Ex Parte Cox et al

Patent Trial and Appeal Board

Sep 24, 2012

09996208 (P.T.A.B. Sep. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GREGORY W. COX and AARON M. SMITH
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Appeal 2010-011423
Application 09/996,208
Technology Center 2400
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Before ALLEN R. MacDONALD, ERIC S. FRAHM, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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STATEMENT OF THE CASE 1
The Invention
Appellants’ invention generally relates to network routers. (Spec. p.
1, l. 5 (“Technical Field”)). “In one embodiment, a router can identify active
communication links to which it has been coupled and then automatically
identify which an active communication link or links need a new address
prefix or prefixes.” (Spec. p. 2, ll. 24-26.)
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows
(emphasis added to contested limitations):
1. A method comprising:
at a router having at least two interfaces and that connects
multiple communication links to one another:
identifying at least one active communication link to provide an
identified active communication link;
automatically identifying whether the router needs a new
address prefix for the identified active communication link.

1 Throughout this Decision, we refer to the 1st Substitute Appeal Brief (App.
Br.) filed Dec. 17, 2009; the Reply Brief (Reply Br.) filed Mar. 13, 2006; the
originally-filed Specification (Spec.) filed on Nov. 28, 2001; the Final Office
Action (FOA) mailed June 23, 2005; and the Examiner’s Answer (Ans.)
mailed May 27, 2010.
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Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Schutte US 6,178,455 B1 Jan. 23, 2001 (filed Apr. 11, 1997)
Alkhatib US 6,532,217 B1 Mar. 11, 2003 (filed June 28, 1999)
Applicant’s Admitted Prior Art (AAPA) (Spec. 5, ll. 29-32)
Rejections on Appeal
A. The Examiner has rejected claims 1-16 under 35 U.S.C
§ 103(a) as being unpatentable over Alkhatib in view of Schutte. (Ans. 4).
B. The Examiner has rejected claims 17-18 under 35 U.S.C
§ 103(a) as being unpatentable over Alkhatib and Schutte in view of AAPA.
(Ans. 6).
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived.
ISSUES AND ANALYSIS
1. 35 U.S.C. § 103(a): Claims 1-16
Appellants’ Contentions
Appellants contend that “Alkhatib does not make any teachings
regarding relevant use of a router or any corresponding routing method . . .
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[and therefore] the underlying basis for the Examiner’s suggestion regarding
the obviousness of combining Alkhatib with Schutte is imaginary and utterly
without support.” (App. Br. 13).
Appellants also contend that “neither Alkhatib nor Schutte teach or
suggest that a router should be able to automatically identify whether that
router needs a new address prefix for a particular active communication link
. . . [because] Alkhatib presumes the existence of an address prefix and
instead provides teachings that deal with portions of a network address other
than the prefix while Schutte brings nothing more relevant to the mix.”
(App. Br. 13, emphasis in original).
Appellants further contend that
Claim 1 specifically requires “automatically identifying
whether the router needs a new address prefix for the identified
active communication link.” This language clearly captures the
points of distinction identified above . . . this recitation requires
“automatic” action on the part of a router, and requires in
particular that the router identify whether the router “needs” a
new address “prefix” . . . [i]dentifying whether one “needs”
something is utterly distinct from, for example, simply noting
the absence of something as is well supported by the present
application.
App. Br. 14.
Appellants also contend:
[A]pplicant has characterized Alkhatib as being directed to a
non-router node as distinct from the router context that relates
to the applicant's claims. The Examiner argues that, “Contrary
to applicant's argument, however, Alkhatib recites that the
device 76 comprises an interface 78 for communication means,
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and that the interface 78 may comprise ‘a router.’” The section
of Alkhatib relied upon by the Examiner reads in its entirety as
follows:
In one embodiment, device 76 could be a
videotape machine, home security system, home
lighting system, computer, disk drive, etc. Device
76 includes a network interface 78. In one
embodiment, network interface 78 could include a
network card (e.g. Ethernet card), a modem, a
router, etc.
Reply. Br. 3, citing Ans. 8 and Alkhatib at col. 5, ll. 22-27,
emphasis added.
Appellants go on to contend that
applicant continues to submit that a person of average skill in
the art would not read this reference [Alkhatib], in context, as
teaching that Alkhatib’s teachings in fact relate to a router as
such . . . [t]his casual reference to the network interface being a
router, would likely strike the skilled reader as being odd,
inconclusive, and likely wrong, as a router is utterly unlike
network cards, modems, and the like . . . [i]n fact . . . a router is
not properly usable as a network interface in this regard . . . [so
that] Alkhatib is quite arguably non-enabling with respect to
rendering any useful teachings regarding routers and their
application in a network setting . . .[t]his being so, the applicant
continues to respectfully submit that Alkhatib is devoid of any
useful or meaningful teachings with respect to routers and
hence continues to be distinguished from the applicant’s claims
in ways that are detailed in the applicant’s Appeal Brief.
Reply Br. 4.
Appellants also contend that
Alkhatib’s simple (and, seemingly, incorrect and/or naïve)
reference to using a router as one would use a network card or a
modem would lead to complications, difficulties, expense, and
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very likely limitations regarding usage and configuration that
