Ex Parte Brabson et al

Board of Patent Appeals and Interferences

Apr 28, 2010

10045556 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte ROY FRANK BRABSON, EDWARD GLEN BRITTON,
WESLEY MCMILLAN DEVINE, LAP THIET HUYNH,
DAVID B. LINDQUIST, BALA RAJARAMAN,
and ARTHUR JAMES STAGG
_____________

Appeal 2008-000932
Application 10/045,556
Technology Center 2400
______________

Decided: April 28, 2010
_______________

Before JOHN A. JEFFERY, ROBERT E. NAPPI, and ST. JOHN
COURTENAY III, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2008-000932
Application 10/045,556

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 21 and 23.
We affirm-in-part and enter a new rejection against claim 23.
INVENTION
The invention is directed to method of improving quality of service in
a data network during heavy traffic flow by dynamically modifying the
behavior of executing applications. See pages 8 and 9 of Appellants’
Specification. Claim 1 is reproduced below:
1. A method of improving traffic management in a computing
network, comprising steps of:
detecting a changed environmental condition;
generating a notification of the detected condition;
analyzing the generated notification by consulting one or more
criteria; and
determining at a currently-executing application, based on the
analysis, whether the currently-executing application should modify a
behavior of the currently-executing application.

REFERENCES
Buhrke US 5,280,470 Jan. 18, 1994
Yamato US 5,835,484 Nov. 10, 1998
Nahidipour US 5,938,743 Aug. 17, 1999

REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 7, 9 through 12, 17
through 21 and 23 under 35 U.S.C. § 102(b) as being anticipated by Buhrke.
The Examiner’s rejection is on pages 3 through 7 of the Answer.
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The Examiner has rejected claims 1 and 13 through 16 under 35
U.S.C. § 102(b) as being anticipated by Yamato. The Examiner’s rejection
is on pages 7 and 8 of the Answer.
The Examiner has rejected claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Buhrke in view Nahidipour. The Examiner’s rejection is
on page 9 of the Answer.

ISSUES
Rejection of claims 1 through 7, 9 through 12, 17 through 21, and 23
under 35 U.S.C. § 102(b) as anticipated by Buhrke
Appellants argue on pages 6 through 9 of the Appeal Brief1 that the
Examiner’s rejection of claims 1 through 7, 9 through 12, 17 through 21 and
23 is in error. Appellants assert on page 7 of the Appeal Brief that Buhrke
does not teach determining at a currently executing application whether the
currently executing application should modify a behavior of the currently-
executing application as claimed. Appellants argue that Buhrke teaches a
system where the terminal equipment (which the Examiner considers to
meet the claimed application) and the switch negotiate quality of service
before establishing a virtual channel. Appeal Brief 7. Appellants argue that
the determination of whether the quality of service is accepted, which the
Examiner is associating with the claimed change in behavior, is made at the
switch and not the terminal. Appeal Brief 8.

1. Throughout the opinion, we refer to the Appeal Brief filed January 30,
2007, and Reply Brief filed July 24, 2007.
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Thus, Appellants’ arguments present us with the issue of whether the
Examiner erred in determining the Buhrke teaches that a currently-executing
application makes a determination to modify its behavior as claimed.
Rejection of claims 1 and 13 through 16 under 35 U.S.C. § 102(b) as
being anticipated by Yamato
Appellants argue on pages 6 through 9 of the Appeal Brief that the
Examiner’s rejection of claims 1 and 13 through 16 is in error. Appellants
argue that Yamato teaches a cell traffic regulation unit which controls traffic
on the network and as such does not teach the currently-executing
application making a determination to modify its behavior as recited in claim
1. Appeal Brief 9. Further, Appellants argue that Yamato’s cell traffic
regulating unit regulates traffic sent between applications but is not a
currently executing application. Appeal Brief 10. Appellants clarify this
argument in the Reply Brief reasoning that “[s]ince the behavior of the
regulation unit is to monitor and regulate, any activity in connection with the
monitoring and regulation functions is necessarily not modifying a behavior
of the regulation unit, as suggested in the Examiner's Answer.” Reply Brief
4.
Thus, Appellants’ arguments directed to the rejection of claims 1 and
13 through 16 present us with the issue: did the Examiner err in determining
Yamato’s regulating unit teaches a currently-executing application that
makes a determination to modify its behavior as claimed?

