Ex Parte Murata

Board of Patent Appeals and Interferences

Jul 31, 2002

08768922 (B.P.A.I. Jul. 31, 2002)

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written for publication and is not binding precedent of the Board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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte MAKOTO MURATA
______________
Appeal No. 2000-1561
Application No. 08/768,922
_______________
ON BRIEF
_______________
Before HAIRSTON, RUGGIERO, and LALL, Administrative Patent Judges.
RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1-11. Claims 1-3 have been allowed by the Examiner. An
amendment filed October 8, 1999, which amended claim 4 and
canceled claims 10 and 11, was approved for entry by the
Examiner. Accordingly, only the Examiner’s rejection of claims
4-9 is before us on appeal.
The claimed invention relates to network data communication
systems and, more particularly, to a packet transferring device
that functions as an interface between a data terminal and a
Appeal No. 2000-1561
Application No. 08/768,922
2
network communication medium. An order number assigned to a data
packet received from the data terminal is stored and compared
with the order number of a successfully transmitted data packet
after receipt of a confirmation message from a receiving
terminal. As a result of the comparison operation, only
untransmitted packets are subjected to a resending operation,
thereby eliminating the necessity of retransmitting an entire
data file in the event of a communication interruption.
Representative claim 4 is reproduced as follows:
4. A packet transfer device for transferring data
between a data terminal and a communication network in the
form of data packets, comprising:
number assignment means for assigning an order number
to a data packet to be sent to a selected receiver through
said network, and for storing the assigned order number in a
number storage means;
transmission means for sending said packet to said
receiver, and for receiving data from said receiver;
transmitted packet order number storage means for
sequentially storing an order number of a packet received by
said receiver as confirmed by data in a message sent from
said receiver via the network; and
discrimination means for discriminating whether a data
packet to be sent by said transmission means has been
previously transmitted or not by comparing the assigned
order number of said data packet to be sent as stored in the
number storage means with the order number of a last packet
confirmed as having been received, as stored in the packet
number storage means.
Appeal No. 2000-1561
Application No. 08/768,922
1 The Appeal Brief was filed January 10, 2000 (Paper No. 16). In
response to the Examiner’s Answer dated March 28, 2000 (Paper No. 17), a Reply
Brief was filed May 30, 2000 (Paper No. 18), which was acknowledged and
entered by the Examiner as indicated in the communication dated September 19,
2000 (Paper No. 21).
3
The Examiner relies on the following prior art:
Kirchner et al. (Kirchner) 5,745,685 Apr. 28, 1998
(filed Dec. 29, 1995)
Claims 4-9 stand finally rejected under 35 U.S.C. § 102(e)
as being anticipated by Kirchner.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs1 and Answer for the
respective details.
OPINION
We have carefully considered the subject matter on appeal,
the rejection advanced by the Examiner and the evidence of
anticipation relied upon by the Examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellant’s arguments
set forth in the Brief along with the Examiner’s rationale in
support of the rejection and arguments in rebuttal set forth in
the Examiner’s Answer.
Appeal No. 2000-1561
Application No. 08/768,922
4
It is our view, after consideration of the record before us,
that the Kirchner reference fully meets the invention as set
forth in claims 4-9. Accordingly, we affirm.
Appellant’s arguments in response to the Examiner’s
rejection of the appealed claims are organized according to a
suggested grouping of claims indicated at page 6 of the Brief.
We will consider the appealed claims separately only to the
extent separate arguments for patentability are presented. Any
dependent claim not separately argued will stand or fall with its
base claim. Note In re King, 801 F.2d 1324, 1325, 231 USPQ 136,
137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ
1, 3 (Fed. Cir. 1983).
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as well
as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital
Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.), cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore & Assocs.
v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Appeal No. 2000-1561
Application No. 08/768,922
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With respect to independent claim 4, the representative
claim for Appellant’s first suggested grouping (including claims
4 and 6-8, the Examiner indicates (Answer, pages 4-6) how the
various limitations are read on the disclosure of Kirchner. In
