Ex Parte Vergnaud et al

Board of Patent Appeals and Interferences

Oct 13, 2009

11391669 (B.P.A.I. Oct. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GERARD VERGNAUD, LUC ATTIMONT, JANNICK BODIN,
RAYMOND GASS, and JEAN-CLAUDE LAVILLE
____________

Appeal 2009-008939
Application 11/391,6691
Technology Center 2100
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Decided: October 13, 2009
____________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
FRED E. MCKELVEY, Senior Administrative Patent Judge and
JOHN A. JEFFERY, Administrative Patent Judge.

JEFFERY, Administrative Patent Judge.

1 This application seeks reissue of U.S. Patent 6,715,087 which is based on
application of 09/703,654, filed November 2, 2000.
Appeal 2009-008939
Application 11/391,669

2
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 30-32. Claims 1-29 have been indicated as containing
allowable subject matter. Ans. 2.2 We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

STATEMENT OF THE CASE
Appellants invented a method for sending a remote power feed to a
terminal in a local area network. A test signal is produced to determine
whether the remote terminal is present. The test signal has a voltage such
that the terminal cannot be damaged.3 Claim 30 is illustrative:
30. A method of providing a remote power feed to a terminal in a
local area network, the method comprising:

producing at least one test signal on at least two conductors of a line
for connecting the local area network to a remote terminal, the test signal
having an energy such that the terminal cannot be damaged under any
circumstances,

detecting the presence of a remote terminal adapted to receive a
remote lower feed by detecting the presence of predetermined impedance in
the remote terminal on the basis of a current created by the test signal in that
line,

determining a compatible power level of the terminal for receiving the
remote power feed, and

2 Throughout this opinion, we refer to (1) the Appeal Brief filed May 19,
2008 (supplemented August 22, 2008); (2) the Examiner’s Answer mailed
December 9, 2008; and (3) the Reply Brief filed February 9, 2009.

3 See generally U.S. Pat. 6,715,087 (“the ‘087 patent’”), at Abstract; col. 9,
l. 39 − col. 11, l. 13; Fig. 5.
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sending a power supply current in that line at the compatible power
level when the presence of a terminal adapted to receive a remote power
feed is detected.

The Examiner relies on the following as evidence of unpatentability:
Katzenberg US 6,218,930 B1 Apr. 17, 2001
(filed Mar. 7, 2000)

THE REJECTION4
The Examiner rejected claims 30-32 under 35 U.S.C. § 102(e) as
anticipated by Katzenberg. Ans. 4-8.
Regarding claim 30, the Examiner finds that Katzenberg discloses all
of the claimed subject matter including producing a low-level current test
signal with an energy such that it would not damage a remote terminal under
any circumstances as claimed. Ans. 5. The Examiner reasons that since this
low-level current test signal cannot start up or sustain the remote terminal’s
power supply, its energy would therefore not damage the terminal under any
circumstances. Ans. 5 and 9.
The Examiner further finds that Katzenberg detects the remote
terminal’s power supply impedance by detecting the varying (i.e., sawtooth)
voltage level created by the test current. Ans. 5, 9, and 10.
The Examiner makes similar findings regarding claims 31 and 32.
Ans. 6-8.

4 The Examiner withdrew a rejection under 35 U.S.C. § 251. Ans. 4.
Accordingly, only the rejection based on § 102 is before us.
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4
Regarding claim 30, Appellants argue that since Katzenberg uses a
supply voltage test signal, it is allegedly not “a compatible signal,” unlike
that of the present invention which uses far lower test voltages. App. Br.
10-11; Reply Br. 10.5 These lower test voltages, Appellants contend, cannot
damage the terminal and are intrinsically safe. App. Br. 11.
Regarding claims 31 and 32, Appellants argue that Katzenberg does
not determine a predetermined impedance at the remote terminal based on a
current created by the test signal as claimed. App. Br. 11; Reply Br. 10-11.
According to Appellants, “Katzenberg does not look at a current created by
the test signal in the line, but instead is looking at the returned voltage.
Thus, Katzenberg is not doing what claims 31 and 32 require.” App. Br. 11.
The issues before us, then, are as follows:

ISSUES
Under § 102, have Appellants shown that the Examiner erred in:
(1) rejecting claim 30 by finding that Katzenberg’s low-level current
test signal has an energy such that the remote terminal cannot be damaged
under any circumstances?
(2) rejecting claims 31 and 32 by finding that Katzenberg detects the
presence of a predetermined impedance in the remote terminal based on a
current created by the test signal?

