Ex Parte Graves et al

Board of Patent Appeals and Interferences

Jun 18, 2012

10959007 (B.P.A.I. Jun. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID ANDREW GRAVES and SREERUPA SEN
____________

Appeal 2010-002037
Application 10/959,007
Technology Center 2400
____________

Before JOSEPH L. DIXON, LANCE L. BARRY, and
ANDREW J. DILLON, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-22. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

Appeal 2010-002037
Application 10/959,007
2
INVENTION

The following claim illustrates the invention on appeal.
1. A method of verifying network routing information,
the method comprising:

accessing a machine-readable map that describes a first
network route associated with a network router;

accessing the network router to obtain network routing
information describing a second network route;

comparing the machine-readable map with the network
routing information;

determining whether there are any differences between
the machine-readable map and the network routing information;
and

provided there is one or more differences, generating a
report that includes a message describing the one or more
differences.

REJECTIONS
Claims 1-5, 7-12, 14-19, and 21 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by U.S. Patent (Application Pub.) No.
2002/0141346 Al ("Garcia").
Claims 6, 13, 20, and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Garcia and U.S. Patent No. 7,206,289 B2
("Hamada").

Appeal 2010-002037
Application 10/959,007
3
DISCUSSION
Based on the Appellants' arguments, we will decide the appeal of the
anticipation rejection of claims 1, 2, 4, 5, 7-9, 11, 12, 14-16, 18, 19, and 21
on the basis of claim 1 and the appeal of the obviousness rejection of
claims 6, 13, 20, and 22 on the basis of claim 6. See 37 C.F.R.
§ 41.37(c)(1)(vii). Based on the Appellants' arguments, we will decide the
appeal of the anticipation rejection of claims 3, 10, and 17 on the basis of
representative claim 3. See id.

ANTICIPATION REJECTION OF CLAIMS 1, 2, 4, 5, 7-9, 11, 12, 14-16, 18, 19,
AND 21 AND OBVIOUSNESS REJECTION OF CLAIMS 6, 13, 20, AND 22
The issue before us follows: did the Examiner err in finding that
Garcia would have taught the limitations of representative claim 1 and that
Garcia and Hamada would have suggested the limitations of representative
claim 6?
The Examiner finds that Garcia teaches the limitations of claim 1 and
that Garcia and Hamada would have suggested the limitations of claim 6.
(Ans. 3-4, 5-6.)
The Appellants argue that "[a]s described with reference to steps 605
and 610 of flowchart 600, an embodiment of the present invention is capable
of determining whether the subnet mask has been replaced with an un-
authorized modification. . . . Garcia does not teach or suggest this feature."
(App. Br. 10.)
"[T]he PTO gives claims their 'broadest reasonable interpretation.'" In
re Bigio, 381 F.3d 1320, 1324, (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
Appeal 2010-002037
Application 10/959,007
4
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184, (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321(Fed. Cir.
1989)).
Here, the Appellants' argument is not commensurate with the
limitations of representative claims 1 or 6. The Appellants argue limitations
not recited in the claims. We decline to read the argued limitations into the
claims from the Specification.
The Appellants also use the Reply Brief to introduce the following
new arguments with respect to claims 2, 9, and 16: "Garcia does not disclose
correcting network routing information, but simply discloses disseminating
the link information that offers the shortest distance from the router i to the
head node m of the link." (Reply Br. 1.)
"Any bases for asserting error, whether factual or legal, that are not
raised in the principal brief are waived." Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (informative). See also Optivus Tech., Inc. v. Ion
Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue not
raised by an appellant in its opening brief . . . is waived.") (citations and
quotation marks omitted).
Here, the Examiner's findings that Garcia teaches the limitations of
claims 2, 9, and 16 (Ans. 4.) are identical to those in the Final Rejection
(p. 3), from which the instant appeal was taken. Because the findings are
identical, we find nothing that would have prompted the new argument in
the Reply Brief. The Appellants could have made the argument in their
Appeal Brief. The term "Reply Brief" is exactly that, a brief in reply to new
rejections or new arguments set forth in an Examiner’s Answer. The
Appellants may not present arguments in a piecemeal fashion, holding back
Appeal 2010-002037
Application 10/959,007
5
arguments until an examiner answers the original brief. This basis for
asserting error is waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Therefore, we conclude that the Examiner did not err in finding that
Garcia would have taught the limitations of representative claim 1 and that
Garcia and Hamada would have suggested the limitations of representative
claim 6.

ANTICIPATION REJECTION OF CLAIMS 3, 11, AND 17
The issue before us follows: did the Examiner err in finding that
Garcia would have taught the limitations of representative claim 3.
Representative claim 3 recites: "[t]he method as recited in Claim 1,
further comprising: generating a script of instructions for correcting the
network routing information provided there is the one or more differences."
We agree with the Examiner's findings that Garcia's Figures 1- 4
comprise a script of instructions. (Ans. 7.) More specifically, Garcia's
Figures 1-4 show pseudocode procedures INIT-PDA, NTU, MTU, and
MPDA, respectively. (Garcia ¶¶ [0057]-[0060].) The Appellants argue
against different parts of the reference, viz., "that [the] information [in the
Garcia's LSU messages] is [not] in the form of a script language . . . ."
(Reply Br. 4.) "Arguing about different parts of the reference that those
aforementioned 'do[es] not . . . explain why the Examiner's explicit fact
finding is in error.'" Ex parte Nanja, 2011 WL 1826811, at *3 (BPAI May
9, 2011)(quoting Ex parte Belinne, No. 2009-004693, 2009 WL 2477843, at
*4 (BPAI Aug. 10, 2009) (informative).) Therefore, we conclude that the
Examiner did not err in finding that Garcia would have taught the limitations
of representative claim 3.
Appeal 2010-002037
Application 10/959,007
6

DECISION
We affirm the rejection of claim 1 and that of claims 2, 4, 5, 7-9, 11,
12, 14-16, 18, 19, and 21, which fall therewith.
We affirm the rejection of claim 6 and that of claims 13, 20, and 22,
which fall therewith.
We affirm the rejection of claim 3 and that of claims 10 and 17, which
fall therewith.
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

tkl