Ex Parte Singh et alDownload PDFPatent Trial and Appeal BoardDec 21, 201613360265 (P.T.A.B. Dec. 21, 2016) Copy Citation 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. 13/360,265 01/27/2012 Rajnath Singh 064731.0869 1308 5073 7590 12/23/2016 RAKFR ROTTST T P EXAMINER 2001 ROSS AVENUE DANIEL JR, WILLIE J SUITE 600 DALLAS, TX 75201-2980 ART UNIT PAPER NUMBER 2462 NOTIFICATION DATE DELIVERY MODE 12/23/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ptomaill @bakerbotts.com ptomai!2 @ bakerbotts .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAJNATH SINGH, GUOLIANG WU, and DAVID TRAYLOR Appeal 2016-004905 Application 13/360,2651 Technology Center 2400 Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Fujitsu Limited. Br. 3. Appeal 2016-004905 Application 13/360,265 STATEMENT OF THE CASE2 The Invention Appellants' disclosed and claimed inventions relate to a method and system for preventing traffic loss caused by wait-to-restore mechanisms in service protection networks. Spec. 11. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphasis added to contested limitation): 1. A method for preventing traffic loss, comprising: transmitting user traffic over an automatic protection switching ("APS") connection with revertive operation between a first switch and a second switch, the APS connection including a working path and a protect path; determining that the working path on the APS connection has failed; moving user traffic to the protect path of the APS connection; initiating a wait-to-restore mode including a wait-to- restore time period associated with the first switch; upon termination of the wait-to-restore time period of the first switch, maintaining traffic on the protect path until a message designating the working path is received on the protect path; and upon receiving a message designating the working path, switching user traffic to the working path. 2 Our decision relies upon Appellants' Appeal Brief ("Br.," filed Aug. 7, 2015); Examiner's Answer ("Ans.," mailed Jan. 21, 2016); Final Office Action ("Final Act.," mailed Jan. 29, 2015); and the original Specification ("Spec.," filed Jan. 27, 2012). 2 Appeal 2016-004905 Application 13/360,265 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Huang US 2003/0117950 A1 June 26, 2003 Ma et al. ("Ma") US 2012/0182861 A1 July 19, 2012 Rejection on Appeal Claims 1—18 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Ma and Huang. Ans. 4. CLAIM GROUPING Based on Appellants' arguments (Br. 13—29), we decide the appeal of the rejections of claims 1—3, 6—18 on the basis of representative claim 1. We decide the appeal of separately argued claims 4 and 5, infra. ISSUES Appellants argue (Br. 13—24) the Examiner's rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination of Ma and Huang is in error. These contentions present us with the following issues: (a) Did the Examiner err in rejecting claim 1 under § 103 because Ma and Huang purportedly teach away from the suggestion combination? (b) Did the Examiner err in finding the cited prior art combination teaches or suggests the limitation of upon termination of the wait-to-restore time period of the first switch, maintaining traffic on the protect path until a message designating the working path is received on the protect path; as recited in claim 1? 3 Appeal 2016-004905 Application 13/360,265 ANALYSIS In reaching this Decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments which Appellants could have made but chose not to make in the Brief so that we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(l)(iv). We disagree with Appellants' arguments with respect to claims 1, 4, and 5, and we incorporate herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. (a) Appellants contend "[a]s Ma uses the G.8031 Standard, which only uses 1-phase switching, Ma teaches away from the 3-phase switching implemented by Huang." Br. 18. Our reviewing court guides, "in general, a reference will teach away if it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). We do not find that to be the case here. Our reviewing court instructs that the mere failure of a reference to mention alternatives known in the art does not constitute a teaching away from using the known elements. See DePuy Spine, Inc. v. Medtronic 4 Appeal 2016-004905 Application 13/360,265 Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference does not teach away [. . .] if it merely expresses a general preference for an alternative invention hut does not 'criticize, discredit, or otherwise discourage' investigation into the invention claimed"). Here, Ma expresses a use of states specified in G.8031, and Appellants have not provided any evidence that Ma discourages or discredits use of other approaches. Appellants do not present any citation to Huang, nor do we find any section in Huang, corresponding to a "3-phase APS operation," as argued by Appellants. Instead, Appellants rely upon a different reference — Martin — to purportedly show Huang uses a 3-phase APS operation. Br. 18. The Martin reference, not cited nor relied on by the Examiner in rejecting claim 1, is not properly presented for our consideration. We find Appellants' allegations that portions of the Huang reference at issue are representative of the teachings of the Martin reference are mere attorney argument. Id. Attorney arguments and conclusory statements unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). As such, we find Appellants' teaching away argument is not persuasive. Appellants further argue "the two protection network architectures represent different principles of operation." Br. 18—19.3 However, contrary 3 Similarly, an argument that the system is rendered "inoperable for its intended purpose" is a "teach[] away" argument. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (The court concluded that in effect, "French teaches away from the board's proposed modification" because "if the 5 Appeal 2016-004905 Application 13/360,265 to Appellants' argument that the combination of Ma and Huang would have changed the references' principle of operation, it is well settled that "a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements." In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for obviousness whether a secondary reference's features can be bodily incorporated into the structure of the primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Supreme Court has held that "analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner, consistent with this Supreme Court holding, explicitly identified that an ordinarily skilled artisan could "combine the teachings of Ma and Huang to have the feature(s) upon receiving a message designating the working path, switching user traffic to the working path, in order to provide a level of protection for connections, as taught by Huang." Final Act. 3. See also KSR, 550 U.S. at 417 ("When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it... . If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability."). French apparatus were turned upside down, it would be rendered inoperable for its intended purpose"). The Federal Circuit has held "[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). 6 Appeal 2016-004905 Application 13/360,265 No persuasive evidence has been identified by Appellants that discredits the Examiner's combination of Ma and Huang or shows that the combination would result in an unpredictable variation or could not be implemented by an ordinarily skilled artisan. Therefore, we are not persuaded the Examiner erred. (b) Appellants contend: Ma does not "maintain[] traffic on the protect path until a message designating the working path is received on the protect path" upon termination of a wait-to-restore time period of the first switch as claimed, but instead merely "maintains normal traffic signal. . . until a Wait-to Restore timer expires.". Br. 21. Additionally, "the only thing that is received at the node in question is an "acknowledgment" that the previous request was received by another node. There is no teaching or suggestion in Huang that this acknowledgment message includes information or a designation of the working path." Br. 23. Claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) Under the broadest reasonable interpretation, we agree with the Examiner's finding that Huang's Link Label Restore Request message (Fig. 7, step 708) teaches or at least suggests the disputed limitation "a message designating the working path is received," as recited in claim 1. (Ans. 12, citing Huang | 52, Fig. 7). We agree with the Examiner because 7 Appeal 2016-004905 Application 13/360,265 Huang sends this Link Label Restore Request upon termination of the wait- to-restore time and upon receipt of this message Huang's end node bridges the traffic (step 714) from the backup bundle to the now-working bundle on the recovered fiber. Id. Furthermore, we agree with the Examiner that Appellants are improperly arguing the references separately. Appellants have not addressed the combination of prior art references as a whole, but instead argues the merits of Ma and Huang individually. See Keller, 642 F.2d at 425 ("The test for obviousness is not. . . that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art"). Moreover, "[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co., 550 U.S. at 416. We disagree with Appellants' contention because the Examiner has clearly set forth the basis for the rejection, including the specific portions of the references relied upon for each contested limitation, including the motivation to combine the references in the manner suggested. Specifically, the Examiner cites Huang, not Ma, for teaching the "message" received portion of the contested limitation. Ans. 11—12. We also find Appellants have not shown the claimed combination of known elements yields any unexpected results, or that the Examiner's reasoning to combine the teachings of Ma and Huang "to have the feature(s) upon receiving a message designating the working path, switching user 8 Appeal 2016-004905 Application 13/360,265 traffic to the working path, in order to provide a level of protection for connections," fails to provide articulated reasoning with some rational underpinning to support the legal conclusion of obviousness, as required under KSR. Final Act. 3, see also KSR at 418. We note Appellants did not file a Reply Brief to rebut the Examiner's factual findings and legal conclusions. Accordingly, we find Appellants have not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner's reading of the contested limitations on the cited prior art. Therefore, we sustain the Examiner's obviousness rejection of independent claim 1, and claims 2, 3, and 6—18, which fall therewith. See Claim Grouping, supra. §103 Rejection of Dependent Claims 4 and 5 While Appellants raised additional arguments for patentability of dependent claims 4 and 5, rejected on the same basis as claim 1 (Br. 24—29), we find that the Examiner has rebutted each of those arguments in the Answer by a preponderance of the evidence. Ans. 12—15. We note Appellants, not having filed a Reply Brief, has not rebutted the Examiner's findings and legal conclusions in the Answer. Therefore, we adopt the Examiner's findings and underlying reasoning, which we incorporate herein by reference. Consequently, we find no reversible error in the Examiner's rejection of dependent claims 4 and 5. 9 Appeal 2016-004905 Application 13/360,265 CONCLUSION The Examiner did not err with respect to the obviousness rejection of claims 1—18 under 35 U.S.C. § 103(a) over the cited prior art combination of record, and we sustain the rejection. DECISION We affirm the Examiner's decision rejecting claims 1—18. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation