Ex Parte Kasper

Board of Patent Appeals and Interferences

Feb 2, 2009

10147116 (B.P.A.I. Feb. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID J. KASPER, II
____________

Appeal 2008-2297
Application 10/147,116
Technology Center 2400
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Decided: February 2, 2009
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Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
JAY P. LUCAS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).

We REVERSE.

Appeal 2008-2297
Application 10/147,116

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STATEMENT OF THE CASE
Appellant invented a method and system for triggering an automatic log-off
of a data link layer pass-through application. An understanding of the invention
can be derived from a reading of exemplary claim 1, which is reproduced below.

1. A method for triggering a log-off of a data link layer pass-through
application, the method comprising:

when data is received over the data link layer, determining if a session
layer is active;

if the session layer is active, processing the received data in the
session layer; and

if the session layer is inactive, aborting the data link layer pass-
through application in a local unit.

PRIOR ART
The prior art reference of record relied upon by the Examiner in rejecting the
appealed claims is:
Lowry US 5,970,066 Oct. 19, 1999

REJECTIONS BY THE EXAMINER
Claims 1-20 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.

Appeal 2008-2297
Application 10/147,116

Claims 1-20 stand rejected under 35 U.S.C.§ 112, second paragraph,
as being incomplete for omitting essential steps, such omission amounting to
a gap between the steps.
Claims 1-11 stand rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter for failing to fall into a
statutory category of invention.
Claims 16-17 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter. The present invention
refers to a computer program not embodied on any type of hardware device
such a statutory acceptable medium.
Claims 1-20 stand rejected under 35 U.S.C. § 102 as being anticipated
by Lowry.
Rather than reiterate the conflicting viewpoints of the Examiner and
Appellant regarding the above-noted rejection, we refer to the Examiner's
Answer (mailed Sep. 11, 2007) for the reasoning in support of the rejections,
and to Appellant’s Brief (filed Mar. 22, 2007 in combination with Jul. 18,
2007) and Reply Brief (filed Oct. 15, 2007) for the arguments thereagainst.

OPINION
In reaching our decision in this appeal, we have carefully considered
Appellant’s Specification and claims, the applied prior art reference, and the
respective positions articulated by Appellant and the Examiner. As a
consequence of our review, we determine the following.

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35 U.S.C. § 112, FIRST PARAGRAPH
PRINCIPLES OF LAW
An analysis of whether the claims under appeal are supported by an
enabling disclosure requires a determination of whether that disclosure
contained sufficient information regarding the subject matter of the appealed
claims as to enable one skilled in the pertinent art to make and use the
claimed invention. The test for enablement is whether one skilled in the art
could make and use the claimed invention from the disclosure coupled with
information known in the art without undue experimentation. See United
States v. Telectronics, Inc., 857 F.2d 778, 785, (Fed. Cir. 1988); In re
Stephens, 529 F.2d 1343, 1345 (CCPA 1976).
In order to make a rejection, the Examiner has the initial burden to
establish a reasonable basis to question the enablement provided for the
claimed invention. See In re Wright, 999 F.2d 1557, 1561-62, (Fed. Cir.
1993) (Examiner must provide a reasonable explanation as to why the scope
of protection provided by a claim is not adequately enabled by the
disclosure). A disclosure which contains a teaching of the manner and
process of making and using an invention in terms which correspond in
scope to those used in describing and defining the subject matter sought to
be patented must be taken as being in compliance with the enablement
requirement of 35 U.S.C. § 112, first paragraph, unless there is a reason to
doubt the objective truth of the statements contained therein which must be
relied on for enabling support. “Assuming that sufficient reason for such
doubt exists, a rejection for failure to teach how to make and/or use will be
proper on that basis.” See In re Marzocchi, 439 F.2d 220, 223 (CCPA
1971). As stated by the court, "it is incumbent upon the Patent Office,
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whenever a rejection on this basis is made, to explain why it doubts the truth
or accuracy of any statement in a supporting disclosure and to back up
assertions of its own with acceptable evidence or reasoning which is
inconsistent with the contested statement. Otherwise, there would be no
need for the applicant to go to the trouble and expense of supporting his
presumptively accurate disclosure." In re Marzocchi, 439 F.2d at 224.
Once the Examiner has established a reasonable basis to question the
enablement provided for the claimed invention, the burden falls on the
Appellant to present persuasive arguments, supported by suitable proofs
where necessary, that one skilled in the art would be able to make and use
the claimed invention using the disclosure as a guide. See In re
Brandstadter, 484 F.2d 1395, 1406 (CCPA 1973). In making the
determination of enablement, the Examiner shall consider the original
disclosure and all evidence in the record, weighing evidence that supports
enablement1 against evidence that the specification is not enabling.

ISSUE
Thus, the dispositive issue is whether the Appellant's disclosure,
considering the level of ordinary skill in the art as of the date of the
Appellant's application, would have enabled a person of such skill to make
and use the Appellant's invention without undue experimentation. The

1 The Appellant may attempt to overcome the Examiner's doubt about
enablement by pointing to details in the disclosure but may not add new
matter. The Appellant may also submit factual affidavits under 37 CFR
1.132 or cite references to show what one skilled in the art knew at the time
of filing the application.
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threshold step in resolving this issue as set forth supra is to determine
whether the Examiner has met his burden of proof by advancing acceptable
reasoning inconsistent with enablement. This the Examiner has not done.