5 Although the Briefs are not individually paginated, we nevertheless cite to
page numbers in the order in which they appear in the record for clarity.
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5
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
Katzenberg
1. Katzenberg discloses a system that remotely powers access
equipment over a switched Ethernet network. In one implementation, a
remote access device 10 is connected to a network data node 14 via network
cable 12. Katzenberg, Abstract; col. 2, ll. 35-51; Fig. 1. This configuration
is shown in Katzenberg’s Figure 1 reproduced below:

Katzenberg’s Figure 1 Showing Network Configuration of Network
Data Node and Remote Access Equipment

2. Power source 16 is connected to cable 12 via lines 18 to supply a
power level sensing potential to the remote access equipment 10 over one of
the cable conductors. Katzenberg, col. 2, ll. 52-57; Fig. 1.
3. Power source 16 may be the same as the conventional main power
supply used to power node 14. Katzenberg, col. 2, ll. 52-54.

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4. A return path from remote access equipment 10 is connected via
lead 20 to an automatic remote power detector 22. Katzenberg, col. 2, ll. 57-
65; Fig. 1.
5. Katzenberg automatically detects whether remote equipment has
been connected to the network by (1) delivering a low-level current of
approximately 20 mA to the network interface, and (2) measuring a voltage
drop in the return path. Katzenberg, col. 2, l. 66 − col. 3, l. 2.
6. Based on this measurement, Katzenberg determines whether there
is:
(1) no voltage drop;
(2) a fixed-level voltage drop; or
(3) a varying-level voltage drop.
For determinations (1) and (2), Katzenberg’s system concludes that
the remote equipment either does or does not have a DC resistive
termination and therefore cannot support a remote power feed under these
conditions. But for varying voltage levels (determination (3)), the system
determines that the remote equipment has a DC-DC switching supply that
can accept remote power upon confirmation. Katzenberg, col. 3, ll. 2-27.
7. The remote power supply creates a varying voltage level by the
remote power supply beginning to start up, but the low current level is
unable to sustain the start up. The cycle continues repeatedly creating a
“sawtooth” voltage level in the return path. Katzenberg, col. 3, ll. 14-17.
8. When this cycle is confirmed, power output to the remote
equipment is increased. When this power reaches the proper level, the
remote power supply turns on and the remote equipment becomes active.
Katzenberg, col. 3, ll. 17-22.
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9. After completing a second confirmation, the remote equipment is
deemed capable of accepting remote power. Katzenberg, col. 3, ll. 22-27.
10. Remote access device 10 includes an internal DC-DC switching
power supply which, in the absence of Katzenberg’s invention, would be
supplied by an AC transformer adapter plugged in to the local 110 volt
supply. Katzenberg, col. 2, ll. 40-45.

Appellants’ Disclosure
11. According to Appellants’ Specification, the voltage of the AC
generator and resistance are chosen to pass a test current that is not
hazardous for any terminal that might be connected to the end of the line,
particularly if it is a terminal not adapted to receive a remote power feed.
‘087 Patent, col. 9, ll. 27-31.

PRINCIPLES OF LAW
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure which is
capable of performing the recited functional limitations. RCA Corp. v. Appl.
Dig. Data Sys., Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984); W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983).
Mere lawyer’s arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).

