Ex Parte Weedmark et al

Board of Patent Appeals and Interferences

Apr 14, 2010

10724711 (B.P.A.I. Apr. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK WEEDMARK and PIERO SORRINI
____________________

Appeal 2009-006529
Application 10/724,7111
Technology Center 2400
____________________

Decided: April 14, 2010
____________________

Before JAMES D. THOMAS, JAY P. LUCAS, and STEPHEN C. SIU,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 8 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

1 Application filed December 2, 2003. The real party in interest is Alcatel.
Appeal 2009-006529
Application 10/724,711

We affirm.

Appellants’ invention relates to a method of efficiently tracing failures
of active connection modify (ACM) requests in a connection-oriented
communication network (Spec. ¶ [009]). In the words of Appellants:
Associated with a connection are particular traffic
parameters like bandwidth and service categories.
These traffic parameters are normally setup for the
duration of the call, however, there are user
applications when the traffic parameters associated
with a connection needs to be modified without
being service affecting. For instance, a user
browsing the Internet may want to temporarily
increase his bandwidth to watch a video or
download a large file from the Internet.
(Spec. ¶ [002].)
Once [a] destination node receives [an ACM]
request, it will allocate any additional resource
requirements and send a Modify
Acknowledgement back to [a] source node. . . .
[E]ach node that receives this message will
allocate its resources that were reserved, from the
Modify Request message, and allow the
transmission of data at the new rate. . . .
. . . [T]he ACM may fail at one of the nodes
along the connection being modified.
(Spec. ¶¶ [004] and [005].)
The method of the present invention
provides the ability to immediately identify the
node at which the ACM failure occurred and
provides more detailed vendor specific information
on the cause of the failure.
2
Appeal 2009-006529
Application 10/724,711

(Spec. ¶ [0012].)

Claim 1 is exemplary, and is reproduced below:
1. A method for of [sic] an active connection modify in a
connection oriented communication network, comprising the
steps of:

appending a trace transit list information element (TTL
IE) to a modify request message;

transmitting said modify request message from a source
node to a destination node along said active connection; and

at each node along said active connection, modifying a
parameter of said active connection while recording in said
TTL IE failure identification data.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Karia US 6,643,267 Nov. 04, 2003
(filed on Jun. 30, 1999)

ITU-T, “Series Q: Switching and Signaling Broadband ISDN –
B-ISDN application protocols for access signaling, Digital Subscriber
Signaling System No. 2 – connection modification: peak cell rate
modification by the connection owner,” Q.2963.1 (December 1999)
(hereinafter referred to as “ITU-T Q2963.1”).

REJECTION
The Examiner rejects the claims as follows:

Claims 1 to 8 stand rejected under 35 U.S.C. § 102(e) for being
anticipated by Karia.
3
Appeal 2009-006529
Application 10/724,711

Appellants contend that the claimed subject matter is not anticipated
by Karia because “the Office Action has excessively and improperly relied
on allegations of inherency” (see Brief 5, middle) and because the claim
limitation “modifying a parameter of said active connection” (claim 1) is not
inherently taught by Karia (Brief 6, middle). The Examiner contends that
each of the claims is properly rejected (Ans. 14, top).
The claims are grouped as per Appellants’ Brief. Only those
arguments actually made by Appellants have been considered in this
opinion. Arguments that 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).

ISSUES
The issues involve whether Appellants have shown that the Examiner
erred in rejecting the claims under 35 U.S.C. § 102(e). The first issue
specifically turns on whether Karia’s “request message” is a teaching for
Appellants’ claimed “a modify request message” (claim 1). The second
issue is whether “modifying a parameter of said active connection,” as
recited in claim 1, is taught by Karia.

4
Appeal 2009-006529
Application 10/724,711

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellants have invented a method of tracing an active connection
modify (ACM) request message through the nodes of a communication
network. (See claim 1.) The method includes, at each node along the
active connection, modifying a parameter of said active connection while
recording failure identification data in the transit list information element
(TTL IE) (id.).
Karia
2. The Karia reference teaches a method of tracing a request message
through the nodes of a communication network (col. 2, ll. 8-10). Karia’s
method includes, at each node along the active connection, modifying a
parameter of said active connection while recording failure identification
data in the transit list information element (TTL IE). (See col. 2,
ll. 29-32; col. 3, ll. 40-43.)
ITU-T Q2963.1
3. The ITU-T Q2963.1 reference teaches that a connection modification is
defined as “the alteration of the characteristics of an established
connection with regard to the connection’s traffic parameters” (Section
3.2). Further, when a request to modify a connection is rejected, ITU-T
Q2963.1 teaches incorporating the cause for the rejection in the modify
reject message content (Table 8-3).

5
Appeal 2009-006529
Application 10/724,711

PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006).

“[L]imitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).

Our reviewing court states in In re Zletz that “claims must be
interpreted as broadly as their terms reasonably allow” (id.).

Our reviewing court has determined that extrinsic evidence may be
used to explain but not expand the meaning of terms and phrases used in the
reference relied upon as anticipatory of the claimed subject matter.
In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991). See also
MPEP § 2131.01(II.).

ANALYSIS
From our review of the administrative record, we find that the
Examiner presents his conclusions of unpatentability on pages 3 to 6 of the
Examiner’s Answer. In opposition, Appellants present numerous arguments.