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FINDINGS OF FACT
1. Buhrke teaches method and apparatus for controlling overload in a
data network in which a network switch sends a slow down
messages to virtual channels to decrease their data rates. The switch
and the terminal requesting the virtual channel negotiate for the
allocated bandwidth. Abstract, col. 3, ll. 9-11.
2. Buhrke teaches that when establishing a virtual channel, a terminal
will make a request of the switch to provide a requested bandwidth.
The switch then responds back to the terminal identifying that the
switch, accepts or rejects or proposes acceptable transmission rate.
Col. 5, ll. 5-25, col. 5, l. 60-col. 6 l. 21, Figure 2, steps 202, 204,
206, 210, 212, and 216.
3. If the switch identifies a lower acceptable transmission rate than
requested by the terminal, the terminal decides to accept or reject the
new transmission rate. Buhrke, col. 6, ll. 21-26, and Figure 2, step
218.
4. Buhrke also teaches that once a virtual channel has been established
the switch may notify the terminals that it is necessary to throttle the
data rate to reduce the load on the switch. This is done by sending a
load reduction request to the terminals. Buhrke does not disclose
that the terminals make a decision based upon this message, rather
they reduce the data rate as instructed by the switch. Col. 5, ll. 34-
46, col. 6, ll. 28-48, see also Figure 3.

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ANALYSIS
Rejection under 35 U.S.C. § 102(b) as anticipated by Buhrke

Claims 1 through 7, 9 through 12, and 17 through 21
Appellants have persuaded us that Examiner erred in finding that
Buhrke teaches a currently executing application that makes a determination
to modify its behavior as claimed. Claim 1 recites that a determination is
made at a currently-executing application as to whether that application
should modify its behavior. The Examiner found that Buhrke’s teaching of
the terminal determining whether a modification to the control parameter is
accepted by the terminal meets the claimed step to determine to modify
behavior. Answer 4, 11. We disagree with the Examiner’s determination.
Claim 1 recites detecting a changed condition and that the determining step
is performed based upon an analysis of a notification of the changed
condition. Buhrke teaches a system where a terminal negotiates with a
network switch to determine the control parameters for establishing a virtual
channel. Fact 1. Buhrke teaches a procedure used to establish the virtual
channel, as shown in Figure 2, and a procedure to adjust the parameters
based upon excess traffic on the virtual channel. See Figure 3. Fact 2 and 4.
In the procedure to establish the virtual channel, the terminal determines
whether to accept or reject changed control parameters (e.g. see step 218,
reduce bandwidth). Fact 3. However, this is not due to changed conditions.
In the procedure to adjust parameters based upon excess traffic (changed
conditions), the switch—not the terminal—makes the determination of
whether to reduce the bandwidth, and there is no step where the terminal
accepts or rejects the decision by the switch to reduce the bandwidth
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(accepting adjusting bandwidth usage is what the Examiner appears to
equate with modified behavior). Fact 4. Thus, we do not find that Buhrke
teaches all of the limitations of independent claim 1. Claims 2 through 7, 9
through 12, and 17 through 21 ultimately depend upon claim 1.
Accordingly, we will not sustain the Examiner’s rejection of claims 1
through 7, 9 through 12, and 17 through 21 under 35 U.S.C. § 102(b) as
anticipated by Buhrke.

