Ex Parte Calo et al

Patent Trial and Appeal Board

Jul 31, 2017

13861850 (P.T.A.B. Jul. 31, 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.
13/861,850 04/12/2013 Seraphin Calo YOR920120688US1
(29159)
9109
48233 7590 08/02/2017
srntt y smTT mttrphy&prfssfr pt EXAMINER
400 GARDEN CITY PLAZA
SUITE 300
LEVITAN, DMITRY
GARDEN CITY, NY 11530 ART UNIT PAPER NUMBER
2461
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
IBMPAIREN otify @ ssmp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SERAPHIN CALO, ERICH M. NAHUM, and
DINESH VERMA
(Applicant: International Business Machines Corporation)
Appeal 2017-001759
Application 13/861,850
Technology Center 2400
Before ERIC B. CHEN, HUNG H. BUI, and IRVIN E. BRANCH,
Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4—7, 9-12, 14—16, 18, 19, and 21—25, all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a NEW GROUND OF REJECTION.
Appeal 2017-001759
Application 13/861,850
CLAIMED SUBJECT MATTER
According to Appellants, the claims are directed to “a network switch
having a reconfigurable topology.” Spec. 11.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of operating a network switch including a
multitude of input ports and a multitude of output ports, the
method comprising:
assigning one processing device to each of the input ports
and output ports to process data packets received at the input
ports and transferred to the output ports;
creating an intermediate adjustable topological
configuration of intermediate processing devices functionally
between the input ports and the output ports for transferring the
data packets from the input ports to the output ports, and wherein
said transferring includes a switch latency for the transferring of
the data packets from the input ports to the output ports, and a
synchronization of the data packets to reduce contention of the
data packets for the intermediate processing devices; and
assigning the intermediate processing devices of the
intermediate adjustable configuration to forward the data packets
from the input ports to the output ports in accordance with a
specified configuration topology of the intermediate processing
devices, including adjusting the configuration topology of the
intermediate processing devices to adjust the switch latency and
said synchronization.
REJECTIONS
(1) Claims 16, 18, and 19 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
Final Act. 2.1
1 Appellants appear to have overcome this rejection by amendment filed
February 9, 2016, but the Examiner appears not to have withdrawn the
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Application 13/861,850
(2) Claims 1, 2, 4—7, 9-12, 14—16, 18, 19, and 21—25 stand rejected
under 35U.S.C. § 112(a)or35U.S.C. § 112 (pre-AIA), first paragraph, as
failing to comply with the enablement requirement. Final Act. 3 (herein “the
enablement rejection”).
(3) Claims 1, 2, 4—7, 9-12, 14—16, 18, 19, and 21—25 stand rejected
under 35U.S.C. § 112(b)or35U.S.C. § 112 (pre-AIA), second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which the inventor or a joint inventor, or for pre-AIA the
applicant regards as the invention. Final Act. 4. (herein “the indefmiteness
rejection”).
ANALYSIS
We have reviewed the enablement rejection (Final Act. 3) and find the
Examiner erred. In particular, we do not agree with the Examiner that
Appellants’ Specification “does not provide enough details about the
structure and operation of the elements associated with the above identified
claimed features to enable one skilled in the art to make and use the
invention without undue experimentation” as the Examiner finds. Final Act.
3. Accordingly, for the reasons stated by Appellants (App. Br. 14—16; Reply
Br. 4—5), we do not sustain the rejection of claims 1, 2, 4—7, 9-12, 14—16,
18, 19, and 21—25 under35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA),
first paragraph, on this record.
We have reviewed the indefmiteness rejection (Final Act. 4) and find
the Examiner erred for the reasons stated by Appellants (App. Br. 17—19;
rejection. See generally Ans. We leave it to the Examiner to determine
whether the amendment overcomes the rejection.
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Appeal 2017-001759
Application 13/861,850
Reply Br. 6—7). We understand the claim to recite that the transferring of
data packets includes synchronizing them such that their contention with one
another for the intermediate devices is reduced. Accordingly, we do not
sustain the rejection of claims 1, 2, 4—7, 9-12, 14—16, 18, 19, and 21—25
under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), second paragraph.
NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), however, we
enter a new ground of rejection, finding claim 1 obvious over Appellants’
Figure 1. All elements of claim 1 are found in Figure 1, except that Figure 1
does not expressly depict claim 1 ’s “adjusting the configuration topology of
the intermediate processing devices to adjust the switch latency and said
synchronization.” Because claim 1 does not recite a specific configuration
topology, claim 1 ’s “creating” step reads on any arrangement of the
intermediate elements in Figure 1 (i.e., processing devices 110, 112).
Moreover, without more, the “adjusting” step reads on iterating through
random arrangements of Figure l’s intermediate elements because each
iteration inherently adjusts “the switch latency and said synchronization.”
We anticipate Appellants might argue that adjusting among possible
topologies rendered obvious by Figure 1 does not necessarily “reduce”
contention from one specific topology to another in accordance with claim 1
(“wherein said transferring includes ... a synchronization of the data packets
to reduce contention of the data packets for the intermediate processing
devices”). We note, however, that, at least with respect to claim 1, reducing
contention is a desired outcome, or purpose, for the synchronization.
Adjusting the topology for the purpose of reducing contention does not
distinguish claim 1 over randomly “adjusting” among Figure 1 ’s obvious
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Appeal 2017-001759
Application 13/861,850
variants, one such adjustment eventually reducing contention, even if by
accident.
Accordingly, claim 1 is obvious over Appellants’ Figure 1, which
Appellants admit is “prior art.” Spec. Fig. 1. We leave it to the Examiner to
determine whether the remaining claims are similarly unpatentable.
DECISION
We reverse the Examiner’s rejection of claims 1,2, 4—7, 9-12, 14—16,
18, 19, and 21-25.
We enter a NEW GROUND OF REJECTION of claim 1 as obvious
over Appellants’ Figure 1.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) 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) 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
proceeding will be remanded to the
examiner....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record....
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Appeal 2017-001759
Application 13/861,850
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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
REVERSED; 37 C.F.R, $ 41.50(b)
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