Ex Parte Boleyn et al

Patent Trials and Appeals Board

Jul 30, 2014

10211047 - (D) (P.T.A.B. Jul. 30, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/211,047 08/02/2002 Erich S. Boleyn 118059-157703 9971
25943 7590 07/30/2014
Schwabe Williamson & Wyatt
PACWEST CENTER, SUITE 1900
1211 SW FIFTH AVENUE
PORTLAND, OR 97204
EXAMINER
ZHANG, SHIRLEY X
ART UNIT PAPER NUMBER
2442
MAIL DATE DELIVERY MODE
07/30/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ERICH S. BOLEYN, JULIET Z. CAI, ZHI WANG, QIYONG B.
BIAN, JONATHAN A. TUCHOW, and ALFRED C. SHE
____________________

Appeal 2012-000341
Application 10/211,047
Technology Center 2400
____________________

Before ST. JOHN COURTENAY III, THU A. DANG,
and LARRY J. HUME, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-11, 13-17, 19-29, and 31-36 (App. Br. 2). Claims 12, 18, and 30
have been canceled (Amendment, dated February 16, 2011). We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

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A. INVENTION
Appellants’ invention is directed to an optical networking apparatus
having an Application Programming Interface (API) that includes a
registration function, which is used to facilitate registration of configuration
specification delimiter pairs by service routines of function blocks of code
within hardware modules, such as Multi-Protocol Optical Networking
Modules (MPONM) (Abstract).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. In an optical networking apparatus, a method of operation
comprising:

invoking a registration function by a first service routine of a first
interface block, protocol processing block, or coding block selected from a
plurality of interface blocks, protocol processing blocks, and coding blocks
selectively employed in combination with each other to service data
transmission and receipt in accordance with a selected one of a number of
frame- based protocols, wherein the plurality of interface blocks, protocol
processing blocks, and coding blocks are included in a multi-protocol optical
networking module (MPONM), wherein the first service routine invokes the
registration function upon execution by a processor of the optical
networking apparatus, wherein the invoked registration function is
associated with a MPONM application programming interface (API), the
invoked registration function to register a first pair of configuration
specification delimiters that delimit configuration specifications applicable
to the first selected interface block, protocol processing block, or coding
block of an MPONM in a configuration specification input set, wherein the
invoking of the registration function is in response to a request by a
networking application of the optical networking apparatus, wherein the
request identifies the MPONM including the first selected interface block,
protocol processing block, or coding block by providing a handle of a device
driver handling a connecting interface through which the MPONM is
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coupled to a bus, wherein the bus couples each of a plurality of MPONMs to
each other in the networking apparatus;

extracting first configuration specifications by a configuration
function of the MPONM API, upon execution by the processor, by
processing a provided configuration specification input set, wherein
extracting comprises extracting first configuration specifications applicable
to the first selected interface block, protocol processing block, or coding
block, based at least in part on the first registered pair of configuration
specification delimiters of the first selected interface block, protocol
processing block, or coding block;

providing the first extracted configuration specifications by the
configuration function of the MPONM API, upon execution by the
processor, wherein providing comprises providing the first extracted
configuration specifications to the first service routine; and

configuring the first selected interface block, protocol processing
block, or coding block of the MPONM by the first service routine, upon
execution by the processor, wherein configuring comprises configuring the
first selected interface block, protocol processing block, or coding block of
the MPONM in accordance with the provided configuration specifications.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Davidson US 6,083,276 July 4, 2000
Machin US 2002/0032806 A1 Mar. 14, 2002
Schaaf US 2002/0059404 A1 May 16, 2002

Claims 1-7, 20-23, and 31-36 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Davidson in view of Machin.
Claims 8-11, 13-19, and 24-29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Davidson in view of Machin and
Schaaf.
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II. ISSUE
The issue before us is whether the Examiner has presented a prima
facie case of obviousness in finding the combination of Davidson and
Machin teaches or would have suggested “invoking a registration function
by a first service routine of a first interface block, protocol processing block,
or coding block . . . ,” using a claim chart that only maps some of the
contested claim elements to the cited portions of the references, without
mapping the entire claim to the references (claim 1).

