Appeal No. 2003-0481
Application No. 09/222,388
rejected.” Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d at 1204, 64
USPQ2d at 1819 (Fed. Cir. 2002).
Claims 1 and 7 contain the limitation of “initiating a passive listener to locate an
IPX packet.” Appellant’s specification does not provide a definition of what is meant by
a “passive listener.” The plain meaning of “passive” is “ not participating actively” and
the plain meaning of “Listen” is “to heed or pay attention to what is said.”3 These
definitions are consistent with the description in the appellant’s specification on page 2
lines 18-20 which states “[a]s a passive listener, the client listens on a network to
discover an IPX packet.” We note that the appellant’s description of the “passive
listener” includes no steps which are active in contrast to “forced auto discovery
mechanism” which is described on page 3 of appellant’s specification as being an
active discovery mechanism which generates a query to the network. Thus, we find
that the scope of claim 1 includes a method step of passively, or non-actively paying
attention to the communications on the network to locate an IPX packet.
Having determined the scope of the relative potions of the claims we next turn
to the rejection based upon 35 U.S.C. § 103. It is the burden of the examiner to
establish why one having ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the prior art, or by the
implication contained in such teachings or suggestions. In re Sernaker 702 F2d 989,
3 Definition taken from the Random House College Dictionary, Revised Edition, 1982.
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