Ex Parte Wong

Board of Patent Appeals and Interferences

Nov 15, 2011

10292697 (B.P.A.I. Nov. 15, 2011)

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).

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Application 10/292,697

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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
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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
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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
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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).
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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).
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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
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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.

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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.

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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

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