Ex Parte Modi et al

Patent Trial and Appeal Board

Sep 29, 2014

11012510 (P.T.A.B. Sep. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PRASHANT MODI, AMITABHA BISWAS, YIU YIP,
DORIS SAYON, KATHRYN HAMPTON, and MEHRDAD KHALILI
____________

Appeal 2011-008089
Application 11/012,5101
Technology Center 2400
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

1 According to the Appellants, “[t]he real party in interest is Hewlett-
Packard Development Company, LP.”
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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1–15 and 18–61.2 App. Br. 2. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

Rejections
Claims 1–15 and 18–61 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
Claims 1, 8, 18, 28, 35, and 45 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Colby (US 6,006,264, iss. Dec. 21, 1999) and
McMillan (Gordon McMillan, Socket Programming Howto,
http://www.amk.ca/python/howto/sockets/ (last visited Apr. 15, 2010)).
Claim 61 is rejected under 35 U.S. C. § 103(a) as unpatentable over
Colby, McMillan, and Official Notice.3

2 The Appellants assert independent claim 16 has been rejected. Reply
Br. 1; see App. Br. 2. However, the Answer does not reject independent
claim 16 or claim 17, which depends therefrom, under any ground of
rejection. The Final Office Action, mailed August 3, 2010, appears to reject
claims 16 and 17 under 35 U.S.C. § 112, second paragraph, (Final Act. 4),
however, there is no explanation concerning the rejection of these claims.
As such, the inclusion of claims 16 and 17 in the rejection under 35 U.S.C.
§ 112, second paragraph, in the Final Office Action appears to be a
typographical error (see Ans. 3).
3 The Examiner provides Archard (US 2005/0210243 A1, pub. Sept. 22,
2005) as supporting documentation for Official Notice. However, Archard
is not applied to the rejection of claim 61.
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Claimed Subject Matter
Claims 1, 18, 25, 27, 28, 43, 45, 52, 54, and 61 are the independent
claims on appeal. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A method of establishing offloaded connections over
a network between requesting applications running on client
nodes and server applications running a server node, the
connections established through an aggregated plurality of
network interface resources comprising the server node, each of
the aggregated plurality operable to provide offloaded
connections over the network and each assigned to a unique
private IP address, said method comprising:
generating connect queries via the client nodes on behalf
of requesting applications of the client nodes, each of the
connect queries specifying one of the server applications using
a first endpoint tuple, the first endpoint tuple comprising one of
one or more IP addresses publicly identifying the server node
on the network and a first port number uniquely identifying the
server application;
obtaining for a client node a set of bypass endpoint tuples
translated from the first endpoint tuple specified in the connect
query, each of the bypass endpoint tuples in the set comprising
a different one of the assigned private IP addresses; and
issuing a connect request from the client node to the
server node over the network, the connect request specifying a
selected one of the bypass endpoint tuples in the obtained set of
bypass endpoint tuples as the destination transport address at
the server node for the connection.

ANALYSIS
Indefiniteness
At the outset, we note that the Examiner’s rejections of claims 1–15
and 18–61 are supported by different reasons. We will discuss each reason
in a similar order as compared to the Answer and the Appeal Brief.
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1. Independent claims 1, 18, 27, and 28, and their respective dependent
claims 2–15, 19–24, and 29–42
The Examiner determines that the limitation of claim 1 reciting “an
aggregated plurality of network interface resources comprising the server
node” is indefinite. Ans. 3–4.
The Appellants contend the claim language is definite because the
claim language should be understood as “the aggregated network interface
resources (cards, adapters) comprise (are part of or in) the server node.”
App. Br. 24. The Appellants further contend “it is well-known in patent
parlance to employ ‘comprising’ as ‘forming’ or ‘making-up’” as is recited
in claim 1. Reply Br. 2. The Appellants’ contention is not persuasive.
In response, the Examiner explains that the above-recited claim
language is indefinite because “[i]t is not clear to . . . [one of] ordinary skill[]
in the art how network interface cards or network adaptors can ‘comprise the
server node.’” Ans. 15. The Examiner cites to the Specification at
paragraph 39, which states “the term[] . . . ‘comprising’ . . . [is] used in an
open-ended fashion, and thus should be interpreted to mean ‘including, but
not limited to . . . .” Id. (emphasis omitted).
In this case, the Specification provides a reasonably clear definition:
“‘comprising’ . . . should be interpreted to mean ‘including, but not limited
to.’” Spec. para. 39. In view of this definition, the Examiner correctly
construed the claim limitation as reading “network interface resources
including, but not limited to, the server node.” Ans. 16. The Appellants’
contention for a broader definition of the claim term “comprising” to include
“forming” or “making-up” (Reply Br. 2), is not consistent with the explicit
definition in the Specification, and as such, not persuasive.
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Thus, the Examiner’s rejection of claims 1, 18, 27, and 28, and their
respective dependent claims 2–15, 19–24, and 29–42, under 35 U.S.C.
§ 112, second paragraph, as indefinite, for this reason, is sustained.

