Ex Parte Owens et al

Board of Patent Appeals and Interferences

Feb 25, 2010

09692884 (B.P.A.I. Feb. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KENNETH R. OWENS, SRINIVAS V. MAKAM,
CHANGCHENG HUANG, and VISHAL SHARMA
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Appeal 2009-001219
Application 09/692,884
Technology Center 2600
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Decided: February 26, 2010
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and
THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants invoke our review under 35 U.S.C. § 134 from the
Examiner’s final rejections of claims 1-24. We have jurisdiction under 35
U.S.C. § 6(b). We reverse the rejection of claims 17-24, and enter a new
ground of rejection for claims 1-16 under 37 C.F.R. § 41.50(b).

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STATEMENT OF THE CASE
Appellants claim a method and system for Internet information traffic
transmission that use first and second multi-protocol label switches. The
second switch establishes a reverse notification path to the first switch. A
reverse notification message reporting receipt at the second switch of
information traffic flow from a transmission path is sent from the second to
the first switch. Interruption of the reverse notification message notifies the
first switch to execute protection switching by re-routing information traffic
from the failed path.1 Claim 17 is illustrative:
17. A system for establishing a traffic flow over a protection path in a
data network, comprising:
a plurality of switches operable to route the traffic flow in the data
network,
a first one of the plurality of switches operable to establish a working
path and a protection path, a second one of the plurality of switches
that is downstream from the first one of the plurality of switches
being on the working path,
the second one of the plurality of switches operable to establish a
reverse notification path to the first one of the plurality of switches,
the second one of the plurality of switches operable to send a reverse
notification message upstream to the first one of the plurality of
switches in response to receiving the traffic flow from the first one of
the plurality of switches over the working path, the reverse
notification message operable to provide information related to the
working path in order to determine whether the traffic flow is to be re-
routed from the working path to the protection path, the interruption
of which controls protection switching by said first switch.

1 See generally Spec. 7:10-13; 8:17-21; 10:2-12; 26:5-11; Figs. 1 and 2.
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The Examiner relies on the following prior art references to show
unpatentability:2
Lemieux US 6,452,942 B1 Sep. 17, 2002
Cao US 2002/0181485 A1 Dec. 5, 2002
Hwang US 6,590,893 B1 Jul. 8, 2003
Aukia US 6,594,268 B1 Jul. 15, 2003
McAllister US 6,697,329 B1 Feb. 24, 2004

1. The Examiner rejected claims 10, 11, and 13-24 under 35 U.S.C.
§ 103(a) as unpatentable over Cao and McAllister (Ans. 3-13).
2. The Examiner rejected claims 1, 2, 4, 5, and 7-9 under 35 U.S.C.
§ 103(a) as unpatentable over Cao, McAllister, and Hwang (Ans. 13-19).
3. The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as unpatentable
over Cao, McAllister, Hwang, and Aukia (Ans. 19-20).
4. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Cao, McAllister, and Aukia (Ans. 20-21).
5. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as unpatentable
over Cao, McAllister, and Lemieux (Ans. 21-22).
Rather than repeat the arguments of Appellants or of the Examiner,
we refer to the Briefs and the Answer3 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments that Appellants could have made but did not make

2 Effective filing dates for these documents precede Appellants’ earliest
effective filing date and are not at issue.
3 We refer throughout this opinion to (1) the Appeal Brief filed Aug. 20,
2007, (2) the Examiner’s Answer mailed Jan. 2, 2008, and (3) the Reply
Brief filed Mar. 3, 2008.
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in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
Appellants’ Arguments
Appellants group claims 10, 11, and 13-24, and collectively argue the
rejection under § 103(a) of the included independent claims 10 and 17 (App.
Br. 8-14; Reply Br. 8-17).4 Appellants, inter alia, argue that Cao and
McAllister “fail to use the interruption of [a] . . . traffic indication message
to control protection switching at the sending switch” (App. Br. 11).

ISSUE
Have Appellants shown that under § 103 the Examiner erred in
finding Cao and McAllister, either alone or in combination, teach or suggest
having a first multi-protocol label switch, upon interruption of a reverse
notification message, re-route information transmissions to a second switch
from a failed working path to a protection path as recited in independent
claim 17?

