Ex Parte Richard et al

Patent Trial and Appeal Board

Nov 29, 2012

10627409 (P.T.A.B. Nov. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BRUNO RICHARD and DENIS FLAVEN
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Appeal 2010-005343
Application 10/627,409
Technology Center 2400
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Before DENISE M. POTHIER, BRUCE R. WINSOR, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the Examiner’s rejection
of claims 1-14 and 17-19. Claims 15 and 16 have been canceled. (App.
Br. 1.) We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention is directed a process for distributing network
configuration settings throughout a network comprising a set of devices.
(See generally Abstract.)
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Claim 1 is illustrative and is reproduced below, with a key disputed
limitation emphasized:
1. Process for distributing network configuration settings
throughout a network comprising a set of devices, including the
steps of:
establishing in at least one device a description of the
network environment;
detecting in said at least one device a request for network
parameters issued from a newly connected requesting device;
in response to detecting said request starting a first timer
with a first period dependent on a predetermined criterion;
transmitting to said requesting device network settings in
response to the expiration of said first period unless another one
of said set of devices supplies network settings to said
requesting device before the expiration of said first period.

THE REJECTIONS
1. The Examiner rejected claims 1, 2, 5, 12,1 and 14 under 35
U.S.C. § 102(b) as anticipated by Buse (GB 2 356 111 A; May 9, 2001).
(Ans. 5-7.)2
2. The Examiner rejected claims 4, 6, 9, 13, 17, and 18 under 35
U.S.C. § 103(a) as unpatentable over Buse. (Ans. 7-11.)

1 Both the Examiner and Appellants identify claim 12 as rejected under 35
U.S.C. § 102(b) as anticipated by Buse. (App. Br. 3-4; Ans. 3.) Claim 12
though depends from claim 6, which the Examiner rejects under 35 U.S.C.
§ 103(a) as unpatentable over Buse. Because claim 12 includes each of the
limitations of claim 6, we review claim 12 under the obviousness rejection
as unpatentable over Buse.
2 The Examiner withdraws the rejection of claims 17 and 18 under 35 U.S.C.
§ 102(b) as anticipated by Buse, but maintains the obviousness rejection of
claims 17 and 18 under 35 U.S.C. § 103(a) as unpatentable over Buse.
(Ans. 3.)
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3. The Examiner rejected claims 3, 7, 10, and 11 under 35 U.S.C.
§ 103(a) as unpatentable over Buse and Cole (US 5,854,901; Dec. 29, 1998).
(Ans. 12-13.)
4. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Buse and Taniguchi (US 6,928,282 B2; patented Aug. 9,
2005, filed Dec. 27, 2001). (Ans. 14.)
5. The Examiner rejected claim 19 under 35 U.S.C. § 103(a) as
unpatentable over Buse and Liming (US Pat. Pub. 2002/0055924 A1; May 9,
2002). (Ans. 14-15.)
6. The Examiner rejected claims 2-13, 18, and 19 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which Appellants regard as the
invention. (Ans. 4-5.)

THE 102 REJECTION OVER BUSE
The Examiner finds that Buse discloses every recited limitation of
illustrative claim 1, including a request for network parameters issued from a
newly connected requesting device. (Ans. 6, 15-16.) On the other hand,
Appellants contend that Buse fails to disclose this feature. Namely,
Appellants assert that Buse’s newly connected device only issues a reply to
an interrogation transmission from a proxy device and thus the newly
connected device itself does not issue a request for network parameters.
(App. Br. 4-6.)

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ISSUE
Under § 102, has the Examiner erred by finding that Buse discloses a
request for network parameters issued from a newly connected requesting
device?

