Ex Parte Datta et al

Board of Patent Appeals and Interferences

Jan 23, 2009

10034190 (B.P.A.I. Jan. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SANCHAITA DATTA and RAGULA BHASKAR
____________

Appeal 2008-2737
Application 10/034,190
Technology Center 2400
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Decided: January 23, 2009
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
JAY P. LUCAS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-10 and 12-21. The Appellants
appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).

Appeal 2008-2737
Application 10/034,190

A. INVENTION
The invention at issue on appeal relates to the translation of domain
names to IP addresses in a computer network, and more particularly relates
to tools and techniques for distributing domain name resolution results
among multiple connections, to provide benefits such as dynamic load-
balancing across network connections and greater reliability. (Spec. 1.)

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A connection-sensitive domain name resolution device,
comprising:

a data component identifying IP addresses for at least two paths to a
server which has a domain name; and

a code component which receives a domain name resolution request
specifying the domain name, selects an IP address from the data
component based on information about the status of a path to the
server, said information obtained at least in part by pinging a router on
a path to the server to determine if the router is a reliable connection
component, said IP address selection made without regard to the
router's proximity to the server, and supplies the selected IP address in
response to the domain name resolution request.

C. REFERENCES
The Examiner relies on the following references as evidence:
Mogul US 6,262,987 B1 Jul. 17, 2001
Vaid US 6,502,131 B1 Dec. 31, 2002
(filed Dec. 4, 1998)
Zisapel US 6,665,702 B1 Dec. 16, 2003
(filed Dec. 20, 1999)

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Bommareddy US 6,779,039 B1 Aug. 17, 2004
(filed Mar. 31, 2000)

D. REJECTIONS
The Examiner makes the following rejections.
Claims 1, 8, and 13 (and dependent claims 2-7, 9, 10, 12, and 14-21)
stand rejected under 35 U.S.C. § 112, first paragraph, as containing subject
matter which was not described in the Specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventor(s), at
the time the application was filed, had possession of the claimed invention.
Claims 1, 8, and 13 (and dependent claims 2-7, 9, 10, 12, and 14-21)
stand rejected under 35 U.S.C. § 112, first paragraph, as containing subject
matter which was not described in the Specification in such a way as to
enable one skilled in the art to which it pertains, or with which it is most
nearly connected, to make and/or use the invention.
Claims 1-9, 12-16, 18-19, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Zisapel in view of Bommareddy.
Claims 10 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zisapel in view of Bommareddy and further in view of
Mogul.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zisapel in view of Bommareddy and further in view of
Vaid.

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II. ISSUE
Have Appellants shown error in the Examiner’s initial showing of a
lack of Written Description for the claimed invention?
Have Appellants shown error in the Examiner’s initial showing of a
lack of enablement for the claimed invention?
Have Appellants shown error in the Examiner’s initial showing of
obviousness for the claimed invention?

III. PRINCIPLES OF LAW
35 U.S.C. § 112, First Paragraph: Written Description
The determination of whether a patent meets the written description
requirement is a “question of fact, judged from the perspective of one of
ordinary skill in the art as of the relevant filing date.” Falko-Gunter Falkner
v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006) (citing Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64). “To fulfill the written description
requirement, the patent specification must describe an invention in sufficient
detail that one skilled in the art can clearly conclude that the inventor
invented what is claimed.” Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d
1352, 1364 (Fed. Cir. 2003) (citations omitted). Our reviewing court has
cautioned, however, that “[t]he disclosure as originally filed does not . . .
have to provide in haec verba support for the claimed subject matter at
issue.” Id. at 1364. “Although [the applicant] does not have to describe
exactly the subject matter claimed, … the description must clearly allow
persons of ordinary skill in the art to recognize that [he or she] invented
what is claimed.” In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)
(citations omitted). Put another way, “the applicant must . . . convey with
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reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention.” Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The written description, although
it need not include information that is already known and available to the
experienced public, must be in sufficient detail to satisfy the statutory
requirements, employing “[w]ords, structures, figures, diagrams, formulas,
etc., that fully set forth the claimed invention.” Space Systems/Loral, Inc. v.
Lockheed Martin Corp., 405 F.3d 985, 987 (Fed. Cir. 2005) (quoting
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)).
Finally, “[p]recisely how close the original description must come to comply
with the description requirement of § 112 must be determined on a
case-by-case basis.” Eiselstein v. Frank, 52 F.3d 1035, 1039 (Fed. Cir.
1995) (citation omitted).

