Ex Parte Johnson et al

Patent Trial and Appeal Board

Nov 26, 2014

11103017 (P.T.A.B. Nov. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/103,017 04/11/2005 Harold W. Johnson 2858 7494
28004 7590 11/26/2014
SPRINT
6391 SPRINT PARKWAY
KSOPHT0101-Z2100
OVERLAND PARK, KS 66251-2100
EXAMINER
ADHAMI, MOHAMMAD SAJID
ART UNIT PAPER NUMBER
2471
MAIL DATE DELIVERY MODE
11/26/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HAROLD W. JOHNSON and DURGA SATAPATHY
____________________

Appeal 2012-004171
Application 11/103,017
Technology Center 2400
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–6, 8–16, and 18–20. Claims 7 and 17 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
According to Appellants, the invention is related to communication
systems that use Ethernet to exchange user communications between
wireless base stations and related service systems, such as mobile switch
centers and Internet access systems (Spec. 2, ll. 16–19).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A communication system comprising:
a plurality of base stations configured to exchange information with
users over first wireless communication links;
a mobile switching center configured to provide mobile telephone
service;
an Internet access system configured to provide Internet access
service;
a data system configured to provide a data service;
an Ethernet backhaul system comprising pseudo-wire systems
configured to receive the information from the base stations over T1
connections and transfer the information within the Ethernet backhaul
system over Ethernet connections to the mobile switching center, the
Internet access system, and the data system, wherein the pseudo-wire
systems communicate in a T1 format over the Ethernet connections; and
a plurality of wireless interfaces coupled to the base stations and
configured to exchange the information over second wireless links; and
wherein individual ones of the base stations are configured to detect a
fault in the Ethernet backhaul system, and in response, to route the
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information away from the Ethernet backhaul system and to the wireless
interfaces to provide service restoration.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Courtney US 5,890,062 Mar. 30, 1999
Handforth US 2006/0083186 A1 Apr. 20, 2006
Eyuboglu US 7,170,871 B2 Jan. 30, 2007

