Ex Parte Nagarajan

Board of Patent Appeals and Interferences

Jul 30, 2007

09587892 (B.P.A.I. Jul. 30, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RAMESH NAGARAJAN
____________________

Appeal 2007-1306
Application 09/587,8921
Technology Center 2600
____________________

Decided: July 30, 2007
____________________

Before: KENNETH W. HAIRSTON, JAY P. LUCAS, and
MARC S. HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Application filed June 6, 2000. The real party in interest is Lucent
Technologies, Inc.
Appeal 2007-1306
Application 09/587,892

Appellant’s invention relates to a method and apparatus for routing
traffic between fiber optic network elements in order to provide protection
against network failures. Rather than provide a fully redundant “dual-
homed” network, as in the prior art, Appellant retains a copy of a signal at a
particular network element, and routes the signal to an additional network
element, which is coupled to a dual-homed network element, either directly
or via another additional network element (Specification 3:13-21).
Claim 1 is exemplary:
1. A method of routing traffic between elements of a network
so as to provide protection against network failures, the method
comprising the steps of:

routing a given traffic demand from a first network
element to a second network element; and

processing the traffic demand in the second network
element such that a copy of a signal associated with the demand
is at least one of: (i) retained at the second network element,
while the signal is routed to at least one additional network
element; and (ii) routed to at least one additional network
element, while the signal is routed to at least one network
element other than the additional network element;

wherein the second network element is coupled to a first
dual-homed network element of a set of dual-homed network
elements, either directly or via a given network element
corresponding to said at least one network element other than
the additional network element; and

wherein a given network element corresponding to said
at least one additional network element is coupled to a second
dual-homed network element of the set of dual-homed network
elements, either directly or via another additional network
element.
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Application 09/587,892

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Al-Salameh US 5,742,774 Apr. 21, 1998
Russ US 5,781,535 Jul. 14, 1998
Claims 1-19 stand rejected under 35 U.S.C. § 103(a) as being obvious
over Russ in view of Al-Salameh.
Appellant contends that the Examiner erred in holding the subject
matter of claims 1-19 to be obvious, because Al-Salameh fails to teach the
claim limitations that the Examiner concedes are not met by Russ, and
because the Examiner failed to identify a cogent motivation for combining
the references to achieve the instant invention. The Examiner contends that
Al-Salameh teaches the claim limitations not found in Russ and the
references would have motivated the person of ordinary skill in the art to
make the combination.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this decision. Arguments that Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2004).2

2 Appellant has not presented any substantive arguments directed separately
to the patentability of the dependent claims or related claims in each group,
except as will be noted in this opinion. In the absence of a separate
argument with respect to those claims, they stand or fall with the
representative independent claim. See In re Young, 927 F.2d 588, 590, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991). See also 37 C.F.R. § 41.37(c)(1)(vii).

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Application 09/587,892

ISSUE
There are two principal issues in the appeal before us.
The first issue is whether the Examiner erred in holding that Al-
Salameh teaches the claim limitations not present in Russ, specifically a
fiber optic network such that “[a] second network element is coupled to a
first dual-homed network element … either directly or via a given network
element … other than the additional network element,” and that the
additional network element “is coupled to a second dual-homed network
element … either directly or via another additional network element”
(Appellant’s claim 1).
The second issue is whether it was error for the Examiner to conclude
that the person having ordinary skill in the art, being presented with the
combined teachings of Russ and Al-Salameh, would have been motivated to
modify Russ to incorporate the dual-homing network architecture of Al-
Salameh.
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. Appellant invented a method and apparatus for routing traffic
between elements of an optical fiber network so as to provide protection
against network failures (Br. 2:20-21).
2. Appellant teaches that the prior-art “dual-homing” failure
protection approach, which provides a fully redundant set of network
elements to carry a fully redundant data transmission “demand,” may be
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used to provide protection against network failures, but leads to excess
network capacity and increased cost (Specification 2:15-25).
3. In Appellant’s invention, a copy of a signal associated with a
given network traffic demand is retained at a network element, while the
signal is routed to an additional network element. Alternately, such a signal
is routed to the additional network element, and also routed to at least one
other network element (Specification 3:13-17). The “additional network
element” and “at least one network element other than the additional
network element” are each coupled to a respective dual-homed network
element of a set of dual-homed network elements (Specification 3:15-21).
Appellant discloses that this approach can provide the redundancy benefits
of the prior art while using less network capacity, and therefore at lower cost
(Specification 6:20-26 and 8:8-16).
Russ
4. Russ teaches a system and method for restoring communication
between (at least) a pair of nodes in an optical fiber network (col. 2, ll. 33-
35). After an alarm indicating the failure of a link between nodes is detected,
one node sends a “flooding message” for each link on the span with a
validated alarm, as part of a scheme to determine the shortest “restoration
route” that avoids the now-broken link (col. 2, ll. 55-66). The flooding
message is multicast by a “tandem node” to a multiplicity of other nodes
(col. 10, ll. 8-17).