ANALYSIS
On this record, we find the Examiner did not err in rejecting claim 1
as anticipated by Buse. Namely, we are not persuaded that Buse fails to
teach the claimed request for network parameters issued from a newly
connected requesting device.
In Buse, a proxy device periodically transmits an interrogation
“ARE_YOU_THERE?” message to the network. (App. Br. 5-6 (citing
Buse, p. 3, ll. 20-25); see also Fig. 2.) A newly connected device will
receive this interrogation message and will send an “I_AM_HERE” reply
message that includes a conventional dummy IP address. (Id. (citing Buse
p.3, ll. 20-25).) Appellants maintain that because Buse’s newly connected
device merely issues a reply or response to an earlier interrogation message
from the proxy device, the newly connected device does not issue the
claimed request for network parameters. (App. Br. 6; Reply Br. 5-6.)
However, notably absent from the claim and Specification is any language
that would preclude a reply or response from being the claimed issued
request.
As explained by the Examiner, the reply message from the newly
connected device is a request for network parameters because the reply
includes a conventional dummy IP address indicating to the proxy device
that the newly connected device needs an IP address. Then, the newly
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connected device does, in fact, receive a valid IP address in response to the
reply message. (Ans. 16 (citing Buse, p. 5, ll. 5-12).) Moreover, Appellants
admit that the reply from the newly connected device initiates the process
for the newly connected device to obtain a valid IP address. (Reply Br. 6.)
Thus, we agree with the Examiner that a skilled artisan would recognize that
a reply message including the conventional dummy IP address indicating the
device needs a valid IP address and that initiates the process for obtaining a
valid IP address, as taught by Buse, is a request for network parameters.
While Appellants correctly identify that Buse does not “refer” to the
reply or response message as a request, anticipation is not an ipsissimis
verbis test. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (finding that
anticipation is not an ipsissimis verbis test that requires identity of
terminology). Further, in the circumstance of an anticipation reference, “it is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968)
(citation omitted). Here, Buse may not refer to the reply message as a
request, but, as discussed above, one of skill in the art would appreciate the
reply message to be a request for network parameters. Therefore, we do not
find error in the Examiner’s analysis and agree that Buse discloses the
claimed request for network parameters issued from a newly connected
requesting device.
Appellants also argue that “because Buse fails to disclose a request
for network parameters issued from a newly connected device, the reference
therefore cannot disclose starting a first timer . . . in response to such a
request . . . .” (App. Br. 6 (first emphasis added).) As discussed above, we
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disagree that Buse fails to disclose the claimed request for network
parameter issued from a newly connected device and therefore we also
disagree that Buse cannot disclose starting a first timer in response to such a
request.
Finally, for the first time in the Reply Brief Appellants present
additional arguments that Buse fails to disclose other limitations of claim 1.
(See, e.g., Reply Br. 6-7 (asserting that Buse teaches starting a timer in
response to the proxy device sending a request, not in response to receiving
a request and Buse does not disclose transmitting network settings in
response to the expiration of the first time period).) Appellants’ arguments
on these points, however, are untimely and waived. See Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner’s rejections, but were not.”).
Accordingly, we sustain the anticipation rejection of claim 1 and
claims 2, 5, and 14, which depend from claim 1.

THE 103 REJECTION OVER BUSE
The Examiner finds that Buse discloses every recited feature of claims
6 and 17, except that the request issued by the newly connected device is a
Dynamic Host Control Protocol (DHCP) request. (Ans. 8-10.) The
Examiner, however, finds that this alternation would be obvious because
Buse teaches that the proxy device issues a DHCP request on behalf of the
newly connected device and it would be a simple substitution to have the
newly connected device issue the DCHP request instead of the proxy device.
(Ans. 9-10; 18-20.)
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On the other hand, with respect to claims 6 and 17, Appellants again
argue that Buse does not disclose a request. (App. Br. 9-13.) Then,
Appellants contend that the Examiner fails to cite any reference or evidence
to support the conclusion that having the newly connected device employ a
DHCP request would be a simple substitution. (App. Br. 13.)