III. ANALYSIS
Claims 1-7, 20-23, and 31-36
Appellants contend since “the mapping table [submitted by the
Examiner] omits recited elements as well as ignores basic relationships
between elements as set forth in the claims,” “the Examiner has failed to
analyze the subject matter ‘as a whole;’” therefore, “a prima facie case of
obviousness has not been established” (App. Br. 20-21).
After reviewing the record on appeal, we agree with Appellants.
Although the Examiner has provided a general overview of the invention
and comparison with the references, along with a claim chart mapping a
subset of the claim elements to the reference(s) (Ans. 4-5 and 30-31), the
Examiner does not provide any findings which map the claim limitations in
their entirety regarding independent claims 1, 14, 20, and 27.
The PTO bears the initial burden of showing a prima facie case of
obviousness. In re Sullivan, 498 F.3d 1345, 1351 (Fed. Cir. 2007). Only
when a prima facie case of obviousness is established by the Examiner, does
the burden then shift to the applicant to come forward with evidence and/or
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argument supporting patentability. In re Glaug, 283 F.3d 1335, 1338 (Fed.
Cir. 2002).
Although we generally endorse the approach of using a claim chart to
establish the mapping between each element of the claim and the
corresponding portions of the cited reference(s), a claim chart used to
support a rejection must be complete such that all claim limitations are
mapped with sufficient clarity to establish the requisite prima facie case.
The prima facie burden has not been met and the rejection does not
adhere to the minimal requirements of 35 U.S.C. § 132 “when a rejection is
so uninformative that it prevents the applicant from recognizing and seeking
to counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990).
Here, we agree with Appellants “the mapping table omits recited
elements as well as ignores basic relationships between elements as set forth
in the claims.” (App. Br. 20). We find the Examiner’s incomplete claim
chart (Ans. 4-5) prevented the Appellants from recognizing and seeking to
counter the grounds for rejection. Moreover, we find the Examiner’s
instructions to Appellants does not satisfy the notice requirement of
35 U.S.C. § 132, i.e., “Applicant is suggested to read the reference as a
whole to understand the mappings.” (Ans. 4).
“As the statute itself instructs, the examiner must ‘notify the
applicant,’ ‘stating the reasons for such rejection,’ ‘together with such
information and references as may be useful in judging the propriety of
continuing prosecution of his application.’” 35 U.S.C. § 132. In re Jung,
637 F.3d 1356, 1363 (Fed. Cir. 2011).
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Therefore, we find the Examiner has failed to meet the initial burden
of establishing a prima facie case of obviousness by mapping all the claimed
features to the corresponding relevant portions of the cited references.
We note in an ex parte appeal, the Board “is basically a board of
review — we review . . . rejections made by patent examiners.” Ex parte
Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). “The review authorized by
35 U.S.C. Section 134 is not a process whereby the examiner . . . invite[s]
the [B]oard to examine the application and resolve patentability in the first
instance.” Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999).
Consequently, we will not engage in the de novo examination required
to map each element of Appellants’ claims to the Davidson and Machin
references. We leave any further consideration of references to the
Examiner. While the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02.
As to claim 1, we also leave for further consideration to the Examiner
whether the claim should be rejected under 37 C.F.R. § 112, second
paragraph for indefiniteness. In particular, we note the claim improperly
recites both a system and a method. See IPXL Holdings, L.L.C. v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (noting when a
claim recites both a system and a method for using that system, it is unclear
whether infringement occurs when (1) one creates a system that allows a
user to perform the recited method (i.e., change predicted transaction
information or accept a displayed transaction), or (2) the recited method
actually occurs (the user actually uses an input means to perform these
steps)).
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For essentially the same reasons argued by Appellants in the Briefs,
on this record, we cannot affirm the Examiner’s § 103 rejection of
independent claims 1, 14, 20, and 27. Because we have reversed the § 103
rejection for each independent claim before us on appeal, we also reverse the
Examiner’s obviousness rejection of each dependent claim.
IV. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-11, 13-17, 19-29, and 31-36
under 35 U.S.C. § 103(a) is reversed.

REVERSED

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