Ex Parte Mitts et al

Board of Patent Appeals and Interferences

May 19, 2003

08993321 (B.P.A.I. May. 19, 2003)

1
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publication and is not binding precedent of the Board.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. 22

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HAKAN MITTS, HARRI HANSEN and JUKKA IMMONEN,
Appeal No. 2002-1306
Application No. 08/993,321
______________
ON BRIEF
_______________
Before THOMAS, KRASS and FLEMING, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1, 3-8 and 10-13.
The invention is directed to a network-structured telecommunications network.
More specifically, an efficient network topology is described for the routing of
connections in the network comprising both fixed cable communications networks and
wireless mobile terminals. In order to overcome prior problems concerning fixed tree
Appeal No. 2002-1306
Application No. 08/993,321
1 Supplemental brief of Mar. 19, 2001 and reply brief of Aug. 15, 2001.
2
topologies, the instant invention utilizes a dynamic anchor node assignment. Any of the
switches in the tree topology may be assigned as an anchor node and this switch will
control the routing of the network, the routing starting from that switch.
Representative independent claim 1 is reproduced as follows:
1. A network-structured telecommunications network comprising switches
and data transmission connections there between, where at least a
certain number of the switches are arranged to control the routing of the
connections in the telecommunications network according to a plurality of
predetermined tree topologies, characterised in that each of the certain
number of switches belonging to said plurality of predetermined tree
topologies is arranged to serve as an anchor node of the plurality of
predetermined tree topologies during routing and that a subset of the
certain number of switches are provided with functions supporting wireless
terminals.
The examiner relies on the following references:
Chen et al. (Chen) 5,831,975 Nov. 03, 1998
(filed Apr. 04, 1996)
Katzela et al. (Katzela) 5,872,773 Feb. 16, 1999
(filed May 17, 1996)
Claims 1, 3-8 and 10-13 stand rejected under 35 U.S.C. § 103 as unpatentable
over Katzela in view of Chen.
Reference is made to the briefs1 and answer for the respective positions of
appellants and the examiner.
Appeal No. 2002-1306
Application No. 08/993,321
3
OPINION
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set forth in Graham v, John
Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been led to modify the prior art
or to combine prior art references to arrive at the claimed invention. Such reason much
stem from some teachings, suggestions or implications in the prior art as a whole or
knowledge generally available to one having ordinary skill in the art. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc. , 776
F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017
(1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
929, 933 (Fed. Cir. 1984). These showings by the examiner are an essential part of
complying with the burden of presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden
is met, the burden then shifts to the applicant to overcome the prima facie case with
argument and/or evidence. Obviousness is then determined on the basis of the
Appeal No. 2002-1306
Application No. 08/993,321
4
evidence as a whole and the relative persuasiveness of the arguments. See Id.; In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
The examiner contends that Katzela discloses the claimed invention but for the
specific description of an anchor node of the tree topology (see page 3 of the answer
for the examiner’s analysis of Katzela). The examiner turns to Chen for the disclosure
of a system for hierarchical multicast routing in an ATM network wherein a certain
number of switches are arranged to control the routing of the connections in the
network according to a plurality of tree topologies and wherein each of the certain
number of switches belonging to a plurality of the predetermined tree topologies is
arranged to serve as an anchor node of the plurality of the predetermined tree
topologies during routing. The examiner points to the abstract, Figure 1, column 1, line
57 through column 2, line 19; column 2, lines 47-63, column 4, lines 33-54 and column
6, line 34 through column 7, line 29, of Chen.
The examiner then concludes that it would have been obvious to use the
technique of routing as taught by Chen, in the system of Katzela, “so that overloading of
the root node can be avoided in order to improve the flexibility of the system” [answer-
page 4].
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It appears to us that the examiner has set forth a prima facie case of
obviousness, at least in the case of independent claims 1 and 10, describing the
differences between the prior art and the instant claimed invention and giving a reason
why the artisan would have found the instant claimed subject matter obvious over the
prior art. We turn to appellants’ argument to determine if anything therein persuades us