35 U.S.C. § 112, First Paragraph: Enablement
An analysis of whether the claims under appeal are supported by an
enabling disclosure requires a determination of whether that disclosure
contained sufficient information regarding the subject matter of the appealed
claims as to enable one skilled in the pertinent art to make and use the
claimed invention. The test for enablement is whether one skilled in the art
could make and use the claimed invention from the disclosure coupled with
information known in the art without undue experimentation. See United
States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988), In re
Stephens, 529 F.2d 1343, 1345 (CCPA 1976).
In order to make a rejection, the examiner has the initial burden to
establish a reasonable basis to question the enablement provided for the
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claimed invention. See In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir.
1993) (examiner must provide a reasonable explanation as to why the scope
of protection provided by a claim is not adequately enabled by the
disclosure). A disclosure which contains a teaching of the manner and
process of making and using an invention in terms which correspond in
scope to those used in describing and defining the subject matter sought to
be patented must be taken as being in compliance with the enablement
requirement of 35 U.S.C. § 112, first paragraph, unless there is a reason to
doubt the objective truth of the statements contained therein which must be
relied on for enabling support. Assuming that sufficient reason for such
doubt exists, a rejection for failure to teach how to make and/or use will be
proper on that basis. See In re Marzocchi, 439 F.2d 220, 223 (CCPA 1971).
As stated by the court,
it is incumbent upon the Patent Office, whenever a rejection on this
basis is made, to explain why it doubts the truth or accuracy of any
statement in a supporting disclosure and to back up assertions of its
own with acceptable evidence or reasoning which is inconsistent with
the contested statement. Otherwise, there would be no need for the
applicant to go to the trouble and expense of supporting his
presumptively accurate disclosure.

In re Marzocchi, 439 F.2d at 224.

Once the examiner has established a reasonable basis to question the
enablement provided for the claimed invention, the burden falls on the
appellant to present persuasive arguments, supported by suitable proofs
where necessary, that one skilled in the art would be able to make and use
the claimed invention using the disclosure as a guide. See In re
Brandstadter, 484 F.2d 1395, 1406 (CCPA 1973). In making the
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determination of enablement, the Examiner shall consider the original
disclosure and all evidence in the record, weighing evidence that supports
enablement1 against evidence that the Specification is not enabling.
Thus, the dispositive issue is whether the Appellants’ disclosure,
considering the level of ordinary skill in the art as of the date of the
Appellants’ application, would have enabled a person of such skill to make
and use the Appellants’ invention without undue experimentation. The
threshold step in resolving this issue as set forth supra is to determine
whether the Examiner has met his burden of proof by advancing acceptable
reasoning inconsistent with enablement. This the Examiner has not done.

35 U.S.C. § 103(a)
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art," Id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. KSR, 127 S. Ct. at 1739 (citing Graham v. John

