11088073 (P.T.A.B. Jun. 18, 2014)

Ex Parte Malhotra

Patent Trial and Appeal BoardJun 18, 2014

11088073 (P.T.A.B. Jun. 18, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/088,073 03/23/2005 Richa Malhotra R Malhotra 7 (LCNT/126709 7089 46363 7590 06/19/2014 WALL & TONG, LLP/ ALCATEL-LUCENT USA INC. 25 James Way Eatontown, NJ 07724 EXAMINER WONG, XAVIER S ART UNIT PAPER NUMBER 2413 MAIL DATE DELIVERY MODE 06/19/2014 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 RICHA MALHOTRA ___________ Appeal 2011-012052 Application 11/088,073 Technology Center 2400 ____________ Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and DANIEL N. FISHMAN, Administrative Patent Judges. FISHMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) of finally rejected claims 1-8 and 10-18. Claim 9 is cancelled. We have reviewed the Examiner’s rejection in light of Appellant’s arguments that the Examiner has erred. We concur with Appellant’s contention (Appeal Brief 16-17) that the Examiner erred by failing to articulate a reason based on rational underpinnings for combining Enomoto (US 2003/0076781 A1) and Kwan (US 2006/0092840 A1). The Examiner expresses a reason for combining the references stating: Appeal 2011-012052 Application 11/088,073 2 It would have been obvious to one of ordinary skill in the art at the time the invention was created to learn address of an end- node generating congestion notification as taught by Kwan to the congestion handling method of Enomoto for effective retransmission error recovery to recover lost packets based on the congestion state and quickly identify the root cause of a possible failure along a communication route and facilitate adjustment to traffic to ease the congestion. Answer 4-5 (emphasis added). Initially, we observe the italicized phrase above does not appear in the present claims but rather appeared in the originally filed claims. The original claims were amended removing the italicized phrase. Appellant argues: [I]t is unclear as to what is meant by “effective retransmission error recovery to recover lost packets based on the congestion state,” at least because it is unclear how lost packets would be recovered based on congestion state . . . Similarly, it also is unclear as to what is meant by “effective retransmission error recovery to . . . quickly identify the root cause of a possible failure along a communication route,” at least because, again, it is unclear how retransmission error recovery would identify a root cause of a failure . . . . Appeal Brief 16-17. We agree that the Examiner’s reasoning is unclear and inconsistent. We find no teaching or suggestion in Enomoto, Kwan, or Appellant’s Specification that efficacy of the retransmission error recovery of lost packets is a problem to be addressed by the invention or the applied references. Neither do we find any indication that such effective retransmission aids in quickly identifying the root cause of congestion. While it may well be the case that the references can be properly combined, on the record before us, we find the Examiner has failed to express a reason based on rational underpinnings for the proposed combination. Appeal 2011-012052 Application 11/088,073 3 Independent claims 17 and 18 include similar limitations and are rejected for essentially the same reasons. Accordingly, we will not sustain the Examiner’s rejection of independent claims 1, 17, and 18 and the dependent claims (2-8 and 10-16). Appellant’s contentions present additional issues. Because we are persuaded of error with regard to the identified issue, which is dispositive as to all claims, we do not reach these additional issues. DECISION For the above reasons, the Examiner’s decision rejecting claims 1-8 and 10-18 is reversed. REVERSED tj