ANALYSIS
We disagree with the Examiner's finding that the claimed invention is
insufficiently described and would require undue experimentation. We find
the portions of the Specification identified in the Brief at pages 10-11 would
have enabled one of ordinary skill in the art at the time the invention was
made to have made and used the invention without undue experimentation.
Therefore, we cannot sustain rejection under 35 U.S.C. § 112, first
paragraph.

35 U.S.C. § 112, SECOND PARAGRAPH
PRINCIPLES OF LAW
The second paragraph of 35 U.S.C. § 112 requires claims to set out
and circumscribe a particular area with a reasonable degree of precision and
particularity. In re Johnson, 558 F.2d 1008, 1015 (CCPA 1977). In making
this determination, the definiteness of the language employed in the claims
must be analyzed, not in a vacuum, but always in light of the teachings of
the prior art and of the particular application disclosure as it would be
interpreted by one possessing the ordinary level of skill in the pertinent art.
Id.
The Examiner's focus during examination of claims for compliance
with the requirement for definiteness of 35 U.S.C. § 112, second paragraph,
is whether the claims meet the threshold requirements of clarity and
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precision, not whether more suitable language or modes of expression are
available. Some latitude in the manner of expression and the aptness of
terms is permitted even though the claim language is not as precise as the
Examiner might desire. If the scope of the invention sought to be patented
cannot be determined from the language of the claims with a reasonable
degree of certainty, a rejection of the claims under 35 U.S.C. § 112, second
paragraph, is appropriate.

ANALYSIS
With respect to the rejection under 35 U.S.C. § 112, second
paragraph, we disagree with the Examiner that the claims must recite the
communications between the other layers in the OSI model. Here, we find
Appellant’s arguments at pages 12-13 of the Brief to show sufficient
particularity of the claimed invention, and we find this to be a matter of
greater breath of the claimed invention rather than an omission in the
claimed invention which causes a problem with the distinctness or the
particularity with which the claimed invention is recited. Therefore, we will
not sustain the rejection of the claims 1-20 based on 35 U.S.C. § 112, second
paragraph.

35 U.S.C. § 101
With respect to Appellant’s claims being directed to non-statutory
subject matter for failing to fall into a statutory category of invention, we
find that the Examiner has not set forth a persuasive showing of a lack of
statutory subject matter in independent claims 1 and 6 and their respective
dependent claims. We find independent claims 1 and 6 to be directed to
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processes that interact with a local unit to receive data through a data link
layer and then either process the received data or abort the data link pass-
through application. Furthermore, we find independent claim 10 to be
directed to a similar statutory process wherein the local unit is defined as a
remote modem. Therefore, we cannot sustain the rejection of claims 1-11.
With respect to independent claim 16 and dependent claim 17, we find
independent claims 16 to be directed to a statutory machine running the
above discussed process. Therefore, we cannot sustain the rejection of
claims 16 and 17.

35 U.S.C. § 102
PRINCIPLES OF LAW
"[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . ." In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir.
1984)). "[A]bsence from the reference of any claimed element negates
anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable
over the prior art under 35 U.S.C. § 102 begins with a determination of the
scope of the claim. We determine the scope of the claims in patent
applications not solely on the basis of the claim language, but upon giving
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claims their broadest reasonable construction “in light of the specification as
it would be interpreted by one of ordinary skill in the art.” In re Am. Acad.
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly
interpreted claim must then be compared with the prior art.
Appellant has the opportunity on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).

ISSUE
Has the Examiner shown the prior art teaches each of the claimed elements?

ANALYSIS
With respect to independent claim 1, we find that the Examiner lacks
a showing of an active step of "aborting the data link layer pass-through
application in a local unit". The Examiner maintains at page 14 of the
Answer that since the same communication package is used for the session
layer and the link layer, the Examiner opines that therefore the link layer is
not active then the session layer is also not active. The Examiner goes
further to assert that in the system of Lowry there is an integrated OSI layer
into a single interface of the windows socket, and therefore polling of the
link layers would tell the system of Lowry that whether all (each of the
seven) layers were operating or not, including the session layer. The
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Examiner goes on to query Appellant’s prior discussions regarding the OSI
model and Appellant’s arguments that their invention does not necessarily
follow a model. We do not find the Examiner's arguments convincing.
Here, Appellant’s arguments correspond to the discussion in Appellant’s
Specification to be persuasive, and we find no problems as Appellant has
presented their case.
With respect to the Examiner's argument concerning the single
interface where the integrated OSI layer, we cannot agree with the
Examiner’s urgings since if the integrated layer was not active then none of
the layers would be active, and the system would not necessarily "abort the
data link layer pass-through application in a local unit", as claimed.
Here, we find that the Examiner has over generalized the claimed
invention and the prior art applied in the rejection. Therefore, we find that
the Examiner has set forth an insufficient initial showing of anticipation for
claims 1-20.

CONCLUSIONS OF LAW
Based on the above analysis, we find the Examiner erred in the
rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement; we find the Examiner erred in the
rejection of claims 1-20 under 35 U.S.C.§ 112, second paragraph, as being
incomplete for omitting essential steps, such omission amounting to a gap

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between the steps; we find the Examiner erred in the rejection of claims
1-11, 16, and 17 under 35 U.S.C. 101 because the claimed invention is
directed to non-statutory subject matter for failing to fall into a statutory
category of invention; and we find the Examiner erred in the rejection of
claims 1-20 under 35 U.S.C. § 102 as being anticipated by Lowry.

REVERSED

pgc

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