Ex Parte Yalagandula et al

Patent Trial and Appeal Board

Mar 23, 2017

13430673 (P.T.A.B. Mar. 23, 2017)

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