Ex Parte McDysan et al

Board of Patent Appeals and Interferences

Sep 17, 2009

09723480 (B.P.A.I. Sep. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVE MCDYSAN, HOWARD LEE THOMAS, and LEI YAO
____________________

Appeal 2009-003742
Application 09/723,480
Technology Center 2400
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Decided: March 31, 2010
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Before JOSEPH L. DIXON, JAY P. LUCAS, and THU A. DANG,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
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I. STATEMENT OF THE CASE
Appellants have filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) (hereinafter “Request”) on October 26, 2009, for
reconsideration of our Decision mailed September 17, 2009 (hereinafter
“Decision”) with respect to claims 1-15, 21, and 26 (Request 2).
The Decision affirmed the Examiner’s rejection of claims 1-4, 7-9, 12,
13, 17, 20-24, 27, 28, 31, 32, 36, 39, and 40 under 35 U.S.C. § 102(e) as
being anticipated by Albert; the rejection of claims 5 and 25 under 35
U.S.C. § 103(a) as being unpatentable over Albert in view of Haas; the
rejection of claims 16, 18, 35, and 37 under 35 U.S.C. § 103(a) as being
unpatentable over Albert in view of Feldman; the rejection of claims 19 and
38 under 35 U.S.C. § 103(a) as being unpatentable over Albert in view of
Grant; the rejection of claims 10, 11, 29, and 30 under 35 U.S.C. § 103(a) as
being unpatentable over Albert in view of Gai; and the rejection of claims 6,
14, 15, 26, 33, and 34 under 35 U.S.C. § 103(a) as being unpatentable over
Albert in view of Gibson (Decision 12-13).
We have reconsidered our Decision of September 17, 2009, in light of
Appellants’ comments in the Request, and we find Appellants have not
identified any points misapprehended or overlooked by the Board in our
Decision therein. We decline to change our Decision for the reasons
discussed infra.

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II. ISSUES
The issues we address on this Decision on the Request are whether
Appellants have identified any points misapprehended or overlooked by the
Board in our finding that:
1) Appellants’ repetition of the claim language on pages 7-8 of the
Appeal Brief is a “mere general allegation of patentability” (Request 2);
2) Such a general allegation of patentability does not meet Appellants’
burden of showing error in the Examiner’s conclusion (Id.); and
3) Albert’s forwarding agents and servers are in two different
networks (Request 3).

III. PRINCIPLES OF LAW
Appellants bear the procedural burden on appeal to the Board to move
forward by showing harmful error in the Examiner’s rejections. In re Kahn,
441 F.3d 977 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can
overcome a rejection [under § 103] by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.”) (citation and internal quote
omitted).
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). “[T]he PTO gives
claims their ‘broadest reasonable interpretation.’” In re Bigio, 381 F.3d
1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000)).
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If the disclosure is sufficient to show that the natural result flowing
from the operation as taught would result in the performance of the
questioned function, it seems to be well settled that the disclosure should be
regarded as sufficient. In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)
(quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)).

IV. ANALYSIS
Issue 1
Appellants contend that “Appellants set forth, in great detail, at pages
10-12 of the principal Brief, and pages 3-4 of the Reply Brief, exactly why
these highlighted portions of the claims distinguish over Albert et al.,” and
thus, we erred in finding Appellants’ repetition of the claim language on
pages 7-8 of the Appeal Brief as “mere general allegation of patentability”
(Request 2).
We agree with Appellants that pages 10-12 of the principal Brief set
forth Appellants’ substantive arguments. However, all of these substantive
arguments, set forth on pages 10-12, were addressed in the Decision
(Decision 6-11). Accordingly, Appellants have not identified any points
misapprehended or overlooked by the Board in our Decision. That is, as
admitted by Appellants and as set forth in our Decision, the claim language
provided on pages 7-8 is not considered substantive arguments as required
by 37 C.F.R. 41.37(c)(vii), and our observation of that finding does not
constitute an error of the Board.