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:
1. Cao describes an apparatus and method for Internet protocol flow ring
protection switching that uses a plurality of routed label switched
paths between source and sink routers (Abstract).

4 A new ground of rejection under 37 C.F.R. § 41.50(b), addressed infra, is
entered for independent claim 10 and its dependent claims 11-16.
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2. Cao discloses that the reference as drafted uses “the term ‘routers’ . . .
to describe both routers and switches” (¶ [0003]). Further, Cao
discloses that “a plurality of paths from a source (entry) router to a
sink (destination) router” are established for transferring information
(¶ [0006]).
3. Cao’s “sink router chooses one of the[] [established] paths as the
primary path and communicates along this primary path unless the
primary path fails” (¶ [0011]). When “a failure is detected, the router
that first detects the failure propagates this information to the source
and sink routers . . . [, and] the sink router switches to the secondary
path for communications” (¶ [0011]; see also (¶ [0006]).
4. McAllister discloses a method for establishing a communications
network that includes interconnected source, destination, and
intermediate nodes, and also includes a virtual circuit having a path
across the network specified by a human operator (Abstract).
5. Messages are sent between pairs of McAllister nodes to inform the
nodes that the interconnecting links are alive and functioning (col. 9,
ll. 60-64).
6. McAllister discloses that “[w]hen a link failure is detected . . . the
functioning part of the network transmit[s] a signal indicative of the
failure . . . to the source or ingress node . . . [, and] [u]pon receipt of
this signal, the source node may attempt to re-route . . . [to] a different
path” (col. 10, ll. 2-8).
7. Independent claim 1 covers both “a multi-protocol label switching
system (MPLS) data network comprised of a plurality of data switches
. . . , [and] a method of establishing a traffic flow over a protection
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path from a source switch to a destination switch through a second set
of switches . . .” (App. Br. 20; claim 1, ll. 1-8).
8. Independent claim 10 covers both “a multi-protocol label switching
system (MPLS) data network . . . , [and] a method of routing traffic
flow from a working path through said network to a protection path
through said network . . .” (App. Br. 23; claim 10, ll. 1-7).

PRINCIPLES OF LAW
An Examiner, in rejecting claims under 35 U.S.C. § 103, must
establish a factual basis to support a legal conclusion of obviousness. See In
re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The required factual
determinations are set forth in Graham v. John Deere Co., 383 U.S. 1, 17
(1966) (explaining that 35 U.S.C. § 103 requires determinations of the (1)
scope and content of prior art; (2) differences between the prior art and
claims at issue; and (3) level of ordinary skill in the art).