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ANALYSIS
We begin by highlighting the distinctions in the three claims on
appeal before us. First, all three claims call for, in pertinent part, detecting
the presence of predetermined impedance in the remote terminal based on a
current created by the test signal—a key disputed limitation.
It is the second disputed limitation, however, where the claims differ
somewhat. Claims 30 and 326 recite, in pertinent part, that the test signal has
an energy such that the remote terminal cannot be damaged under any
circumstances. Claim 31 is identical to claim 30 except that the term
“energy” noted above is changed to “voltage.” As such, claim 31 requires
that the test signal has a voltage such that the remote terminal cannot be
damaged under any circumstances.
We note these distinctions to clarify the record, for the contentions in
Appellants’ Briefs are not entirely consistent with these distinctions.
According to Appellants:

Claim 30 specifies that the test signal is at a voltage
compatible with the remote unit, claim 31 specifies that the test
signal is a voltage incapable of causing damage at the remote
end, and claim 32 specifies that the test signal is sent over the
same conductors used for transmitting communication signals.

App. Br. 7; Reply Br. 7 (emphases added).

6 Claim 32 contains several other distinctions that are not argued and are not
relevant to the dispute before us in this appeal.

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But claim 30 does not recite a “compatible”7 test signal voltage as this
passage seems to suggest, but rather an energy that is not damaging to the
remote terminal under any circumstances. Claim differentiation principles
alone suggest that Appellants envisioned that the term “energy” is not the
same as “voltage”: otherwise, claim 31 would be superfluous to claim 30.8
We further note a key inconsistency regarding the claims argued in
the Appeal Brief as opposed to the Reply Brief. In the Appeal Brief,
Appellants’ argument that Katzenberg’s use of a supply voltage test signal is
allegedly not “a compatible signal” was expressly stated to apply solely to
claim 30. App. Br. 10-11. No other claim was mentioned in this line of
argument.9 See id.
Similarly, on Page 11 of the Appeal Brief, Appellants specifically
identify only claims 31 and 32—not claim 30—in connection with another

7 Although the term “compatible” does not appear in claim 30, we presume
that Appellants intended this term to be interpreted in light of the recited
condition of the test signal’s energy as not damaging the remote terminal
under any circumstances.

8 “The doctrine of claim differentiation creates a presumption that each
claim in a patent has a different scope. . . . The difference in meaning and
scope between claims is presumed to be significant ‘to the extent that the
absence of such difference in meaning and scope would make a claim
superfluous.” Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343,
1351 (Fed. Cir. 2005) (internal quotation marks and citations omitted).

9 See App. Br. 10-11 (“Regarding claim 30, Katzenberg uses a supply
voltage test signal. This will not be a compatible signal, and claim 30 is
therefore not anticipated.”) (emphases added).

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line of argument pertaining to determining10 a predetermined impedance at
the remote terminal based on a current created by the test signal. App. Br.
11. In contrast, Appellants in the Reply Brief refer to all three claims in
connection with this argument. Compare Reply Br. 11 with App. Br. 11.
In any event, all three appealed claims call for, in pertinent part,
detecting the presence of predetermined impedance in the remote terminal
based on a current created by the test signal as we noted previously. As
such, our decision regarding this limitation applies to all three claims.
Moreover, our decision accounts for the distinction between claims 30 and
31 regarding the other key disputed limitation, namely whether test signal’s
energy or voltage is such that the terminal cannot be damaged under any
circumstances— a condition that ultimately results in a test current that is
not hazardous for any terminal that might be connected to the end of the line.
See FF 11.
Turning to Katzenberg, we find no error with the Examiner’s reliance
on Katzenberg’s low-level current test signal as corresponding to the recited
test signal (Ans. 9). This current is approximately 20 mA, and is used to
measure voltage drops in the return path. FF 5. Nothing in claim 30
precludes this low current value from corresponding to the recited “energy”
of the test signal.
Although Katzenberg does not specify the voltage level associated
with this 20 mA current, Katzenberg does indicate that the power source 16
supplies a “power level sensing potential” to the remote access equipment.

