Ex Parte Krelle

Patent Trial and Appeal Board

Feb 6, 2014

12061222 (P.T.A.B. Feb. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRIAN E. KRELLE
____________________

Appeal 2011-011547
Application 12/061,222
Technology Center 2400
____________________

Before: JAMES P. CALVE, LYNNE H. BROWNE,
and JILL D. HILL, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1-22. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION of
claims 1-22, pursuant to our authority under 37 C.F.R. § 41.50(b).
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CLAIMED SUBJECT MATTER
Claims 1, 12, and 22 are independent. Claim 1 is reproduced below.
1. An edge switch in a network, comprising:

a first module including logic configured to receive
multiple coupling signals from at least one user node;

a second module including logic, wherein for each
coupling signal the coupling signal indicates coupling one of
the at least one user nodes to multiple, different target nodes on
different network devices via one of at least one proxy servers,
the first module is configured to determine an identity of the
one of the at least one user nodes and an identity of the
multiple, different target nodes from the coupling signal, and
the second module includes logic configured to record the
identity of the one of the at least one user nodes, the identity of
the multiple, different target nodes on different network
devices, and a date and a time at which the coupling signal was
processed by the edge switch in an entry in a log; and

the log, wherein the log is maintained in a location on the
edge switch.

REJECTIONS
Claims 1-22 are rejected under 35 U.S.C. § 112 as failing to comply
with the written description requirement.
Claims 1-5, 10-16, 21, and 22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Martin (US 6,765,927 B1; iss. Jul. 20, 2004),
Kapoor (US 7,193,968 B1; iss. Mar. 20, 2007), and the Examiner’s taking of
Official Notice (Official Notice).
Claims 6-9 and 17-20 are rejected under 35 USC § 103 (a) as being
unpatentable over Martin, Kapoor, Official Notice and Yamada (US
2002/0042840 A1; pub. Apr. 11, 2002).
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ANALYSIS
Claims 1-22 for lack of written description
Each of independent claims 1, 12, and 22 recite a coupling signal that
“indicates coupling one of the at least one user nodes to multiple, different
target nodes on different network devices . . . .” The Examiner determined
that this limitation lacked a written description because the Specification
only describes the user node sending a coupling signal to couple to one of a
plurality of target notes and does not disclose a coupling signal being sent
from a user node to multiple, different target nodes on different network
devices as recited in claims 1, 12, and 22. Ans. 4, 11-12.
Appellant argues that the Specification describes at least one target
node and the phrase “at least one” does not limit the number of target nodes
to only one but instead describes any number of target nodes as long as there
is at least one target node. Reply Br. 4-5; App. Br. 8-9. Appellant argues
that the Specification therefore supports coupling multiple target nodes and
Figure 1 shows multiple target nodes 125a, 125b, 125c. Rely Br. 5 (citing
para. [0017]). Appellant also argues that paragraph [0020] discloses the
“decoupling from one of the target nodes” and a target node cannot be
decoupled from unless it is already coupled. Reply Br. 5; App. Br. 9-10.
We agree with the Examiner that Appellant’s Specification does not
reasonably convey to those skilled in the art that Appellant had possession of
the claimed subject matter as of the filing date of the present application.
Although this test does not depend on the presence or absence of literal
support in the Specification for the claim language, Appellant has not
established that the Specification discloses a coupling signal that indicates
coupling of one of the at least one of the user nodes to multiple, different
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Application 12/061,222

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target nodes on different network devices as recited in claims 1, 12, and 22.
We agree with Appellant that the Specification discloses a user node that can
be coupled to one or more target nodes. See Spec. 3-4, paras. [0017, fig. 1.
However, Appellant’s Specification discloses that a user node is coupled to
only one target node by a coupling signal. See Spec. 4, para. [0019]. For
example, paragraph [0064] upon which Appellant relies discloses that “[f]or
each coupling signal 160, the coupling signal 160 indicates coupling one of
the at least one user nodes 105 to one of the at least one target nodes 125 via
one of the at least one proxy servers 115.”1 Thus, for each coupling signal
the coupling signal indicates coupling of one of the at least one user nodes to
one of the multiple different target nodes. Appellant has not directed us to
any disclosure in which a coupling signal indicates coupling of one of the at
least one user nodes to multiple, different target nodes as recited in claims 1,
12, and 22. As such, we sustain the rejection of claims 1-22.

NEW GROUND OF REJECTION
We enter a NEW GROUND OF REJECTION of claims 1-22 under
35 U.S.C. § 112, second paragraph, for indefiniteness. The Examiner asserts
that claims 1, 12, and 22 call for a coupling signal that indicates coupling of
one of the at least one user nodes to multiple, different target nodes, whereas
Appellant contends that this limitation only requires a coupling signal to
indicate coupling of one user node to one of the at least one target nodes and
that this limitation only requires that the user node can be coupled to more

1 Paragraph [0065] discloses that “The one of the at least one coupling
signals 160 indicates a coupling of the one of the at least one user nodes 105
to one of the at least one target nodes 125 via the one of the at least one
proxy servers 115 . . . .” Spec. 14.
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than one target node irrespective of how many coupling signals may be used
to connect a single user node to more than one target node. Cf. Ans. 4, 11-
12 with Reply Br. 4-5; App. Br. 8-10. If a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring an
applicant to more precisely define the metes and bounds of the invention by
holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite. Ex parte Miyazaki, 89 USPQ2d 1207, 1211-12 (BPAI 2008)
(precedential). In view of these alternative claim constructions, we find that
claims 1, 12, and 22 are indefinite and reject claims 1-22 on that basis.
Claims 1-5, 10-16, 21, and 22 as unpatentable over Martin, Kapoor, and
Official Notice
Because we determine that claims 1, 12, and 22 are indefinite, we pro
forma reverse the rejection of those claims as an analysis of this rejection
would be based on a speculative interpretation of claims 1, 12, and 22. See
In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); In re Steele, 305 F.2d 859,
862-63 (CCPA 1962) (determinations as to obviousness cannot be made for
indefinite claims).
Claims 6-9 and 17-20 as unpatentable over Martin, Kapoor, Official Notice,
and Yamada
For the reasons discussed supra for the rejection of claims 1-5, 10-16,
21, and 22, we also reverse pro forma the rejection of claims 6-9 and 17-20.

DECISION
We AFFIRM the rejection of claims 1-22 for lack of an adequate
written description.
We REVERSE pro forma the prior art rejections of claims 1-22.
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As provided supra, we enter a NEW GROUND OF REJECTION:
Claims 1-22 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner….
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record….
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
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case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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; 37 C.F.R. § 41.50(b)

Vsh