6
Appeal 2009-006529
Application 10/724,711

Arguments with respect to the rejection
of claims 1 to 8
under 35 U.S.C. § 102(e)

Appellants argue: “[T]he Office Action has excessively and
improperly relied on allegations of inherency in putting forth the rejection.”
(Brief 5, middle).
The Examiner finds that Karia teaches the claimed “modify request
message” in columns 1 and 2 and Figures 1 and 2 (Ans. 3, middle). The
Examiner finds that, among other things, Appellants’ claimed “modify
request message” reads on an Operation, Administration, and Maintenance
(OAM) message. (See col. 1, ll. 49-52 and 56-57; Ans. 3, top.) The
Examiner does, however, rely upon ITU-T Q2963.1 for a definition of
“modify,” as claimed (id.), invoking the doctrine of inherency.
We carefully considered Appellants’ Brief, the Examiner’s Answer,
the cited portions of Karia and ITU-T Q2963.1, and indeed the entire
references. In this case, we agree with the Examiner’s conclusions of
unpatentability for the following reasons.
First, regarding Karia’s teachings, we find that Appellants have
invented a method of tracing an active connection modify (ACM) request
message through the nodes of a communication network (FF#1). The
method includes, at each node along the active connection, modifying a
parameter of said active connection while recording failure identification
data in the transit list information element (TTL IE) (id.). In comparison,
the Karia reference teaches a method of tracing a request message
(Appellants’ claimed “active connection modify”) through the nodes of a
communication network (FF#2). Karia’s method includes, at each node
7
Appeal 2009-006529
Application 10/724,711

along the active connection, modifying a parameter of said active connection
while recording failure identification data in the transit list information
element (Appellants’ claimed “trace transit list information element”) (id.).
The Examiner finds that Appellants’ claim limitation “a modify
request message” reads on Karia’s “request message” (col. 1, l. 64; Ans. 3,
middle). Here, we note that Appellants chose not to explicitly define an
ACM request in either their Specification or exemplary claim 1. Instead,
Appellants merely offered examples in the Specification of an ACM request
(i.e., “changing the bandwidth of a connection”). (See ¶ [0018].) However,
this Board will not read any limitations from the Specification into the
claims. (See In re Van Geuns, cited above.) Reading the claim language
broadly but reasonably, see In re Zletz, cited above, we find that Appellants’
claimed “a modify request message” reads on Karia’s “request messages.”
Second, regarding the Examiner’s use of inherency, our reviewing
court has determined that extrinsic evidence may be used to explain but not
expand the meaning of terms and phrases used in the reference relied upon
as anticipatory of the claimed subject matter. In re Baxter Travenol Labs.,
952 F.2d 388, 390 (Fed. Cir. 1991). See also MPEP § 2131.01(II.).
We find that the ITU-T Q2963.1 reference defines a connection
modification (Appellants’ claimed “modify request message”) as a message
requesting “the alteration of the characteristics of an established connection
with regard to the connection’s traffic parameters” (FF#3). When a “modify
request message” is rejected (Appellants’ claimed “failure”), ITU-T
Q2963.1 teaches incorporating the cause (Appellants’ claimed “failure
identification data”) for the rejection in the content of a modify reject
message (id.). We decline to say that the Examiner’s reliance upon a second
8
Appeal 2009-006529
Application 10/724,711

reference (i.e., ITU-T Q2963.1) merely to define the claim term “modify” is
an improper use of the cited reference. (See Baxter Travenol Labs., cited
above.) In accordance with the teachings of Baxter Travenol Labs., cited
above, we find that a person of ordinary skill in the art would have
recognized Karia’s teachings for a “request message” as inherently including
a “modify request message,” as recited in claim 1, for purposes of modifying
“an active connection.”
In conclusion, in light of the broadest reasonable interpretation of the
claimed “modify request message” (claim 1) and the definition of
modification in ITU-T Q2963.1 (see FF#3), we find unconvincing
Appellants’ argument that the Examiner has “excessively and improperly
relied on allegations of inherency.” Accordingly, we find no error.
Next, Appellants’ argue: “[The] step of modifying a parameter [claim
1] … is not inherently disclosed in Karia. . . . Specifically, ‘the use of ATM
networks which by definition incorporate the reservation of resources in
conjunction with a Modify Request message’ [the Examiner’s words] in no
way describes ‘modifying a parameter’ [claim 1].” (Brief 6, middle).
In reply, the Examiner finds that Karia inherently teaches “modifying
a parameter of said active connection,” as recited in exemplary claim 1 (Ans.
3, middle).
Where Appellants’ claim recites “at each node along said active
connection, modifying a parameter of said active connection,” the claim
term “of” may be interpreted as “at each node along said active connection,
modifying a parameter ‘associated with’ said active connection.”
Recognizing that the TTL IE travels the same path as the active
connection, a person of ordinary skill in the art would have also understood
9
Appeal 2009-006529
Application 10/724,711

a parameter “associated with” said active connection as including any Trace
Transit List (TTL) Information Element (IE) parameter that changes at each
node along the active connection. Here, we note that the Karia patent says:
“Each node traversed by the message (including the source node) adds one
entry to the TTL IE.” (Col. 2, ll. 29-31). Since “of said active connection,”
as claimed, may be interpreted as “associated with said active connection,”
Appellants’ claim limitation “at each node along said active connection,
modifying a parameter of said active connection” reads on Karia’s teachings
for adding one entry to the TTL IE at each node traversed by the message
(id.). For all of the above-stated reasons, Appellants’ claim limitation
“modifying a parameter of said active connection” (claim 1) is met by our
claim interpretation and Karia’s teachings. Accordingly, we find no error.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 8.

DECISION
The Examiner’s rejection of claims 1 to 8 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
10
Appeal 2009-006529
Application 10/724,711

peb

KRAMER & AMADO, P.C.
1725 DUKE STREET, SUITE 240
ALEXANDRIA, VA 22314
11