Ex Parte WongDownload PDFBoard of Patent Appeals and InterferencesNov 15, 201110292697 (B.P.A.I. Nov. 15, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DAVID WONG ____________ Appeal 2009-008998 Application 10/292,697 Technology Center 2400 ____________ Before LANCE LEONARD BARRY, JOHN JEFFERY, and CAROLYN D. THOMAS, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Patent Examiner rejected claims 1-24. The Appellant appeals therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2009-008998 Application 10/292,697 2 INVENTION The Appellant describes the invention at issue on appeal as follows. A network device includes a network port, at least one register, and a network information receiver. The network port is configured to send and receive data packets. The at least one register contains configuration data related to the network port. The network information receiver is coupled with the network port and is configured to receive the data packet from the network port, extract low level data from the data packet, and update the at least one register based on the low level data. (Spec. 24.) ILLUSTRATIVE CLAIM 1. A network device comprising: a network port configured to send and receive data packets; at least one register containing configuration data related to said network port; and a network information receiver coupled with said network port and configured to receive the data packet from said network port, extract low level data from said data packet, and update said at least one register based on said low level data. REJECTION Claims 1-24 stand rejected under 35 U.S.C. § 102(b) as being anticipated by U.S. Patent No. 6,122,669 ("Crayford"). DISCUSSION Based on the Appellant's arguments, we will decide the appeal of claims 1-3, 10-12, 15-17, 19, and 21-24 on the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). Based on the dependencies of the claims, we will decide the appeal of claims 6-9 on the basis of claim 6. Based on the Appeal 2009-008998 Application 10/292,697 3 similarities of the claims, we will decide the appeal of claims 4 and 13 collectively and the appeal of claims 5 and 14 collectively. We will decide the appeal of claims 18 and 20 individually. Therefore, the issues before us follow. Did the Examiner err in finding that Crayford discloses at least one register containing data and updating the data in the register based on extracted data, as required by representative claim 1? Did the Examiner err in finding that Crayford discloses sending a data packet containing network device configuration information to a network device, updating data in a register data based on the network configuration information, and controlling the configuration of the network device according to the updated data in the register, as required by independent claim 6? Did the Examiner err in finding that Crayford discloses a network information receiver extracting data from a data packet if the packet is addressed to a media access control ("MAC") address of the network device, as required by dependent claims 4 and 13? Did the Examiner err in finding that Crayford discloses a network device sending a message to a client when the update to the register is complete, as required by dependent claims 5 and 14? Did the Examiner err in finding that Crayford discloses a network information receiver updating registers to control a parameter of a network device governed by a service level agreement, as required by dependent claim 18? Did the Examiner err in finding that Crayford discloses a network information receiver updating registers to control a flow control scheme Appeal 2009-008998 Application 10/292,697 4 configured within a network device to mitigate congestion, as required by dependent claim 20? CLAIMS 1-3, 10-12, 15-17, 19, AND 21-24 "It is axiomatic that anticipation of a claim under § 102 can be found only if the prior art reference discloses every element of the claim, and that anticipation is a fact question . . . ." In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). Here, Crayford describes its invention as follows. [A] multiport switch . . . controlling the communication of data frames between stations. The switch includes an address table for storing a plurality of address entries. The address entries include a plurality of portions. The switch also includes a control device coupled to the address table. The control device includes an address port register that is configured to receive an entry value representing a particular address entry in the address table. The control device also includes a data port register configured to receive data to be written to at least one of the plurality of portions in the particular address entry. (Col. 2, ll. 19-31.) Regarding representative claim 1, the Examiner makes the following findings. Crayford discloses the claim limitation "update said at least one register based on the low level data" where the register contains configuration data (col 3, lines 20-33; col 6, lines 35- 47; col 13, lines 48-14:45; col 18, lines 4-16; col 20, lines 45-62; Crayford discloses that the network of updating the address table (register in memory) used by the internal rules checker with and upon the reception of data from an untagged port, unsuccessful searches, or not finding a match. The data Appeal 2009-008998 Application 10/292,697 5 received at the address table comprises frames; frames of data contain low level data). (Ans. 11-12 (emphasis added).) The Appellant admits that "Crayford does update the address table, which may be contained in a register." (Appeal Br. 17.) Furthermore, it is uncontested that the data to be written to "at least one of the plurality of portions in the particular address entry" (col. 2, ll. 30-31) of the address table is extracted from one of the reference's data frames. "Silence implies assent." Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 572 (1985). The Appellant argues, however, that the Examiner "fails to point out where in Crayford that this 'register in memory' is the register that contains configuration data." (Reply Br. 2.) "[O]ur reviewing court has held that nonfunctional descriptive material cannot lend patentability to an invention that would have otherwise been anticipated by the prior art." Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative), aff'd, 191 Fed.Appx. 959 (Fed. Cir. 2006) (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006)). "[W]hen descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability." Mathias, 84 USPQ2d at 1279 (citing In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)). Furthermore, "[a]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.'' Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Appeal 2009-008998 Application 10/292,697 6 Although ''[s]uch statements often . . . appear in the claim's preamble,'' In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id. Here, because the phrase "configuration data related to said network port" in claim 1 does not alter the structure of the claimed network device, or merely states an intended use or purpose for the data, it cannot distinguish the claim from the reference in terms of patentability. Therefore, we conclude that the Examiner did not err in finding that Crayford discloses at least one register containing data and updating the data in the register based on extracted data, as required by representative claim 1. CLAIMS 6-9 The Examiner finds that in "c. 3, 11.51-67 and c. 4, 11.46- 65; Crayford discloses network stations with different configurations sending packets to a network device . . . ." (Ans. 6.) In contrast to claim 1, the phrase "network device configuration" in claim 6 does alter the structure of the claimed network device, i.e., the configuration of a network device is controlled according to the network device configuration data written into a register. Turning to the reference, the first part of Crayford cited by the Examiner mentions in pertinent part that "network stations 14 send and receive data packets to and from the multiport switch 12 via a media 18 and according to half-duplex Ethernet protocol" (col. 3, ll. 52-54). The second part of Crayford cited by the Examiner mentions in pertinent part a "MAC . . . protocol interface to support the routing of data packets between the Ethernet ports serving the network stations 14 and 16." (Col. 4, ll. 49-51). Appeal 2009-008998 Application 10/292,697 7 We agree with the Appellant, however, that "[t]he network stations 14 and 16 of Crayford are not disclosed as sending network device configuration information . . . ." (Appeal Br. 25.) The stations merely send unspecified data packets. Therefore, we conclude that the Examiner erred in finding that Crayford discloses sending a data packet containing network device configuration information to a network device, updating data in a register data based on the network configuration information; and controlling the configuration of the network device according to the updated data in the register, as required by independent claim 6. CLAIMS 4 AND 13 The Examiner finds that in "col 2, lines 19-31, col 4, lines 46-65, col 5, lines 24-39 and col 6, lines 14-47; Crayford discloses a network of sending and receiving data packets and stored in MAC . . . ." (Ans. 12.) [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Here, the first part of Crayford cited by the Examiner discloses in pertinent part "a multiport switch . . . controlling the communication of data frames between stations." (Col. 2, ll. 19-21.) The second part of Crayford cited by the Examiner discloses in pertinent part a "MAC . . . protocol interface to support the routing of data packets between the Ethernet ports Appeal 2009-008998 Application 10/292,697 8 serving the network stations 14 and 16." (Col. 4, ll. 49-51.) The third part of Crayford cited by the Examiner discloses in pertinent part "MAC[ ] ports 60 for sending and receiving data packets in half-duplex between the respective 10 Mb/s network stations 14 . . . and two 100 Mb/s MAC ports 62 for sending and receiving data packets in full-duplex between the respective 100 Mb/s network stations 16 . . . ." (Col. 5, ll. 25-32.) We agree with the Appellant, however, that the Examiner has not shown that Crayford's "switch itself has a MAC address or that it is configured to conditionally extract data from a data packet depending on whether the data packet is addressed to a MAC address of the switch." (Reply Br. 2.) Therefore, we conclude that the Examiner erred in finding that Crayford discloses an information receiver extracting data from a data packet if the packet is addressed to a MAC address of the network device, as required by dependent claims 4 and 13. CLAIMS 5 AND 14 The Examiner finds that in "col 2, lines 19-31, col 3, lines 23-33, col 4, lines 46-65, col 5, lines 24-39, and col 6, lines 14-47; Crayford discloses that the network of updating information in a register in memory . . . ." (Ans. 12.) We agree with the Appellant, however, that "those passages do not discuss Crayford's multiport switch sending a message to a client upon completion of an update of Crayford's registers." (Appeal Br. 23.) Therefore, we conclude that the Examiner erred in finding that Crayford discloses a network device sending a message to a client when the update to the register is complete, as required by dependent claims 5 and 14. Appeal 2009-008998 Application 10/292,697 9 CLAIM 18 The Examiner finds that in "col 4, lines 46-65, col 6, lines 58-68; Crayford discloses the network of making decision on [sic] whether or not storing information in storage based on the size of the chip and the level of an organization . . . ." (Ans. 13.) We agree with the Appellant, however, that "there is absolutely no discussion in th[ose] passage[s] of a service level agreement of a device governed by such an agreement, or of control of a parameter of such a device." (Appeal Br. 33.) Therefore, we conclude that the Examiner erred in finding that Crayford discloses a network information receiver updating registers to control a parameter of a network device which is governed by a service level agreement, as required by dependent claim 18. CLAIM 20 The Examiner finds that in "col 4, lines 46-65 and col 6, lines 14-47, col 17, lines 18-40; Crayford discloses the network of ensure the problems occurred [sic] when both devices try to access the register concurrently . . . ." (Ans. 13.) We agree with the Appellant, however, that "there is absolutely no discussion in those passages of . . . a flow control scheme configured to mitigate congestion, or updating registers to control such a flow control scheme." (Appeal Br. 34-35.) Therefore, we conclude that the Examiner erred in finding that Crayford discloses a network information receiver updating registers to control a flow control scheme configured within a network device to mitigate congestion, as required by dependent claim 20. Appeal 2009-008998 Application 10/292,697 10 DECISION We affirm the rejection of claim 1 and of claims 2, 3, 10-12, 15-17, 19, and 21-24, which fall therewith. We reverse the rejection of claims 4-6, 13, 14, 18, and 20, and of claims 7-9, which depend from claim 6. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART tkl Copy with citationCopy as parenthetical citation