Claims 1–6, 8–16, and 18–20 stand rejected under 35 U.S.C. § 112, 1
st

paragraph, as failing to comply with the enablement requirement.
Claims 1–5, 8–15, and 18–20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable Handforth and Eyuboglu.
Claims 6 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable Handforth, Eyuboglu, and Courtney.
II. ISSUES
The principal issues before us are whether the Examiner erred in
finding:
1. Amended claim limitation “wherein the pseudo-wire systems
communicate in a T1 format over the Ethernet connections” (claim 1,
emphasis added) is not described in the Specification as originally filed in
such a way as to enable one skilled in the art to which it pertains, or with
which it is most nearly connected, to make and/or use the invention; and
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2. The combination of Handforth and Eyuboglu teaches or would
have suggested such “wherein the pseudo-wire systems communicate in a
T1 format over the Ethernet connections” (claim 1).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellants’ Specification
1. Appellants disclose an Ethernet backhaul system 105 which
includes pseudo-wire systems 201–203 that provide T1 functionality over
Ethernet connections (7, ll. 23–24; Fig. 2); wherein pseudo-wire systems 201
and 203 have T1 interfaces for base stations and MSCs, but exchange data
with one another using the Ethernet format (8, ll. 21–24).
Handforth
2. Handforth discloses a backhaul network implemented using
traditional T1 or T3 telephone lines, the Digital Subscriber line (xDSL)
technologies, an optical networking technology such as gigabit optical
Ethernet, or a wireless protocol (2, ¶ 25).
IV. ANALYSIS
35 U.S.C. §112, first paragraph, Enablement
We note the "enablement requirement is satisfied when one skilled in
the art, after reading the specification, could practice the claimed invention
without undue experimentation." AK Steel Corp. v. Sollac, 344 F.3d 1234,
1244 (Fed. Cir. 2003) (citation omitted).
The Examiner finds the limitation “communicate in a T1 format over
the Ethernet connections” is recited in amended claims 1 and 11, but
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“support for this amendment is lacking and the addition of said limitation is
new matter” (Ans. 4–5). In particular, the Examiner finds that the
Specification “discloses communicating information over a T1 connection
and converting the information to Ethernet, but does not disclose
communicating in a T1 format over the Ethernet connections” (id.).
The Examiner explains that the Specification shows “T1 functionality
is provided over Ethernet connections, which is not the same as using the T1
format over the Ethernet connections” (Ans. 10). That is, the Examiner
notes that the Specification describes “pseudo-wire systems have T1
interfaces for base stations and MSCs, but exchange data with one another
using the Ethernet format” which “clearly states the pseudo-wire system
communicates using the Ethernet format and further clarifies what is meant
by providing T1 functionality” (Ans. 11).
Appellants argue the Specification discloses “pseudo-wires provide
functionality of one communication link over a different kind of link,
specifically communicating in a T1 format over Ethernet connections” (App.
Br. 8). Thus, Appellants contend the pseudo-wires “perform more than
merely converting data between a T1 format and an Ethernet format” but
instead “provide T1 functionality, such as T1 signaling and timing, to allow
equipment to communicate over T1 connections as they have in the past, but
over an Ethernet format” (id.).
After reviewing the Specification as originally filed, we agree with the
Examiner that the Specification does not provide support for pseudo-wire
systems communicating “in a T1 format over the Ethernet connections”
(Ans. 4–5). Although the Specification discloses an Ethernet backhaul
system which includes pseudo-wire systems that provide T1 functionality
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over Ethernet connections, the Specification discloses that pseudo-wire
systems have T1 interfaces for base stations and MSCs, but exchange data
with one another using the Ethernet format (FF 1).
Here, we agree with the Examiner that the Specification discloses “T1
functionality is provided over Ethernet connections, which is not the same as
using the T1 format over the Ethernet connections” (Ans. 10), wherein the
Specification “clearly states the pseudo-wire system communicates using the
Ethernet format” (Ans. 11, emphasis added). Appellants fail to show on this
record that a person of ordinary skill would have understood that the
description of T1 functionality requires the T1 format be provided. That is,
Appellant fails to show how the T1 functionality described in the
specification would enable the skilled artisan to make and/or use the
invention “using the T1 format over the Ethernet connections” as amended.
As the Examiner notes, the Specification merely describes “pseudo-wire
systems have T1 interfaces for base stations and MSCs, but exchange data
with one another using the Ethernet format” (Ans. 11; FF 1).
Thus, we are not persuaded the Examiner erred in concluding that
claims 1 and 11, and claims 2–6, 8–10, 12–16, and 18–20 depending
respectively therefrom and falling therewith (App. Br. 8) do not have
enabling support in the originally filed Specification that provides sufficient
information regarding the subject matter of the claims as to enable one
skilled in the pertinent art to make and use the claimed invention without
undue experimentation, under 35 U.S.C. § 112, first paragraph.
1

1
In the event of further prosecution, we leave it to the Examiner to
consider whether the claims should also be rejected under 35 U.S.C. § 35
U.S.C. §112, first paragraph, written description. In particular, we leave it to
the Examiner to determine whether Appellants has shown how the
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35 U.S.C. § 103
Although Appellants concede Handforth discloses “receiving data
from a BTS via a T1 link,” and “convert data received over a BTS backhaul
T1 link for transfer over an Ethernet link,” Appellants contend Handforth
merely discloses “conversion from a T1 link to an Ethernet link” (App.
Br. 9). Accordingly, Appellants contend “Handforth still does not teach or
suggest use of pseudo-wire systems, as described in claim 1” which
“communicate in a T1 format over the Ethernet connections” (id., emphases
omitted).
However, the Examiner finds Handforth discloses “T1 connection are
used at the backhaul to receive T1 traffic from the BTSs” wherein “[t]he
backhaul can use Ethernet connections to transfer the T1 traffic” therefore
“the T1 connections are communicated over the Ethernet connection”
(Ans. 14). The Examiner finds Handforth’s communication in a T1 format
over the Ethernet connection “is in accordance with” the Specification’s
communication in a T1 format over the Ethernet connection (id.).
We find no error with the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness.
Although Appellants contend Handforth does not disclose the claimed
invention (App. Br. 9), the rejection was made under § 103 as being obvious
over the combination of Handforth and Eyuboglu. The test for obviousness
is not what Handforth individually discloses but what the combined

