Ex Parte Holloway

Patent Trial and Appeal BoardOct 12, 2017

12493477 (P.T.A.B. Oct. 12, 2017)

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. 12/493,477 06/29/2009 Timothy D. Holloway 128404.17US1 9430 34018 7590 Greenberg Traurig, LLP 77 W. Wacker Drive Suite 3100 CHICAGO, IL 60601-1732 EXAMINER RAHAMAN, MOHAMMED S ART UNIT PAPER NUMBER 2486 NOTIFICATION DATE DELIVERY MODE 10/20/2017 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): chiipmail @ gtlaw .com escobedot@gtlaw.com j arosikg @ gtlaw .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY D. HOLLOWAY1 Appeal 2017-003620 Application 12/493,477 Technology Center 2400 Before ROBERT E. NAPPI, JOHN P. PINKERTON, and JAMES W. DEJMEK, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 21 and 22. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION The invention is directed to a handheld communications device that is used to verify that a network node is operational. Specifically, the device is used to verify the node is operational and communicating with other nodes. 1 According to Appellant, the real party in interest is Ideal Industries Inc. See Appeal Br. 2. Appeal 2017-003620 Application 12/493,477 See paragraph 12, Abstract, and Figure 1 of Appellant’s Specification. Claim 21 is illustrative of the invention and reproduced below: 21. A handheld communications device comprising: a communications port; at least one battery; and processing circuitry configured to automatically determine a network address of a network node connected to the communications port, to send information to the network node and retrieve information from the network node using the determined network address, to consume energy stored by the battery, and internally use the automatically determined network address of the network node connected to the communications port to automatically modify a network address of the handheld communications device so that the network address of the handheld communications device and the network address of the network node belong to a same IP subnet. REJECTION AT ISSUE The Examiner has rejected claims 21 and 22 under 35 U.S.C. § 103(a) as unpatentable over Fluke Networks, NetTool Inline Network Tester User's Manual (Rev. 3, Mar. 2005), hereinafter ManualOl, in view of How Ping Works, (Apr. 13, 2008) available at http://www.inetdaemon.com/toos/ping/how_ping_works.shtml, hereinafter PingProcessO 1. Answer 3—5.2 ISSUES Appellant argues on pages 4 through 6 of the Appeal Brief, and pages 2 and 3 of the Reply Brief, the Examiner’s rejection of independent claims 2 Throughout this opinion, we refer to the Appeal Brief, dated May 13, 2016; Reply Brief, dated January 10, 2017, and the Examiner’s Answer, mailed on November 14, 2016. 2 Appeal 2017-003620 Application 12/493,477 21 and 22 is in error. These arguments present us with the issue: Did the Examiner err in finding the combination of ManualOl and PingProcessOl teaches or suggests “and internally use[s] the automatically determined network address of the network node connected to the communications port to automatically modify a network address of the handheld communications device so that the network address of the handheld communications device and the network address of the network node belong to a same IP subnet?” ANALYSIS We have reviewed Appellant’s arguments in the Briefs, the Examiner’s rejection, and the Examiner’s response to Appellant’s arguments. Appellant’s arguments have not persuaded us of error in the Examiner’s rejection of claims 21 and 22. Appellant argues: [Ejven though the NetTool device may use DHCP to configure itself, DHCP does not provide a mechanism by which a device —by itself- automatically determines a network address of a network node connected to the communications port of the handheld device and them internally uses the automatically determined network address of the network node connected to the communications port of the device to automatically modify a network address of the device so that the network address of the device and the network address of the network node belong to a same IP subnet as recite in the claims. Rather than provide the configuration that is claimed,... in DHCP a client device simply obtains its IP address by sending a query to a server whereupon the server functions to assign and IP address to the client device. Appeal Br. 4—5 (emphasis original). Further, Appellant states: From the foregoing it will be understood that, while ManualOl may describe that a client device can use DHCP “to configure itself’ which means that the client device and have its IP address “modified or 3 Appeal 2017-003620 Application 12/493,477 changed” so that the device will use an IP address that was assigned to/leased to the client device by an external server, this manner of modifying or changing an IP address is not the same or equivalent to the claimed aspect of a handheld communications device... Appeal Br 5—6. In the Reply Brief, Appellant asserts that the DHCP processes utilize a server to allocate an IP address, which is different then the disputed claim litigation. We are not persuaded of error with the Examiner’s rejection by these arguments. The Examiner states: Appellant is equating “internally using” to “internally using and without any communicating with another device.” However it should be note[d] the claim language is “internally using” meaning as long as the automatically determined network address is internally use[d] in addition to any communication with a server or any device, [the reference], would still teach the claimed limitation. Answer 7. We concur with the Examiner. We are not persuaded that the recitation of the term “internally use” in claim 21 precludes other communications, such as the communications from the DHCP process, from being used in the automatic modification of the network address of the handheld communication device. The Examiner has provided a detailed explanation of how the NetTool device automatically changes its network address, we agree with the Examiner for the reasons stated by the Examiner. Answer 7—10. We also note that ManualOl teaches that the NetTool discovers the DHCP server (see page 3—4), thereby providing further support for the finding that network address of a network node (DHCP server) connected to the communications port is used to automatically modify the network address of the handheld device (i.e., to the IP address assigned by the DHCP server). As such Appellant’s arguments, that the DHCP process 4 Appeal 2017-003620 Application 12/493,477 involves communication from a server to the handheld device and thus does not teach internal use of the automatic network address of a network node connected to the communications port to automatically modify the network address of the handheld device, is not persuasive of error. We further note that Appellant’s arguments place emphasis on numerous terms in the claim asserting they are not taught by the combination of the references, but only address DHCP protocol having a server that provides the address. We have not considered any arguments presented by these assertions, and rather consider such arguments as waived because Appellant has not explained why the references do not teach these further emphasized limitations. “[A] mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the proper art” waives any argument with respect to those claim elements. In re Yeager 527 Fed. Appx. 859, 862 (Fed. Cir. 2013) (Citing In Re Lovin 652 F.3d 1349, 1356-57 (Fed. Cir. 2011). Accordingly, Appellant’s arguments have not persuaded us of error in the Examiner’s rejection of claim 21 and claim 22 grouped with claim 21. DECISION The decision of the Examiner to reject claims 21 and 22 is affirmed. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f). AFFIRMED 5