Ex Parte Sticker

Patent Trial and Appeal Board

Feb 25, 2016

12750918 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121750,918 03/31/2010
74701 7590 02/29/2016
ADDMG - Harris
255 S ORANGE A VENUE
SUITE 1401
ORLANDO, FL 32801
FIRST NAMED INVENTOR
Harry STICKER
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CORE-001 (67001) 9676
EXAMINER
HARRELL, ROBERT B
ART UNIT PAPER NUMBER
2442
NOTIFICATION DATE DELIVERY MODE
02/29/2016 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):
creganoa@addmg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HARRY STICKER
Appeal2014-005511
Application 12/750,918
Technology Center 2400
Before JAMES R. HUGHES, JOHN A. EV ANS, and KAMRAN JIV ANI,
Administrative Patent Judges.
JIV ANI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejections of claims 1-20, which are the claims pending in
the present patent application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
The present patent application relates to providing and managing
carrier-neutral network access connectivity. Spec. ,-r 2.
1 Appellant identifies Harris Corporation as the real party in interest. App.
Br. 1.
Appeal2014-005511
Application 12/750,918
Claim 1 is illustrative (disputed limitation emphasized):
1. A backbone server network of a network
service provider, comprising:
a plurality of backbone servers, the plurality
of backbone servers coupled to a first interconnect
point with a first carrier network provided by a first
carrier and a second interconnect point with a
second carrier network provided by a second
carrier, the first carrier network and the second
carrier network each including a plurality of carrier
servers; and
a controller communicably coupled to the
plurality of backbone servers, the controller
configured to:
receive a request to establish a connection
between a start point and an end point, the start and
end points being included in one or more of: the first
carrier network, the second carrier network, and the
plurality of backbone servers,
analyze a plurality of circuits between the
start point and the end point, and
select one of the plurality of circuits based on
the analysis, the selected one of the plurality of
circuits including at least one of the plurality of
backbone servers and at least one carrier server
from the first carrier network or the second carrier
network.
The Rejection
Claims 1-20 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Avargues (US 6,104,701 Al; Aug.15, 2000).
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Appeal2014-005511
Application 12/750,918
ANALYSIS
The Examiner finds A vargues anticipates the disputed limitation of
claim 1 as follows:
Avargues taught a backbone server network (e.g.,
see figure 2) of a network service provider (e.g., see
Title, figure 1 (12) and Abstract), comprising a
plurality of backbone servers (e.g., see figure 2
(PBX)), ... a controller (everything else in the
figures) (e.g., see col. 4 (line 50-et seq.), col. 6 (line
37-et seq.,), and col. 9 (line 37-et seq.))
communicably coupled to the plurality of backbone
servers, ....
Ans. 4; Final Act. 3. Thus, the Examiner finds, "all that in the figures
communicably coupled to the plurality of backbone servers ... is a
controller as anticipated by his controller data packets taught by Avargues
per the above since his complex system required some means to control the
overall operation of his system." Ans. 5. The Examiner further applies the
same findings to similar limitations of independent claim 12. Final Act. 3.
Appellant contends, inter alia, the Examiner errs because, as
disclosed by A vargues, "it is the directory services of the entry node that
determines the path between the start point and end point," not a controller
configured as in the claim. Reply Br. 4 (citing Avargues, 7:38---et seq.);
App. Br. 8-9.
We are persuaded of Examiner error. A claim is anticipated only if
each and every element as set forth in the claims is found, either expressly or
inherently described in a single prior art reference, and arranged as required
by the claim. Verdegaal Bros., Inc. v. Union Oil. Co. of Cal., 814 F .2d 628,
631 (Fed. Cir. 1987) (emphasis added). The Examiner fails in the record
before us to identify with particularity the structures of A vargues that
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Appeal2014-005511
Application 12/750,918
anticipate the claimed controller, and further to map Avargues' disclosure to
the elements of the claimed controller as arranged within the claim, instead
mapping "everything else in the figures" to the claimed controller. Ans. 4;
Final Act. 3. The law of anticipation requires that "[ t ]he identical invention
must be shown in as complete detail as is contained in the ... claim."
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).
To the extent the Examiner finds the claimed controller is inherent
within A vargues' disclosure, we determine the Examiner has not carried the
burden of proof for such a finding. The Examiner has the burden of
providing reasonable proof that a claim limitation is an inherent
characteristic of the prior art. In re Best, 562 F.2d 1252, 1254--55 (CCPA
1977); see also Crown Operations Int'!, LTD v. Solutia Inc., 289 F.3d 1367,
1377 (Fed. Cir. 2002). The Examiner meets this "burden of production by
'adequately explain[ing] the shortcomings it perceives so that the applicant
is properly notified and able to respond."' In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011) (quoting Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir.
2007)). The Examiner fails to so explain.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 102(b)
rejection of independent claims 1 and 12, and their dependent claims 2-11
and 13-20.
DECISION
We reverse the Examiner's decision rejecting claims 1-20.
REVERSED
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