ISSUES
1. Under § 103, has the Examiner erred by finding that Buse
discloses a request for network parameters issued from a newly connected
requesting device?
2. Is the Examiner’s reason to modify the teachings of Buse
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?
ANALYSIS
Claims 6, 9, 12, 13, 17 and 18
Based on the record before us, we do not find error in the Examiner’s
obviousness rejection of claims 6, 9, 12, 13, 17, and 18.
Similar to claim 1, Appellants first argue that Buse does not disclose
the request limitation. (App. Br. 9-13; Reply Br. 8, 10.) For the reasons
discussed above, we also find these arguments unavailing as applied to
independent claims 6 and 17.
Appellants additionally argue that “because Buse fails to disclose a
request for network parameters issued from a newly connected device, the
reference therefore cannot disclose in response to detecting said request
starting a first timer . . . ”, as recited in claim 6. (App. Br. 10-11 (first
emphasis added); see also App. Br. 12-13 (presenting similar arguments
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with respect to claim 17.) As discussed above, we disagree that Buse fails to
disclose the claimed request for network parameter issued from a newly
connected device and therefore we also disagree that Buse cannot disclose
starting a first timer in response to such a request.
Next, Appellants challenge the obviousness conclusion by asserting
the Examiner failed to provide any additional supporting evidence or
references. And Appellants argued that the disputed claim limitations are
too complex to be considered well known without additional evidence or
references. (App. Br. 13.) We disagree.
As pointed out by the Examiner, Buse itself discloses DCHP requests
and expressly teaches that the proxy device issues a DCHP request on behalf
of the newly connected device. (Ans. 18-19 (citing Buse, p. 5, ll. 5-8); see
also Buse, Fig. 3, element 32.) The Examiner then explains that it would be
a simple substitution and mere arrangement of known parts to instead have
the newly connected device issue a DCHP request to the proxy and then
have the proxy relay the DHCP request. (Ans. 19.) Thus, based on the
evidence provided in the record, we find that the Examiner sufficiently
provides some articulated reasoning with a rational underpinning to support
the legal conclusion of obviousness.
Appellants’ further arguments are also unavailing. Appellants assert
that Buse system is “destroyed” by removal of the proxy device. (See Reply
Br. 9.) The Examiner, however, does not suggest removing the proxy device
from the system but instead merely having it relay a DCHP request received
from the newly connected device. Appellants’ two remaining arguments
focus on address assignment and that the proxy device of Buse can only
assign an address when there is no DHCP server. These arguments though
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fail to rebut why it would have been obvious, in the Examiner’s view, to a
skilled artisan to simply substitute the reply (i.e. request) issued by the
newly connected device in Buse with a DHCP request to obtain predictable
results as set forth by the Examiner. Therefore, we are not persuaded that
the Examiner erred in rejecting claims 6 and 17 as obvious in view of Buse.
Finally, for the first time in the Reply Brief Appellants present
additional arguments that Buse fails to disclose other limitations of claims 6
and 17. (See, e.g., Reply Br. 8-11 (asserting that “Buse fails to disclose
testing whether a DHCP request received a response from a DHCP server,”
“[t]he Buse process does not terminate when a response from a DHCP server
is detected,” “Buse fails to describe transmission of a DHCP request to a
network,” etc.).) Appellants’ arguments on these points, however, are
untimely and waived. See Borden, 93 USPQ2d at 1474 (informative).
Accordingly, we sustain the obviousness rejection of claims 6 and 17
and claims 9, 12, 13, and 18, which depend from either claim 6 or 17.

Claim 4
Claim 4 depends from independent claim 1, but was rejected under 35
U.S.C. § 103(a) as unpatentable over Buse. Appellants present no separate
argument for patentability of claim 4 in their opening Brief and only address
claim 4 for the first time in their Reply Brief. (Compare App. Br. 9-13
(nowhere citing claim 4) with Reply Br. 11.) These arguments presented for
the first time in the Reply Brief are untimely and waived. Therefore, we
find no error in the Examiner’s rejection of claim 4 and sustain the rejection.

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THE REMAINING OBVIOUSNESS REJECTIONS
Claims 3, 7, 8, 10, 11, and 19
Similar to claim 4, Appellants present no separate argument for
patentability of claims 3, 7, 8, 10, 11, and 19 in their opening Brief and only
present arguments regarding these claims for the first time in their Reply
Brief. (Compare App. Br. 9-13 with Reply Br. 12-16.) These arguments
presented for the first time in the Reply Brief are untimely and waived.
Therefore, we find no error in the Examiner’s rejections of claims 3, 7, 8, 10,
11, and 19 and sustain the rejections.

