13299102 - (D) (P.T.A.B. Feb. 19, 2020)

Hack, Heiko et al.

Patent Trials and Appeals BoardFeb 19, 2020

13299102 - (D) (P.T.A.B. Feb. 19, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/299,102 11/17/2011 Heiko Hack 5029-873-313298 9942 27799 7590 02/19/2020 COZEN O'CONNOR 277 PARK AVENUE , 20TH FLOOR NEW YORK, NY 10172 EXAMINER SMITH, JOSHUA Y ART UNIT PAPER NUMBER 2477 NOTIFICATION DATE DELIVERY MODE 02/19/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patentdocket@cozen.com patentsecretary@cozen.com patentsorter@cozen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HEIKO HACK, TIMO KISTNER, URS SCHWEIZER, ANDREAS SCHÄFFLER, and MICHAEL WAGNER Appeal 2019-001692 Application 13/299,102 Technology Center 2400 Before CAROLYN D. THOMAS, ADAM J. PYONIN, and IFTIKHAR AHMED, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Siemens AG. Appeal Br. 2. Appeal 2019-001692 Application 13/299,102 2 STATEMENT OF THE CASE Introduction The Application is directed “to a modular switch for communications networks, i.e., for industrial communications networks, where . . . a port module present in the switch for connecting communication cables can be swapped for a functional module.” Spec. ¶ 63. Claims 1–6 and 8–17 are pending; claims 1, 8, and 17 are independent; claim 7 is cancelled. Appeal Br. 13–18. Claim 1 is reproduced below for reference (emphasis added): 1. A modular switching network node of an industrial communications network comprising a PROFINET, the modular switching network node comprising: at least one port module comprising at least one connection interface for coupling to the industrial communications network comprising the PROFINET; and a switching node based[2] unit arranged in the industrial communications network comprising the PROFINET, the switching node base unit comprising a backplane having (i) an internal network bus connected to a switch core for forwarding communication data received over the at least one connection interface, (ii) a system bus connected to a central processing unit and (iii) a power supply bus connected to a power supply unit; wherein the modular switching network node is configured to forward communication data arriving over the at least one connection interface to at least one additional connection interface of the modular switching network node, communication data arriving over the at least one connection interface not being forwarded upon determining that a receiver of the communication data is already located in a communication branch from which the communication data to the switching network node base unit originated; and 2 Other than this single use of “based” in claim 1, the Specification and claims recite a “base” unit. We consider the “based” term as a typographical error, and herein treat the claim term as reciting “base.” Appeal 2019-001692 Application 13/299,102 3 wherein the switching network node base unit is configured such that the at least one port module is swappable for a functional module to expand a functionality of the modular switching network node. Appeal Br. 13 (Claims Appendix). References and Rejections The Examiner relies on the following prior art: Name Reference Date McHale US 2001/0043568 A1 Nov. 22, 2001 Wilson US 6,944,158 B1 Sept. 13, 2005 So US 2008/0212568 A1 Sept. 4, 2008 Rischar US 7,447,931 B1 Nov. 4, 2008 Claims 1, 2, 4, 6, 8, and 14–17 stand rejected under 35 U.S.C. § 103(a) as obvious in view of So, Wilson, and Rischar. Final Act. 3. Claims 3, 5, and 9–13 stand rejected under 35 U.S.C. § 103(a) as obvious in view of So, Wilson, Rischar, and McHale. Final Act. 23. ANALYSIS The Examiner assigns the same meaning to the claim term “backplane” and the claim term “switching node base unit,” as the “language of [c]laim 1 does not require that a ‘switching node base unit’ has any part or characteristic that is outside, apart, or beyond ‘a backplane having (i) an internal network bus . . . (ii) a system bus . . . and (iii) a power supply bus.’” Ans. 47. The Examiner further finds these limitations are taught or suggested by “the multimedia application processor 1 in FIG. 4 of So.” Id. at 45. Appeal 2019-001692 Application 13/299,102 4 Appellant argues the Examiner’s rejection is in error, as the references “fail[] to teach or suggest a switching node base unit . . . that includes a backplane . . . having three buses . . .” as claimed. Reply Br. 4. Particularly, Appellant contends “[i]t is totally improper to call the multimedia application processor 1 of So a ‘backplane,’” because such mapping “fails to account for the switching node base unit of applicants’ claimed invention.” Appeal Br. 11, 12. We are persuaded of Examiner error, because the Examiner has not properly identified a teaching in the cited references for both the claimed backplane and the claimed switching node base unit. See Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1119 (Fed. Cir. 2004) (“[W]hen an applicant uses different terms in a claim it is permissible to infer that [the] different terms [] reflect a differentiation in the meaning of those terms.”). Here, the backplane is recited as a different term from the switching node base unit, leading to the inference that claim 1 requires a differentiation in the meaning of the terms. Such construction is consistent with the Specification, which describes the backplane as a part of, but not synonymous with, the base unit. See Fig. 1; Spec. ¶ 57. Accordingly, we agree with Appellant that the claim terms have different meaning and each term must be given patentable weight. See Reply Br. 2. The Examiner finds “the multimedia application processor 1 in FIG. 4 of So contains multiple busses and can teach a switching node base unit comprising a backplane.” Ans. 36 (emphasis omitted). So’s multimedia application processor, however, is a single unit with no mention of a separate backplane. See Reply Br. 4; So Fig. 4. We find, therefore, that the Examiner has not sufficiently presented a case of obviousness with respect Appeal 2019-001692 Application 13/299,102 5 to claim 1, as the Examiner has not shown the disputed claim “elements are found in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007); see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“All words in a claim must be considered in judging the patentability of that claim against the prior art.”). We are persuaded the Examiner’s rejection of claim 1 is in error. Independent claims 8 and 17 recite similar language. See Appeal Br. 15–18. We do not sustain the Examiner’s obviousness rejection of the independent claims, or the claims dependent thereon. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Basis/Reference(s) Affirmed Reversed 1, 2, 4, 6, 8, 14–17 103(a) So, Wilson, Rischar 1, 2, 4, 6, 8, 14–17 3, 5, 9–13 103(a) So, Wilson, Rischar, McHale 3, 5, 9–13 Overall Outcome 1–6, 8–17 REVERSED