of an error in the examiner’s case.
With regard to independent claim 1, appellants argue that the tree topologies
comprising the claimed switches include both wireless and fixed networks. In fact, a
substantial part of appellants’ argument is that the instant invention is directed to
including both wireless and fixed networks and that Katzela does not disclose or
suggest forming tree topologies in an ATM network using both wireless and fixed
terminals. Appellants contend that Katzela merely discloses a method for updating a
tree topology in order to handle network traffic and conditions in a wireless only
communications network. Note pages 3-5 of the principal brief.
This argument is not persuasive because it is not based on any particular
claimed limitation. Neither independent claim 1, nor any of the other claims on appeal,
is limited to forming tree topologies including “both wireless and fixed” networks.
Arguments regarding “both wireless and fixed” networks fail from the outset since they
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are not based on limitations appearing in the claims. In re Self, 671 F.2d 1344, 1348,
213 USPQ2d 1, 5 (CCPA 1982). Thus, it is immaterial that Katzela may be directed to
a wireless only communications network while the instant invention is contemplated to
be directed to both wireless and fixed networks because appellants’ claims are not
limited to the latter.
Appellants do point to the claim language “a subset of the certain number of
switches are provided with functions supporting wireless terminals” as support for the
argument that the claims are directed to both wireless and fixed networks. However, to
the extent this is implying that since only a “subset” of the switches is for supporting
wireless terminals, this must mean that the remainder of the switches support a fixed
terminal, we are not persuaded. There is no such implication made by the claim
language because a “subset” may, indeed, cover the entire set. It is basic set theory
that the whole of a set is also a subset of that set, i.e., the universal set. Accordingly,
the instant claim language regarding a “subset” does not preclude all of the switches
from being provided with functions supporting wireless terminals.
In the reply brief, appellants argue that the advantage of the instant invention,
viz., including both wireless and fixed networks, must be taken into account in
determining obviousness, even though the limitation does not appear in the claims,
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Application No. 08/993,321
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because weight must be given to all evidence bearing on the issue of obviousness. We
disagree. While it is true that weight must be given to all evidence bearing on the issue
of obviousness, this refers to the obviousness of the “claimed subject matter.” The
inclusion of both wireless and fixed networks, for the reasons supra, forms no part of
the instant claimed subject matter.
At page 2 of the reply brief, appellants argue that
...in assessing the obviousness of an invention, factors such as
what the invention does, the manner in which it is done, and the
advantages over prior methods, should all form part of the inquiry.
The advantages are part and parcel of the invention. If the advantages
flow from what is being claimed, the advantages must be considered.
Advantages need not be specifically set forth in the claims.
We note that appellants cite no authority for this position and we are unaware of
any rule of law which requires us to read limitations from the specification into the
claims except in the case of proper “means plus function” claim language in
accordance with 35 U.S.C. § 112, sixth paragraph. The instant claims are not in
“means plus function” format. While certain unclaimed advantages may accrue from
the claimed subject matter, there is simply nothing within the language of the instant
claims indicating that tree topologies in an ATM network are formed using “both
wireless and fixed terminals.” In fact, only wireless terminals are indicated in the
claims. Nothing therein indicates that there are any fixed terminals.
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Application No. 08/993,321
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Appellants also argue that nothing in Katzela teaches an “anchor node,” as set
forth in the claims (the examiner recognizes this) and since Chen only describes a
“fixed” anchor node, there would have been no reason to combine the references to
arrive at the instant claimed invention.
The error in this reasoning is that it is based on the assumption that, in Chen, the
selection of the core, or anchor, nodes is fixed and that this teaches away from the
instant claimed invention. In the first place, nothing in the instant claim language
indicates whether the claimed “anchor node” is fixed or not fixed, so appellants’
argument is, again, directed to limitations not in the claims. Moreover, while Chen does
describe the core nodes as being fixed, in the sense that “[o]nce selected, it is assumed