1 The Appellant may attempt to overcome the Examiner's doubt about
enablement by pointing to details in the disclosure but may not add new
matter. The Appellant may also submit factual affidavits under 37 C.F.R.
1.132 or cite references to show what one skilled in the art knew at the time
of filing the application.
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Deere Co., 383 U.S. 1, 12 (1966)). The Court reaffirmed principles based
on its precedent that "[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results." Id. The operative question in this "functional
approach" is thus "whether the improvement is more than the predictable use
of prior art elements according to their established functions." Id. at 1740.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 127 S. Ct. 1727,
1739 (2007)). The Federal Circuit relied in part on the fact that Leapfrog
had presented no evidence that the inclusion of a reader in the combined
device was “uniquely challenging or difficult for one of ordinary skill in the
art” or “represented an unobvious step over the prior art." Id. at 1162 (citing
KSR, 127 S. Ct. at 1740-41).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The prior art reference need not expressly disclose each claimed
element in order to anticipate the claimed invention. See Tyler Refrigeration
v. Kysor Indus. Corp., 777 F.2d 687, 689 (Fed. Cir. 1985). Rather, if a
claimed element (or elements) is inherent in a prior art reference, then that
element (or elements) is disclosed for purposes of finding anticipation. See
Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d at 631-33.
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It is well settled that the burden of establishing a prima facie case of
anticipation resides with the Patent and Trademark Office (PTO). See In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). When relying upon the
theory of inherency, the examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art. See Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Patent
App. & Int. 1990).
After the PTO establishes a prima facie case of anticipation based on
inherency, the burden shifts to the appellant to prove that the subject matter
shown to be in the prior art does not possess the characteristics of the
claimed invention. See In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985); In
re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). Hence, Appellants’ burden
before the PTO is to prove that does not perform the functions defined in the
claims. The Appellants have not come forward with any evidence to satisfy
that burden. Compare In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re
Ludtke, 441 F.2d 660, 664 (CCPA 1971). Appellants’ mere argument on
pages of the brief and pages of the reply brief that does not disclose is not
evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)(attorney's
arguments in a brief cannot take the place of evidence).
Before addressing the Examiner's rejections based upon prior art, it is
an essential prerequisite that the claimed subject matter be fully understood.
Analysis of whether a claim is patentable over the prior art under 35 U.S.C.
§§ 102 and 103 begins with a determination of the scope of the claim. The
properly interpreted claim must then be compared with the prior art. Claim
interpretation must begin with the language of the claim itself. See
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SmithKline Diagnostics, Inc. v. Helena Laboratories Corp., 859 F.2d 878,
882 (Fed. Cir. 1988). Accordingly, we will initially direct our attention to
Appellants' claim to derive an understanding of the scope and content
thereof.
Before turning to the proper construction of the claims, it is important
to review some basic principles of claim construction. First, and most
important, the language of the claim defines the scope of the protected
invention. Yale Lock Mfg. Co. v. Greenleaf, 117 U.S. 554, 559 (1886) ("The
scope of letters patent must be limited to the invention covered by the claim,
and while the claim may be illustrated it cannot be enlarged by language
used in other parts of the specification."); Autogiro Co. of Am. v. United
States, 384 F.2d 391, 396 (Ct. Cl. 1967) ("Courts can neither broaden nor
narrow the claims to give the patentee something different than what he has
set forth [in the claim]."). See also Continental Paper Bag Co. v. Eastern
Paper Bag Co., 210 U.S. 405, 419 (1908); Cimiotti Unhairing Co. v.
American Fur Ref. Co., 198 U.S. 399, 410 (1905). Accordingly, "resort
must be had in the first instance to the words of the claim" and words "will
be given their ordinary and accustomed meaning, unless it appears that the
inventor used them differently." Envirotech Corp. v. Al George, Inc., 730
F.2d 753, 759 (Fed. Cir. 1984). Second, it is equally "fundamental that
claims are to be construed in the light of the specification and both are to be
read with a view to ascertaining the invention." United States v. Adams, 383
U.S. 39, 49 (1966).
Furthermore, the general claim construction principle that limitations
found only in the specification of a patent or patent application should not be
imported or read into a claim must be followed. See In re Priest, 582 F.2d
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33, 37 (CCPA 1978). One must be careful not to confuse impermissible
imputing of limitations from the specification into a claim with the proper
reference to the specification to determine the meaning of a particular word
or phrase recited in a claim. See E.I. du Pont de Nemours & Co. v. Phillips
Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir.), cert. denied, 488 U.S. 986
(1988). What we are dealing with in this case is the construction of the
limitations recited in the appealed claims.

IV. ANALYSIS
35 U.S.C. § 112, First Paragraph: Written Description
With respect to the written description rejection of each of the three
independent claims, Appellants argue that the written description rejections
are clearly erroneous as a matter of law because the level of ordinary skill in
the art was not discussed, much less determined by the Examiner. Here, we
find that the Examiner's lack of an express statement of the level of ordinary
skill is not fatal to the written description rejection since in Appellants'
arguments at pages 9 to 10 of the Brief clearly recognizes the level of skill
in the relevant art with respect to Zisapel reference. Therefore, we address
the Examiner’s rejection based upon the Examiner's finding of fact that
Appellants' Specification is silent as to the totality of disclosure with respect
to the negative limitation. In the Examiner’s Answer at pages 18-19, the
Examiner addresses the Appellants' disclosure and the Examiner finds that
no express support for the negative limitation "without regard to the router's
proximity to the server." We agree with the Examiner that the exemplary
discussions at page 10 of Appellants' Specification do not show that the
Appellants had possession of every embodiment which would be covered by
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the negative claim limitation. Therefore, we find Appellants' lacked written
description support for each of the independent claims containing the
negative limitation "without regard to the router's proximity to the server,"
and we sustain the rejection of independent claims 1, 8, and 12 and their
respective dependent claims.
Appellants argue that the Examiner's written description rejection is
further wrong on the facts. (App. Br. 9). Appellants argue that Zisapel sets
forth what one of ordinary skill in the art would have been familiar with
including hop count and geographic location proximity measures which
were known to the person of ordinary skill in the art. (App. Br. 9).
Appellants argue that one of ordinary skill in the art would understand that
geographic location and hop count can be used to measure the proximity of
the server and from Appellants' Specification at page 10, the skilled artisan
would understand that these parameters are not required in every instance
because hop count and geographic location are merely a preference as
evidenced by the use of “such as” and “may.” Appellants argue that one of
ordinary skill would understand that IP address election may be made in
some cases with regard to proximity and in other cases is made without
regard to server proximity. (App. Br. 9-11). While we agree with
Appellants’ analysis, we disagree with Appellants' conclusion that the
totality of all situations covered by the negative limitation are clearly
disclosed and Appellants had possession thereof at the time the application
was filed. If this were so, then the prior art teachings of Zisapel would
necessarily teach and fairly suggest the claimed invention since they show
and teach exemplary embodiments using proximity and others without.
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Here, we find that Appellants have not shown error in Examiner’s
initial showing of a lack of written description for the negative limitation.
Therefore, we will sustain the written description rejection of independent
claims 1, 8, and 12 and their respective dependent claims.