2. Independent claim 54 and its dependent claims 55–60
Claim 54 recites “[a] computer system” including “a cache” having a
“counter being incremented each time a connection is established using one
of the server bypass endpoint tuples of the obtained set, and the counter
being decremented each time one of the established connections is
disconnected.” The Examiner determines claim 54 is indefinite because the
claim “merely recites a counter and how the value of the counter is
calculated . . . . [I]t is not recited what the final value of the counter means,
and/or how it is used in the context of achieving the intended purpose of
‘establish offloaded connection . . . .’” Ans. 4.
The Appellants contend, “a person of ordinary skill in the art would
readily understand the use of the recited counter [in] achieving the intended
purpose.” App. Br. 25–26. Specifically, the Appellants cite to the
Specification and further explains “it is beneficial to track when the cache
connection entries (i.e., at the client node) become stale and, thus, should be
invalidated or cleared.” Id. at 25. The Appellants’ contention is persuasive.
The issue that computer system of claim 54 only requires a counter
that is incremented with each established connection and decremented with
each disconnection a connection, is a matter of breadth, not indefiniteness.
See In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977).
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Thus, the Examiner’s rejection of claim 54, and its dependent claims
55–60, under 35 U.S.C. § 112, second paragraph, as indefinite, is not
sustained.

3. Independent claim 61
Claim 61 recites “[a] computer system” including “a library . . .
associating first endpoint tuples with each listening socket created
comprising the public IP address and a unique first port number associated
with each of the service applications.” The Examiner finds “[t]his limitation
is not written in a way that enables an ordinary skilled in the art to
understand distinctly what exactly is ‘comprising the public IP address and a
unique first port number,’ e.g., whether the first endpoint tuple or the socket
created, or other possibilities.” Ans. 4–5.
The Appellants contend “it is clear that the endpoint tuple comprises
the public IP address and a unique first port number.” Reply Br. 3.
At the outset, we note that the Specification states “a service type
application” establishes a listening socket, “[t]his listening socket specifies a
transport address that includes a host number or public IP address by which
the local node is identified on the network and a port number that identifies
the listening application uniquely from other applications running on the
node.” Spec. para. 18. The Specification also states in paragraph 73 “[t]he
[operating system] endpoint tuple is a transport address that includes the
public IP address for the node as a host number and a first or well-known
port number.” Accordingly, the Specification discloses that either the
endpoint tuple or the listening socket may comprise “the public IP address
and a unique first port number associated with each of the service
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applications” as recited by claim 61. As such, the Specification is consistent
with these two alternative claim constructions proffered by the Examiner.
Thus, the Examiner’s rejection of claim 61 under 35 U.S.C. § 112, second
paragraph, for this reason, as indefinite, is sustained.

4. Dependent claims 8 and 35, and their respective dependent claims 9–15
and 36–42
The Examiner rejects claims 8 and 35 as indefinite for two reasons:
first, the claim limitation “the aggregated plurality of network interface
resources of the server node” of claim 8 lacks sufficient antecedent basis,
and second, “it is not clear as to the scope of the term ‘specified over the
aggregated . . . network interface resources’.” Ans. 5 (emphasis omitted).
The Examiner finds claim 35 recites a similar claim limitation and is
indefinite for similar reasoning. We sustain the rejection of claims 8 and 35
for the first reason, but not the second reason.
With regard to the first reason, the Appellants contend “‘the
aggregated plurality of network interface resources of the server node’ . . .
has sufficient antecedent basis” because the independent claims 1 and 28
from which claims 8 and 35 depend from, respectively, recite “an aggregated
plurality of network interface resources comprising the server node.” App.
Br. 28. The Appellants’ contention is unpersuasive. As explained above,
with respect to claims 1 and 28, one of ordinary skill in the art would
understand the independent claim limitation “an aggregated plurality of
network interface resources comprising the server node,” to recite network
interface resources including, but are not limited to, the server node.
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Therefore, the recitation of “network interface resources of the server node”
in the respective dependent claims 8 and 35 lack antecedent basis.
With regard to the second reason, the Appellants contend the claim
limitation is definite “based on the plain language (including common
dictionary definitions and particular definitions of the terms in the relevant
art) . . . [and] especially clear in view of the specification” at paragraph 77,
among others. See App. Br. 28–29. Indeed, paragraph 77 discloses that the
connect queries are sent over the network to the server node system over the
aggregated plurality of network interface recourses (NICs 380). Therefore,
one of ordinary skill would understand the “specified server application” is
specified in the connect queries recited in claim 1, i.e., “each of the connect
queries specifying one of the server applications,” sent over the aggregated
plurality of network interface resources.
Thus, the rejection of claims 8 and 35, and their respective dependent
claims 9–15 and 36–42, under 35 U.S.C. § 112, second paragraph, as
indefinite, is sustained for the first reason, but not the second reason.

