Ex Parte Nguyen et al

Patent Trial and Appeal Board

Mar 6, 2014

11441868 (P.T.A.B. Mar. 6, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/441,868 05/26/2006 Cuong T. Nguyen 16356.999 (DC-10714) 1291
27683 7590 03/07/2014
HAYNES AND BOONE, LLP
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
NG, CHRISTINE Y
ART UNIT PAPER NUMBER
2464
MAIL DATE DELIVERY MODE
03/07/2014 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 CUONG T. NGUYEN, JOSEPH D. DENIRO,
JOSEPH BURTON FARRELL, BRUCE A. HOLMES, and
MOHANA R. MULLAPUDI
____________________

Appeal 2011-012743
Application 11/441,868
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 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
According to Appellants, the invention relates generally to
information handling systems, and more particularly to automatic detection
of network port configuration mismatch (Spec. 1, [0001]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method for warning a user of a port configuration
mismatch, comprising:
listening, by a port switch that has been set to a fixed
configuration mode having a port switch duplex setting, to an
advertisement of a peer switch duplex setting by a peer switch;
comparing the advertised peer switch duplex setting to the
port switch duplex setting;
generating a warning notification in response to
determining that the advertised peer switch duplex setting does
not match the port switch duplex setting; and
transmitting the warning notification to a user.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hwong US 6,457,055 B1 Sep. 24, 2002
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Johnson US 2004/0221025 A1 Nov. 4, 2004
Connor US 2006/0280132 A1 Dec. 14, 2006
(filed Jun. 9, 2005)

Claims 1-3, 6-9, 12-14, and 17-19 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Connor and Hwong.
Claims 4, 5, 10, 11, 15, and 16 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Connor, Hwong and Johnson.

II. ISSUE
The main issue before us is whether the Examiner has erred in
determining that the combination of Connor and Hwong teaches or would
have suggested “listening, by a port switch that has been set to a fixed
configuration mode…, to an advertisement of a peer switch duplex setting”
and “generating a warning notification in response to determining that the
advertised peer switch duplex setting does not match the port switch duplex
setting,” as recited in claim 1 (emphases added).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Connor
1. Connor discloses a node configured to operate in half-duplex
mode with a link partner, wherein the half-duplex mode is set using system
configuration tool, and the link partner may be auto-negotiation enabled (p.
3, [0030]).
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2. Connor’s system identifies the node’s failure to detect duplex
mode of its link partner (p.3, [0031]).
Hwong
3. Hwong discloses using auto-negotiation processes when the
user specifies certain duplex mode settings on one device and the link
partner device provides a matched connection, or indicates a failed
connection (col. 2, ll. 51-65).
4. For auto mode, a device will advertise all its capabilities (col. 6,
ll. 15-19).

