Ex parte Baskey

Board of Patent Appeals and Interferences

Sep 3, 1998

08245053 (B.P.A.I. Sep. 3, 1998)

Application for patent filed May 17, 1994. According1
to appellant, this application is a continuation of
Application 07/722,720 filed June 27, 1991.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MICHAEL E. BASKEY
____________
Appeal No. 95-2571
Application 08/245,0531
____________
ON BRIEF
____________
Before JERRY SMITH, FLEMING and CARMICHAEL, Administrative
Patent Judges.
CARMICHAEL, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-2571
Application 08/245,053
2
This is an appeal from the final rejection of Claims
5-24, which constitute all the claims remaining in the
application.
Claim 5 reads as follows:
5. A method of resynchronizing first and second
nodes of a communications network following recovery from a
failure at the first node, one of said nodes transmitting
messages to the other of said nodes over a first route between
said nodes in accordance with status information regarding
messages previously transmitted over said route between said
nodes, said method comprising the steps of:
sending a request from said first node to said
second node over a second route between said nodes for said
status information regarding said messages previously
transmitted over said first route;
in response to said request, sending said status
information from said second node to said first node over said
second route; and
resuming message transmissions between said nodes
over said first route in accordance with said status
information sent to said first node over said second route.
The Examiner’s Answer cites the following prior art:
Morten et al. (Morten) 5,021,949 Jun. 4,
1991
Motles 5,095,444 Mar. 10,
1992
Brightwell 5,265,103 Nov. 23,
1993
Appeal No. 95-2571
Application 08/245,053
3
OPINION
Claims 5-12, 14-21 and 23-24 stand rejected under 35
U.S.C. § 103 as unpatentable over Brightwell in view of
Motles. Claims 13 and 22 stand rejected under 35 U.S.C. § 103
as unpatentable over Brightwell in view of Motles and further
in view of Morten.
We reverse for the reasons given by Appellants,
amplified as follows.
The examiner’s statement of the rejection does not
address all of the claim limitations. In particular, it does
not address the penultimate limitation that the resumed
message transmission takes place “over said first route.” For
this reason alone, we would have to reverse.
Even after this recitation was argued by appellant
in the Appeal Brief, the examiner did not directly address it.
In fact, the examiner truncates Claim 5 so as to exclude the
recitation. Examiner’s Answer at 7.
The examiner contends generally that Brightwell
“suggests the use of the alternate route, col. 6, lines 19-
22.” Examiner’s Answer at 8. We are uncertain what the
examiner means by “the use of the alternate route.” In any
Appeal No. 95-2571
Application 08/245,053
4
event, the cited passage from Brightwell states that “the
system may switch to an alternative network to retransmit the
messages.” Column 6, lines 19-22. That is the opposite of
the claimed invention, in which an alternative network is used
to exchange only status information and the system then
switches back to the original route to resume message
transmission.
The mere fact that the prior art may be modified in
the manner suggested by the examiner does not make the
modification obvious unless the prior art suggested the
desirability of the
modification. In re Fritch, 972 F.2d 1260, 1266 n.14, 23
USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992). In the present
case, the examiner does not identify how the prior art
suggested the desirability of modifying Brightwell to use an
alternative path to exchange only status information about the
original path and then switch back to the original route to
resume message transmission as claimed.
The deficiency in the examiner’s reliance on
Brightwell is not remedied by the examiner’s application of
Appeal No. 95-2571
Application 08/245,053
5
Motles or Morten. Because the examiner has not stated a prima
facie case of obviousness, we will not sustain the rejections.
CONCLUSION
The rejections are not sustained.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
MICHAEL R. FLEMING ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
JTC/gjh
William A. Kinnaman, Jr.
IBM Corporation
Intellectual Property Law
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