Ex Parte Marce

Board of Patent Appeals and Interferences

Jun 18, 2012

11004220 (B.P.A.I. Jun. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte OLIVIER MARCE
____________

Appeal 2009-015206
Application 11/004,220
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, DENISE M. POTHIER, and
JENNIFER S. BISK, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-015206
Application 11/004,220

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

THE INVENTION
Appellant’s invention relates to coupling passive and active networks.
See generally Spec. 4:20–5:8. Claim 1 is reproduced below with key
disputed limitations emphasized:
1. A gateway for coupling of a passive network and an active
network, the gateway comprising:
means (106, 108) for receiving a protocol message (110) from the
passive network (102),
means (106, 108) for receiving an active packet (114) from the
active network (100),
means (106, 108; 118, 120, 122) for translating a protocol
message (110) into an equivalent active packet (112),
means (114) for translating an active message into an equivalent
protocol message (116),
means (106, 108) for forwarding the equivalent active packet to the
active network,
means (106, 108) for forwarding the equivalent protocol message
to the passive network.

The Examiner relies on the following as evidence of unpatentability:
Wang US 6,693,912 B1 Feb. 17, 2004
Ozaki US 2004/0071148 A1 Apr. 15, 2004

THE REJECTION
The Examiner rejected claims 1-11 under 35 U.S.C. § 103(a) as
unpatentable over Ozaki and Wang. Ans. 3-7.

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THE CONTENTIONS
Regarding representative claim 1, the Examiner finds that Ozaki
teaches all the limitations, except disclosing the recited second network is an
active network and the active packets recitations. Ans. 3-4, 9-10. In
particular, the Examiner maps Ozaki’s Internet Protocol (IP) packet from the
IP network to the recited protocol message and Ozaki’s IP network to the
recited passive network. Ans. 3, 8. Also, the Examiner finds that
(1) Ozaki’s unit for converting an IP packet to a non-IP network protocol
packet maps to a means for translating a protocol message into an equivalent
packet and (2) Ozaki’s unit for converting non-IP data to an IP protocol
packet maps to a means for translating a message from a second network
into an equivalent protocol message. See Ans. 4, 7. The Examiner cites to
Wang to cure the deficiencies in Ozaki. See Ans. 4-5, 9-11.
Appellant argues Ozaki fails to teach the means for: (a) receiving a
protocol message from the passive network or (b) translating a protocol
message into an equivalent active packet. App. Br. 10-111; Reply Br. 4.
Specifically, Appellant asserts that Ozaki teaches translating data into a
protocol packet rather than an active packet as recited. App. Br. 11.
Appellant further argues that Wang does not teach translating a protocol
message but rather sending generated code in an active packet. App. Br. 12.
Appellant also contends neither Ozaki nor Wang translate an active message
into a protocol message. App. Br. 12-13. Finally, Appellant argues that the
Examiner has not presented a motivation to combine Wang with Ozaki.
App. Br. 13-15; Reply Br. 6.

1 Throughout this opinion, we refer to the Appeal Brief filed April 7, 2009,
and supplemented May 22, 2009.
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ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Wang and Ozaki collectively would have taught or suggested a
means for: (a) receiving a protocol message from the passive network; (b)
translating a protocol message into an equivalent active packet; and (c)
translating an active message into an equivalent protocol message?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ANALYSIS
Our analysis begins by construing some disputed limitations of claim
1, including “a protocol message” and “a passive network.” Notably, these
terms are not defined in the disclosure. See generally Specification; see also
Ans. 8 (indicating “[a]pplicant does not provide a definition of what a
‘passive network’” is). Appellant has also provided no evidence that these
terms have special meaning in the art. Appellant discusses examples of
passive (Spec. 1:7-24; Fig. 1) and active networks (Spec. 3:1-12; Fig. 2), but
the claims are not limited to these examples. As such, we will give the
phrase, “passive network,” its broadest reasonable construction to include a
network that can be acted upon by an external source.
Moreover, Appellant’s argument that the IPv6 device is a computer
that contains program code (App. Br. 11 (citing Ozaki ¶ 0038)) and thus
Ozaki’s network 230 is not passive is misplaced, because Appellant is
focusing on a device and not the IP network 230 mapped to the passive
network (see Ans. 8). Nonetheless and despite that the IPv6 device 150 can
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be a personal computer (Ozaki ¶ 0038), Ozaki also teaches that the gateway
110 uses an IPv6 network 230 to communicate with the IPv6 device 150 and
thus the network 230 can be acted upon by gateway 110 or an external
source. See Ozaki ¶¶ 0039, 0059. As mentioned above, this does not
exclude the IPv6 network from falling within the definition of a passive
network. Further, Appellant does not make any other argument to show that
the IPv6 network should not be considered a passive network. We therefore
find that the Examiner’s mapping of the IPv6 network 230 to a passive
network is reasonable. See Ans. 3.
We additionally find that “a protocol message” in claim 1, given its
broadest reasonable construction, includes a message that contains protocol
information. The IP packets mapped by the Examiner to the “protocol
message” (see id.) are taught or suggested by Ozaki to include such protocol
information. For example, Ozaki teaches an IP message 460 from the IPv6
router 120 to the gateway 110 includes an IPv6 header 461 prescribed by the
IPv6 protocol with transmission destination and source IPv6 addresses (e.g.,
protocol information). Ozaki ¶ 0053; Fig. 9. This teaching suggests that the
IPv6 device 150 would similarly send IP messages having such a header or
send a “protocol message” to the gateway 110. We therefore find, contrary
to Appellant’s assertions (App. Br. 10-11), that Ozaki teaches or suggests a
means for receiving a protocol message (e.g., an IP message) from the
passive network (e.g., 230) as broadly as recited in claim 1. For the above
reason, we do not need to address whether Wang teaches this limitation. See
Reply Br. 4.
As for the limitation, means “for translating a protocol message . . .
into an equivalent active packet” in claim 1, the Examiner explains that the
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limitations in this recitation are met by combining Wang with Ozaki. See
Ans. 4-5, 9. Specifically, the Examiner notes that Ozaki teaches translating
a protocol message to another packet type, but does not disclose translating
to an active packet or that the second network is an active network. See
Ans. 9. The Examiner relies on Wang to cure these deficiencies and to
provide rationale for combining Wang with Ozaki. See Ans. 4-5, 10-11. On
the other hand, Appellant argues that: (1) Ozaki teaches converting IP
packets into non-IP protocol packets, which differs from translating a
protocol message into an equivalent active packet (see App. Br. 11) and (2)
Wang teaches converting passive packets into active packets but fails to
teach translating a protocol message into an equivalent active packet (see
App. Br. 11-12). We disagree.
As the Examiner indicates (see Ans. 9), Appellant does not fully
appreciate what the proposed combined teachings of Ozaki and Wang
suggest. First, the Examiner discusses that Ozaki teaches converting or
translating an IP packet (e.g., a protocol message) into another type of
packet (e.g., non-IP) or converting packets from one format to another. See
Ans. 9. We note that, while Ozaki describes the IP packets are converted to
non-IP “protocol” packets in the Summary of the Invention section (see
¶ 0010), other portions of Ozaki describe this conversion process as a
protocol transform process 550 and omit the “protocol” descriptor from the
converted non-IP or local packets (see, e.g., ¶¶ 0056-57). We therefore find
that the use of the term “protocol” in the discussion of “non-IP protocol
packets” in the Summary of the Invention section is used loosely to refer to
packets that have been converted to another protocol without requiring that
the converted packet is exclusively a “protocol” packet or message.
