Ex Parte Mann et alDownload PDFPatent Trial and Appeal BoardSep 27, 201613536517 (P.T.A.B. Sep. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/536,517 06/28/2012 76614 7590 Terry W, Kramer, Esq, Kramer & Amado, P.C. 330 John Carlyle Street 3rd Floor Alexandria, VA 22314 09/29/2016 FIRST NAMED INVENTOR Robert Alexander MANN 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 ATTORNEY DOCKET NO. CONFIRMATION NO. ALC 3834 6677 EXAMINER ASEFA, DEBEBE A ART UNIT PAPER NUMBER 2476 NOTIFICATION DATE DELIVERY MODE 09/29/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): mail@krameramado.com ipsnarocp@alcatel-lucent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT ALEXANDER MANN and ERIC COLA VITI Appeal2015-001950 Application 13/536,517 Technology Center 2400 Before MICHAEL J. STRAUSS, JON M. JURGOV AN, and JOHN R. KENNY, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal2015-001950 Application 13/536,517 STATE~vfENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. THE INVENTION The claims are directed to a dynamic reaction to DIAMETER communication network protocol routing failures. Spec., Title. Claim 1, reproduced below with a disputed limitation emphasized in italics, is illustrative of the claimed subject matter: 1. A method performed by a DIAMETER Routing Agent (DRA) for processing a DIAMETER message associated with an original respective route, the method comprising: receiving said DIAMETER message at the DRA; generating a statistic associated with the type of said DIAMETER message; testing if said DIAMETER message is an unable_to_deliver message, and if said test is affirmative, then testing if said statistic exceeds a specified criterion, and if said test is affirmative, then taking a prespecified action. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Kanode McNamee US 2011/0199895 Al US 2012/0155389 Al 2 Aug. 18, 2011 June 21, 2012 Appeal2015-001950 Application 13/536,517 REJECTION The Examiner rejected claims 1-22 under 35 U.S.C. § 103(a) as being unpatentable over Kanode and McNamee. Final Act. 5-15. APPELLANTS' CONTENTION Kanode provides Diameter network management information in response to network conditions but make no mention of generating statistics associated with a DIAMETER message type received at a DIAMETER Routing Agent (DRA.) App. Br. 6 ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments the Examiner has erred in rejecting independent claims 1 and 22 under 35 U.S.C. § 103(a) as being unpatentable over Kanode and McNamee. We agree with Appellants' conclusions as to this rejection of the claims. Appellants contend Kanode "merely relates to providing Diameter network management information in response to network conditions, and does not mention statistics or any related terminology," as required by the disputed limitation of claim 1. App. Br. 6. The Examiner responds by finding "[i]t is well known in the art that Statistics is for future using the past and this sentiment was echoed by the instant application." Ans. 6. The Examiner further finds: The statistics could be relative to a particular stream of messages, for example a last successive quantity of messages, or the statistics could be relative to a period of time[], and the reference material does this but does not talk about it since it is irrelevant to the task at hand .... The task is: knowing a problem exists, 3 Appeal2015-001950 Application 13/536,517 isolating the problem ... , and resolving the problenz; all this performed by the reference material. Id. at 5---6. Appellants reply, arguing the Examiner is "relying on what one of skill in the art would 'know' rather than [the] disclosures in the cited text." Reply Br. 4. We agree with Appellants. In particular, we are unable to ascertain from the Examiner's explanation that Kanode's systems functions to generate statistics associated with the type of DIAMETER messages. At most, we find evidence Kanode discloses rules databases. Kanode ,-r 94. Although the rules databases may include and/or rely on statistics, the Examiner has failed to provide sufficient evidence that such statistics are disclosed to be or are in fact generated or are even present. Although the Examiner's explanation of why Kanode could generate statistics may be technically correct, in the absence of evidence supporting the Examiner's findings, the explanation constitutes the teachings of the Examiner, not the teachings of Kanode. Therefore, in the absence of a specific mapping of the disputed statistics to similar data generated by Kanode, we agree with Appellants the Examiner erred in finding Kanode teaches or suggests the disputed limitation. Because we agree with at least one of the arguments advanced by Appellants, we need not reach the merits of Appellants' other arguments. For the above reasons, we do not sustain the rejection of independent claims 1 and 22 together with dependent claims 2-21. We note, in an ex parte appeal, the Board "is basically a board of review-we review ... rejections made by patent examiners." Ex parte Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). "The review authorized by 4 Appeal2015-001950 Application 13/536,517 35 U.S.C. Section 134 is not a process whereby the examiner ... invite[s] the [B]oard to examine the application and resolve patentability in the first instance." Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). Because we are a board of review, and not a place of initial examination, we will not engage in the de nova examination required to supplement the Examiner's findings in connection with the disputed step of generating a statistic associated with the type of said DIAMETER message. In particular, we express no opinion as to whether independent claim 1 would be obvious over Kanode and McNamee if supported by additional explanation (including, e.g., interpretation of the disputed "statistics" requirement) and/or references. Although the Board is authorized to reject claims under 3 7 C.F.R. § 41. 50(b ), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02 (9th Ed., Mar. 2014). Furthermore, our decision is limited to the findings before us for review. The Board does not "allow" claims of an application. Rather, the Board's primary role is to review adverse decisions of examiners including the findings and conclusions made by the Examiner. See 37 C.F.R. § 41. 50( a)( 1) ("The Board, in its decision, may affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner"). DECISION The Examiner's decision to reject claims 1-22 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation