Ex Parte Sadot

Patent Trial and Appeal Board

Apr 22, 2013

11238924 (P.T.A.B. Apr. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/238,924 09/29/2005 Emek Sadot AVYA.51US01 8871
109149 7590 04/23/2013
Cochran Freund & Young/ AVAYA, Inc.
2026 Caribou Drive
Suite 201
Fort Collins, CO 80525
EXAMINER
ZHOU, YONG
ART UNIT PAPER NUMBER
2477
MAIL DATE DELIVERY MODE
04/23/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EMEK SADOT
____________

Appeal 2010-008727
Application 11/238,9241
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, JEFFREY S. SMITH,
and JOHN A. EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
methods to mitigate congestion in a backbone network associated with a
wireless network. The Examiner has rejected the claims as obvious and
anticipated. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The Real Party in Interest is Avaya Inc.
Appeal 2010-008727
Application 11/238,924

2
STATEMENT OF THE CASE
The claims relate to methods and an apparatus to mitigate congestion
in a backbone network associated with a wireless network. Embodiments of
the present invention mitigate congestion by reducing the occurrences of a
bridge data-processing system flooding out pre-authentication-related
packets, as well as some other types of packets, on multiple ports of the
bridge. See Abstract.
Claims 1-25 are appealed.2 Claims 1, 9, and 19 are independent. (App.
Br. 15-18). The claims have not been argued separately and therefore stand
or fall together. 37 C.F.R. § 41.37(c)(1)(vii). An understanding of the
invention can be derived from a reading of exemplary claim 1, which is
reproduced below:
1. An apparatus comprising:
a first network interface for transmitting a first media
access control address and a second media access control
address in a first network;
a second network interface for transmitting said second
media access control address in a second network, wherein said
second network interface refrains from transmitting said first
media access control address in said second network; and
a processor for bridging said first network and said
second network.

2 Appellant does not traverse the rejection of claim 26. (See App. Br. 11).
Appeal 2010-008727
Application 11/238,924

3
The claims are rejected as follows:3
1. Claims 1-4, 6-12, 16-22, 24, and 25 are rejected under 35
U.S.C. § 102(e) as being anticipated by Douglas.4 (Ans. 4-7).
2. Claims 5, 13-15, and 23 are rejected under 35 U.S.C. § 103(a)
as obvious over Douglas and Roese.5 (Ans. 7-8).
3. Claim 26 is rejected under 35 U.S.C. § 103(a) as obvious over
Douglas and Sato.6 (Ans. 8).

THE ANTICIPATION REJECTION
CONTENTIONS AND ISSUE
Claims 1-4, 6-12, 16-22, 24, and 25 stand rejected under 35 U.S.C. §
102(e) as being anticipated by Douglas. (Ans. 4-7). Appellant contends that
the filing date of Douglas, November 22, 2005, falls after Appellant’s
September 29, 2005, filing date. Appellant contends that the Examiner
applied the February 3, 2005, filing date of US 60/649,721, the priority date
of the Douglas underlying provisional application. Appellant contends the
Examiner relied upon Ex parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008)
(precedential). This reliance is improper, in Appellant’s view, because
Appellant anticipates that the Federal Circuit would overrule Yamaguchi in

3 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed Nov. 23, 2009) and the Answer (mailed Jan.
20, 2010). We have considered in this decision only those arguments
Appellant actually raised in the Brief. Any other arguments which Appellant
could have made but chose not to make in the Brief are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
4 Douglas, US 2006/0075131 A1, filed Nov. 22, 2005.
5 Roese, US 2003/0217151 A1, Nov. 20, 2003.
6 Sato, US 2004/0264364 A1, Dec. 30, 2004.
Appeal 2010-008727
Application 11/238,924

4
the then forthcoming Ex parte Giacomini (CAFC docket 2009-1400). (App.
Br. 12).
ANALYSIS
We do not find Appellant’s arguments to be persuasive. Appellant
does not argue that the provisional application lacks supporting disclosure
for the portion of Douglas relied upon by the Examiner. See Yamaguchi, 88
USPQ2d at 1609. We note that Giacomini has issued,7 but contrary to
Appellant’s supposition, Giacomini does not overrule Yamaguchi which held
that the provisions of Title 35 relating to “applications for patent” are
applied to provisional applications. (See Yamaguchi, 88 USPQ2d at 1609
(“The plain meaning of these provisions of Title 35 as noted above is
outlined in MPEP 2136.03(III) for establishing the critical reference date
under § 102(e) of a U.S. patent or U.S. application publication that is entitled
to the benefit of the filing date of a provisional application under §
119(e).”)). Giacomini similarly holds: “[t]herefore, an applicant is not
entitled to a patent if another’s patent discloses the same invention, which
was carried forward from an earlier U.S. provisional application or U.S. non-
provisional application.” (Giacomini, 612 F.3d at 1383).
We find the Examiner has not erred in rejecting claims 1-4, 6-12, 16-
22, 24, and 25 under 35 U.S.C. § 102(e).

7 In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010).
Appeal 2010-008727
Application 11/238,924

5
THE OBVIOUSNESS REJECTIONS
CLAIMS 5, 13-15, AND 23
Claims 5, 13-15, and 23 stand rejected under 35 U.S.C. § 103(a) as
obvious over Douglas and Roese. (Ans. 7-8). Appellant re-alleges his
argument that Douglas does not qualify as prior art. (App. Br. 13).
For the reasons discussed above, we sustain the rejection of claims 5,
13-15, and 23 under 35 U.S.C. § 103(a).
CLAIM 26
Claim 26 is rejected under 35 U.S.C. § 103(a) as obvious over
Douglas and Sato. (Ans. 8). Because Appellant does not reply to this ground
of rejection, we summarily sustain this rejection. See MPEP § 1205.02 (8th
ed., Rev. 8, July 2010) (“If a ground of rejection stated by the examiner is
not addressed in the appellant’s brief, that ground of rejection will be
summarily sustained by the Board.”).

SUMMARY
We affirm the rejection of claims 1-4, 6-12, 16-22, 24, and 25 under
35 U.S.C. § 102(e).
We affirm the rejection of claims 5, 13-15, 23, and 26 under 35
U.S.C. § 103(a).
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).

AFFIRMED

babc