Ex Parte Mitra

Board of Patent Appeals and Interferences

Jun 22, 2004

09222388 (B.P.A.I. Jun. 22, 2004)

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The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte AMOL MITRA

Appeal No. 2003-0481
Application No. 09/222,388

ON BRIEF

Before JERRY SMITH, FLEMING, and NAPPI, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
Decision on Appeal
This is a decision on the appeal under 35 U.S.C. § 134 from the examiner’s
rejection of claims 1 through 7.
The Invention
The invention relates to a method to automatically determine the number of an
IPX network number. The method includes a step where when a device which needs
the network boots up, the device acts as a passive listener to the network, listening to
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Application No. 09/222,388
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the network for an IPX packet that contains a predetermined address. Typically,
networks contain broadcasts of the predetermined address every 60 seconds, see
appellant’s specification page 2. When the device locates the IPX packet with the
predetermined address it extracts the network number from the packet, see appellant’s
specification page 3.
Claim 1 is representative of the invention.
1. A method of discovering an internet protocol exchange (IPX) network number
of a network, the network communicating packets, the packets including a source and a
destination address, the method comprising the steps of:
initiating a passive listener to locate an IPX packet containing a predetermined
destination address;
locating said IPX packet containing said predetermined destination address;
determining whether said IPX packet is broadcast with a specific type of protocol;
and
extracting the network number from said IPX packet if an IPX header source
network number equals an IPX header destination number and the network number is
not zero.
References
Terry 6,061,356 May 9, 2000
(filed Nov. 25, 1996)
Kotchey et al. (Kotchey) 5,805,594 September 8, 1998
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Application No. 09/222,388
1 The answer, on page 3, identifies that the rejection of claims 4 and 7 under 35 U.S.C. § 112, first
paragraph has been withdrawn.
2This decision is based upon the Appeal Brief received August 12, 2002 (certified as being mailed on
August 5, 2002 in accordance with 37 C.F.R. §1.8(a)) and the Reply Brief received November 18, 2002
(certified as being mailed on November 12, 2002 in accordance with 37 C.F.R. §1.8(a)).
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Rejections at Issue
Claims 1 through 7 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Kotchey and Terry.1
Opinion
We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of obviousness relied upon by the
examiner as support for the rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s arguments set forth in the briefs2
along with the examiner’s rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us, that the evidence relied
upon and the level of skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as set forth in claims 1 through
7. Accordingly, we reverse.
Appellant argues on page 7 of the brief that claim 1 contains the limitation of
“initiating a passive listener to locate an IPX packet” and that nether Kotchey or Terry
teach this limitation.
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Application No. 09/222,388
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Before we consider the teachings of the prior art we must first determine the
scope of the claim. Claims will be given their broadest reasonable interpretation
consistent with the specification, limitations appearing in the specification will not be
read into the claims. In re Etter 756 F.2d 852, 858, 225 USPQ 1, 5 (Fed. Cir. 1985). In
analyzing the scope of the claim, office personnel must rely on the appellant’s
disclosure to properly determine the meaning of the terms used in the claims.
Markman v. Westview Instruments, 52 F3d 967, 980, 34 USPQ2d 1321 (1996).
“[I]nterpreting what is meant by a word in a claim ‘is not to be confused with adding an
extraneous limitation appearing in the specification, which is improper.’” (emphasis
original) In re Cruciferous Sprout Litigation 301 F.3d 1343, 1348, 64 USPQ2d 1202,
1205, (Fed. Cir 2002) (citing Intervet America Inc v. Kee-Vet Laboratories Inc. 12
USPQ2d 1474, 1476 (Fed. Cir. 1989)). “[T]he terms used in the claims bear a “heavy
presumption” that they mean what they say and have the ordinary meaning that would
be attributed to those words by persons skilled in the relevant art.” Tex Digital Sys,
Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202, 64 USPQ2d 1812, 1817 (Fed. Cir. 2002).
“Moreover, the intrinsic record also must be examined in every case to determine
whether the presumption of ordinary and customary meaning is rebutted.” (citation
omitted). “Indeed, the intrinsic record may show that the specification uses the words in
