Ex Parte Carballo et al

Board of Patent Appeals and Interferences

Oct 29, 2009

10829829 (B.P.A.I. Oct. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JUAN-ANTONIO CARBALLO and
KEVIN JOHN NOWKA
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Appeal 2008-005104
Application 10/829,829
Technology Center 2100
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Decided: October 29, 2009
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Before JAMES D. THOMAS, CAROLYN D. THOMAS, and
STEPHEN C. SIU, Administrative Patent Judges.

J. THOMAS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2008-005104
Application 10/829,829

2
In a paper filed on September 28, 2009, Appellants request that we
rehear our prior decision in the opinion dated July 28, 2009, wherein we
affirmed the rejection under 35 U.S.C. § 102 of various claims on appeal as
well as the separate rejection under 35 U.S.C. §103 of various other claims
on appeal.
We strongly disagree with the view taken at page 2 of the Request for
Rehearing that we improperly relied upon Examiner’s statements in the
Answer and resolved facts without substantial evidence in the record to
support them. Appellants’ view in the Request for Rehearing appears to
ignore our key analysis paragraph bridging pages 7 and 8 of our prior
opinion at the present appeal.
We reproduced in Finding of Fact 2 in our prior opinion the
Examiner’s statements beginning with the paragraph bridging pages 9 and
10 of the Answer because they initially clarified Examiner’s positions with
respect to allegations made in the Brief. The Examiner went on to direct the
reader’s attention to pages 5 and 7 of Mehta to justify the Examiner’s view
that because loop bandwidth was considered to be a physical parameter, link
bandwidth could also reasonably be interpreted as a physical design
parameter. The Examiner went on to further explain the view with respect
to the teaching at page 7 of Mehta and how it related to the issue of “to
select physical design parameters of said links,” which we reproduced as our
issue statement at page 5 of our prior opinion. Appellants’ Request for
Rehearing has not acknowledged that our Finding of Fact 1 reproduced in
Appeal 2008-005104
Application 10/829,829

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our prior opinion that portion of page 7 of Mehta that the Examiner relied
upon and discussed in the Examiner’s remarks we reproduced in Finding of
Fact 1.
Our making reference to and reliance upon the Examiner’s assessment
of Mehta we reproduced as Finding of Fact 2 is well-based on the specific
teachings of Mehta which we agreed with, since our independent study of
Mehta led us to agree with the Examiner’s reliance on and reasoning
concerning the Examiner’s application of Mehta to the claims on appeal. In
essence, we do not agree with Appellant’s view that such teachings relied
upon by the Examiner in Mehta do not anticipate the argued feature of
selecting physical design parameters of the links. Anticipation does not
require specific teachings of a given prior art reference in the same words as
argued or as claimed.
The part of Mehta relied upon principally by the Examiner relates to a
significant discussion of an algorithm to generate network topology, the
physical property of the network. As noted in our paragraph bridging pages
8 and 9 of our prior opinion with respect to the separately affirmed rejection
of certain claims under 35 U.S.C. § 103, page 11 of Mehta illustrates in
tabular form a presentation of the physical property of bandwidths
associated with respective nodes or links. The actual portion at page 7 of
Mehta that we reproduced in Finding of Fact 1 at page 5 of our prior opinion
teaches that a part of Mehta’s algorithm is to choose to minimize load
variation by balancing bandwidth distribution across all links by varying the
Appeal 2008-005104
Application 10/829,829

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load distribution or, alternatively, to minimize the difference between the
maximum and minimum load factors. An artisan would understand these
teachings, in addition to those relied upon by the Examiner, as selecting
physical design parameters of the links to the extent recited and argued in
the claims on appeal.
This opinion and our prior opinion, when considered together, clearly
indicate that we have properly relied upon the Examiner’s statements in the
Answer and have properly resolved facts with substantial evidence from
Mehta to support our conclusions.
In view of the foregoing, Appellants’ Request for Rehearing is
granted to the extent that we have reviewed our findings, but is denied as to
making any change therein.
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)(v).

DENIED

llw

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