10218510 (B.P.A.I. Sep. 15, 2010)

Ex Parte Bullman et al

Board of Patent Appeals and InterferencesSep 15, 2010

10218510 (B.P.A.I. Sep. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte WILLIAM R. BULLMAN and STEVEN E. STRAUSS ____________ Appeal 2009-006424 Application 10/218,510 Technology Center 2400 ____________ Before JOHN A. JEFFERY, LANCE LEONARD BARRY, and JEAN R. HOMERE, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL1 Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-006424 Application 10/218,510 2 STATEMENT OF THE CASE Appellants invented a method and apparatus for remotely analyzing a local area network (LAN). See generally Spec. 1. Claim 1 is reproduced below with the key disputed limitations emphasized: 1. A method of remotely analyzing a local area network, comprising: measuring at least one parameter of said local area network at a selected node in said local area network; sending a digital signal representing said at least one parameter from said selected node to a remote host; processing said signal at said host; and displaying a result of said step of processing said signal. The Examiner relies on the following as evidence of unpatentability: Paraskevakos US 4,241,237 Dec. 23, 1980 Tremblay US 5,463,632 Oct. 31, 1995 Morgan US 6,859,828 B1 Feb. 22, 2005 (filed Feb. 25, 1997) THE REJECTION The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over Paraskevakos, Tremblay, and Morgan. Ans. 3-6.2 CONTENTIONS Regarding independent claim 1, the Examiner finds that Paraskevakos discloses all recited limitations, including measuring a parameter at a selected node in a LAN. Ans. 3-4. The Examiner cites both Tremblay and 2 Throughout this opinion, we refer to (1) the Appeal Brief filed January 28, 2008; (2) the Examiner’s Answer mailed April 29, 2008; and (3) the Reply Brief filed June 26, 2008. Appeal 2009-006424 Application 10/218,510 3 Morgan to teach displaying remotely (e.g., at a remote computer) the result from a testing unit and to provide reason for combining the references. Ans. 4-5. Appellants argue that Paraskevakos does not disclose or teach networking or measuring a parameter at a node in a LAN as recited in claim 1. App. Br. 4-8; Reply Br. 2-3. The issue before us, then, is as follows: ISSUE Under § 103, has the Examiner erred in rejecting claim 1 by finding that Paraskevakos would have taught or suggested measuring a parameter of a LAN at a selected node in the LAN? FINDINGS OF FACT 1. A local area network or LAN is defined as “[a] group of computers and/or terminals that are linked together within a relatively small geographic area, such as a college campus. Interconnections are usually made via cable. There are several different configurations, called topologies.”3 2. The Specification describes a Home Phoneline Network (HPN) as a LAN consisting of telephone wiring in residential premises and includes computers 400, 405, 410, 415, and 420, wiring 440, and telephones 425, 430, and 435. Abstract; Spec. 10-11; Fig. 4. 3. Paraskevakos discloses a unit that reads power usage in a building at sensor device 112. A remote unit 110 receives and transmits the collected 3 Stan Gibilisco, The Illustrated Dictionary of Electronics 415 (8th ed. 2001). Appeal 2009-006424 Application 10/218,510 4 data to a central complex 100 through telephone lines 114. Paraskevakos, col. 2, ll. 6-10; col. 3, ll. 25-42; col. 6, ll. 25-29; Fig. 1. 4. Paraskevakos states the remote unit 110 contains a central control and processing chip 200 and the sensor unit 112 contains transducers 118 and 120 that generate pulses applied to the remote unit 110. Sensor unit 112 also includes a power meter 115. Paraskevakos, col. 3, ll. 31-36; col. 4, ll. 6- 9; Fig. 1. ANALYSIS Based on the record before us, we find error in the Examiner’s obviousness rejection of independent claim 1 which calls for, in pertinent part, measuring a parameter of a LAN at a selected node in the LAN. Appellants and the Examiner mainly disagree upon whether Paraskevakos teaches a LAN. Claims are given their broadest reasonable construction in light of the specification and as understood by an ordinarily skilled artisan. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)(internal citations and quotations omitted). See also Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (internal citations omitted). The Specification illustrates a HPN or a LAN containing a group of interconnected computers (e.g., 400, 405, 410, 415, 420). See FF 2. Moreover, a LAN customarily means to an ordinary artisan a group of computers or terminals that are linked together within a relatively small geographic area. See FF 1. We therefore construe a LAN broadly but reasonably to mean a group of computers linked together within a relatively small geographic area. Appeal 2009-006424 Application 10/218,510 5 Paraskevakos discloses measuring a parameter (e.g., power usage) in a building using a sensor that cooperates with a remote unit 110. See FF 3. The remote unit 110 transmits the collected data to a remote host 100. Id. Paraskevakos discloses the remote unit 110 contains a processing chip (e.g., 200) or is a computer. See FF 4. However, sensor device 112 contains transducers and a meter (see id.), but simply has no processing or computing ability to reasonably be considered a computer such as that connected to a LAN. Thus, at best, Paraskevakos discloses a single computer, not a group of computers linked together in a small geographic area. We therefore disagree with the Examiner (Ans. 3), and find that Paraskevakos does not disclose measuring a parameter of a LAN at a node in a LAN as required by claim 1. In the Response to Argument section of the Examiner’s Answer, the Examiner discusses Paraskevakos in the context of networking. See Ans. 7- 8. However, we are somewhat puzzled by this passage. The Examiner does not state what elements or parts of Paraskevakos meet the claimed LAN. Rather, the Examiner discusses the disclosed HPN in the Specification versus a LAN and the HPN disclosed in the Specification versus the power lines in Paraskevakos. See Ans. 8. The Examiner also discusses Tremblay and Morgan versus the claimed parameter of a LAN. See id. However, as stated above, we do not find that Paraskevakos’ remote device, sensor unit, and power lines are a group of computers linked together to reasonably be considered a LAN. See FF 3-4. Additionally, the Examiner discusses Tremblay’s IDSN service being similar to HPN. See Ans. 7, 9. Based on these seemingly inconsistent positions, it is unclear on this record whether the Examiner is now relying on Appeal 2009-006424 Application 10/218,510 6 Tremblay—not Paraskevakos—to teach the LAN features recited in claim 1. Nonetheless, to the extent that the Examiner relies solely on Tremblay for the recited LAN features, such a shift in the basis for the rejection should be deemed a new ground of rejection since the rejection before us on appeal clearly indicates that Paraskevakos—not Tremblay—teaches the recited LAN features. See Ans. 3. Nor will we endorse such a shift in the basis for the rejection, for relying solely on Tremblay for the recited LAN features for the first time on appeal. Due process demands as much. See In re Kumar, 418 F.3d 1361, 1366 (Fed. Cir. 2005). We will therefore not consider whether Tremblay teaches or suggests measuring a parameter of a LAN at a selected node in the LAN in the first instance on appeal. Independent claim 11 is commensurate in scope with independent claim 1, reciting a “means for measuring at least one parameter of said local area network at a selected node in said local area network.” The above analysis of claim 1 therefore also applies to claim 11. We are persuaded that the Examiner erred in rejecting (1) independent claim 1; (2) independent claim 11 which recites commensurate limitations; and (3) claims dependent thereon for similar reasons. Since this issue is dispositive of our reversal of the Examiner’s rejection, we need not address Appellants’ other arguments pertaining to whether Tremblay or Morgan fails to disclose or teach analyzing a LAN (App. Br. 5) or the combinability of Paraskevakos with Tremblay (App. Br. 6; Reply Br. 4). CONCLUSION The Examiner erred in rejecting claims 1-20 under § 103. Appeal 2009-006424 Application 10/218,510 7 ORDER The Examiner’s decision rejecting claims 1-20 is reversed. REVERSED erc HITT GAINES, PC LSI Corporation PO BOX 832570 RICHARDSON TX 75083 Appeal 2009-006424 Application 10/218,510 8 EVIDENCE APPENDIX Stan Gibilisco, The Illustrated Dictionary of Electronics 415 (8th ed. 2001).