Ex Parte Hebert

Board of Patent Appeals and Interferences

Jul 5, 2012

09932553 (B.P.A.I. Jul. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES E. HEBERT
____________
Appeal 2010-002482
Application 09/932,553
Technology Center 2400
____________

Before KRISTEN L. DROESCH, JASON V. MORGAN, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002482
Application 09/932,553

2
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-15. Br. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellant’s Invention
Appellant invented a communication adapter system for connecting a
client to a Fiber Distributed Data Interface network, which has a fully
redundant network architecture designed to eliminate all major network
single points of failure. Spec. 1: 6-10.
Illustrative Claims
1. A communication adapter system for connecting a
client to a network, the system comprising:
a server having a memory electrically connected to the
client;
a primary Input/Output (I/O) board electrically connected
to the server and having a primary network interface card
(NIC), the primary NIC having a primary I/O port for
connecting to the network, the primary NIC selectively
enabling active transfer of data from the client to the network
through the primary I/O port;
a secondary I/O board electrically connected to the server
and having a secondary NIC, the secondary NIC having a
secondary I/O port for connecting to the network, the secondary
NIC selectively enabling active transfer of data from the client
to the network through the secondary I/O port;
a primary switch electrically connected to the primary
I/O port and the network;
a secondary switch electrically connected to the
secondary I/O port and the network; and
program signals stored in the memory of the server and
defining an executable program for:
Appeal 2010-002482
Application 09/932,553

3
generating a connectivity signal to the primary
switch to test connectivity from the primary I/O board to
the primary switch;
monitoring the primary I/O port to detect a
response signal from the primary switch within a
predetermined time period after the generation of the
connectivity signal;
configuring the primary NIC to disable active
transfer of data if the response signal is not detected
within the time period; and
configuring the secondary NIC to enable the active
transfer of data if the response signal is not detected
within the time period.

15. A communication adapter system for connecting a
client to a network, the system comprising:
a host connected to the client;
a primary Input/Output (I/O) board connected to the host
and having a primary network interface card (NIC), the primary
NIC having a primary I/O port for connecting to the network,
the primary NIC selectively enabling active transfer of data
from the client to the network through the primary I/O port;
a secondary I/O board connected to the server and having
a secondary NIC, the secondary NIC having a secondary I/O
port for connecting to the network, the secondary NIC
selectively enabling active transfer of data from the client to the
network through the secondary I/O port;
a primary switch electrically connected to the primary
I/O port and the network;
a secondary switch electrically connected to the
secondary I/O port and the network; and
an adapter mechanism on the server operating as follows:
generating a connectivity signal to the primary
[[I/O]] switch to test connectivity from the primary I/O
board to the primary switch;
monitoring the primary I/O port to detect a
response signal from the primary switch within a
predetermined time period after the generation of the
connectivity signal;
Appeal 2010-002482
Application 09/932,553

4
configuring the primary NIC to disable active
transfer of data if the response signal is not detected
within the time period; and
configuring the secondary NIC to enable the active
transfer of data if the response signal is not detected
within the time period, the configuring including
transferring network information from the primary NIC
to the secondary NIC, wherein the network information
comprises IP addresses of other devices connected to the
network, netmasks, or broadcasts.

Prior Art Relied Upon
Liu US 6,243,838 B1 June 5, 2001
Tosey US 6,392,990 B1 May 21, 2002
(filed July 23, 1999)

Applicant’s Admitted Prior Art (“AAPA”)—Spec. 1-4 (Background
of the Invention section).

Rejections on Appeal
Claim 15 stands rejected under 35 U.S.C. § 112, second paragraph for
failing to particularly point out and distinctly claim the subject matter which
Applicant regards as his invention. Fin. Rej. 2.
Claims 1-6, 8-13, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of AAPA and Tosey. Ans. 3-9.1
Claims 7 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of AAPA, Tosey, and Liu. Ans. 9-10.
Examiner’s Findings and Conclusions
1. The Examiner finds that since Tosey discloses testing the
connectivity path between a networking computing device and a peer device

1 All references to the Examiner’s Answer are to the Answer mailed May 8,
2009, which replaced the Answer mailed April 10, 2006.
Appeal 2010-002482
Application 09/932,553

5
by sending a link test or ping signal from the network computing device via
a hub to the peer device, the path connecting the network computing device
and the hub is also tested. Ans. 5 and 10. In addition, the Examiner finds
that Tosey discloses detecting the failure of network connecting
components, such as the hub. Ans. 5 and 13. Based on these cited
disclosures, the Examiner finds that Tosey teaches or suggests generating a
connectivity signal to the hub or primary switch, as required by independent
claim 1. See Ans. 5, 10, and 13.
In addition, the Examiner finds that Tosey’s network computing
device runs the test by determining whether the peer device responds within
T2 second or a predetermined period of time. Ans. 5-6 and 11-12.
Therefore, the Examiner finds that Tosey teaches or suggests detecting a
response from the primary switch within a predetermined time period, as
required by independent claim 1. See id.
2. The Examiner finds that Tosey’s administrative software
transfers network information including a logical Internet Protocol (“IP”)
address (i.e., a mobile IP address) from the primary Network Interface Card
(“NIC”) to the secondary NIC. Ans. 9 and 16. Therefore, the Examiner
finds that Tosey teaches or suggests transferring network information
including IP addresses “of other devices connected to the network,
netmasks, or broadcasts” from the primary to the secondary NIC, as recited
in independent claim 15. Id.
Appellant’s Contentions
1. Appellant contends that Tosey’s disclosure of passing a ping
from a sending device through the hub to a network peer device, and then
passing a response from the peer device back through the hub to the sending
Appeal 2010-002482
Application 09/932,553