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Issue 2
Appellants contend that we erred in concluding that Appellants’
repetition of the claim language on pages 7-8 of the principal Brief “is
wholly ineffective in demonstrating error in the Examiner’s prima facie
case” and thus “does not meet Appellants’ burden” of showing error in the
Examiner’s case (Request 2). In particular, Appellants contend that “[i]t is
not Appellants’ burden, in the first instance, to proffer evidence of
patentability” and that “[i]t is only after the Examiner establishes a prima
facie case of anticipation that the burden shifts to Appellants to present
arguments and/or evidence to rebut such prima facie case” (Id.).
We agree with Appellants that it is not Appellants’ burden to initially
proffer evidence of patentability. However, as admitted by Appellants, after
the Examiner presents a prima facie case of anticipation, the burden shifts to
Appellants to present arguments and/or evidence to rebut such prima facie
case. That is, though Appellants do not initially have the burden of
establishing prima facie case of patentability, Appellants bear the procedural
burden on appeal to the Board to move forward by showing harmful error in
the Examiner’s rejections. See In re Kahn, 441 F.3d at 985-86. As set forth
in our Decision, the claim language reiterated on pages 7-8 of the principal
Brief does not meet Appellants’ burden of showing harmful error in the
Examiner’s rejection (Decision 6). In fact, as admitted by Appellants,
Appellants’ substantive arguments are provided on pages 10-12 of the
principal Brief (Request 2). Thus, we find no error in our finding that the
listing of the claim language on pages 7-8 does not meet Appellants’ burden
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of showing harmful error. Hence, Appellants have not identified any points
misapprehended or overlooked by the Board in our Decision.

Issue 3
Appellants also contend that we erred in finding that Albert’s
forwarding agents and servers are in two different networks (Request 3).
However, as set forth in our Decision, we gave the claims their broadest
reasonable interpretation, but would not read limitations into the claims from
the specification (Decision 9). See In re Bigio, 381 F.3d 1320, 1324 (Fed.
Cir. 2004) and In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
As we noted in our Decision, the language of claim 1 simply does not
place any limitation on what the term “network” (and thus “network
interface”) is to be, is to represent, or is to mean, other than that “the second
network is different from the first network” (Decision 8). In fact, even
Appellants admit that “the servers 220 in Albert et al. could, conceivably, be
located within a network separate from a network comprising the forwarding
agents 231, 232, and service managers 1 and 2” (Reply Br. 3). That is,
though Appellants argue that “Appellants never argued the second network
is always and exclusively located within a network separate from the first
network” (Request 5), Appellants admit that servers 220 could be located in
a network separate from the network comprising the forwarding agents 231,
231 (Reply Br. 3). That is, Appellants admit that the servers could be
located in separate network from that of the forwarding agents some of the
times.
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As set forth in our Decision, we agreed with the Examiner’s finding
that “[t]he servers are not part of the agents, they exist as separate nodes in
the networked system” and that since “the connection between the servers
and the forwarding agent is different than the network between the client and
the forwarding agents … those connections can be considered separate
‘networks’” (Decision 10). Appellants have not identified any error in such
finding by the Examiner, and Appellants have not identified any points
misapprehended or overlooked by the Board in our Decision.
Accordingly, Appellants’ arguments concerning “forwarding agents
and servers” not being “in two different networks” do not persuade us to
modify our Decision to designate the rejection of claim 1 affirmed therein as
a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Therefore, we
find Appellants’ arguments unavailing.

V. CONCLUSION
We have carefully considered the points and arguments raised by
Appellants in the Request for Rehearing, but find no points misapprehended
or overlooked by the Board in our Decision and none of these arguments are
persuasive that our original Decision was in error. We are still of the view
that the invention set forth in claims 1-40 is unpatentable over the applied
prior art based on the record before us in the original appeal. This Decision
on Appellants’ Request for Rehearing is deemed to incorporate our earlier
Decision (mailed September 17, 2009) by reference. See 37 C.F.R.
§ 41.52(a)(1).
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VI. DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision of September 17, 2009, but we deny the request
with respect to making any changes therein.

REHEARING DENIED

peb

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