Ex Parte Butterworth et al

Board of Patent Appeals and Interferences

Apr 5, 2010

10090404 (B.P.A.I. Apr. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HENRY ESMOND BUTTERWORTH,
JOSEPH SAMUEL GLIDER, and JUAN CARLOS GOMEZ
____________________

Appeal 2008-0038981
Application 10/090,404
Technology Center 2400
____________________

Decided: April 5, 2010

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
THU A. DANG, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on March 4, 2002. The real party in interest is International Business
Machines, Corp. (App. Br. 2.)
Appeal 2008-003898
Application 10/090,404

2
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 32. We have jurisdiction
under 35 U.S.C. § 6(b) (2008).
We reverse.
Appellants’ Invention
As depicted in Figure 1, Appellants invented a method and system for
determining weak membership in a set of computer nodes (12). (Spec. 6, ll.
1-2.) As shown in Figure 3, upon detecting that a communication link
between the nodes is broken, the computer system determines the network
topography at each node to thereby determine a converging optimum
membership at each of the nodes independently. (Id. at 10-16; Spec. 10, ll.
8-10.)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A computer system, comprising:

at least two nodes, each node including logic for
undertaking method acts comprising:

determining a system topography;

determining an optimum membership based on the
topography, the determining act at each node converging with
the determining act on all other nodes with each node arriving
at the same optimum membership as the other nodes but
independently of the other nodes.
Appeal 2008-003898
Application 10/090,404

3
Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Le Boudec 6.016,306 Jan. 18, 2000
Trovato 2003/0069981 A1 Apr. 10, 2003

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Le Boudec.
2. Claims 2 through 32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Le Boudec and Trovato.
Appellants’ Contentions
Appellants contend that Le Boudec does not teach determining the
same optimum membership independently at each node based on
topography, as recited in independent claim 1. (App. Br. 5-6.) According to
Appellants, while Le Boudec discloses determining network paths between
nodes to thereby assign the smallest weight to the widest path and the
greatest weight to the widest path, this teaching does not lend itself to an
independent and convergent determination of optimum membership at each
of the nodes, as claimed. (Id. at 6.)
Examiner’s Findings
The Examiner broadly construes membership as a group of nodes that
are logically connected, and consequently finds that Le Boudec’s disclosure
of a topology function that uses a shortest path link-state algorithm teaches
Appeal 2008-003898
Application 10/090,404

4
determining the optimum membership at a node. (Ans. 8.) Further, the
Examiner finds that Le Boudec’s disclosure of a local routing tree teaches
independently deriving routes of optimal network linked paths. (Id. at 9.)

II. ISSUE
Have Appellants shown that the Examiner erred in finding that Le
Boudec teaches determining independently at each node the same optimum
membership based on topography determination made thereon, as recited in
independent claim 1?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Le Boudec
1. As shown in Figure 1, Le Boudec discloses a method for
determining the best paths to route information in a computer network.
(Abst.)
2. Le Boudec discloses using a link-state algorithm such as Open
Shortest Path First (OSPF) to provide the routing functions in the computer
network. (Col. 1, ll. 39-42.) In particular, the network routing algorithm
uses a topology function to maintain current link information about the
nodes in routing tables, and to subsequently replicate such information in all
the nodes such that they each contain a current image of the network. (Id. at
ll. 42-48, col. 5, ll. 25-37.)
Appeal 2008-003898
Application 10/090,404

5
3. Le Boudec discloses utilizing the Dijkstra routing method,
wherein an appropriate metric is used to determine the weights for each path
between a set of nodes. (Col. 2, ll. 57-67.) In the widest path metric, the
maximum of the weights of component links in a path determines the weight
of the path. (Col. 4, ll. 31-60.) Therefore, a path with the biggest weight
will have the smallest link. (Id.).
4. Le Boudec discloses that, in the widest path method, every
node in the network produces a local touting tree. (Col. 7, ll. 16-18.)

IV. PRINCIPLES OF LAW
Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
“Anticipation of a patent claim requires a finding that the claim at
issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc.,
190 F.3d 1342, 1346 (Fed. Cir. 1999) (citation omitted.) “In other words, if
granting patent protection on the disputed claim would allow the patentee to
exclude the public from practicing the prior art, then that claim is
anticipated, regardless of whether it also covers subject matter not in the
prior art.” Id.
Appeal 2008-003898
Application 10/090,404

6
V. ANALYSIS
Anticipation
Independent claim 1 requires, in relevant part, determining
independently at each node the same optimum membership based on
topography determination made thereon. As set forth in the Findings of Fact
section, supra., Le Boudec discloses a computer system having a plurality of
nodes, wherein each of said node uses topology information to produce a
local routing tree containing current link information about the nodes as well
as a current image of the network. (FF 2 and 4.) Further, Le Boudec
discloses that in the widest path metric method the path with the biggest
weights will have the shortest links. (FF 3.)
At the outset, we find that the Examiner broadly but reasonably
construed the term “membership.” We therefore adopt and expand upon
such construction to broadly define membership of a path as a group of
nodes/links that are logically connected thereby forming a path between two
nodes. We consequently agree with the Examiner that Le Boudec’s
disclosure of determining the shortest path in the network to teach
determining an optimum membership in the network since it describes a
group of links through which information travels faster. In sum, we find that
Le Boudec’s disclosure teaches determining at each node in the computer
network the current image of the network based on topology information to
subsequently determine the optimal membership path between two nodes in
the network.
Appeal 2008-003898
Application 10/090,404

7
We find, however, that the optimal membership path obtained at one
node in Le Boudec’s network is not necessarily the same as that obtained at
another node. In other words, Le Boudec is limited to a single optimum
membership path for each set of nodes, and therefore different optimal
membership paths at different nodes do not converge as required by the
claim.
Since Appellants have shown at least one error in the Examiner’s
anticipation rejection of claim 1, we need not address Appellants’ other
arguments. It follows that Appellants have shown that the Examiner erred in
finding that Le Boudec anticipates claim 1.
Obviousness
Claims 2 through 32 also recite the limitations of claims 1 discussed
above, and since Trovato does not cure the deficiencies of Le Boudec, these
claims stand with claim 1. Consequently, we find that Appellants have
shown error in this rejection for the same reasons enunciated in our
discussion of claim 1 above.

VI. CONCLUSIONS OF LAW
1. Appellants have established that the Examiner erred in rejecting
claim 1 as being anticipated under 35 U.S.C. § 102(b).
2. Appellants have established that the Examiner erred in rejecting
claims 2 through 32 as being unpatentable under 35 U.S.C. § 103(a).

Appeal 2008-003898
Application 10/090,404

8
VII. DECISION
We reverse the Examiner's rejection of claims 1 through 32.

REVERSED

NL

JOHN L. ROGITZ
ROGITZ & ASSOCIATES
SUITE 3120
750 B STREET
SAN DIEGO CA 92101