35 U.S.C. § 112, First Paragraph: Enablement
With respect to the Examiner's rejection of each of the independent
claims based upon a lack of enablement, we find that one of ordinary skill in
the relevant art of domain name resolution would have been able to make
and use the claimed invention without undue experimentation with respect to
the negative limitation without regard to the router’s proximity to the server.
Therefore, we will not sustain the rejection of independent claims 1, 8, and
12 and their respective dependent claims.

35 U.S.C. § 103(a): Obviousness
With respect to the Examiner's rejection based upon obviousness, the
Examiner maintains that the system of Zisapel teaches IP address selection
"without regard to the router's proximity to the server" by using the F
content function. (Ans. 8). Here, Zisapel teaches either the use of proximity
or a second shortest route or in column 7 whereby proximity necessarily is
not used as a determination factor. Additionally, Zisapel teaches the content
Browder 508 presenting to the client 502 the most efficient pathway for
choosing his connection to the destination 504 based upon a path quality
factor Q1 and Q2 where the path quality factor is based upon a function of
traffic load; packet loss; and link pricing which do not necessarily involve
proximity to the server. Therefore, we agree with the Examiner that Zisapel
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does not teach a requirement of the use of proximity and teaches and fairly
suggests the use of many factors in the determination other than proximity.
Appellants further argue that the references were not properly
combined in the rejection. (App. Br. 13-17). Appellants contend that the
router clustering system of Bommareddy is not directed to domain name
resolution and that the specific field of Bommareddy is not the same field of
domain name resolution. Appellants opine that one who seeks to improve
domain name resolution would not have been led to Bommareddy and to
pick out one feature from among the dozens mentioned in Bommareddy.
(App. Br. 15). Appellants contend that the pinging of the router to check the
health is a central thrust of clustering routers as taught by Bommareddy.
(App. Br. 16). We disagree with Appellants' contention and find that
Zisapel teaches that managing of the router and by the content router
typically depends on a number of factors including the availability of the
path. One such manner determining availability is taught and fairly
suggested by Bommareddy which is pinging the routers. Therefore, we do
not find Appellants' argument of a lack of motivation or suggestion for the
combination to be persuasive of error in the Examiner's initial showing of
obviousness. Appellants argue that the use of the Bommareddy reference
was driven by using the claims as a blueprint and to reconstruct Appellants
claimed invention based upon hindsight reconstruction. (App. Br. 16). We
disagree as discussed above and find sufficient motivation for the
combination.
Appellants argue that Zisapel strongly teaches away from domain
name resolution IP address selections which were based primarily or solely
on the server or proximity. (App. Br. 17). Here, we disagree with
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Appellants and do not find any specific "teaching away" in Zisapel. While
Zisapel discusses proximity more than the other topics or factors, we find
that there is not a specific teaching away from proximity and that it is only
one factor which may be used or not used. Therefore, we do not find
Appellants' argument to show error in the Examiner's initial showing of
obviousness of independent claims 1, 8, and 12, and we will sustain the
rejection thereof. Since Appellants have not set forth separate arguments for
the patentability of the dependent claims, we will group those claims with
their respective independent claims.

V. CONCLUSION
For the aforementioned reasons, Appellants have not shown that the
Examiner erred in rejecting independent claims 1, 8, and 12 under written
description. For the aforementioned reasons, Appellants have shown that
the Examiner erred in rejecting independent claims 1, 8, and 12 under
enablement. For the aforementioned reasons, Appellants has not shown that
at the Examiner erred in rejecting independent claims 1, 8, and 12 under
obviousness.

VI. ORDER
We affirm the written description rejection of claims 1-10 and 12-21;
we reverse the enablement rejection of claims, 1-10 and 12-21; and we
affirm the obviousness rejections of claims 1-10 and 12-21.

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

AFFIRMED

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