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Additionally, as noted above, Ozaki does not discuss the converted
packet is an equivalent active packet. The Examiner turns to Wang to teach
this recitation as well as the recited active network. The phrase, “an
equivalent active packet,” is yet another term that is not defined in the
Specification but is discussed as a packet “that carries the executable code
for execution by the active network . . . .” Spec. 7:7. While not limited by
this description of an “active packet,” we find that Wang when combined
with Ozaki teaches such an active packet and also a translation process that
converts passive packets to active packets. As the Examiner states (Ans.
4-5; 8-9) and Appellant admits (App. Br. 12), Wang teaches generating a
passive packet, uses a mapping associated to generate code, and then sends
the code in an active packet (e.g., P) to an active gateway. This teaching
suggests that the active packet has some association with the passive packet
and thus is the equivalent of the passive packet. See Wang, col. 6, ll. 4-14.
And when combining this teaching with Ozaki, the combination suggests
and predictably yields no more than converting Ozaki’s IP packet (e.g.,
protocol packet) into an active packet at gateway 110.
Moreover, the Examiner provides some rational underpinning to
combine the references (Ans. 5, 10-11) such that the combined system
would benefit the end users (e.g., Ozaki’s IP and non-IP devices) by
optimizing a Quality of Service (QoS) without requiring programming
changes for communications between a client and gateway system. See
Wang, col. 5, ll. 61-63; col. 1, ll. 18-27. Appellant contends that this
position is flawed because Ozaki has no need for or indication that a certain
QoS must be provided to a non-IP network. App. Br. 13. Yet, if a technique
is used to improve one device (e.g., Wang’s process for improving QoS for
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packets sent through a gateway) and a person of ordinary skill in the art
would have recognized that the process would improve similar devices (e.g.,
Ozaki’s gateway system) in the same manner (e.g., optimize QoS without
programming changes), using the technique can be considered obvious. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
We further disagree with Appellant’s contentions that the Ozaki and
Wang fail to teach the opposing means for translating the active message
into an equivalent protocol message and that the Examiner provides no
specific support for this limitation in the references. See App. Br. 12-13;
Reply Br. 5-6. That is, we see no reason why Ozaki and Wang’s teachings
cannot be applied in reverse such that active packets in the gateway are
converted or translated into protocol packets when sent to the IP devices.
The Examiner explains that Wang suggests modifying Ozaki’s non-IP
packet to an active packet and, when combining this teaching with Ozaki’s
discussion of converting non-IP packets into IP packets (e.g., protocol
messages) when sending information to an IP device, predictably yields the
recited translating an active packet into an equivalent protocol message.
Ans. 9-10. Also, under § 103, we need not demonstrate how Wang is bodily
incorporated into the Ozaki or how an ordinary artisan would have been able
to modify Ozaki in view of Wang to produce the claimed invention, as
Appellant argues (see App. Br. 14). See In re Keller, 642 F.2d 413, 425
(CCPA 1981). Rather, as addressed above, we need only show what the
combined teachings would have suggested to those of ordinary skill in the
art. See id.
For the first time, in the Reply Brief, Appellant contends that:
(1) Wang does not teach the generated code is equivalent to the passive
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packet (Reply Br. 4); (2) the references do not teach or suggest receiving an
active packet from an active network (Reply Br. 5); and (3) combining
Wang with Ozaki would destroy Ozaki’s invention (Reply Br. 6). Such
arguments are waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (informative) (“[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner’s rejections, but were not.”). Nonetheless, the above
discussions illustrate how Wang, when combined with Ozaki, teach the
passive packet is an equivalent active packet. The above explanation also
discusses how the references further teach receiving an active packet from
an active network and would not destroy the intended purpose of Ozaki to
convert packets from a non-IP to IP protocol or vice versa.
Lastly, independent claim 11 does not include the phrases “protocol
message,” “active packet,” or “passive network.” Rather, this claim differs
in scope from claim 1 and recites receiving an “incoming” data packet from
an active network and translating the incoming data packet into an
equivalent “outgoing” data packet for transmission over a second active
network. Many of the arguments related to claim 1 are thus not pertinent to
claim 11.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 1 and claims 2-11 not separately argued
with particularity.

CONCLUSION
The Examiner did not err in rejecting claims 1-11 under § 103.

Appeal 2009-015206
Application 11/004,220

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DECISION
The Examiner’s decision rejecting claims 1-11 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).

AFFIRMED

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