11750446 (P.T.A.B. Feb. 27, 2014)

Ex Parte Yuan et al

Patent Trial and Appeal BoardFeb 27, 2014

11750446 (P.T.A.B. Feb. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CATHERINE YUAN, YANGBING LI, MILIND KULKARNI, RAGHU RAJAN, and VIKAS MITTAL ____________________ Appeal 2011-0100601 Application 11/750,446 Technology Center 2400 ____________________ Before MAHSHID D. SAADAT, JEAN R. HOMERE, and JOHNNY A. KUMAR, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is Fujitsu Limited. (App. Br. 3.) Appeal 2011-010060 Application 11/750,446 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) (2002) from the Examiner’s final rejection of claims 1-22. (App. Br. 5.) We have jurisdiction under 35 U.S.C. § 6(b) (2008). We affirm. Appellants’ Invention Appellants invented a method and system for determining whether a network element (10) is in an active or standby state. (Spec. 3:7-11.) In particular, after provisioning a path (32) through modules (24) of the network element (10), a client (28) provides an optical signal along the provisioned path (32) while a controller (34) monitors the path (32) to determine whether all the modules (24) are operating in good working order. In response to confirming that the modules (24) are operating properly, the controller (34) reports that the modules (24) are in active state. (Spec. 6:23– 7:23; Fig. 1.) Illustrative Claim Independent claim 1 further illustrates the invention. It reads as follows: 1. A method for determining an active/standby state of one or more modules of a network element, comprising: provisioning a path through one or more modules of a network element, the path for providing a service; introducing a signal into the path; monitoring the path; establishing that the service is ready in accordance with the monitoring; and determining that the one or more modules are in an active state in response to establishing that the service is ready. Appeal 2011-010060 Application 11/750,446 3 Prior Art Relied Upon The Examiner relies on the following prior art as evidence of unpatentability: Madonna US 5,596,569 Jan. 21, 1997 Hurtta US 6,226,261 B1 May 1, 2001 Fukashiro US 2002/0093712 A1 July 18, 2002 Rejections on Appeal The Examiner rejects the claims on appeal as follows: Claims 1, 2, 4-7, and 22 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Fukashiro. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Fukashiro and Hurtta. Claims 8, 9, 11-16, and 18-21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Fukashiro and Madonna. Claims 10 and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Fukashiro, Hurtta, and Madonna. ANALYSIS We consider Appellants’ arguments seriatim as they are presented in the Appeal Brief, pages 10-13, and the Reply Brief, pages 2-3. Dispositive Issue: Under 35 U.S.C. § 102(b), did the Examiner err in finding Fukashiro describes determining that a network element module is in an active state in response to establishing that the service is ready in accordance with monitoring the path where the module is located, as recited in claim 1? Appeal 2011-010060 Application 11/750,446 4 Appellants argue that Fukashiro does not describe the disputed limitations emphasized above. (App. Br. 10-12, Reply Br. 2-3.) In particular, Appellants argue even if Fukashiro discloses establishing that a switch is operating normally (ready), such disclosure does not necessarily describe that the switch is in an active state. (App. Br. 10-12, Reply Br. 2- 3.) In response, the Examiner finds, because establishing that the optical switch is in working condition (ready) is a necessary precursor for determining that the switch is in an active state, Fukashiro’s disclosure that the switch is in working condition describes that the switch is in an active state. (Ans. 19-20.) On the record before us, we find no error in the Examiner’s anticipation rejection. We note at the outset Appellants do not dispute the Examiner’s finding Fukashiro’s disclosure of determining that a switch is in working condition describes that the switch is ready. However, Appellants dispute the Examiner’s finding that the cited disclosure also describes that the switch is in an active state. Therefore, the pivotal issue before us turns on whether Fukashiro’s disclosure that a switch is in good working order (ready) describes that the switch is also in an active state. We answer this inquiry in the affirmative. Appellants’ Specification indicates states in part: “[S]ervice readiness may be used to determine the active/standby states for modules 24. A path 32 through modules 24 providing the service may be provisioned and monitored. When the service is ready, modules 24 may be designated to have an active state.” (Spec. 5:9-13 (emphasis added).) Appeal 2011-010060 Application 11/750,446 5 Pursuant to the cited portion of Appellants’ Specification, once the module has been determined to be ready, it can likewise be construed as being in an active state.2 Consequently, we agree with the Examiner that Fukashiro’s disclosure of the switch being ready also describes that the switch is in an active state. It follows Appellants have not shown error in the Examiner’s rejection of claim 1. Regarding claims 2, 4-7, and 22, Appellants reiterate substantially the same arguments submitted for patentability of claim 1 above. As discussed above, these arguments are not persuasive. See 37 C.F.R. § 1.37(c)(1)(vii). Regarding the obviousness rejections of claims 3 and 8-21, Appellants’ reiteration of the above arguments is not persuasive for the foregoing reasons. (App. Br. 12-13.) DECISION We affirm the Examiner’s rejections of claims 1-22 as set forth above. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED bab 2 Claim construction is a question of law, which is reviewed de novo. See In re Donaldson Co., 16 F.3d 1189, 1192 (Fed. Cir. 1994). Following the guidance of the Federal Circuit, we also perform de novo review of the Examiner’s claim construction.