10766841 (B.P.A.I. Mar. 27, 2012)

Ex Parte Papadimitriou et al

Board of Patent Appeals and InterferencesMar 27, 2012

10766841 (B.P.A.I. Mar. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DIMITRI PAPADIMITRIOU and BART ROUSSEAU ____________ Appeal 2010-002111 Application 10/766,841 Technology Center 2400 ____________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and JAMES R. HUGHES, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-10. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We Affirm. Appeal 2010-002111 Application 10/766,841 2 INVENTION Appellants’ invention relates to “a method for establishing a connection via a first serving edge node of a serving network” by “receiving one or more diversity parameters defining one or more diversities between said connection and a further connection via a second serving edge node of said serving network.” (Spec. 1, ll. 5-9). ILLUSTRATIVE CLAIM 1. A method for establishing a connection via a first serving edge node of a serving network, said method comprising: receiving one or more diversity parameters defining one or more diversities between said connection and a further connection via a second serving edge node of said serving network, wherein said first serving edge node and said second serving edge node are different serving edge nodes; and exchanging information between said serving edge nodes and, in response to exchanged information, setting up at least a part of said connection. REJECTIONS 1. The Examiner rejected claims 1-10 under 35 U.S.C. § 102(e) as being anticipated by McCanne (U.S. Patent No. 6,611,872 B1, filed June 1, 1999). 2. Claims 1 and 7-10 stand provisionally rejected on the ground of nonstatutory obviousness-type double patenting over claims 1, 7, and 8 of copending Patent Application No. 11/166,212 (‘212). Appeal 2010-002111 Application 10/766,841 3 ISSUE Based upon our review of the administrative record, we have determined that the following issue is dispositive in this appeal regarding the anticipation rejection: Under §102, did the Examiner erred in finding that McCanne discloses “receiving one or more diversity parameters defining one or more diversities between said connection and a further connection via a second serving edge node of said serving network, wherein said first serving edge node and said second serving edge node are different serving edge nodes,” within the meaning of claim 1 (emphasis added)? ANALYSIS Appellants contend that McCanne does not disclose “the receipt of one or more diversity parameters that define one or more diversities (or differences) between the connection with a first serving edge node in a serving network and a further connection with a second serving node of the serving network,” as recited in claim 1. (App. Br. 11).1 However, based upon our review of the record, we agree with and adopt the Examiner’s findings with respect to the disputed limitations (Ans. 3). We conclude that the Examiner’s construction of the disputed “diversity 1 Since Appellants’ arguments with respect to this rejection have treated claims 1-10 as a single group which stand or fall together, we select independent claim 1 as the representative claim for this rejection. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2010-002111 Application 10/766,841 4 parameters” (Ans. 8) is broad but reasonable.2 We note that the language of claim 1 only requires a minimum of one diversity parameter (“one or more diversity parameters”) that defines a single diversity (“one or more diversities”). Moreover, Appellants have not defined the disputed term “diversity parameters” in the claims or Specification.3 Therefore, on this record, we are not persuaded that the Examiner’s reading of the claimed “diversity parameters” on the different IP and MAC addresses disclosed in McCanne, is overly broad, unreasonable, or inconsistent with Appellants’ Specification. We agree with the Examiner that, in accordance with the TCP protocol, IP and MAC addresses define different routes between a sender and the overlay router disclosed in McCanne. (Ans. 8, see also McCanne, col. 8, ll. 50-64). Furthermore, Appellants’ arguments urging patentability regarding the “receiving” limitation are predicated on nonfunctional descriptive material. In particular, the argued steps of “receiving one or more diversity parameters,” and “exchanging information between the serving edge nodes,” are not altered or performed differently according to the particular type or content of data that is received. The content of such nonfunctional descriptive material is not entitled to weight in the patentability analysis. 2 “[T]he PTO gives a disputed claim term its broadest reasonable interpretation during patent prosecution.” In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). 3 Any special meaning assigned to a term “must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.” Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998). Appeal 2010-002111 Application 10/766,841 5 See Ex parte Nehls, 88 USPQ2d 1883, 1887-1888 (B.P.A.I. Jan. 28, 2008) (precedential), available at http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf For these reasons, we find the weight of the evidence supports the Examiner’s finding of anticipation. Accordingly, we sustain the Examiner’s anticipation rejection of claim 1, and claims 2-10 which fall therewith.4 See 37 C.F.R. § 41.37(c)(1)(vii) Provisional Obviousness-Type Double Patenting Rejection As noted above, claims 1 and 7-10 were provisionally rejected on the ground of nonstatutory double patenting over claims 1, 7, and 8 of the copending ‘212 application. Appellants request that the provisional double- patenting rejection be held in abeyance. (App. Br. 14). The ‘212 application has subsequently issued as U.S. Patent No. 7,830,803 on Nov. 9, 2010. Therefore, the double-patenting rejection is no longer provisional. Accordingly, we pro forma affirm the Examiner’s obviousness-type double patenting rejection of claims 1 and 7-10 over claims 1, 7, and 8 of U.S. Patent No. 7,830,803. 4 In the event of further prosecution, we observe that independent claims 7-10 are directed to apparatus and a method for using the apparatus. Such claims are considered to be hybrid claims and are indefinite. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). Appeal 2010-002111 Application 10/766,841 6 DECISION We affirm the Examiner’s § 102 rejection of claims 1-10. We affirm the Examiner’s obviousness-type double patenting rejection of claims 1 and 7-10. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). ORDER AFFIRMED llw