that core nodes will not change” [column 8, line 40], that sentence in Chen goes on to
state, “however, as would be understood, this restriction is not binding.” Accordingly,
Chen is not limited to unchanging core nodes and, as such, appellants’ assertion that,
in Chen, the core node is fixed, is not accurate.
We will, therefore, sustain the rejection of independent claims 1 and 10.
With regard to claim 3, appellants argue that the claim distinguishes over the
applied references because it recites that the data connections are further
characterized in that “each” of the switches belonging to a group may be arranged to
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Application No. 08/993,321
9
serve as an anchor node of the tree topology during routing. It is appellants’ position
that Chen does not disclose that “any” node can be a core node because it teaches that
the selection of a core node is “crucial” [column 8, line 9]. We disagree. We find
nothing in Chen that indicates that only certain nodes may serve as core node. Merely
because the selection of core nodes is “very crucial,” and that it “is important to have
the right set of core nodes” [column 8, line 19 of Chen], does not imply that “each” of
the switches cannot be arranged to serve as a core node. We interpret Chen’s
teaching to imply that for certain functions, certain switches are crucial to serve as core
nodes but other switches, which may not be applicable to serve as core nodes for one
purpose, may be very applicable as core nodes for other purposes. Also, while it may
be, according to Chen’s teachings, that certain switches would be preferred as the core
node for particular groups because they are better candidates based on a certain
characteristic (e.g., “Nodes with larger degree also make better core nodes”-column 8,
lines 22-23), this does not preclude other nodes within the group from serving as a core
node, although they may not offer as good a result.
Accordingly, we are unpersuaded by appellants’ argument and will sustain the
rejection of claim 3 under 35 U.S.C. § 103.
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Claim 4 recites that each of the switches is arranged to choose, in the beginning
of the routing controlled by the switch, the tree topology to be used in the routing,
“according to which tree topology’s centre point is located nearest to the switch in
question.” Since we find no such detail as to how such a tree topology is chosen
disclosed or suggested by the applied references, and the examiner has not addressed
this limitation, we will not sustain the rejection of claim 4.
Similarly, we find no teaching or suggestion, by the applied references, of the
transmission of an “identifier” of the tree topology routing to be used, as recited in claim
5, and the examiner has not addressed this limitation, we will not sustain the rejection
of claim 5 under 35 U.S.C. § 103.
As to claim 6, we will sustain the rejection of this claim, which depends from
claim 1, because it is clear that Katzela is directed to telecommunications networks
which are ATM networks, e.g., see column 6, line 59 of Katzela.
We will also sustain the rejection of claim 7 under 35 U.S.C. § 103 because it is
also clear that Katzela’s telecommunications network utilizes a Private Network-
Network Interface (PNNI) protocol. See column 4, lines 43-44, of Katzela.
We will not, however, sustain the rejection of claim 8 because, like claim 5 supra,
we find no teaching or suggestion by the applied references, and the examiner has not
addressed the issue, of an “identifier” of the tree topology routing to be used.
Appeal No. 2002-1306
Application No. 08/993,321
11
We will sustain the rejection of claim 11 under 35 U.S.C. § 103 since this claim
merely recites that a “predetermined tree topology” is used in the routing and that it is
chosen at the beginning of the routing procedure. Clearly, there is a routing procedure
in Katzela and this routing employs a “predetermined tree topology.” For example, the
abstract of Katzela even indicates “a routing protocol for determining preestablished
VPI trees rooted at each destination node.”
We will not sustain the rejection of claim 12 under 35 U.S.C. § 103 because, like
claim 4 supra, we find nothing in the applied references suggestive of the claimed
choice based on “as to which tree topology’s centre point is located nearest to the
switch from which the routing starts.”
We will sustain the rejection of claim 13 under 35 U.S.C. § 103 because, like
claim 7 supra, it is clear that Katzela’s telecommunications network utilizes a Private
Network-Network Interface (PNNI) protocol. See column 4, lines 43-44, of Katzela.
Since we have sustained the rejection of claims 1, 3, 6, 7, 10, 11 and 13, but
have not sustained the rejection of claims 4, 5, 8 and 12, the examiner’s decision
rejecting claims 1, 3-8 and 10-13 under 35 U.S.C. § 103 is affirmed-in-part.
Appeal No. 2002-1306
Application No. 08/993,321
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
eak/vsh
Appeal No. 2002-1306
Application No. 08/993,321
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