Claim 23
As discussed infra, we now reject claim 23 under 35 U.S.C. § 112
second paragraph. Thus, the scope of the claims can not be determined. Our
reviewing court has said that it is wrong to rely upon speculative
assumptions as to the meaning of claims and to base a rejection of such
claims upon prior art. In re Steele 305 F.2d 859, 862 (CCPA 1962). Thus,
we will not sustain the Examiner’s rejection of these claims under 35 U.S.C.
§ 102(b) as we will not speculate as to the scope of the claims and, as such,
cannot determine whether the combination of the references teach the
claimed features.

Rejection of claim 8 under 35 U.S.C. § 103(a) as being unpatentable
over Buhrke, in view Nahidipour
Claim 8 is ultimately dependent upon claim 1, and the Examiner’s
rejection of claim 8 relies upon the disclosure of Buhrke to teach the
limitations of claim 1. The Examiner has not found, nor do we find that
Nahidipour teaches or makes obvious the limitations discussed above as
missing from the teachings of Buhrke. Accordingly, we will not sustain the
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Examiner’s rejection of claim 8 for the reasons discussed above with respect
to claim 1.

Rejection under 35 U.S.C. § 102(b) as being anticipated by Yamato
Claims 1 and 13 through 16
Appellants have not persuaded us that Examiner erred in determining
Yamato’s regulating unit teaches a currently executing application that
makes a determination to modify its behavior. The Examiner has found that
Yamato’s regulation unit meets the claimed currently executing application
as it makes determinations to modify monitoring parameters based upon
analyzing notification of detected changes in conditions. Answer 7 and 12.
We concur with the Examiner’s findings as we consider the passages of
Yamato support the Examiner’s findings.
Appellants have not contested the Examiner’s factual findings
concerning the operation of the regulating unit. Rather, Appellants have
asserted that it is not an application as “the behavior of the regulation unit is
to monitor and regulate, any activity in connection with the monitoring and
regulation functions is necessarily not modifying a behavior of the
regulation unit, as suggested in the Examiner's Answer.” Reply Brief 4. We
are not persuaded by this argument. We note that there is no limitation in
claim 1 which defines the changed behavior to not including the activity of
monitoring and regulating. Further, this argument basically implies that the
behavior being modified can not be the core behavior of the application.
However, this is contrary to the examples in Appellants’ disclosure which
include applications changing their core behavior (see e.g. page 2 of
Appellants’ Specification identifies that the invention can be used on
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applications that transfer files and page 9 of Appellants’ Specification
identifies that the modification to the application may be the reduction or
increase in the data transferred, thus the modified behavior is the core
behavior of the application).
Accordingly, Appellants have not persuaded us of error in the
Examiner’s rejection of claims 1 and 13 through 16 under 35 U.S.C.
§ 102(b) as being anticipated by Yamato.

