Ex Parte Yalagandula et alDownload PDFPatent Trial and Appeal BoardMar 23, 201713430673 (P.T.A.B. Mar. 23, 2017) Copy Citation United States Patent and Trademark Office 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. 13/430,673 03/26/2012 Praveen Yalagandula 82916253 8517 56436 7590 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 EXAMINER LA, PHONG ART UNIT PAPER NUMBER 2469 NOTIFICATION DATE DELIVERY MODE 03/27/2017 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): hpe.ip.mail@hpe.com chris. mania @ hpe. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PRAVEEN YALAGANDULA, RACHIT AGARWAL, JAYARAM MUDIGONDA, and JEFFREY CLIFFORD MOGUL Appeal 2016-004529 Application 13/430,6731 Technology Center 2400 Before MICHAEL J. STRAUSS, DAVID J. CUTITTAII, and PHILLIP A. BENNETT, Administrative Patent Judges. BENNETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 3—9, and 16—21.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION. 1 Appellants’ Brief (“App. Br.”) identifies the real party in interest as Hewlett-Packard Development Company, LP. App. Br. 2. 2 Claims 10, 11, 13—15, and 22 were previously indicated as allowable and are not subject to appeal. Claim 2 is cancelled. Appeal 2016-004529 Application 13/430,673 CLAIMED SUBJECT MATTER The claims are directed to reducing cabling costs in a datacenter network. Spec. Abstract. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A datacenter network with reduced cabling costs, comprising: a network topology to interconnect a plurality of network elements; and a network design module to: assign the plurality of network elements to a plurality of physical elements and physical units in a physical topology based on a hierarchical partitioning of the physical topology and a matching hierarchical partitioning of the network topology, and determine a network layout that reduces costs of cables used to interconnect the plurality of network elements in the physical topology. App. Br. 21 (Claims Appendix). REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Zalitzky DeCusatis Yamato Chen Judge US 2010/0150172 A1 US 2011/0038634 A1 US 2011/0261723 A1 US 2012/0151026 A1 US 2012/0250679 A1 June 17, 2010 Feb. 17,2011 Oct. 27, 2011 June 14, 2012 (filed Dec. 14, 2010) Oct. 4, 2012 (filed Mar. 29, 2011) 2 Appeal 2016-004529 Application 13/430,673 REJECTIONS Claims 1 and 3—9 stand rejected under 35U.S.C. § 112 second paragraph as being indefinite. Final Act. 15. Claims 16 and 18—20 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Judge. Final Act. 17. Claims 1 and 4—9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over DeCusatis and Judge. Final Act. 24. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Judge and Zalitzky. Final Act. 31. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over DeCusatis, Judge, and Yamato. Final Act. 33. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over DeCusatis, Judge, and Chen. Final Act. 35. ANALYSIS For the reasons discussed below, we conclude claims 1, 3—9, and 16— 21 are indefinite, but not for the reasons set forth by the Examiner in the Final Office Action. As a result, we reverse the Examiner’s rejections under 35 U.S.C. § 112, second paragraph and enter a new ground of rejection for indefmiteness. We do not sustain the rejections of these claims under 35 U.S.C. §§ 102(e) and 103(a) because to do so would require speculation as to the scope of the claims. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation rejection of indefinite claims); In re Steele, 305 F.2d 859, 862—63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite 3 Appeal 2016-004529 Application 13/430,673 claims under 35 U.S.C. § 103(a), because the rejection was based on speculative assumptions as to the meaning of the claims). During examination, an applicant must “clearly and precisely set out the metes and bounds of the claimed [subject matter].” Ex parte Miyazaki, 89 USPQ2d 1207, 1211—13 (BPAI 2008) (precedential). Our reviewing court instructs us that an applicant “is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.” Halliburton Energy Servs. v. M-ILLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). We Reverse the Examiner’s Rejections Under 35 U.S.C. § 112, Second Paragraph The Examiner rejects claim 1 as indefinite for two reasons. We address each in turn. The Examiner concludes the limitation “network elements” recited in the final limitation of claim 1 is indefinite because “[i]t [is] unclear these ‘network elements'1 are belongs [sic] to the “plurality of network element[sj” recited earlier in the claim. Final Act. 15. We note Appellants’ argument in the Reply Brief calling our attention to the after Final Amendment entered on June 25, 2015 which added the phrase “the plurality of’ to before the recited “network elements.” We agree with Appellants that this amendment was entered and is part of the record before us. See Advisory Act. Dated June 25, 2015 (indicating entry of submitted amendment). It appears this rejection was made against the prior version of claim 1. Appellants’ 4 Appeal 2016-004529 Application 13/430,673 amendment resolves the perceived ambiguity with respect to the recited “network elements.” Consequently, we do not sustain this rejection. The Examiner also concludes claim 1 is indefinite because it is “incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections.” Final Act. 15. More specifically, the Examiner finds the limitation “assign the plurality of network elements to a plurality of physical elements and physical units in a physical topology based on a hierarchical partitioning of the physical topology and a matching hierarchical partitioning of the network topology” to be indefinite because “[i]t is unclear the matching hierarchical partitioning of the network topology relates to the network topology and physical topology. ” Final Act. 15. We agree with Appellants that the Examiner’s rejection is in error. In determining whether a claim satisfies the 35 U.S.C. § 112, second paragraph, we determine “whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1380 (Fed. Cir. 2011) (quoting Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). In our view, those skilled in the art would have readily understood the scope of the “assign” functionality attributed to the claimed network design module:3 3 We note the attributes of the “network design module” in claim 1 are expressed in purely functional terms and the “network design module” does not appear to have a structural component, either in the claim itself or as a term of art. As such, in the event of further prosecution, the Examiner may want to consider whether the phrase “a network design module to” invokes 5 Appeal 2016-004529 Application 13/430,673 assign the plurality of network elements to a plurality of physical elements and physical units in a physical topology based on a hierarchical partitioning of the physical topology and a matching hierarchical partitioning of the network topology .... App. Br. 21 (Claims Appendix). As explained by Appellants, the word “matching” is used as an adjective in claim 1, and “[i]t is the ‘hierarchical partitioning of the network topology’ that matches the ‘hierarchical partitioning of the physical topology’ . . . .” App. Br. 10. This interpretation is consistent with the embodiment described in paragraphs 39-41 of the Specification. We therefore conclude the Examiner’s rejection under Section 112 is not supported by the evidence, and we do not sustain the rejection. New Ground of Rejection—35 U.S.C. § 112, second paragraph We enter a new ground of rejection with respect to claims 1 and 16 under 35 U.S.C. § 112, second paragraph. Independent claim 1 recites the limitation “a network layout that reduces costs of cables used to interconnect the plurality of network elements.” Independent claim 16 recites the similar limitation of “a network layout that. . . reduces costs of cables used to interconnect the network elements.”* * 4 The phrase “reduces costs of cables” is indefinite because there is no baseline provided against which the “cost of cables” is measured. The claim does not indicate what the baseline cost is, nor does the Specification make it clear what the baseline would be. Without such a baseline, an accused infringer would be unable to determine whether a particular network design 35 U.S.C. § 112, sixth paragraph, and if so, whether the specification discloses sufficient structure under that same provision. 4 Appellants rely on this limitation to distinguish over the references cited in the prior art rejections. See, e.g., App. Br. 16—17. 6 Appeal 2016-004529 Application 13/430,673 module infringes the claim or not, thereby rendering the claim indefinite. See, e.g., Semmler v. American Honda Motor Co., 990 F. Supp. 967, 975, (S.D. Ohio 1997), affd, 178 F.3d 1308 (Fed. Cir. 1998) (unpublished) (finding phrase “considerable fuel savings” indefinite); see also Baldwin Graphic Systems, Inc. v. Siebert, Inc., 2008 U.S. Dist. LEXIS 82991 (N.D. 111. 2008) (finding “reduced air content cleaning fabric” indefinite because no reference baseline for air content provided).5 Prior Art Rejections Because Appellants argue the prior art does not teach or suggest the claimed invention based in part on the “reduces costs of cables” limitation, Appellants’ arguments are based on speculative assumptions as to the meaning of the claims. Therefore, we cannot meaningfully evaluate those arguments with respect to whether the claims are anticipated and/or obvious over the prior art. Accordingly, we reverse the prior art rejections pro forma in accordance with In re Steele, 305 F.2d at 862—63, based solely on the indefmiteness of the claimed subject matter. “Our decision is not to be construed as meaning that we consider the claims on appeal to be patentable [over the prior art] as presently drawn.” Id. DECISION The Examiner’s rejections of claims 1 and 3—9 under 35 U.S.C. § 112, second paragraph are reversed. 5 We note that the previously allowed claims may suffer from the same indefmiteness issue as claims 1 and 16. However, those claims are not on appeal, and we lack jurisdiction to issue any new rejections with respect to those claims. We suggest, however, the Examiner consider whether new rejections are appropriate in light of the discussion above. 7 Appeal 2016-004529 Application 13/430,673 The Examiner’s rejections of claims 1, 3—9, and 16—21 under 35 U.S.C. §§ 102(e), 103(a) are reversed pro forma. Claims 1, 3—9, and 16—21 are newly rejected under 35 U.S.C. § 112, second paragraph. NEW GROUND OF REJECTION This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. 8 Appeal 2016-004529 Application 13/430,673 Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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)(l)(iv). REVERSED 37 C.F.R, $ 41.50(b) 9 Copy with citationCopy as parenthetical citation