5. Independent claims 25, 43, 52, and 61 and their respective dependent
claims 26, 44, and 53
The Examiner explains that claim 43 is indefinite because “it is not
clear how the ‘establishing the offloaded connection’ . . . [claim limitation]
is achieved in relating to the earlier recited limitations, such as translating
endpoint tuples, etc.” Ans. 5. Specifically, the Examiner determines “[a]
critical element regarding how to use the translated endpoint tuples to
achieve the intended purpose of offloading connections is missing.” Id.
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Claim 43 invokes 35 U.S.C. § 112, sixth paragraph, and, as discussed
below, is determined to be indefinite under 35 U.S.C. § 112, second
paragraph, because the Specification lacks sufficient corresponding
structure, material, or acts for performing the claimed function. Since we
are unable to determine the scope of claim 43, we are unable to make a
determination as to the omission of critical elements. Therefore, the
rejection of claim 43, and its dependent claim 44, under 35 U.S.C. § 112,
second paragraph, for this reason, must fall pro forma because it is
necessarily based on a speculative assumption as to the scope of those
claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). Thus, the
rejection of claim 43, and its dependent claim 44, under 35 U.S.C. § 112,
second paragraph, as indefinite, is not sustained.
With regard to claims 25, 52, and 61, the Examiner determines the
claims do not make clear “how to achieve the intended purpose of
‘offloading connections[,]’[] as recited in the preamble.” Ans. 6 (emphasis
added). At the outset, we note the terminology specified by the Examiner,
“offloading connections,” is not recited in the preamble of claim 25. The
preamble of claim 25 recites, “each of the plurality of resources operable to
provide offloaded connections over a network.” The claim limitation
“offloaded connections” is not recited as an intended purpose of claim 25,
but instead qualifies the “plurality of resources” claim limitation. The
claimed invention of claim 25 is directed towards “[a] method of
aggregating connection capacity of a plurality of network interface resources
of a computer system.” Id. Since the intended scope of claim 25 is not for
the intended purpose stated by the Examiner, it follows that the step of “how
to achieve the intended purpose of ‘offloading connections’” is not a critical
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element for claim 25. Thus, the rejection of claim 25, and its dependent
claim 26, under 35 U.S.C. § 112, second paragraph, as indefinite, for this
reason, is not sustained.
Claims 52 and 61 recite similar claim limitations as claim 25, and for
similar reasons, “how to achieve the intended purpose of ‘offloading
connections’” highlighted by the Examiner is not a critical element. Thus,
the rejection of claim 52, and its dependent claim 53, and claim 61 under 35
U.S.C. § 112, second paragraph, as indefinite, for this reason, is not
sustained.