ANALYSIS
Obviousness
Claims 17-24
Claims 18-24 directly or indirectly depend from independent claim
17, and all stand rejected under § 103(a) as being unpatentable over Cao and
McAllister (Ans. 7-13). After reviewing these references, we find the
evidence of record supporting Appellants’ position that these references do
not teach or suggest the recited interruption of a reverse notification message
reporting receipt of information traffic flow at a second switch to have a first
switch re-route transmissions from a failed path.
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The Examiner and we find Cao teaches an information flow system
including a plurality of switches operable to route information flow on
different paths (Ans. 7-8; FF 1, 2). The Examiner, however, further finds:
Cao et al. does not disclose that the second switch is operable to
establish a reverse notification path and send a reverse notification
message upstream to the first switch in response to receiving the
traffic flow from the first switch. Cao et al. also does not disclose a
reverse notification message operable to provide information related
to the working path in order to determine whether the traffic flow is to
be re-routed from the working path to the protection path, the
interruption of which controls protection switching.
(Ans. 8). To address these Cao deficiencies, the Examiner turns to
McAllister, and finds this subject matter taught by McAllister (Ans. 8-9).
We do not find the Examiner’s position supported by evidence of record.
The Examiner and we find McAllister teaches establishing a
communications network that includes nodes, i.e., switches, interconnected
by links, i.e., paths, for transmitting information traffic (Ans. 8; FF 4).
According to the Examiner:
[McAllister] discloses sending a message establishing a reverse
notification path through the network between the first and second
switches in response to data received from the first switch (See
column 9 [,] line 47 to column 10 [,] line 8 of McAllister et al. for
reference to using a path from a second node to a first node to
sending messages and acknowledgements to the message from the
second node to the first node in response to protocol messages, the
second message, sent from the first node).
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(Ans. 8.) We concur that McAllister discloses sending messages to inform
nodes that interconnecting links, i.e., paths, are alive and functioning (FF 5).
However, the Examiner then finds:
McAllister et al. also discloses sending a third message over the
reverse notification path the interruption of which is used to determine
whether the traffic flow is to be re-routed from the working path to the
protection path (See column 9 [,] line 47 to column 10 [,] line 8 of
McAllister et al. for reference to the messaging being in an
acknowledgement format, meaning that a third acknowledgement
message is sent from the second node in response to receiving a
message, which is in a traffic flow from the first node over a
working virtual connection).
(Ans. 8-9.) We fail to find McAllister teaches or suggests monitoring for
interruption of performance messages and implementing any action on
identifying an interruption. Instead, we find McAllister explicitly discloses
that “‘[w]hen a link failure is detected . . . the functioning part of the
network transmit[s] a signal indicative of the failure . . . to the source or
ingress node . . . [, and] [u]pon receipt of this signal, the source node may
attempt to re-route . . . [to] a different path’” (FF 6). We are persuaded that
the record supports Appellants’ assertion that both Cao and McAllister “fail
to use the interruption of [a] . . . traffic indication message to control
protection switching at the sending switch” (Reply Br. 13). Consequently,
we find these references, either alone or in combination, are deficient as to
claim subject matter.
For the foregoing reasons, we agree with Appellants’ arguments that
the Examiner erred in finding that Cao and McAllister teach or suggest
subject matter covered by claim 17. Therefore, the rejection of claim 17
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cannot be sustained, nor can the rejection be sustained for the grouped
claims 18-24 that depend from claim 17.
Claims 1-16
For reasons expressed infra, independent claims 1 and 10, and their
dependent claims 2-9 and 11-16 are indefinite. Therefore, we need not reach
the prior art rejections under § 103(a) “because the claims do not particularly
point out and distinctly claim the invention as required by 35 U.S.C. § 112,”
and because the prior art references can not be applied to the claims without
making speculative assumptions. See In re Steele, 305 F.2d 859, 862-63
(CCPA 1962). Our decision in this regard is based solely on the
indefiniteness of the claimed subject matter and does not reflect on the
adequacy of the prior art evidence applied in support of the rejections.
New Ground of Rejection under 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for
claims 1-16. Claims 1-16 are rejected under 35 U.S.C. § 112, second
paragraph as being indefinite.
35 U.S.C. § 112, Second Paragraph
Claims 1-16
The test for definiteness under 35 U.S.C. § 112, second paragraph,
“requires a determination whether those skilled in the art would understand
what is claimed.” Amgen, Inc. v. Chugai Pharmaceutical Co. Ltd., 927 F.2d
1200, 1217 (Fed. Cir. 1991) (citation omitted).
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Independent claims 1 and 10 are drafted to cover both a switched data
network and also a method for using the network (FF 7 and 8). As such,
these independent claims and their dependent claims that incorporate by
reference all limitations of their direct and indirect base claims are
indefinite. These claims are indefinite because “[a] single claim which
claims both an apparatus and the method steps of using the apparatus is
indefinite under 35 U.S.C. § 112, second paragraph. IPXL Holdings[,
L.L.C.] v. Amazon.com, Inc. 430 F[3]d 1377, 1384 . . . (Fed. Cir. 2005); Ex
parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed
to an automatic transmission workstand and the method of using it held
ambiguous and properly rejected under 35 U.S.C. 112, second paragraph).”
MPEP § 2173.05(p)(II).
Thus, claims 1-16 are rejected under 35 U.S.C. § 112, second
paragraph.
CONCLUSION
Appellants have shown the Examiner erred in finding under §103(a)
that Cao and McAllister teach or suggest having a first multi-protocol label
switch, upon interruption of a reverse notification message, re-route
information transmissions to a second switch from a failed working path to a
protection path as recited in independent claim 17.
ORDER
We reverse the Examiner's rejection of claims 17-24.
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We have entered a new ground of rejection under 37 C.F.R. §
41.50(b) for claims 1-16 under 35 U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that "[a] new ground of
rejection.., shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
REVERSED - 37 C.F.R. § 41.50(b)
KIS
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