Specification indicates that the Appellants are “‘in possession’ of the
invention by describing the invention, with all its claimed limitations, not
that which makes it obvious.” Lockwood v. American Airlines, Inc., 107
F.3d 1565, 1572 (Fed. Cir. 1997).
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teachings would have suggested to one of ordinary skill in the art. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
To determine whether Handforth in view Eyuboglu discloses or would
have suggested the claimed invention, we give the claims their broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
As an initial matter, we note that claim 1 does not define “pseudo-
wire systems” other than the systems “communicate in a T1 format over the
Ethernet connections” (claim 1). As discussed above, the Specification as
originally filed is silent as to any mention of communicating in “T1 format
over Ethernet connections.” As the Examiner notes, the Specification
describes “pseudo-wire systems have T1 interfaces for base stations and
MSCs, but exchange data with one another using the Ethernet format”
(Ans. 11). Thus, we find no error with the Examiner’s broadest reasonable
interpretation of “pseudo-wires systems” that “communicate in a T1 format
over the Ethernet connections” as any system “communicating information
over a T1 connection and converting the information to Ethernet”
(Ans. 4–5), as supported by the Specification as originally filed.
Handforth discloses a backhaul network implemented using
traditional T1 or T3 telephone lines, the Digital Subscriber line (xDSL)
technologies, an optical networking technology such as gigabit optical
Ethernet, or a wireless protocol (FF 2). As Appellants concede, Handforth
discloses “receiving data from a BTS via a T1 link,” “convert data received
over a BTS backhaul T1 link for transfer over an Ethernet link,” and
“conversion from a T1 link to an Ethernet link” (App. Br. 9). In view of our
broad claim interpretation, we find no error with the Examiner’s finding
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Handforth’s communication in a T1 format over the Ethernet connections “is
in accordance with” the Specification’s communication in a T1 format over
the Ethernet connection (Ans. 14).
Furthermore, since the rejection was made under § 103 as being
obvious over Handforth in view of Eyuboglu, even arguendo Handforth
does not explicitly disclose communicating in a T1 format over the Ethernet
connection, we find that the combined teachings would at least have
suggested such communication over the Ethernet connections from a T1 link
to be in a T1 format. Merck, 800 F.2d at 1097. We conclude that it would
have been well within the skill of one skilled in the art to provide such
communication from a T1 link in a T1 format.
The Supreme Court has determined the conclusion of obviousness can
be based on the interrelated teachings of multiple patents, the effects of
demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The skilled
artisan is “a person of ordinary creativity, not an automaton.” Id. at 421.
We are not persuaded, and Appellants have presented no persuasive
evidence that providing the components on a “pseudo-wire systems” that
“communicate in a T1 format over the Ethernet connections” was “uniquely
challenging or difficult for one of ordinary skill in the art.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418).
Accordingly, we find Appellants have not shown the Examiner erred
in rejecting claim 1, independent claim 11 falling therewith (App. Br. 9), and
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2–5, 8–10, 12–15, and 18–20 depending respectively therefrom but not
separately argued (id.) over Handforth and Eyuboglu.
Appellants do not provide substantive arguments for claims 6 and 16
separate from those of claims 1 and 11 (Ans. 10). Accordingly, claims 6 and
16 fall with claims 1 and 11 over Handforth and Eyuboglu in further view of
Courtney.
V. CONCLUSION AND DECISION
The Examiner’s rejections of claims 1–6, 8–16, and 18–20 under 35
U.S.C. § 112, 1
st
paragraph and under 35 U.S.C. § 103(a) are affirmed.
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

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