a manner clearly inconsistent with the ordinary meaning reflected, for example, in a
dictionary definition. In such a case, the inconsistent dictionary definition must be
Appeal No. 2003-0481
Application No. 09/222,388
3 Definition taken from the Random House College Dictionary, Revised Edition, 1982.
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rejected.” Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d at 1204, 64
USPQ2d at 1819 (Fed. Cir. 2002).
Claims 1 and 7 contain the limitation of “initiating a passive listener to locate an
IPX packet.” Appellant’s specification does not provide a definition of what is meant by
a “passive listener.” The plain meaning of “passive” is “ not participating actively” and
the plain meaning of “Listen” is “to heed or pay attention to what is said.”3 These
definitions are consistent with the description in the appellant’s specification on page 2
lines 18-20 which states “[a]s a passive listener, the client listens on a network to
discover an IPX packet.” We note that the appellant’s description of the “passive
listener” includes no steps which are active in contrast to “forced auto discovery
mechanism” which is described on page 3 of appellant’s specification as being an
active discovery mechanism which generates a query to the network. Thus, we find
that the scope of claim 1 includes a method step of passively, or non-actively paying
attention to the communications on the network to locate an IPX packet.
Having determined the scope of the relative potions of the claims we next turn
to the rejection based upon 35 U.S.C. § 103. It is the burden of the examiner to
establish why one having ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the prior art, or by the
implication contained in such teachings or suggestions. In re Sernaker 702 F2d 989,
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Application No. 09/222,388
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995, 217 USPQ 1,6 (Fed. Cir. 1983). “Additionally, when determining obviousness, the
claimed invention should be considered as a whole; there is no legally recognizable
‘heart’ of the invention.” Para-Ordnance MFG. v. SGS Importers Int’l Inc., 73 F3d
1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995) (citing W.L. Gore & Assocs., Inc.
v. Garlock, Inc., 721 F2d 1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984)).
The examiner states on page 4 of the answer that Kotchey teaches:
Initiating an automatic query discovery mechanism comprising means for
generating a requested signal... with an IPX number of zero as the source and
destination... to determine client’s... network number accuracy.
where said query initiating client listening and waiting to locate an IPX
reply packet containing a predetermined destination address.
Further, on page 6 of the answer, in response to appellant’s arguments that the
step of “initiating a passive listener” is not taught by Kotchey, the examiner states:
It is noted that the features upon which applicant relies (i.e., “initiating a
passive listener to locate an IPX packet containing a predetermined destination
address eliminating the operation of issuing a RIP general request…” are not
recited in the claims.
We concur with the examiner that there is no limitation in the claims specifically directed
to eliminating an RIP request. However, claims 1 and 7 clearly call for passive listening
which does necessarily preclude any active steps to determine the network number.
The examiner states, on page 4 of the answer, that Kotchey initiates a query and then
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listens for the reply. We find this query, prior to listening, is an active step and
accordingly we find that Kotchey does not teach the claimed limitation of a “passive
listener.”
The examiner has not asserted that Terry teaches the limitation of “initiating a
passive listener.” Nor do we find that Terry teaches the claimed step of “initiating a
passive listener.”
Thus, we find that neither Kotchey or Terry teach the claimed step of “initiating a
passive listener.” We note: the issue before us is whether the references teach the
limitation of a “passive listener”, the question of whether, passive listening would have
been obvious to one of ordinary skill in the art, is not before us, nor has the examiner
presented evidence that it would be an obvious modification of the prior art reference.
In view of the forgoing we will not sustain the rejection of claims 1 through 7
under 35 U.S.C. § 103. Therefore, the decision of the examiner rejecting claims 1
through 7 is reversed.
Appeal No. 2003-0481
Application No. 09/222,388
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Reversed
JERRY SMITH )
Administrative Patent Judge )
)
)
)
)
MICHAEL R. FLEMING ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
ROBERT NAPPI )
Administrative Patent Judge )
RN/RWK
Appeal No. 2003-0481
Application No. 09/222,388
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