6
device, does not indicate that there is “no connectivity between the switch
and the primary NIC.” Br. 5 (emphasis omitted). Rather, Appellant argues
that if Tosey’s peer device fails to respond to the ping, this may indicate a
failure somewhere within the transmission line/connection path between the
sending device and the network peer device. Id. Appellant alleges that there
is no way to determine if Tosey’s method detects a problem between the
sending device and the hub because the ping is not sent to the hub, let alone
responded to by the hub. Br. 5-6. Appellant asserts that the connectivity
problem may be between the hub and the peer device or with the peer device
itself. Br. 6. Therefore, Appellant contends that Tosey fails to teach or
suggest generating a connectivity signal destined to a primary switch, and
detecting a response signal generated by the primary switch within a
predetermined time period, as required by independent claim 1. See Br. 4-9.
Appellant relies upon the same arguments presented for the
obviousness rejection of independent claim 1 to rebut the obviousness
rejection of independent claim 8. Br. 9.
2. Appellant relies upon the same arguments presented for the
obviousness rejection of independent claim 1 to rebut the obviousness
rejection of independent claim 15. Br. 9. In addition, Appellant contends
that Tosey’s disclosure of transferring a mobile IP address for a failed NIC
to secondary NIC does not teach or suggest transferring network information
including IP addresses “of other devices connected to the network,
netmasks, or broadcasts” from a primary to a secondary NIC, as required by
independent claim 15. Id.

Appeal 2010-002482
Application 09/932,553

7
II. ISSUES
1. Did the Examiner err in finding that the combination of AAPA
and Tosey teaches or suggests the following claim limitations recited in
independent claim 1, and similarly recited in independent claim 8:
(a) “generating a connectivity signal to the primary switch to test
connectivity from the primary I/O board to the primary switch;” and
(b) “monitoring the primary I/O port to detect a response signal
from the primary switch within a predetermined time period after the
generation of the connectivity signal[.]”
2. Did the Examiner err in finding that the combination of AAPA
and Tosey teaches or suggests the following claim limitations recited in
independent claim 15:
(a) “generating a connectivity signal to the primary [[I/O]] switch
to test connectivity from the primary I/O board to the primary switch;”
(b) “monitoring the primary I/O port to detect a response signal
from the primary switch within a predetermined time period after the
generation of the connectivity signal;” and
(c) “transferring network information from the primary NIC to the
secondary NIC, wherein the network information comprises IP addresses of
other devices connected to the network, netmasks, or broadcasts.”

III. ANALYSIS
35 U.S.C. § 112, Second Paragraph Rejection
Claim 15
Since Appellant does not present any arguments with regards to the
Examiner’s rejection of independent claim 15 as being indefinite under 35
Appeal 2010-002482
Application 09/932,553

8
U.S.C. § 112, second paragraph (see Br. 4), we summarily sustain this
rejection. See Manual of Patent Examining Procedure § 1205.02, 8th ed.,
Rev. 8, July 2010 (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, that ground of rejection will be summarily
sustained by the Board.”).
35 U.S.C. § 103(a) Rejection—Combination of AAPA and Tosey
Claims 1 and 8
Based on the record before us, we do not find error in the Examiner’s
obviousness rejection of independent claim 1, which recites, inter alia: 1)
“generating a connectivity signal to the primary switch to test connectivity
from the primary I/O board to the primary switch;” and 2) “monitoring the
primary I/O port to detect a response signal from the primary switch within a
predetermined time period after the generation of the connectivity signal[.]”
Independent claim 8 recites similar claim limitations.
At the outset, we note that Tosey’s Figure 2 illustrates a network
system (28) that detects the failure of network computing components
connected to two redundant NICs (25 and 26), such as hubs (22 and 23) and
other peer devices (e.g., cables, router ports, and other like items). See Col.
4, ll. 36-41, 46-49, and 64-67. In particular, Tosey discloses that the
network computing device (21) tests a connection by sending a message
using a ping signal. Col. 6, ll. 56-58. For example, Tosey discloses that the
network computing device (21) transmits a link test (i.e., ping) to one or
more peer devices. Col. 7, ll. 34-36.
While Tosey discloses that the network computing device (21)
performs connectivity tests by generating and sending a ping signal to one or
more peer devices, we find that an ordinarily skilled would have readily
Appeal 2010-002482
Application 09/932,553

