Ex Parte Valdez et al

Patent Trials and Appeals Board

Mar 21, 2014

11091158 - (D) (P.T.A.B. Mar. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHN VALDEZ, AMIT PATADIA,
VAMSHI GILLIPALLI, LAN PHAM,
VIVEK PACHAIYAPPAN, PETER SWAMIDAS,
and JOHN LESLIE
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Appeal 2011-002805
Application 11/091,158
Technology Center 2400
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Before ELENI MANTIS MERCADER, DENISE M. POTHIER, and
PATRICK M. BOUCHER, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Pursuant to 37 C.F.R. § 41.52, Appellants have submitted a timely
Request for Rehearing dated February 24, 2013 (hereafter the “Request”),
requesting rehearing of the December 24, 2013 opinion (hereafter the
“Opinion”) affirming the Examiner’s rejection of claims 1-20 under § 103.
Opinion (Op.) 1.
Appeal 2011-002805
Application 11/091,158

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We have reconsidered the Opinion in light of Appellants’ comments
in the Request and find no errors. We, therefore, decline to change our prior
decision for the following reasons.
As stated in the Opinion, the Examiner took Official Notice of certain
findings of facts. Op. 3-4 (citing Ans. 5). Appellants argue that “certain
portions of the Official Notice remain unsupported by documentary
evidence.” Request 3. Yet, as noted in the Opinion, Appellants did not
traverse these factual findings adequately. See Op. 7.
Specifically, Appellants have made general allegations that the
features the Examiner took Official Notice of are not well known. See id.
(citing App. Br. 12-13; Reply Br. 2-3). Such bald assertions are insufficient
to challenge the Examiner’s taking of Official Notice. See In re Boon, 439
F.2d 724, 728 (CCPA 1971) (indicating an applicant has the right to
challenge the official notice and demand evidence in support thereof,
provided such a challenge is accompanied by adequate information or
argument that creates a reasonable doubt regarding the circumstances
justifying the official notice); cf. In re Perkins, 346 F.2d 981 (CCPA 1965).
By failing to provide adequate information or argument to create reasonable
doubt (see Op. 7), Appellants have not sufficiently challenged the
Examiner’s taking of certain facts in the rejection as well known. We,
therefore, disagree that we “misapplied the standard for assessing the
propriety and content of facts under Official Notice.” Request 2.
Even so, the Examiner provides some support for the findings that are
stated to be well-known and for concluding claims 1-20 are obvious. See
Op. 6 (citing Ans. 20, which discusses Chen and Rajala); see also
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Application 11/091,158

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Ans. 19-20. These references discuss protocol conversion in the data link
and application layers. Op. 5-6. Conspicuously absent from Chen and
Rajala, as well as from McZeal and Gbaguidi, are discussions of protocol
conversions in layers of the network stack (e.g., the network or transport
layer) other than those discussed (e.g., data link and application layers).
Absent some evidence to the contrary, we find the Examiner’s findings
reasonable that protocol conversions on data link and application layers
occur without protocol conversions on other layers of the network stack.
Beyond discussing the Examiner’s taking of Official Notice and
contrary to Appellants’ contentions (see Request 3-4), the Opinion states
what the evidence of record suggests to an ordinarily skilled artisan in the
context of the obviousness rejection. Op. 6. Specifically, given the
teachings of the cited references, we indicate what ordinarily skilled artisans
would have recognized when accounting for the inferences that they would
have employed. See Op. 6. That is, “[a] person of ordinary skill is also a
person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. As
stated above, having no express teaching in the cited references that the
protocol conversions taught on the data link and application layers also
occur on other layers of the network stack suggests to an ordinarily skilled
artisan that the data link and application layer protocol conversions occur
without converting on at least one of the network or transport layer protocols
as recited.
Lastly, Appellants assert that we presented a new ground of rejection
in the Opinion. Request 5. Specifically, Appellants argue that McZeal’s
Figure 3 was relied upon to teach providing a user interface and not to teach
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Application 11/091,158

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making protocol conversions. Id. Ultimately, “whether a rejection is
considered ‘new’ in a decision by the [B]oard” hinges on “whether
[applicants] have had fair opportunity to react to the thrust of the rejection.”
In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011) (internal quotation
marks omitted). Pointing to McZeal’s Figure 3 in the Opinion illustrates
visually the example of a data link protocol conversion between Ethernet
and wireless protocols discussed by Examiner in the rejection. See Op. 6
(citing Ans. 5, 19). At most, this discussion in the Opinion merely
elaborates on the Examiner’s position. See In re Oetiker, 977 F.2d 1443,
1445-46 (Fed. Cir.1992). The basic thrust of the rejection has not changed,
and Appellants have had a fair opportunity to react to the thrust of the
rejection, which discusses examples of data link protocol conversions.
We have considered the arguments raised by Appellants in the
Request, but the arguments are not persuasive to find that the original
Opinion was in error. Based on the record before us now and in the original
appeal, we are still of the view that the Examiner did not err in rejecting
claims 1-20.
We have granted the Request to the extent that we have reconsidered
our Opinion of December 24, 2013, but we deny the request with respect to
making any changes therein.

REHEARING DENIED

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