Ex Parte Pharn

Board of Patent Appeals and Interferences

Jun 4, 2009

11042179 (B.P.A.I. Jun. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ART PHARN
_____________

Appeal 2009-001953
Application 11/042,179
Technology Center 2800
____________

Decided:1 June 4, 2009
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Before KENNETH W. HAIRSTON, ROBERT E. NAPPI,
and MARC S. HOFF, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001953
Application 11/042,179

2
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1 to 22. We have jurisdiction under 35 U.S.C. § 6(b).
We will sustain the anticipation rejection of claims 1 to 3, 10 to 12,
and 18 to 20 based upon the teachings of Oliver, sustain the anticipation
rejection of claims 1, 10, and 18 based upon the teachings of Bjork, sustain
the anticipation rejection of claims 1 to 3, 10 to 12, and 18 to 20 based upon
the teachings of Chong, reverse the anticipation rejection of claims 4, 13,
and 21 based upon the teachings of Chong, and sustain the obviousness
rejections of claims 5 to 9, 14 to 17, and 22.
Appellant has invented a network monitoring method and apparatus
for transmitting a signal into a network cable, detecting a reflection of the
signal using a time domain reflectometry circuit (TDR), and activating an
indication if the reflection indicates that an unexpected connection has been
made to the network cable (Figs. 2, 3, 6; Spec. 3, 4, 9 to 11, 13, 14).
Claim 10 is representative of the claims on appeal, and it reads as
follows:
10. A network monitoring apparatus, comprising:
a network interface device with an integral time domain
reflectometry circuit;
transmitting means for transmitting a signal into a network
cable;
processing means for detecting a reflection of said signal
and determining whether an unexpected connection has been
made to said network cable; and
indicating means for providing an indication when said
processing means determines that an unexpected connection has
been made to said network cable.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Oliver US 4,766,386 Aug. 23, 1988
Bjork US 5,128,619 Jul. 7, 1992
Hulina US 5,521,512 May 28, 1996
Chong US 6,417,672 B1 Jul. 9, 2002
Karam US 6,614,236 B1 Sep. 2, 2003
Lo US 6,980,007 B1 Dec. 27, 2005
(filed Mar. 27, 2003)
The Examiner rejected claims 1 to 3, 10 to 12, and 18 to 20 under 35
U.S.C. § 102(b) based upon the teachings of Oliver.
The Examiner rejected claims 1, 10, and 18 under 35 U.S.C. § 102(b)
based upon the teachings of Bjork.
The Examiner rejected claims 1 to 4, 10 to 13, and 18 to 21 under 35
U.S.C. § 102(b) based upon the teachings of Chong.
The Examiner rejected claims 5, 6, and 14 under 35 U.S.C. § 103(a)
based upon the teachings of Chong and Hulina.
The Examiner rejected claims 5 to 7, 14, and 15 under 35 U.S.C. §
103(a) based upon the teachings of Chong and Lo.
The Examiner rejected claims 8, 9, 16, 17, and 22 under 35 U.S.C. §
103(a) based upon the teachings of Chong and Karam.
Appellant argues (App. Br. 9 to 18) that the applied references to
Oliver, Bjork, and Chong do not determine that an unexpected connection
has been made to the network cable via the use of a TDR circuit as set forth
in claim 10.
Appellant argues (App. Br. 18 to 20) that Oliver does not compare
reflection signature data and a reflection of a signal to determine whether an
unexpected connection has been made to the network cable as set forth in
claims 4, 13, and 21.
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ISSUES
Anticipation
Has Appellant shown that the Examiner erred by finding that each of
the applied references to Oliver, Bjork, and Chong teaches the use of a TDR
circuit to determine that an unexpected connection has been made to the
network cable?
Has Appellant shown that the Examiner erred by finding that Chong
teaches the use of a comparison means to compare reflection signature data
and a reflection of a signal to determine whether an unexpected connection
has been made to the network cable?

FINDINGS OF FACT
1. Oliver describes the use of a time domain reflectometer (TDR) 12 for
making impedance measurements on a powered transmission line
cable system (Abstract). The TDR 12 transmits a signal into cable 10,
detects a reflection of the signal, and determines whether a tap
connection 15, 16 has been made to the cable, and an oscilloscope 13
provides an indication of the presence of the tap connection (Figs. 1,
3; col. 1, ll. 21 to 35; col. 3, ll. 35 to 67).
2. Bjork uses a TDR 16 to determine the existence of bridge taps on a
communication cable 12 (Fig. 1; Abstract; col. 2, ll. 41 to 57). The
TDR 16 transmits a signal into cable 10 and detects a reflection of the
signal, and a computer 14 processes the reflected signal to determine
whether a tap connection has been made to the cable. An indication
of the presence of a tap connection is made known by the waveform
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on display screen 24 of the TDR (col. 3, ll. 15 to 26; col. 6, ll. 7 to
11).
3. Chong describes the use of a TDR to detect the presence of bridge
taps in a transmission line (Figs. 1A, 2B, 3A, 3C; Abstract; col. 1, ll.
27 to 48; col. 4, ll. 34 to 51; col. 14, ll. 5 to 13; col. 15, ll. 48 to 60).
A transmitter (e.g., pulse generator 360) transmits a signal into the
transmission line, a processor 310 determines the presence of the
bridge tap via analysis of the reflected signal and a display 214
provides an indication of the presence of the bridge tap on the
transmission line (col. 9, ll. 46 to 52; col. 10, ll. 24 to 34; col. 11, ll.
15 to 21).
4. Chong indicates that the reflected signals are usually caused by events
that are normally expected, but that they can be caused by undesirable
events (col. 14, ll. 55 to 61).
5. Chong states that a menu screen on the test set 200 can “store and
recall test setup and/or results information” (col. 13, ll. 40 to 44).