9
appreciated that Tosey contemplates that such connectivity tests also act to
test the connectivity between the network computing device (21) and the hub
(22). That is, since Tosey explicitly discloses detecting the failure of
network computing components, such as the hub (22) (col. 4, ll. 36-40), an
ordinarily skilled artisan would have recognized that the network computing
device (21) is capable of generating and sending a ping signal to hub (22),
thereby testing the connectivity therebetween. Thus, we find that Tosey
teaches or suggests “generating a connectivity signal to the primary switch
to test connectivity from the primary I/O board to the primary switch[,]” as
recited in independent claim 1, and similarly recited in independent claim 8.
Further, Tosey discloses that network computing device (21) runs the
connectivity test to determine if at least one peer device has responded
within T2 seconds. Col. 7, ll. 44-46. Therefore, in light of our analysis
supra, we find that an ordinarily skilled artisan would have understood that
Tosey’s network computer device (21) monitors the hub (22) and determines
whether it sends a ping signal response within a predetermined time period
after the generation and transmission of the ping signal. Thus, we find that
Tosey also teaches or suggests “monitoring the primary I/O port to detect a
response signal from the primary switch within a predetermined time period
after the generation of the connectivity signal[,]” as recited in independent
claim 1, and similarly recited in independent claim 8. It follows that the
Examiner did not err in concluding the combination of AAPA and Tosey
renders independent claims 1 and 8 unpatentable.
Claims 2-6 and 9-13
Appellant does not provide separate and distinct arguments for
patentability with respect to dependent claims 2-6 and 9-13. See Br. 9.
Appeal 2010-002482
Application 09/932,553

10
Therefore, we accept Appellant’s grouping of these dependent claims with
their underlying base claims. Id. Consequently, dependent claims 2-6 and
9-13 fall with independent claims 1 and 8, respectively. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Claim 15
Based on the record before us, we do not find error in the Examiner’s
obviousness rejection of independent claim 15, which recites, inter alia:
[1)] generating a connectivity signal to the primary [[I/O]]
switch to test connectivity from the primary I/O board to the
primary switch; [2)] monitoring the primary I/O port to detect a
response signal from the primary switch within a predetermined
time period after the generation of the connectivity signal;”
[. . .] [and] [3)] transferring network information from the
primary NIC to the secondary NIC, wherein the network
information comprises IP addresses of other devices connected
to the network, netmasks, or broadcasts.

Based on our analysis with respect to independent claims 1 and 8, we
find that Tosey teaches or suggests “generating a connectivity signal to the
primary [[I/O]] switch to test connectivity from the primary I/O board to the
primary switch[,]” and 2) “monitoring the primary I/O port to detect a
response signal from the primary switch within a predetermined time period
after the generation of the connectivity signal[,]” as recited in independent
claim 15.
Further, upon detecting the failure of a network computing
component—in this case hub (22)—Tosey discloses a recovery process that
entails reassigning the IP address associated with the failed NIC (25) to the
redundant NIC (26) Col. 8, ll. 10-13. In addition, Tosey discloses assigning
redundant NIC (26) a mobile IP address, thereby allowing the programs at
Appeal 2010-002482
Application 09/932,553

11
the application layer to send information through the corresponding network
interface. Col. 8, ll. 16-19. Therefore, since Tosey discloses reassigning or
transferring IP addresses between the primary NIC (25) and the secondary
NIC (26), we find that an ordinarily skilled artisan would have readily
appreciated configuring the primary NIC (25) to reassign or transfer the IP
addresses of devices connected to the network, such that these devices may
send information through the secondary NIC (26).
Alternatively, Appellant cannot rely solely upon the content or type of
network information transferred from the primary NIC to the secondary NIC
to patentably distinguish independent claim 15 over the prior art of record.
The content or type of such information is non-functional descriptive
material, which is not entitled to any patentable weight. See In re Lowry, 32
F.3d 1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely the
information content of a memory [. . .] nor does he seek to patent the content
of information resident in a database.”). See also Ex parte Nehls, 88
USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84
USPQ2d 1272, 1274-75 (BPAI 2005) (informative), aff’d, slip op. 06-1003
(Fed. Cir. June 12, 2006) (Rule 36). It follows that the Examiner did not err
in concluding that the combination of AAPA and Tosey renders independent
claim 15 unpatentable.
35 U.S.C. § 103(a) Rejection—Combination of AAPA, Tosey, and Liu
Claims 7 and 14
Appellant contends that Liu does not remedy the above-noted
deficiencies of APAA and Tosey. Br. 10. As discussed supra, we find no
such deficiencies in AAPA and Tosey for Liu to remedy. It follows that the
Appeal 2010-002482
Application 09/932,553

12
Examiner did not err in concluding that the combination AAPA, Tosey, and
Liu renders dependent claims 7 and 14 unpatentable.

IV. CONCLUSIONS
1. The Examiner has not erred in rejecting claim 15 as being
indefinite under 35 U.S.C. § 112, second paragraph.
2. The Examiner has not erred in rejecting claims 1-15 as being
unpatentable under 35 U.S.C. § 103(a).

V. DECISION
We affirm the Examiner’s decision to reject claims 1-15.
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)(iv).

AFFIRMED

msc