are directly contrary to such vaguely stated benefits. Quite
contrary to the Examiner’s conclusions, the applicant
respectfully submits that one of ordinary skill in the art would
recognize that Alkhatib’s steps in context are best when not
performed by a router.
Reply Br. 5, emphasis in original.
Finally, Appellants contend that “Alkhatib provides non-relevant
teachings in a non-relevant application context and the applicant continues
to respectfully submit that the points of differentiation presented in the
Appeal Brief continue to be valid and that the Examiner’s Answer offers
only insufficient facts or reasoning in opposition thereto.” (Reply. Br. 6).
Issue 1
Did the Examiner err in finding that the combination of Alkhatib with
Schutte teaches or suggests a method that includes a step of “automatically
identifying whether the router needs a new address prefix for the identified
active communication link,” as recited in independent claim 1?
Analysis
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to claims 1-16, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in
the Examiner’s Answer (Ans. 4-5, 7-12) in response to Appellants’
Arguments (App. Br. 9-14). However, we highlight and address specific
findings and arguments regarding claim 1 for emphasis as follows.
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We concur with the conclusions reached by the Examiner, particularly
that the combination of Alkhatib with Schutte teaches or suggests
“automatically identifying whether the router needs a new address prefix for
the identified active communication link,” as recited in independent claim 1.
In this regard, we agree with the Examiner’s finding that “Alkhatib teaches
automatically determining whether the device needs a new address prefix
(i.e., subnet mask) for the identified active communication link as recited in
appellant’s claims.” (Ans. 10).
Appellants’ arguments that Alkhatib does not teach or suggest a router
are not persuasive, particularly in light of Alkhatib’s specific teachings cited
by the Examiner on this point, i.e., that interface 78 may comprise a router,
along with the related discussion in Alkhatib regarding the router
functionality performed. (Ans. 4 and 8-9). In addition, we note that the
Examiner relies upon the secondary reference, Schutte, as teaching a router
having “at least two interfaces and that connects multiple communication
links to one another,” as recited in claim 1. (Ans. 5 and 10-11).
Appellants have not provided convincing arguments to rebut these
findings and related claim construction by the Examiner.
It was not until the Reply Brief that Appellants first broached the new
argument that a person of “average skill in the art” would not understand
that Alkhatib’s teachings relate to a router as such, and that “[t]his casual
reference to the network interface being a router, would likely strike the
skilled reader as being odd, inconclusive, and likely wrong, as a router is
utterly unlike network cards, modems, and the like . . . [i]n fact . . . a router
is not properly usable as a network interface in this regard . . . [so that]
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Alkhatib is quite arguably non-enabling with respect to rendering any useful
teachings regarding routers and their application in a network setting.”
(Reply Br. 4).
We find that these attorney arguments on how a person with skill in
the art would interpret the cited art in terms of its disclosure and/or
enablement lack any supporting evidence of record, are untimely, and are
therefore deemed waived. Appellants have not explained why, nor is it
apparent that, these arguments were necessitated by a new point in the
Answer or any other circumstance constituting “good cause” for its belated
presentation. See Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010)
(“informative”2) (absent a showing of good cause, the Board is not required
to address argument in Reply Brief that could have been presented in the
principal Brief).
Even assuming, arguendo, that the above-cited new arguments should
be considered, the arguments only amount to attorney arguments that lack
any supporting factual or evidentiary basis in the record before us, and
which therefore are unpersuasive.
Similarly, Appellants’ argument that “one of ordinary skill in the art
would recognize that Alkhatib’s steps in context are best when not
performed by a router,” (Reply Br. 5) is similarly an untimely attorney
argument lacking support in the record before us.

2 The “informative” status of this opinion is noted at the following Board
website: http://www.uspto.gov/ip/boards/bpai/decisions/inform/index.jsp.
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Therefore, we find that Appellants have not convinced us of any error
in the Examiner’s characterization of the cited art and related claim
construction. Accordingly, we sustain the Examiner’s rejection of claims 1-
16.
2. 35 U.S.C. § 103(a): Claims 17-18
Appellants’ Contentions
Appellants merely contend that “[t]he remaining claims are ultimately
dependent upon one of the independent claims . . . . [F]or the sake of brevity
the applicant is presently content for purposes of this appeal to rely upon the
positions set forth above with respect to the independent claims.” (App. Br.
17).
Therefore, we find that the rejection of these claims turns on Issue 1,
supra, such that we sustain the Examiner’s rejection of claims 17-18.
CONCLUSIONS
1. The Examiner did not err in the rejection of claims 1-16 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Alkhatib
and Schutte.
2. The Examiner did not err in the rejection of claims 17-18 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Alkhatib,
Schutte, and Appellants’ Admitted Prior Art (AAPA).
3. Claims 1-18 are unpatentable.
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DECISION
The decision of the Examiner to reject claims 1-18 as being
unpatentable 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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