New rejection
Claim 23 is rejected under 35 U.S.C. § 112, second paragraph on the
same basis set forth in Aristocrat Techs. Austl. Pty Ltd. v. Inter Game Tech.,
521 F.3d 1328 (Fed Cir 2008).
Claim 23 recites a “means for analyzing the generated notification by
consulting one or more criteria; means for determining at a currently-
executing application, based upon the analysis, whether the currently-
executing application should modify a behavior of the currently-executing
application.” Thus, claim 23 invokes 35 U.S.C. § 112 sixth paragraph, as it
recites the phrase “means for” and corresponding functional language, but
does not recite structure for achieving the specified function. See Altiris Inc.
v. Semantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003).
In accordance with 37 C.F.R. 41.37(c)(1)(v), Appellants have stated
that the “means for analyzing the generated notification by consulting one or
more criteria” is shown in Appellants’ Figure 19 (block 1925) and, page 45
lines 8-10 of Appellants’ originally filed Specification. Block 1925 in
Figure 19 is an element in a flow chart titled “adjust system usage.” The
description on page 45, lines 8-10 simply states “[f]ollowing operation of
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Blocks 1920 and 1925, the user application’s change-notification processing
suspends to await the next incoming notification (Block 1930).” It appears
from Appellants’ Figure 19 that step 1925 is part of an application or
program operating on a server. Thus, Appellants have identified that the
corresponding structure for the “means for analyzing” is a computer
implemented function.
The Federal Circuit has stated that simply disclosing a general
purpose computer as the structure to perform the claimed function does not
meet the corresponding structure requirement of 35 U.S.C. § 112 sixth
paragraph. Aristocrat, 521 F.3d at 1333. Rather, “the corresponding
structure for a § 112 paragraph 6 claim for a computer-implemented function
is the algorithm disclosed in the specification.” Id (citing Harris Corp. v.
Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)). Here, Appellants’
Specification does not provide the algorithm for the claimed means for
means for analyzing. Appellants’ Specification does not identify the criteria
consulted as part of the analyzing or how the criteria is used in analyzing the
notification, i.e. Appellants have not identified the algorithm performed by
the computer to analyze the generated notification. As such, Appellants
have failed to adequately describe sufficient structure for performing the
functions claimed.
Claim 23 also invokes 35 U.S.C. § 112 sixth paragraph, as it recites
“means for determining at a currently-executing application, based on the
analysis whether the currently-executing application should modify a
behavior or the currently-executing application.” In accordance with 37
C.F.R. 41.37(c)(1)(v), Appellants have stated that the “means for
determining” is shown in Figure 5, block 505 and described on page 20 lines
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19-20. Appeal Brief 3. Figure 5, block 505 is shown as part of an
application server and is titled “user application”; thus, it appears that the
“means for determining” is a computer-implemented function.
Appellants’ Specification, page 20 line 18 to page 21 line 1 states
“[f]or ease of reference, the term ‘prioritization action’ is used hereinafter to
refer to the action or actions taken by the executing application in response
to receiving a notification; a prioritization action may be any of the actions
just described.” We fail to see how the passage of the Specification which
Appellants cited in the Brief provides any support for the claimed means for
determining. We note that Appellants’ Specification, on page 20, lines 13-
15 identifies that the action taken by the application may be reducing the
amount of data or dropping connections. Appellants’ Specification further
states “[t]he appropriate response to a particular notification that may be
received according to the present invention is application-dependent, and is
outside the scope of the present invention.” Specification 20:16-18. Thus,
Appellants’ Specification identifies some of the possible results of the means
for determining but does not identify the process by which the response to
the notification is selected but rather states that it is “outside the scope of the
invention.” Accordingly, we find that Appellants have not identified the
algorithm performed by the computer to determining whether the currently
executing application should modify its behavior, and as such Appellants
have failed to adequately describe sufficient structure for performing the
functions claimed.
For the forgoing reasons, we now reject claim 23 under 35 U.S.C. §
112, second paragraph as Appellants Specification does not identify the
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corresponding structure for limitations invoking 35 U.S.C. § 112 sixth
paragraph.

SUMMARY
We will not sustain the Examiner’s rejection of claims 1 through 7, 9
through 12, 17 through 21, and 23 under 35 U.S.C. § 102(b) as being
anticipated by Buhrke; or the rejection of claim 8 under 35 U.S.C. § 103(a)
as being unpatentable over Buhrke, in view Nahidipour. However, we
sustain the Examiner’s rejection of claims 1, and 13 through 16 under 35
U.S.C. § 102(b) as being anticipated by Yamato. We enter a new rejection
against under claim 23 under 35 U.S.C. § 112 second paragraph.

ORDER
The decision of the Examiner to reject claims 1, 3 4, 7 through 12, and
16 through 23 is affirmed-in-part.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). This section provides that “[a] new ground of rejection…
shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, 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) 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 proceeding will be remanded to the
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examiner. . . .

(2) Request that the proceeding be reheard
under § 41.52 by the Board upon the same
record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

ELD

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