particular, the Examiner points to the illustrations in
Kirchner’s Figure 10 and the accompanying description beginning
at column 7, line 35.
In our view, the Examiner’s analysis is sufficiently
reasonable that we find that the Examiner has as least satisfied
the burden of presenting a prima facie case of anticipation. The
burden is, therefore, upon Appellant to come forward with
evidence and/or arguments which persuasively rebut the Examiner’s
prima facie case. Only those arguments actually made by
Appellant have been considered in this decision. Arguments which
Appellant could have made but chose not to make in the Brief have
not been considered (see 37 CFR § 1.192(a)).
Appellant’s arguments in response (Brief, pages 7-9; Reply
Brief, pages 2 and 3) focus on the Examiner’s alleged
misinterpretation of the Kirchner reference. In Appellant’s
view, Kirchner’s comparison of packet sequence numbers determines
only whether a data packet has been sent, in contrast to the
Appeal No. 2000-1561
Application No. 08/768,922
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determination of whether a data packet “to be sent” has
previously been sent as set forth in representative claim 4.
After careful review of the Kirchner reference in light of
the arguments of record, however, we are in agreement with the
Examiner’s position as stated in the Answer. Our interpretation
of the disclosure of Kirchner coincides with that of the
Examiner, i.e., Kirchner’s comparison of sequence numbers to
determine whether a packet needs to be retransmitted meets all of
the requirements of appealed claim 4. As indicated in the
explanation of Kirchner’s example beginning at column 9, line 24,
when an expected sequence number comparison match between
transmitted and return acknowledgment messages does not occur
within a timeout period, the message is retransmitted. In our
view, this retransmitted message corresponds to a message “to be
sent” as broadly set forth in Appellant’s claim 4. In other
words, there is nothing in the claim language which precludes a
message “to be sent” from being a message “to be resent.”
As to Appellant’s further argument (Brief, page 9) that,
unlike the claimed invention, Kirchner does not provide a record
of successfully transmitted packets, we find such argument to not
be commensurate with the scope of the claims. In our view, this
argument of Appellant improperly attempts to narrow the scope of
Appeal No. 2000-1561
Application No. 08/768,922
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the claim by implicitly adding disclosed limitations which have
no basis in the claim. See In re Morris, 127 F.3d 1048, 1054-55,
44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997). We find no language in
the present appealed claims which requires any feature directed
to establishing a record or history of data packets which have
been successfully transmitted.
We similarly find to be unpersuasive Appellant’s related
argument (Brief, page 9) that, in contrast to Appellant’s
invention, in Kirchner “ . . . the entire sequence of packets is
resent after interruption of transmission.” We find no support
in Kirchner for this conclusion of Appellant. To the contrary,
Kirchner (column 8, lines 46-50) discloses that, in the situation
in which not all of the previously transmitted data has been
acknowledged, then “ . . . [only] the most outstanding, non-
acknowledged data packet with the current sequence number
information included” is resent.
In view of the above discussion, since all of the
claimed limitations are present in the disclosure of Kirchner,
the Examiner’s 35 U.S.C. § 102(e) rejection of independent claim
4, as well as claims 6-8 which fall with claim 4, is sustained.
Appeal No. 2000-1561
Application No. 08/768,922
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Turning to a consideration of the Examiner’s 35 U.S.C.
§ 102(e) rejection of dependent claims 5 and 9, which includes
limitations specifying a resend operation on re-establishment of
a call following a disconnection condition, we sustain this
rejection as well. We find no persuasive arguments from
Appellant that would convince us of any error in the Examiner’s
line of reasoning (Answer, page 6) that Kirchner’s description of
the indication of a non-receipt of a transmitted call, which
triggers the disclosed resend operation, corresponds to a call
disconnection condition as claimed.
In summary, we have sustained the Examiner’s 35 U.S.C.
§ 102(e) rejection of all of the claims on appeal. Therefore,
the decision of the Examiner rejecting claims 4-9 is affirmed.

Appeal No. 2000-1561
Application No. 08/768,922
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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
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
JOSEPH F. RUGGIERO ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
JFR:hh
Appeal No. 2000-1561
Application No. 08/768,922
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LAWRENCE G. NORRIS
ROTHWELL, FIGG, ERNST AND KURZ
SUITE 701 E
555 13TH STREET, N.W.
WASHINGTON, D.C. 20004