6. Independent claims 28, 43, 45, and 52, and their respective dependent
claims 29–42, 44, 46–51, and 53
The Examiner explains the Specification does not adequately describe
the corresponding structure for the means-plus-function limitations of claims
28–53, and concludes that these claims are indefinite. See Ans. 6–7, 19–21.
The Examiner finds the claim limitation “means for generating
connect queries from the client node on behalf of the requesting
applications,” as recited in claim 28, is indefinite because the Specification
lacks sufficient corresponding structure, material, or acts for performing the
claimed function. See Ans. 7. Similarly, claim 45 recites, “means for
generating connect queries from a client node on behalf of the requesting
applications on the client node.”
In response, the Appellants provide citations to the Specification as
supporting disclosure of the corresponding structure for the “means for”
limitations of claim 28. See App. Br. 32–33. We have reviewed the cited
portions of the Specification and determine that the written description
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neither clearly links nor associates structure to the particular functions
claimed. See also Medical Instrumentation & Diagnostics Corp. v.
Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003). For example, although the
Appellants identify “operating system 202” as the “means for generating
connect queries from the client node on behalf of the requesting
applications,” such does particularly point out the structure, process,
software instructions, or algorithms, etc., that the operating system uses to
perform the “generating” function. See App. Br. 32. The further citations
provided by the Appellants merely recite the claimed function in the
Specification, particularly page 16, lines 2–14, which is the Summary of the
Invention. See App. Br. 32–33. Moreover, the examples provided in the
Specification (id. (citing Spec. p. 26, l. 23–p. 27, l. 3; p. 23, ll. 5–21; p. 26,
ll. 5–12; p. 27, ll. 1–3; Figs. 1–4)) are not a sufficient description of
structure. Such descriptions merely “describe[] an outcome, not a means for
achieving that outcome.” Aristocrat Technologies Australia Pty Ltd. v.
International Game Technology, 521 F.3d 1328, 1334 (Fed. Cir. 2008). The
cited disclosure, by the Appellants with regard to the additional means-plus-
function limitations, do not cure the deficiency of disclosure in respect to the
“means for generating” claim limitation.
Thus, the Examiner’s rejection of claims 28 and 45, and their
respective dependent claims 29–42 and 46-51, under 35 U.S.C. § 112,
second paragraph, as indefinite, for this reason, is sustained.
Regarding the rejections of claims 29, 31, 36, and 41, for additional
reasons, e.g., “means for accessing, locally at the client node, the set of
bypass tuples…” (Ans. 7), the Appellants do not provide any citation or
explanation of support in the Specification to dispute the Examiner’s
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rejection. Accordingly, the rejections of claims 29, 31, 36, and 41 under 35
U.S.C. § 112, second paragraph, as indefinite, for this reason, are sustained.
Regarding the rejection of independent claim 43 (Ans. 7), the
Appellants provide citations to the Specification as supporting disclosure of
the corresponding structure for the “means for” limitations. See App. Br.
12–13 and 33. However, the citations provided merely recite the claimed
function and do not describe the structure that the operating system or the
Address Translation Service Provider (ATSP) uses to perform the functions.
Thus, for similar reasons, the rejection of claim 43, and its dependent claim
44, under 35 U.S.C. § 112, second paragraph, as indefinite, is sustained.
Additionally, the Examiner explains, “other similarly recited ‘means
for’ limitations in other claims also have the similar issue.” Ans. 7. We
agree. In conclusion, the rejections of independent claims 28, 43, 45, and
52, and their respective dependent claims 29–42, 44, 46–51, and 53 under 35
U.S.C. § 112, second paragraph, as indefinite, for the above reasons, are
sustained.

Obviousness
1. Claims 1, 8, 18, 28, 35, and 45
Since we determined that claims 1, 8, 18, 28, 35, and 45 are indefinite
under 35 U.S.C. § 112, second paragraph, the rejection of claims 1, 8, 18,
28, 35, and 45 under 35 U.S.C. § 103 must fall pro forma because they are
necessarily based on a speculative assumption as to the scope of those
claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). Accordingly,
the rejection of claims 1, 8, 18, 28, 35, and 45 under 35 U.S.C. § 103(a) as
unpatentable over Colby and McMillan is not sustained.
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2. Claim 61
Since we determined that claim 61 is indefinite under 35 U.S.C.
§ 112, second paragraph, the rejection of claim 61 under 35 U.S.C. § 103
must fall pro forma because it is necessarily based on a speculative
assumption as to the scope of that claim. See id. Accordingly, the rejection
of claim 61 under 35 U.S.C. § 103(a) as unpatentable over Colby, McMillan,
and Official Notice is not sustained.

DECISION
We AFFIRM the rejections of claims 1–15, 18–24, 27–53, and 61
under 35 U.S.C. § 112, second paragraph, as indefinite.
We REVERSE the rejections of: claims 25, 26, and 54–60 under 35
U.S.C. § 112, second paragraph, as indefinite; claims 1, 8, 18, 28, 35, and 45
under 35 U.S.C. § 103(a) as unpatentable over Colby and McMillan; and
claim 61 under 35 U.S.C. § 103(a) as unpatentable over Colby, McMillan,
and Official Notice.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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