Ex Parte Wilerson et al

Patent Trial and Appeal Board

Aug 21, 2014

12479265 (P.T.A.B. Aug. 21, 2014)

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.
12/479,265 06/05/2009 Patrick Wilerson 6270/213 (SPL-0142) 1102
46260 7590 08/21/2014
BGL/Power Measurement Limited - Chicago
PO BOX 10395
CHICAGO, IL 60610
EXAMINER
KIM, HEE SOO
ART UNIT PAPER NUMBER
2457
MAIL DATE DELIVERY MODE
08/21/2014 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 PATRICK WILKERSON and JOHN C. VAN GORP
____________

Appeal 2012-005075
Application 12/479,265
Technology Center 2400
____________

Before MAHSHID D. SAADAT, KEN B. BARRETT, and
BETH Z. SHAW, Administrative Patent Judges.

SHAW, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–23. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.

INVENTION
The invention relates to a system and method for automated discovery
of devices on a network. (See Spec. ¶ 9.)
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Application 12/479,265
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Claim 1 is illustrative and reproduced below:
1. A system for discovering devices on a network
comprising:
one or more devices on the network that broadcast for access
to the network, wherein the broadcast includes identification
information for the broadcasting device;
a dynamic network address assignment server that receives
the broadcast and leases an address to the broadcasting device;
a device address translator coupled with the dynamic
network address assignment server that is updated with the leased
address and assigns a host name to the device, wherein the host name
includes the identification information and the identification
information is different from the leased address; and
a monitoring server communicating with the dynamic
network address assignment server that discovers devices on the
network based on the host name.

REJECTIONS AT ISSUE
The Examiner rejected claims 1–4, 8–10, 22, and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Cochran et al. (US 7,340,512 B2, issued Mar.
4, 2008) (“Cochran”), and Steindl (US 2005/0163118 A1, published July 28,
2005) (Ans. 4–11).
The Examiner rejected claims 18–21 under 35 U.S.C. § 103(a) as
unpatentable over Cochran, Steindl, and Humpleman et al. (US
2005/0010866 A1, published Jan. 13, 2005) (“Humpleman”) (Ans. 11).
The Examiner rejected claims 5-7, 11-17, 22 and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Cochran, Steindl, and Official Notice (Ans. 6-
9).

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ISSUES
Appellants’ contentions present us with the following issues:
Did the Examiner err in finding the combination of Cochran and
Steindl teaches or suggests the host name includes the identification
information and the identification information is different from the leased
address, as recited in claim 1?
Did the Examiner err in finding the combination of Cochran, Steindl,
and Official Notice teaches or suggests identification information from the
devices is stored in a DHCP option field, as recited in claim 11?

ANALYSIS
Claims 1–10 and 18–21
We agree with Appellants’ contentions that the Examiner erred in
finding Cochran and Steindl teach or suggest “the host name includes the
identification information,” as recited in independent claims 1 and 18. (See
App. Br. 4–6, 8.) The Examiner finds Steindl’s “obtaining the identifier via
the host name” in paragraph 55 teaches or suggests a host name includes the
identification information. (See Ans. 16.) As pointed out by Appellants
(Reply Br. 2), although Steindl teaches “[t]he new client obtains its identifier
via the ‘host name’” (Steindl, ¶ 55), Steindl does specify whether the host
name itself in fact includes the identifier. Therefore, we do not sustain the
Examiner’s rejection of independent claims 1 and 18, and dependent claims
2–10 and 19–21.

Appeal 2012-005075
Application 12/479,265
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Claims 11–17 and 22–23
We disagree with Appellants’ contentions that the Examiner erred in
finding Cochran, Steindl, and Official Notice teach or suggest identification
information from the devices is stored in a DHCP option field, as recited in
independent claim 11. Appellants challenge the Examiner’s Official Notice
as improper (App. Br. 7). The Examiner provides RFC 2132 to show storing
identification information in a DHCP option field was well known in the art
(Ans. 18–19). Appellants respond by merely asserting “the Host Name field
is different than a DHCP option field” (Reply Br. 4). However, Appellants’
conclusory statements in the Appeal Brief and the Reply Brief do not
persuade us of error in the Examiner’s rejection.
Appellants argue for the first time in the Reply Brief the Examiner’s
rejection of claims 22 and 23 under the same rationale as for claims 1 and 5
is improper because the claims are not similar. (See Reply Br. 2–3.) Such
an argument is untimely and waived because Appellants argued claims 5-7,
11-17, 22, and 23 as a group in the Appeal Brief (see App. Br. 6-8) without
separate arguments concerning claims 22 and 23. See 37 C.F.R. §
41.37(c)(1)(iv) (failure of appellant to separately argue claims which
appellant has grouped together shall constitute a waiver of any argument that
the Board must consider the patentability of any grouped claim separately).
Therefore, we sustain the Examiner’s rejection of claims 11–17, 22, and 23.

DECISION
We reverse the rejection of claims 1–10 and 18–21.
We affirm the rejection of claims 11–17, 22, and 23.
No time period for taking any subsequent action in connection with
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this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
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