PRINCIPLES OF LAW
Anticipation
Anticipation is established when a single prior art reference discloses
expressly or under the principles of inherency each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir.
1994).
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During ex parte examination, a claim is given its broadest reasonable
construction. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004).
A claimed apparatus is distinguished from the prior art in terms of
structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78
(Fed. Cir. 1997).
A claim setting forth a “recitation with respect to the manner in which
a claimed apparatus is intended to be employed does not differentiate the
claimed apparatus from a prior art apparatus” if the prior art apparatus
contains all of the structural limitations of the claim. Ex parte Masham, 2
USPQ2d 1647 (BPAI 1987).
Obviousness
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and Appellant has the burden of presenting a rebuttal to the
prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

ANALYSIS
Anticipation
Turning first to the anticipation rejection of claim 10 based upon the
teachings of Oliver, we find that Oliver describes all of the apparatus
structure2 set forth in this claim (Finding of Fact 1). The TDR in such
apparatus structure will detect reflected signals from both expected
connections made to the cable as well as unexpected connections that may
have escaped the user’s notice. We reach such a result because of the

2 Appellant has not argued for a 35 U.S.C. § 112, sixth paragraph
interpretation of the claimed apparatus structure.
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absence in the disclosure of any noted differences between an expected
connection and an unexpected connection. See Schreiber, 128 F.3d at 1477-
78; Masham, 2 USPQ2d 1647. When the term “unexpected” connection is
given its broadest reasonable construction consistent with the disclosure, we
find that it is nothing more than any other connection that is made to the
cable. See Am. Acad., 367 F.3d at 1364. Thus, we will sustain the
anticipation rejection of claim 10 based upon the teachings of Oliver because
we disagree with Appellant’s argument (App. Br. 9 to 13) that the term
“unexpected” connection distinguishes claim 10 over the teachings of
Oliver. See Atlas Powder, 190 F.3d at 1347; Paulsen, 30 F.3d at 1478-79.
The anticipation rejection of claims 11 and 12 based upon the teachings of
Oliver is sustained because Appellant has relied on the same argument
presented for claim 10 (App. Br. 13). The anticipation rejection of claims 1
to 3 and 18 to 20 based upon the teachings of Oliver is sustained because
Appellant has relied on the same argument presented for claim 10 (App. Br.
13 to 14).
Turning to the anticipation rejection of claim 10 based upon the
teachings of Bjork, we find that Bjork, like Oliver, describes all of the
apparatus structure set forth in this claim (Finding of Fact 2). Accordingly,
for all of the reasons expressed supra in response to Appellant’s argument
concerning the term “unexpected” connection, we find that Appellant’s use
of the same argument (App. Br. 14 to 15) against Bjork is not convincing of
the patentability of claim 10. The same argument made by Appellant (App.
Br. 16) for claims 1 and 18 is equally unconvincing of the patentability of
these claims.
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Turning next to the anticipation rejection of claim 10 based upon the
teachings of Chong, we find that Chong, like Oliver and Bjork, describes all
of the apparatus structure set forth in this claim (Finding of Fact 3). In fact,
Chong recognizes that undesirable/unexpected connections may be made to
the transmission line (Finding of Fact 4). For all of the reasons expressed
supra, we will sustain the anticipation rejection of claim 10 based upon the
teachings of Chong. We will likewise sustain the anticipation rejection of
claims 1 to 3, 11, 12, and 18 to 20 based upon the teachings of Chong
because Appellant’s argument for these claims (App. Br. 18 to 20) is the
same argument presented by Appellant for claim 10 (App. Br. 16 to 18).
Turning lastly to the anticipation rejection of claims 4, 13, and 21
based upon the teachings of Chong, we will reverse this rejection because
Chong stores and recalls results of a TDR test (Finding of Fact 5), but is
silent as to the use of such stored results to make a comparison with a signal
reflection (App. Br. 18 to 20).
Obviousness
The obviousness rejections of dependent claims 5 to 9, 14 to 17, and
22 are sustained because Appellant has chosen to rely on the arguments
presented for the independent claims from which they depend (App. Br. 21
to 22). See Oetiker, 977 F.2d at 1445.

CONCLUSIONS OF LAW
Anticipation
Appellant has not demonstrated that the Examiner erred by finding
that each of the applied references to Oliver, Bjork, and Chong teaches the
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use of a TDR circuit to determine that an unexpected connection has been
made to the network cable.
Appellant has demonstrated that the Examiner erred by finding that
Chong teaches the use of a comparison means to compare reflection
signature data and a reflection of a signal to determine whether an
unexpected connection has been made to the network cable.
Obviousness
Appellant has not demonstrated that the Examiner erred by finding
that the applied references teach or would have suggested the claimed
subject matter.

ORDER
The decision of the Examiner rejecting claims 1 to 4, 10 to 13, and 18
to 21 under 35 U.S.C. § 102(b) is affirmed as to claims 1 to 3, 10 to 12, and
18 to 20, and is reversed as to claim 4, 13, and 21. The decision of the
Examiner rejecting claims 5 to 9, 14 to 17, and 22 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 CFR § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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