Ex Parte Lewin et al

Patent Trial and Appeal Board

Oct 31, 2012

10654619 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AMIT LEWIN, EYTAN MANN, YACKOV SFADYA,
and YURI PODDOBNY
____________

Appeal 2010-005351
Application 10/654,619
Technology Center 2400
____________

Before MARC S. HOFF, CARLA M. KRIVAK, and
CARL WHITEHEAD JR., Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL
Appellant(s) appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 8-11 and 30-56.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Claims 1-7 and 12-29 have been cancelled.
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STATEMENT OF THE CASE
Appellants’ invention is a system for transporting Ethernet frames
over Very High Speed Digital Subscriber Lines (VDSL). Each Ethernet
frame is encapsulated entirely within a frame of a plurality of frames, and
the plurality of frames are transmitted over a VDSL facility (Spec. 6-8).
Independent claim 8, reproduced below, is representative of the
subject matter on appeal.
8. A method of encapsulating Ethernet frames onto a Very high
speed Digital Subscriber Line (VDSL) facility, said method comprising:

receiving Ethernet frames from an Ethernet source;

storing said Ethernet frames for subsequent forwarding;

encapsulating said previously stored Ethernet frames within a plurality
of frames, wherein each Ethernet frame is encapsulated entirely
within a respective frame of the plurality of frames; and

transmitting said plurality of frames over said VDSL facility.

REFERENCES
Snodgrass US 5,365,551 Nov. 15, 1994
Locklear US 5,999,565 Dec. 7, 1999
Terry US 6,178,161 B1 Jan. 23, 2001
Treadaway US 7,002,941 B1 Feb. 21, 2006
(filed Sept. 23, 1998)

REJECTIONS
Claims 8-11, 38, 39, 41, 48-51, and 53-55 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Terry in view of Locklear.
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Claims 30-32, 34-36, 40, 42-44, 46, 47, and 52-56 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Terry in view of
Locklear and Treadaway.
Claims 33, 37, and 45 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Terry in view of Locklear and Snodgrass.

ISSUES
Appellants contend that the Examiner’s proposed modification of
Terry with Locklear would have led the skilled artisan to destroy Terry’s
Ethernet Collision Avoidance Protocol (ECAP) frames to extract the IP
packet, and then encapsulate the IP packet for transmission on XDSL (App.
Br. 20). Appellants further argue that Locklear’s variable length ECAP
frames cannot be accommodated in fixed-size VDSL frames (App. Br. 22).
Appellants’ arguments present us with the following issues:
1. Does the combination of Terry and Locklear teach or fairly suggest
encapsulating previously stored Ethernet frames, each within a respective
VDSL frame?
2. Would the Examiner’s proposed modification render Terry
unsatisfactory for its intended purpose?

PRINCIPLES OF LAW
Section 103(a) forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’

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KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550
U.S. at 407, (“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”)
If the proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, then there is no
suggestion or motivation to make the proposed modification. In re Gordon,
733 F.2d 900, 902 (Fed. Cir. 1984). Further, our reviewing court has held
that “[a] reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994); Para-Ordnance Mfg., v. SGS Importers Int’l, 73 F.3d 1085,
1090 (Fed. Cir. 1995).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). The test of obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference, nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
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what the combined teachings of the references would have suggested to
those of ordinary skill in the art. Id. at 425.

ANALYSIS
CLAIMS 8-11, 38, 39, 41, 48-51, AND 53-55
We are not persuaded by Appellants’ argument that the combination
of Terry and Locklear would lead the skilled artisan to a configuration in
which the ECAP frame is destroyed and the underlying IP packet is
encapsulated in XDSL frames (App. Br. 20). Rather, we agree with the
Examiner’s finding that Terry teaches encapsulating an entire Ethernet frame
into an ECAP frame, and transmitting ECAP frames over a communication
facility using modems (Ans. 9). We further agree with the Examiner’s
finding that Locklear teaches receiving frames or packets, which “could be
Ethernet … or any suitable data communications frame format” (col. 5, ll. 8-
9). Locklear then teaches selecting an available modem, retrieving stored
line characteristics, training the associate twisted pair line for
communication, and establishing XDSL communication protocols (col. 5, ll.
15-19). Locklear thus teaches the concept of transmitting Ethernet frames
over VDSL, as relied upon by the Examiner. Appellants’ argument that the
skilled artisan would be led to destroy Terry’s ECAP frames amounts to an
argument against the bodily incorporation of Locklear into Terry, but such
bodily incorporation is not the test of obviousness. Keller, 642 F.2d at 413.
Appellants’ argument that variable length Ethernet frames would not
all fit fixed length VDSL frames is similarly unpersuasive. As above, the
Examiner relied on Locklear to teach the concept of transmitting Ethernet
frames over VDSL. The Examiner does not propose bodily incorporating
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Locklear’s invention into Terry’s invention, and such bodily incorporation is
not the test of obviousness. Keller, 642 F.2d at 413.
We conclude that the Examiner did not err in rejecting claims 8-11,
38, 39, 41, 48-51, and 53-55 as unpatentable over Terry in view of Locklear.
We will sustain the Examiner’s § 103 rejection.
CLAIMS 30-32, 34-36, 40, 42-44, 46, 47, AND 52-56
Appellants’ only argument is that Treadaway does not cure the
deficiencies of Terry and Locklear (App. Br. 27). Because we conclude that
the Examiner’s combination is not deficient, we will sustain the § 103
rejection of claims 30-32, 34-36, 40, 42-44, 46, 47, 52-56 for the same
reasons expressed supra with respect to claims 8-11, 38, 39, 41, 48-51, and
53-55.
CLAIMS 33, 37, AND 45
Appellants’ only argument is that Snodgrass does not cure the
deficiencies of Terry and Locklear (App. Br. 29). Because we conclude that
the Examiner’s combination is not deficient, we will sustain the § 103
rejection of claims 33, 37, and 45 for the same reasons expressed supra with
respect to claims 8-11, 38, 39, 41, 48-51, and 53-55.

CONCLUSIONS
1. The combination of Terry and Locklear fairly suggests
encapsulating previously stored Ethernet frames, each within a respective
VDSL frame.
2. The Examiner’s proposed modification would not render Terry
unsatisfactory for its intended purpose.

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DECISION
The Examiner’s decision rejecting claims 8-11 and 30-56 is 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)(2010).

AFFIRMED

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