REJECTION UNDER 112 AS INDEFINITE
The Examiner concludes that claims 2-13, 18, and 19 are indefinite
under 35 U.S.C. § 112, second paragraph, for failing to particularly point out
and distinctly claim the subject matter which Appellants regard as the
invention. (Ans. 4-5.) Specifically, the Examiner finds that language in the
preamble fails to establish clear antecedent basis. (Ans. 5, 20-21.)
Appellants, however, assert that each rejected dependent claim clearly
refers to the process of the independent claim and therefore there is no
confusion. (Reply Br. 5.) And Appellants assert that even if the claims
failed to provide explicit antecedent basis, this does not always render a
claim indefinite. (App. Br. 14.)
Further with respect to 35 U.S.C. § 112, second paragraph, the
Examiner also finds that claim 6 is indefinite because the language
“completing said process” is unclear. (Ans. 5, 21.) In response, Appellants
contend one of skill would understand the claimed language in light of the
Specification. (App. Br. 15.)
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ISSUES
1. Under § 112, second paragraph, has the Examiner erred by
finding that claims 2-13, 18, and 19 are indefinite for failure to establish
clear antecedent basis?
2. Under § 112, second paragraph, has the Examiner erred by
finding that claim 6 is indefinite as ambiguous?

ANALYSIS
Claims 2-5, 7-13, 18, and 19
Here, we find that the Examiner erred in rejecting claims 2-5, 7-13,
18, and 19 as indefinite 35 U.S.C. § 112, second paragraph, as lacking clear
antecedent basis. Namely, we disagree with the Examiner that failure to use
an article preceding “process” in the preamble renders them indefinite.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). Here, as identified by Appellants, the preamble of each dependent
claim recites: “Process for distributing an IP address in accordance with
claim . . . .” (Reply Br. 5 (emphasis in original).) Therefore, we agree with
Appellants that there is no confusion as to what process each claim is
referring and therefore a skilled artisan would understand what is claimed.
Accordingly, we do not sustain the rejection of claims 2-5, 7-13, 18,
and 19 as indefinite.

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Claim 6
Based on the record before us, we find no error in the Examiner’s
rejection of claim 6 as indefinite. As identified by the Examiner, the
language “completing said process” has two reasonable interpretations.
(Ans. 21.) We agree. Namely, this claim language could be interpreted to
require either (1) carrying out the remaining steps of the claimed process,
including forwarding a reply containing an IP address to the newly
connected device, or (2) ending the entire process abruptly. (Id.)
Contrary to Appellants’ assertions, the Specification fails to provide
any clarification on this point. Namely, the cited portion of the
Specification, Fig. 4, steps 404 and 408, and the corresponding description
of those steps, fail to supply any additional guidance or detail about the
meaning of “complete.” Moreover, step 404 describes “completing the
process” in the Specification but then the corresponding limitation of claim 6
refers to “terminating the process.” This discrepancy further supports the
ambiguity of the meaning of “complete” in claim 6. (Compare Fig. 4, step
404 and Spec. p. 14, ll. 8-10 (identifying that the process completes if the
NPAA agent receives a response from a DHCP server during a first delay)
with claim 6 (reciting “terminating the process in response to the detection
of said response within said first duration”).) Therefore, we agree with the
Examiner that “completing said process” has at least two reasonable
interpretations and claim 6 is indefinite. See Ex parte Miyazaki, 89 USPQ2d
1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim is amenable to two or
more plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
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invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite.”).
Accordingly, we sustain the rejection of claim 6 as indefinite.

CONCLUSION
Under § 102, the Examiner did not err in rejecting claims 1, 2, 5,
and 14.
Under § 103, the Examiner did not err in rejecting claims 3, 4, 6-13,
and 17-19.
Under § 112, second paragraph, the Examiner did not err in rejecting
claim 6 as ambiguous, but erred in rejecting claims 2-5, 7-13, 18, and 19 for
failing to establish clear antecedent basis.
Since we are sustaining at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision is affirmed. See 37 C.F.R. §
41.50(a)(1).

ORDER
The Examiner’s decision rejecting claims 1-14 and 17-19 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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