Ex Parte Bell et al

Board of Patent Appeals and Interferences

Jan 30, 2004

08870600 (B.P.A.I. Jan. 30, 2004)

1
The opinion in support of the decision being entered
today was not written for publication and is
not binding precedent of the Board
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte ROBERT T. BELL
and RICHARD B. PLATT
______________
Appeal No. 2001-2001
Application 08/870,600
_______________
ON BRIEF
_______________
Before THOMAS, JERRY SMITH and GROSS, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

REQUEST FOR REHEARING
In a decision dated June 26, 2003, the decision of the
examiner rejecting claims 41-60 under 35 U.S.C. § 103 was
affirmed. The subsequent, intervening prosecution history led
to the withdrawal of abandonment mailed on December 3, 2003.
In considering the substance of the Request for Rehearing,
we note initially the observations we made at page 7 of our
original decision where we correlated appellants' disclosed
invention with the basic concepts of Shimizu. We made reference
to the Summary of the Invention at pages 19 and 20, and the
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Application 08/870,600
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abstract of the disclosure at pages 45 and 46, and the showing
in disclosed Figure 3, which we observe is somewhat similar to
the combination of Shimizu's Figure 5A and Figure 5B.
Page 2 of the amendment filed on May 21, 1999 as Paper No.
12 canceled previous claims 21-40 and introduced new claims 41-
60. Previous versions of the claims pending were consistent
with the noted portions of the disclosure where the switching
circuitry was stated to actually "establish" the user information
data path over a switching network after the initial or first
endpoint received the response to the call requested from the
endpoint. It is the claimed version introduced in claim 41 that
now more broadly recites this feature as the "initiation of the
establishing" of a user information path over an information
transport network.
The Request for Rehearing, as well as the principal brief
and reply brief, have urged us to consider from Shimizu the
actual beginning through the ending of the signaling sequence
(of the signaling circuitry portion of claim 41) and the
corresponding teachings and suggestions of Shimizu as outlined
in our prior decision as comprising the initiating establishment
of a data path in the last clause of representative claim 41 on
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Application 08/870,600
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appeal. Our original opinion did not agree with this view, nor
do we now.
The actual language of representative claim 41 on appeal, in
our view, does not distinguish over the teachings and suggestions
of Shimizu of the process depicted in Figure 5A of first
reserving the bandwidth among various links in the system and
then in Figure 5B of the initiation of the establishment of a
user information path to the extent recited in the switching
circuitry clause at the end of representative claim 41 on appeal.
Appellants' disclosed invention performs two separate functions
according to the respective signaling circuitry and the switching
circuitry recited in this claim. Correspondingly, the bulk of
our prior decision clearly indicates that Shimizu performs a
separate signaling circuitry function to establish the
availability of the bandwidth from the beginning endpoint to the
ending endpoint through a separate path before the initiation of
the establishment or the actual establishment through separate
switching circuitry of the data path, as claimed. This is
detailed in our prior decision between pages 4 and 6 thereof.
The signal or message path in Shimizu and in claim 41 is
different than the actual data path or the path for data.
Appeal No. 2001-2001
Application 08/870,600
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The signaling message path from the beginning endpoint to the
ending endpoint in Shimizu and claim 41 is established or
determined before the actual establishment or the initiation of
the data path sequence in Shimizu and claim 41. Correspondingly,
the signaling message path in Shimizu is not used to convey data
or used as a data path as well outlined briefly at page 3 of our
original decision as to the embodiments in Shimizu shown in
Figures 1-5 and the separate embodiment shown in Figures 6 and 7.
The mere reservation of the bandwidth in Shimizu to the examiner,
to us, and we strongly believe to the artisan, is not equivalent
to or intended by Shimizu to correspond to the actual initiation
of the establishment of the data path according to the switching
circuitry clause of claim 41 on appeal.
According to the first embodiment in Shimizu, Figure 1
shows a separate cross connect network for data path communi-
cation purposes and a separate initial signaling path that is
for control signal communications. The signaling network 4 in
Figure 1 first transmits control signal from the transient
switches (TS) and the local switches (LS). Correspondingly, the
data itself is then transferred through the local switches (LS)
and through the ATM cross connect network illustrated at the top
portion of representative figure 1 of Shimizu only after the
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Application 08/870,600
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bandwidth allocation has been secured through the communication
from the beginning endpoint to the endpoint according to this
signaling network 4.
Our study of the prior decision in light of the Request
for Rehearing has lead us to note here what appears to be a
typographical error in the text at column 4 of Shimizu. More
specifically, we reproduced column 4, lines 7-11 at the bottom
of our prior decision page 5, which we again do here:
After the registration of the required
bandwidth has been successfully completed,
as shown in FIG. 5B, the communication is
carried out between the local switch 11 and
the local switch 32 through the cross connect
network in which VPI is defined in advance.
Considering the context of the disclosure, principally the
discussion at columns 3 and 4 as to the embodiment in Figures 1-5
of Shimizu, it appears that the reference in this just quoted
portion of Shimizu at column 4 should refer to Fig. 5A rather
than 5B. It is Figure 5A that allocates, reserves, acknowledges
and thus registers the bandwidth from LS11 to LS32, where a reply
or acknowledgment signal is sent indicating the registration of
the bandwidth back to the LS11, the originating endpoint. The
caption of Figure 5A indicates that the showing relates to the
bandwidth allocation sequence and the ultimate result at the
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Application 08/870,600
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bottom left of the Figure 5A is the complete establishment of
the bandwidth.
On the other hand, the showing in Figure 5B clearly
indicates the data communication through the separately discussed
cross connect network begins or is initiated, to the extent
recited at the end of representative claim 41 on appeal, by local
switch 11 through various intermediary switches to local switch
32 and back again to the originating local switch 11.
Paraphrasing column 4, lines 7-11 as correctly interpreted,
after the registration of the required bandwidth has been
successfully completed as shown in Figure 5A, communication is
initiated at and carried out between the local switch 11 and the
local switch 32 through the cross connect network according to
the showing in Figure 5B. The structure to effect this is shown
in Figures 1 and 2.
Thus, we are unpersuaded that we have erred in our
interpretation of Shimizu. Clearly, when taken in light of
the teachings and showings of Shimizu, the subject matter of
independent claim 41 as representative of all claims on appeal,
clearly would have been obvious to the artisan within
35 U.S.C. § 103.
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Application 08/870,600
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In view of the foregoing, appellants' Request for Rehearing
is granted to the extent that we have in fact reviewed our
findings but is denied as to making any change therein.
REHEARING DENIED
James D. Thomas )
Administrative Patent Judge )
)
)
)
Jerry Smith ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Anita Pellman Gross )
Administrative Patent Judge )

JDT/cam
Appeal No. 2001-2001
Application 08/870,600
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Barton E. Showalter, Esq.
BAKER & BOTTS, LLP
2001 Ross Avenue
Dallas, TX 75201