Ex Parte Vasquez et al

Board of Patent Appeals and Interferences

Jan 30, 2009

09811906 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SILVERIO C. VASQUEZ and JAAN RAAMOT
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Appeal 2008-3183
Application 09/811,906
Technology Center 2400
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Decided: January 30, 2009
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Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
STEPHEN C. SIU Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-18. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2008-3183
Application 09/811,906

THE INVENTION
The disclosed invention relates generally to connecting multiple
network sections within physical layer. More particularly, the present
invention relates to connecting multiple network sections which may have
different transmissions speeds within physical layer protocol. (Spec. 1).
Independent claim 1 is illustrative:
1. A method for communicating information between a
plurality of local area network sections having different
transmission speeds, the plurality of local area network sections
employing a physical layer protocol in which an unsuccessful
transmission is communicated to a transmission source prior to
completion of the transmission, the method comprising steps of:

a) receiving, within the physical layer protocol, a packet
that is transmitted from a source terminal in a source network
section having a source transmission speed to a destination
terminal in a destination network section having a destination
transmission speed, the destination transmission speed differing
from the source transmission speed;

b) determining the transmission speed for the destination
terminal; and

c) re-transmitting, within the physical layer protocol, the
received packet to the destination network section at the
destination transmission speed.

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THE REFERENCE
The Examiner relies upon the following reference as evidence in
support of the obviousness rejection:
Haddock US 5,560,038 Sep. 24, 1996
(filed Nov. 28, 1995)

THE REJECTION
1. The Examiner rejected claims 1-18 under 35 U.S.C.
§ 103(a) as being unpatentable over Applicants’ Admitted Prior
Art (AAPA) (Spec. 1-4) in view of Haddock and Examiner’s
Official Notice.

“[T]he examiner bears the initial burden on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Therefore, we look to Appellants’ Brief to show error in the proffered
prima facie case.
Only those arguments actually made by Appellants have been
considered in this decision. Arguments which Appellants could have made
but chose not to make in the Brief have not been considered and are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

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Application 09/811,906

Obviousness under 35 U.S.C. § 103
PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, “[w]hat matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1742
(2007). To be nonobvious, an improvement must be “more than the
predictable use of prior art elements according to their established
functions.” Id. at 1740.
Claims 1-3, 7-11, and 13-18
We consider the Examiner’s rejection of claims 1-3, 7-11, and 13-18.
Since Appellants’ arguments have treated these claims as a single group
which stand or fall together, we select claim 1 as the representative claim for
this group. See 37 C.F.R. § 41.37(c)(1)(vii).

APPELLANTS’ CONTENTIONS
1. Appellants contend that the cited references and Official Notice
taken by the Examiner fail to teach or suggest “transmitting
within the physical layer protocol, the received packet to the
destination network section at the destination transmission
speed.” (Br. 9).
2. Appellants contend that there is no motivation to combine the
teachings of Haddock and the Official Notice with AAPA. (Br.
10).
3. Appellants contend that Haddock teaches away from the
claimed invention. (Br. 11).
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ISSUES
Have Appellants shown that the Examiner erred in determining that
the prior art teaches transmitting “within the physical layer protocol, the
received packet to the destination network section at the destination
transmission speed?”
Have Appellants shown that the Examiner erred in purportedly failing
to provide a motivation to combine the teachings of Haddock and Official
Notice with AAPA?
ANALYSIS
As indicated above, Appellants contend that the prior art and Official
Notice taken by the Examiner fail to teach or suggest “transmitting within
the physical layer protocol, the received packet to the destination network
section at the destination transmission speed.” In particular, Appellants
contend that the Haddock reference teaches receiving packets and re-
transmitting packets at a different speed at the MAC layer or packet layer.
(Br. 9).
The Examiner took Official Notice that receiving and transmitting a
data packet within the physical layer is known in a computer networking
environment at the time the invention was made. (Ans. 5). We note that the
Examiner’s taking of Official Notice was not rebutted by Appellants.1 We