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Al-Salameh
5. Al-Salameh teaches a multi-ring Synchronous Optical Network
(SONET) architecture that provides a customer with a fully redundant dual-
homing arrangement (col. 6, ll. 19-21).
PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The
Examiner can satisfy this burden by showing some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness. KSR Int’l. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d
1385, 1396 (2007) (citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329,
1336 (Fed. Cir. 2006)). Only if this initial burden is met does the burden of
coming forward with evidence or argument shift to the Appellant. Piasecki,
745 F.2d at 1472, 223 USPQ at 788. Thus, the Examiner must not only
assure that the requisite findings are made, based on evidence of record, but
must also explain the reasoning by which the findings are deemed to support
the Examiner’s conclusion.
ANALYSIS
Appellant argues that the Examiner has failed to make out a prima
facie case of obviousness, because Al-Salameh does not teach the claim
limitations conceded by the Examiner to be missing from Russ, i.e. that “the
second network element is coupled to a first dual-homed network element …
either directly or via a given network element … other than the additional
network element,” and that the additional network element “is coupled to a
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second dual-homed network element … either directly or via another
additional network element” (Br. 5:19-23).
Appellant further argues that the Examiner has failed to identify a
cogent motivation for combining the references (Br. 6:3-4). In Appellant’s
view, Al-Salameh merely suggests that it may be desirable to pass a block of
information from one ring to another, but lacks any suggestion to pass a
copied signal to a network element which is itself coupled to a dual-homed
network element (Br. 6:28-7:6).
We agree with Appellant that the Examiner has failed to carry his
burden of establishing a prima facie case of obviousness. Russ teaches
making a copy of a signal (but only after a network fault has been detected),
and passing the signal along to other network elements of a non-redundant
network (FF 4). Al-Salameh teaches solving the problem of network faults
by implementing a dual-homed network very similar to that characterized by
Appellant as prior art (FF 5; see Appellant’s Figure 1). Al-Salameh does not
teach a (second) network element coupled to a first dual-homed network
element of a set of dual-homed network elements, either directly or via a
given network element corresponding to (said) at least one network element
other than the additional network element, as required by claim 1. The
Examiner correctly identifies gateway 20’1 of Al-Salameh (Fig. 3) as a dual-
homed network element (Answer 7:5). The Examiner fails to identify the
“set of dual-homed network elements,” recited in claim 1, of which gateway
20’1 is but a single member. The Examiner then asserts that network element
16’m-4 of Al-Salameh (Fig. 3) corresponds to the “another additional network
element” of the claim (Answer 7:8), and states that it is coupled to a second
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dual-homed network element of the set of dual-homed network elements;
however, the Examiner does not identify what in Al-Salameh corresponds to
the second dual-homed network element, or to the set of dual-homed
network elements. The Examiner refers the reader to column 6, lines 19-23
of Al-Salameh (Answer 7:11), which explains that the network 10’ provides
node 20’ with a fully redundant dual-homing arrangement, but the Examiner
does not explain what element(s) correspond to the second dual-homed
network element, or to the set of network elements.
The Examiner argues that Appellant refers to language that is not
present in the claims when Appellant suggests Russ and Al-Salameh fail to
teach “coupling of a particular types [sic] of network elements with
corresponding elements of a set of dual-homed network elements” (Answer
11:4-5). We agree with Appellant, however, who pointed out in the Reply
Brief that such language is clearly recited in (at least) claim 1 (Reply Br.
1:23–2:1).
The Examiner further argues that the skilled artisan would have been
motivated to combine Russ with Al-Salameh because Al-Salameh’s teaching
of “a fully redundant dual-homing arrangement” (Answer 11:22–12:1)
would have provided failure protection for Russ’s node or element (Answer
12:3-4). As noted, Russ teaches a non-redundant network in which, in an
effort to recover from a detected network fault, a “flooding message” is
transmitted to a plurality of nodes (FF 4). The Examiner has not articulated
a reason why the person having ordinary skill in the art, possessed of the
teachings of Russ, would reach for the Al-Salameh reference to teach a
redundant hardware scheme for avoiding difficulties due to a network fault,
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given that Russ already teaches a solution to the problem. The Examiner
further fails to overcome Appellant’s argument that Al-Salameh’s fully
redundant “dual-homed” network teaches away from Appellant’s claimed
invention (Reply Br. 2:22–3:4; Specification 2:23-25).
Because Appellant has shown that the Examiner has failed to make
out a prima facie case of obviousness, we will not sustain the Examiner’s
rejection of claims 1-19 under 35 U.S.C. § 103(a).
CONCLUSION OF LAW
We conclude that Appellant has shown the Examiner erred in
rejecting claims 1-19. On the record before us, claims 1-19 have not been
shown to be unpatentable.
DECISION
The Examiner’s rejection of claims 1-19 is reversed.

REVERSED
ce

Joseph B Ryan
Ryan & Mason LLP
90 Forest Avenue
Locust Valley NY 11560

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