10 Although neither claims 31 nor 32 recite “determining” a predetermined
impedance, the claims do recite detecting the presence of such an
impedance. We therefore presume that Appellants intended to refer to this
presence detection step.
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FF 2. And while this power source may be the same as the conventional
main power supply used to power node 14 (FF 3; emphasis added), it need
not be the same in view of the permissive “may be” language used in the
passage. As such, this passage does not preclude the possibility that other
power supplies could be used.
In any event, even assuming that the power source 16 is the same as
the “conventional main power supply” that powers node 14, Katzenberg
does not specify the actual value of voltage delivered from this power
supply. A “conventional main power supply” does not necessarily supply
mains voltage levels to attached equipment as Appellants seem to suggest
(Reply Br. 10), but merely could use conventional mains power to derive
lower voltages therefrom (e.g., via step-down transformers and the like), and
supply these lower voltages to attached equipment. That Katzenberg’s
remote access device 10 can be powered via an AC transformer plugged into
the local 110 volt supply (i.e., mains power) (FF 10) only bolsters this
finding.
Nevertheless, based on Katzenberg’s limited discussion of the
“conventional main power supply” (FF 2-3), we cannot say what the actual
voltage value corresponding to the low-level current test signal would be, let
alone that it would damage the terminal under any circumstances. But we
can say that this low-level test signal is nonetheless delivered to the remote
equipment to determine its characteristics (see FF 2-7)—a goal that would
be defeated if the applied signal damaged the very equipment it was

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designed to detect. That the applied low-level current test signal is not even
able to sustain the start-up of the remote equipment’s DC-DC supply (FF 7)
as the Examiner indicates (Ans. 9) only bolsters our finding that the applied
signal would not be damaging.
In any event, Appellants have provided no evidence on this record
proving that Katzenberg’s low-level current test signal would necessarily
damage the remote access equipment. As such, Appellants’ arguments to
the contrary (App. Br. 10; Reply Br. 11) are merely speculative without
evidentiary support. Such conclusory assertions fall well short of rebutting
the Examiner’s prima facie case of anticipation. See Geisler, 116 F.3d at
1465.
We also find no error in the Examiner’s position (Ans. 9-10) that
Katzenberg effectively detects the presence of a predetermined impedance in
the remote terminal based on a current created by the test signal.
Katzenberg automatically detects whether remote equipment has been
connected to the network by (1) delivering a low-level current of
approximately 20 mA to the network interface, and (2) measuring a voltage
drop in the return path. FF 5.
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This determination based on detected return path voltage drops (FF 6)
is summarized in Table 1 below:
Detected Return Path
Voltage Drop

Condition of Remote
Equipment

Conclusion
None No DC resistive termination

Cannot support remote
power feed

Fixed DC resistive termination

Cannot support remote
power feed

Varying DC-DC switching supply

Can accept remote
power feed upon
confirmation

Table 1: Katzenberg’s Remote Equipment Determination Based on
Detected Return Path Voltage Drops

Although Katzenberg interprets only the varying voltage drop (i.e., the
“sawtooth” level) as corresponding to equipment that can accept a remote
power feed as shown in Table 1 above (FF 6-7), nothing in the claim
precludes using the other voltage drop detections as detecting the presence
of a predetermined impedance in the remote terminal. That is, any of the
three voltage drops (zero, fixed, or varying) would, by their very nature,
detect the presence of some predetermined impedance in the remote terminal
to realize the voltage drop itself. See id. The Examiner’s point in this regard
citing Ohm’s Law (Ans. 10) is well taken. While a zero and fixed voltage
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drop value would indicate that the remote equipment was unable to support a
remote power feed, nothing in the claim precludes this determination which
would likewise indicate the presence of a predetermined impedance in the
terminal. See id.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of claim 30-32. Therefore, we will sustain the
Examiner’s rejection of those claims.

CONCLUSION
Appellants have not shown that the Examiner erred in rejecting claims
30-32 under § 102.

ORDER
The Examiner’s decision rejecting claims 30-32 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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