1 To adequately traverse the Examiner’s finding, Appellants must
specifically point out the supposed errors in the Examiner's action, which
would include stating why the noticed fact is not considered to be common
knowledge or well-known in the art. See 37 C.F.R. 1.111(b). See also
MPEP § 2144.03.
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also find that Appellants have admitted that the Official Notice taken by the
Examiner is prior art. (Br. 8).
Having acknowledged that certain claimed elements are taught by the
prior art, Appellants cannot now defeat an obviousness rejection by asserting
that the cited prior art fails to teach or suggest these elements. “Valid prior
art may be created by the admissions of the parties. . . . [A] statement by an
applicant during prosecution identifying certain matter not the work of the
inventor as ‘prior art’ is an admission that the matter is prior art.”
Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir.
2003) (citations omitted); see also Constant v. Advanced Micro-Devices
Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a patent that
something is in the prior art is binding on the applicant and patentee for
determinations of anticipation and obviousness.”); In re Nomiya, 509 F.2d
566, 571 n.5 (CCPA 1975) (It is a “basic proposition that a statement by an
applicant, whether in the application or in other papers submitted during
prosecution, that certain matter is ‘prior art’ to him, is an admission that that
matter is prior art for all purposes . . . .”).
In the present case, we find the Examiner’s taking of Official Notice
is supported by Appellants’ own admission in the Brief that “the Admitted
Art and Examiner’s Official Notice appear to be cumulative, they will be
referred to interchangeably hereafter as simply the ‘Admitted Art’” (Br. 8).
Thus, Appellants cannot effectively argue that the combined teachings of
Haddock, AAPA, and the Examiner’s Official Notice fail to teach the
limitation of receiving and transmitting a data packet within the physical
layer.
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We further note that Appellants merely recited the limitations of claim
11 that differ from claim 1, and do not assert any arguments regarding the
separate patentability of claim 11. Accordingly, patentability is urged based
on the arguments presented above regarding claim 1, which we do not find
to be persuasive.
Appellants further contend that there is no motivation to combine the
teachings of Haddock and Official Notice with AAPA.
After considering the evidence before us, it is our view that
Appellants’ argument does not take into account what the collective
teachings of the prior art would have suggested to one of ordinary skill in the
art and is therefore ineffective to rebut the Examiner’s prima facie case of
obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“The test
for 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 what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”) (Citations
omitted, emphasis added). This reasoning is applicable in the present case.
Appellants contend that the type of data translation operations taught
by Haddock is not compatible with data transmission within the physical
layer protocol because the Haddock switch is a store and forward device.
According to Appellants, store and forward devices such as MAC switches
do not switch data at the physical layer. (Br. 10). Appellants further
contend that there is no teaching or suggestion that any of the techniques of
Haddock are applicable in a physical layer switch.
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However, it is our view that Appellants’ contentions do not take into
account the collective teachings of Haddock, AAPA and the Official Notice.
We note that the AAPA and the Official Notice are relied upon by the
Examiner as evidence that transmission of data packets at different speeds at
the physical layer is well known in the art, and are not meant to suggest a
physical or structural combination of Haddock and AAPA.
Appellants further contend that Haddock teaches away from the
present invention. We disagree because Haddock does not discourage or
disavow the modifications to the AAPA proposed by the Examiner.
“[T]he prior art's mere disclosure of more than one alternative does
not constitute a teaching away from any of these alternative because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed …” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Thus, we do not find Appellants’ arguments that Haddock teaches
away from the present invention to be persuasive.
Based on the record before us, we conclude that Appellants did not
meet their burden of showing error in the Examiner’s prima facie case for
rejecting claim 1, and claims 2-3, 7-11, and 13-18 which fall therewith.
Accordingly, we sustain the Examiner’s rejection of claims 1-3, 7-11, and
13-18 as being unpatentable over AAPA, Haddock and Examiner’s Official
Notice.
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Claims 4-6 and 12
We next consider the Examiner’s rejection of claims 4-6 and 12 under
35 U.S.C. § 103(a) as being unpatentable over AAPA, Haddock and the
Examiner’s Official Notice. Since Appellants’ arguments have treated these
claims as a single group which stand or fall together, we select claim 4 as the
representative claim for this group. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellants contend that because Haddock teaches transferring packets
between networks having different speeds, the combination of AAPA and
Haddock would not allow re-transmitting a single packet before it is
received. (Br. 13).

ISSUE
Have Appellants shown that the Examiner erred in determining that
the cited prior art teaches “re-transmission of the received packet before the
source terminal completes its transmission of the packet?”

ANALYSIS
The Examiner based the prima facie case for rejecting claim 4 on the
teachings of AAPA. (Ans. 7 and 12). However, it is our view that
Appellants’ arguments are directed to the teachings of Haddock and do not
address the Examiner’s findings with respect to AAPA. (Br. 13). Thus, it is
our view that Appellants did not meet their burden of rebutting the
Examiner’s prima facie case.

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Based on the record before us, we conclude that Appellants failed to
meet their burden of showing error in the Examiner’s prima facie case.
Accordingly, we sustain the Examiner’s rejection of claim 4 and claims 5-6
and 12 which fall therewith.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude the
following:
Appellants have not shown that the Examiner erred in determining
that the cited prior art teaches transmitting “within the physical layer
protocol, the received packet to the destination network section at the
destination transmission speed.”
Appellants have not shown that the Examiner erred in failing to
provide motivation to combine the teachings of Haddock and Official Notice
with AAPA.
Appellants have not shown that the Examiner erred in determining
that the cited prior art teaches “re-transmission of the received packet before
the source terminal completes its transmission of the packet.”
Therefore, claims 1-18 are not patentable.

DECISION
The decision of the Examiner rejecting claims 1-18 under 35 U.S.C.
§ 103(a) is affirmed.

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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

pgc

Harold C. Moore
Maginot, Addison & Moore
Bank One Center/Tower
111 Monument Circle, Suite 3000
Indianapolis IN 46204-5115
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