IV. ANALYSIS
Appellants contend that “Connor discloses a fixed configuration mode
port switch that does not listen to the duplex setting advertisement of its peer
switch” and “Hwong does not disclose a fixed configuration mode port
switch that listens to the duplex setting advertisement of its peer switch”
(App. Br. 6). Thus, Appellants contend that “there is no disclosure in either
of the references, nor are there disclosures in the references that can be
combined, to teach [the claimed limitations]” (id., emphases added).
Although Appellants concede that Connor “communicates
information… that could be caused by a duplex mismatch . . .” Appellants
contend that “this is different from determining a mismatch between a port
switch duplex setting and a [sic] advertised peer switch duplex setting”
(App. Br. 7). Appellants also concede that Hwong discloses “listening to
advertisements of a peer switch . . .” but contend that Hwong’s disclosure is
of “an auto-negotiation device” (App. Br. 8). Appellants then contend that
“Connor does not ‘detect’ a duplex setting of a peer switch but rather only
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takes a guess . . .” and thus Hwong’s auto-negotiation device “does not
remedy the deficiencies of a fixed configuration switch that does not listen
to duplex setting advertisements of a peer switch” (id.).
However, the Examiner finds that Connor teaches “that the port
switch determines the duplex mode of the peer switch by observing activity
such as excessive collisions” wherein “a node in half-duplex mode compares
its mode to the peer switch’s mode by determining if the peer switch is in
half-duplex mode or full-duplex mode via observations” (Ans. 9).
According to the Examiner, Connor “ensure[s] that the final determination
of the peer switch setting is correct, so the determination is not a guess”
(Ans. 10).
The Examiner then finds Hwong teaches “that an auto-negotiation
device advertises its abilities and detects the abilities of link partners . . .”
(Ans. 9). In particular, the Examiner finds that Hwong “teach[es] using
advertisements instead of the observations used by Connor to determine the
duplex mode of a peer switch” (id.). The Examiner concludes it would have
been obvious, using the teachings of Hwong, that the switch of Connor “set
to a fixed configuration mode can also detect the duplex setting of a peer
switch through advertisements from the peer switch” (Ans. 10).
As an initial matter, we give the claim its broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). However, we will not read limitations from the
Specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993).
We note that method claim 1 does not positively recite any step of
“determining” of a match or mismatch, but rather merely recites steps of
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“listening,” “comparing,” “generating” a warning notification, and
“transmitting” the warning notification. In fact, claim 1 merely recites that
generating step is performed “in response to” a condition, such as
“determining that the advertised peer switch duplex setting does not match.”
That is, if the condition does not occur, i.e., if there is a determination that
the settings do match or if the settings do not match but there is no
determining being done, the generating and thus transmitting of a warning
notification do not occur. Accordingly, in claim 1, the generating and
transmitting of a warning notification is not positively recited as being
carried out because of the recited predicate “determining” condition
(“generating a warning notification in response to determining that the
advertised peer switch duplex setting does not match the port switch duplex
setting;” (Claim 1, emphasis added). Cf. In re Johnston, 435 F.3d. 1381,
1384 (Fed. Cir. 2006) (“[O]ptional elements do not narrow the claim
because they can always be omitted.”). Based on such interpretation, the
Examiner is not required to find the disclosure of the steps of generating a
warning notification and transmitting the warning notification in the prior
art. See Ex Parte Gary M. Katz, 2011 WL 514314, *4 (BPAI 2011).
Therefore, we agree with and adopt the Examiner’s findings, and find
no error with the Examiner’s conclusion that the claims would have been
obvious over Connor and Hwong.
Although Appellants contend that “Connor … does not listen to the
duplex setting advertisement of its peer switch,” “Hwong does not disclose a
fixed configuration mode port switch . . .” and thus “there is no disclosure in
either of the references, nor are there discloses in the references that can be
combined, to teach [the claimed limitations]” (App. Br. 6-8), the Examiner
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rejects the claims as obvious over Connor and Hwong. The test for
obviousness is not what the references show individually but what the
combined 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). Thus, in
this Appeal, we address whether the Examiner has erred in finding that
Connor in combination with Hwong would have at least suggested the
recited limitations in claim 1.
Connor discloses a node configured to operate in half-duplex mode set
using system configuration tool, and a link partner that is auto-negotiation
enabled (FF 1), wherein the system identifies the node’s failure to detect
duplex mode of its link partner (FF 2). That is, Connor discloses a node that
has been set to a fixed configuration mode having a port switch duplex
setting, wherein the node detects the duplex mode of its link partner and the
system identifies the node’s failure to detect (FF 1-2). Even Appellants
concede that “Connor discloses a fixed configuration mode port switch . . .”
(App. Br. 6) and Connor’s system “communicates information… that could
be caused by a duplex mismatch . . .” (App. Br. 7). We agree with the
Examiner that, in Connor, “a node in half-duplex mode compares its mode
to the peer switch’s mode by determining if the peer switch is in half-duplex
mode or full-duplex mode . . .” (Ans. 9). We find no error with the
Examiner’s finding that Connor “ensure[s] that the final determination of the
peer switch setting is correct, so the determination is not a guess” (Ans. 10).
Furthermore, Hwong discloses specifying certain duplex mode
settings on one device while the link partner device provides a matched
connection (or indicates a failed connection) in an auto mode (FF 3),
wherein the link partner advertises all its capabilities (FF 4). That is, Hwong
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discloses a node set to a fixed configuration mode and the settings between
the node and its link partner are compared for a match or a fail, wherein the
link partner advertises its capabilities (FF 3-4). We agree with the
Examiner’s finding that Hwong discloses a port switch that listens to
advertisements of its link partners’ capabilities, and detects abilities of link
partners as advertised (Ans. 9).
Thus, we find no error with the Examiner’s conclusion that would
have found it obvious to combine 1) Hwong’s teaching of a port switch’s
listening to advertisement of a peer switch duplex setting for determining if
the settings do not match, with 2) Connor’s comparison of a fixed
configuration mode of a port switch to the mode of a peer switch (Ans. 9).
In particular, we find no error with the Examiner’s finding that Hwong
“teach[es] using advertisements instead of the observations used by Connor
to determine the duplex mode of a peer switch” (Ans. 9), or the Examiner’s
conclusion that it would have been obvious, using the teachings of Hwong,
that the switch of Connor “set to a fixed configuration mode can also detect
the duplex setting of a peer switch through advertisements from the peer
switch” (Ans. 10).
Appellants have provided no evidence that combining such teachings
was “uniquely challenging or difficult for one of ordinary skill in the art,”
Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007), nor have Appellants presented evidence that this incorporation
yielded more than expected results.
Rather, we find that Appellants’ invention is simply a combination of
known teachings that realize a predictable result. The Supreme Court has
determined that the conclusion of obviousness can be based on the
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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 would
“be able to fit the teachings of multiple patents together like pieces of a
puzzle” since the skilled artisan is “a person of ordinary creativity, not an
automaton.” Id. at 420-21.
Accordingly, we find no error in the Examiner’s finding that Connor
in view of Hwong would at least have suggested “listening, by a port switch
that has been set to a fixed configuration mode…, to an advertisement of a
peer switch duplex setting” and “generating a warning notification in
response to determining that the advertised peer switch duplex setting does
not match the port switch duplex setting,” as required by claim 1.
Appellants do not provide arguments separate from those of claim 1
for independent claims 7, 13, 18 and 19 , and claims 2-6, 8-12, and 14-17
depending respectively from claims 1, 7, and 13 (App. Br. 9). Thus, we also
affirm the rejection of claims 2, 3, 6-9, 12-14, and 17-19 over Connor and
Hwong, and of claims 4, 5, 10, 11, 15, and 16 over Connor and Hwong in
further view of Johnson.

V. CONCLUSION AND DECISION
The Examiner’s rejections of claims 1-19 under 35 U.S.C. § 103(a) 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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