Ex Parte Hetzel et al

Board of Patent Appeals and Interferences

Apr 29, 2011

10406983 (B.P.A.I. Apr. 29, 2011)

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.
10/406,983 04/04/2003 Herbert Hetzel 5858-00200 3005
35617 7590 04/29/2011
DAFFER MCDANIEL LLP
P.O. BOX 684908
AUSTIN, TX 78768
EXAMINER
CHRISTENSEN, SCOTT B
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
04/29/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HERBERT HETZEL, REINER KLOS,
PATRICK HECK and CHRISTIAN THIEL
____________________

Appeal 2009-011292
Application 10/406,983
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, CARLA M. KRIVAK, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-011292
Application 10/406,983

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 3-16, 20, and 21. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary independent claim 20 under appeal reads as follows:
20. A network interface within a network node, comprising:
a functionally encapsulated unit of hardware containing all
hardware components of which are necessary to maintain a basic
functionality of the network node, having a microcontroller for
addressing software within a storage medium executable by said
hardware, and containing a protected address space wherein, during
operation, the functionally encapsulated unit includes a physical layer
and a parent layer for ensuring functionality of the network interface
including network services, the functionally encapsulated unit
providing services of an OSI layer M up to a predetermined subset of
an OSI layer N>M, and wherein said encapsulated unit is accessible:
via its physical layer by other network nodes using a physical
connection to the physical layer;
via its parent layer from inside of the network node exclusively
to services of said OSI layer N; and
via a power supply coupled to only those hardware components
of the encapsulated unit which are necessary to maintain the basic
functionality of the network node, said power supply is independent
of a universal power supply coupled to other hardware components of
the network node external to the encapsulated unit.

Rejections on Appeal
1. The Examiner rejected claims 3-7, 12, 14-16, 20, and 21 under
35 U.S.C. § 102(b) as being anticipated by Holden (US 5,802,178).
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Application 10/406,983

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2. The Examiner rejected claims 8-11 and 13 as being
unpatentable under 35 U.S.C. § 103(a) over Holden.

ANALYSIS
As to Appellants’ arguments as to why the Examiner has erred in
rejecting claims 3-16, 20, and 21 based on the prior art references, we do not
reach the merits of the Examiner’s rejections or the merits of the references
at this time. Rather, we reverse pro forma the outstanding rejections of
claims 3-16, 20, and 21 under 35 U.S.C. §§ 102(b) and 103(a) because these
claims fail to satisfy the requirements of the second paragraph of 35 U.S.C.
§ 112. Before a proper review of the prior art rejection can be performed,
the subject matter encompassed by the claims on appeal must be reasonably
understood without resort to speculation.
Claims 20 and 21 (the only independent claims) repeatedly recite
hardware components “which are necessary to maintain a basic functionality
of the network node.” Claims 20 and 21 also recite “a parent layer for
ensuring functionality.” Neither these claims nor Appellants’ Specification
set forth a clear meaning for these “functionality” limitations. It is unclear
what is required in order to meet these claim limitations.
Presently, we would be forced to engage in speculation and conjecture
to determine the scope of the claimed invention as the claims are indefinite
under 35 U.S.C. § 112, second paragraph. This we decline to do. See In re
Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be
sustained if the hypothetical person of ordinary skill in the art would have to
make speculative assumptions concerning the meaning of claim language.);
See also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably
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Application 10/406,983

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definite meaning can be ascribed to certain terms in the claim, the subject
matter does not become obvious-the claim becomes indefinite.”)

New Ground of Rejection
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

CONCLUSIONS
Claims 3-16, 20, and 21 are not patentable.
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DECISION
The Examiner’s rejection of claims 3-7, 12, 14-16, 20, and 21 under
35 U.S.C. § 102(b) is reversed.
The Examiner’s rejection of claims 8-11 and 13 under
35 U.S.C. § 103(a) is reversed.
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)(iv).

REVERSED
37 C.F.R. § 41.50(b)

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