at step 918
of Stiles’s Figure 9 of a decision to not encapsulate a packet, Appellant’s
argument, which does not address the factors set forth by In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988), is insufficient to overcome the presumption
that Nigam, incorporating Stiles, enables what it discloses, see In re Antor
Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012) (“We hold a
presumption arises that both the claimed and unclaimed disclosures in a
prior art patent are enabled . . . .”); see also In re Sasse, 629 F.2d 6785, 681
(CCPA 1980) (“[W]hen the PTO cited a disclosure which expressly
anticipated the present invention . . . the burden was shifted to the applicant,
he had to rebut the presumption of the operability . . . by a preponderance of
the evidence.”).
Appellant’s reliance on Nigam’s ¶ 46 is unavailing. Nigam’s
disclosure is directed to communication among in-ring network elements
102, 104, 106, 108 that make up a network ring 114 and communication
between in-ring network elements and non-ring network elements 110, 111,
112. (See Nigam Fig. 1.) The opening sentences of ¶ 46 read as follows:
In contrast to the transmission of a packet between in-
ring network elements, this packet is being transmitted to a
network element external to network ring 114. Accordingly,
for those packets being transmitted external to network ring
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114 on a SONET-based signal, the standards associated with
the SONET protocol, including Bellcore GR-253, must be
followed in order to communicate with SONET standard-based
network elements.
(Emphases added.) Paragraph 46 does not disclose that transmission of a
packet between in-ring network elements requires encapsulation of BEP
packets.
We find Nigam discloses “insert[ing] best effort packet (BEP) data
into a synchronous digital hierarchy (SDH)/synchronous optical network
(SONET) frame without encapsulating or reframing the BEP data,” as
recited in claim 1. Therefore, Appellant fails to persuade us of error in the
rejection of claim 1. Accordingly, we sustain the rejection under § 102(b) of
(1) claim 1; (2) independent claim 13, which is argued on substantially the
same basis as claim 1 (App. Br. 26); and (3) claims 2, 4, 14, and 24, which
depend from claim 1 and are not separately argued with particularity. We
also sustain the rejections under § 103(a) of claims 15–23, which depend
variously, directly or indirectly, from claims 1 or 13, and are not separately
argued with particularity.
Claim 5
The Examiner finds that Nigam teaches that BEP data is inserted into
the SDH/SONET frame according to a timeslot map (Ans. 8 (citing Nigam
¶¶ 27, 38–39, 48)) and Foster teaches the frame comprising the timeslot map
(id. (citing Foster ¶¶ 99, 105)). The Examiner concludes it would have been
obvious to the person of ordinary skill in the art to include Nigam’s timeslot
map in Nigam’s frame, as taught by Foster. Appellant contends as follows:
Foster discloses a GSM frame comprising a timeslot map, not
an SDH/SONET frame comprising a timeslot map. In addition,
a GSM frame is not the equivalent of a SDH/SONET frame
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because SDH/SONET frames are not compatible with GSM
networks.
(App. Br. 28.) “[T]he Examiner has failed to establish a prima facie case of
obviousness by not identifying an SDH/SONET frame comprising a timeslot
map in the prior art.” (Reply Br. 15.)
We are unpersuaded of error. The Examiner relies on Nigam, not
Foster, to teach an SDH/SONET frame. (Ans. 8.) The Examiner only relies
on Foster to teach a frame comprising a timeslot map. (Id.) “[O]ne cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references.” In re Keller, 642
F.2d 413, 426 (CCPA 1981). Furthermore, as pointed out by the Examiner
(Ans. 24–25)
[t]o justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device shown in
the other. The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
Keller, 642 F.2d at 425 (citations omitted). We agree with the Examiner
(Ans. 8, 24–25) that the skilled person would have learned from Foster’s
teaching of a timeslot map in a GSM frame that timeslot maps may be
included in frames generally, for example in Nigam’s SDH/SONET frame.
Appellant contends, for the first time in the Reply Brief, that “the
Examiner has failed to establish prima facie obviousness because the
Examiner has not articulated a rational underpinning for her proposed
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modification of Nigam.” (Reply Br. 15 (citing KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007).) More particularly, Appellant argues that the
Examiner took improper official notice, unsupported by documentary
evidence, that providing a timeslot map at network elements is a known
feature in SDH/SONET networks. (Reply Br. 15–17 (citing Ans. 25).) The
argument is unpersuasive because it mischaracterizes the Examiner’s
rejection of claim 5. We find the Examiner did not explicitly or implicitly
take official notice that providing a timeslot map at network elements is a
known feature in SDH/SONET networks. Rather, the Examiner merely
referred to the Examiner’s finding that Nigam teaches an apparatus in which
the BEP data is inserted into the SDH/SONET frame according to a timeslot
map (i.e., Nigam’s “table”) at the network element. (Compare Ans. 8 (citing
Nigam ¶¶ 27, 38–39, 48) with Ans. 25.)
Further, Appellant contends “mapping data into a conventional
SDH/SONET payload cannot be achieved through simply including a
centralized timeslot map to the SDH/SONET frame.” (Reply Br. 17.)
However, Appellant’s arguments in support of this contention (see Reply Br.
16–17) fail to address the Examiner’s findings regarding Nigam’s teaching
(see Ans. 8).
We find the combination of Nigam and Foster teaches “the BEP data
is inserted into the SDH/SONET frame according to a timeslot map, and
wherein the SDH/SONET frame comprises the timeslot map,” as recited in
claim 5. Therefore, Appellant fails to persuade us of error in the rejection of
claim 5. Accordingly, we sustain the rejection under § 103(a) of claim 5.
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Claim 6
The Examiner finds Nigam teaches all the limitations of claim 6
except Nigam does not teach an SDH/SONET framer located upstream of a
multiplexer. (Ans. 8–9 (citing Nigam ¶¶ 15, 19, 26, 33, 36, 41, 47).) The
Examiner finds Goren teaches locating the SDH/SONET framer upstream of
the multiplexer. (Ans. 9 (citing Goren Fig. 1, ¶ 10).) Appellant contends,
inter alia, that Nigam fails to teach ““[a] multiplexer . . .configured to
receive a native-form best effort packet (BEP) data and a framed time
division multiplexed (TDM) data,” as recited in claim 6.
Appellant’s arguments regarding the teaching of Nigam (App. Br. 29–
30; Reply Br. 17–22), although differing in detail, are substantially the same
as those presented regarding the similar limitation in claim 1 and are
unpersuasive for the same reasons. We note, for emphasis, that a BEP
packet which is processed according to Stiles’s5 Figure 9 by taking the
processing path in which the packet is neither de-encapsulated (ref. 904,
decision: “NO”) nor encapsulated (ref. 918, decision: “NO”) remains in its
original configuration, i.e., “native-form.”
In view of the foregoing, we need not reach Appellant’s argument that
Goren fails to cure the asserted deficiencies of Nigam’s teachings. (See
App. Br. 30–31; but see Ans. 26.)
We find the combination of Nigam and Goren teaches “a multiplexer
. . . configured to receive a native-form best effort packet (BEP) data and a
framed time division multiplexed (TDM) data,” as recited in claim 6.
Therefore, Appellant fails to persuade us of error in the rejection of claim 6.

5 Stiles is incorporated into Nigam by reference. See supra.

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Accordingly, we sustain the rejections under § 103(a) of claim 6 and claims
9–12, which depend from claim 6 and are not separately argued with
particularity.

DECISION
The decision of the Examiner to reject claims 1, 2, 4–6, and 9–24 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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