12056445 (P.T.A.B. Jun. 16, 2014)

Ex Parte Diab et al

Patent Trial and Appeal BoardJun 16, 2014

12056445 (P.T.A.B. Jun. 16, 2014)

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. 12/056,445 03/27/2008 Wael William Diab BU6857/BCOM.5070000 9577 34611 7590 06/16/2014 LAW OFFICE OF DUANE S. KOBAYASHI P.O. Box 4160 Leesburg, VA 20177 EXAMINER BARTELS, CHRISTOPHER A. ART UNIT PAPER NUMBER 2184 MAIL DATE DELIVERY MODE 06/16/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WAEL WILLIAM DIAB and HOWARD MILLARD FRAZIER ____________________ Appeal 2011-010281 Application 12/056,445 Technology Center 2100 ____________________ Before ROBERT E. NAPPI, CAROLYN D. THOMAS, and DEBRA K. STEPHENS, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010281 Application 12/056,445 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Introduction According to Appellants, the claims are directed to method and system for a USB Ethertype to tunnel USB over Ethernet (Abstract). Exemplary Claim Claim 1, reproduced below, is representative of the claimed subject matter: 1. A method for enabling communication of information, the method comprising: reserving resources of an Ethernet network for communication of USB traffic; encapsulating said Universal Serial Bus (USB) traffic into one or more Ethernet frames that comprise one or more fields, the contents of which identify that said one or more Ethernet frames comprise USB traffic; and communicating said one or more Ethernet frames over one or more links of said network utilizing said reserved resources. REFERENCES McAlear US 6,697,372 B1 Feb. 24, 2004 Saint-Hilaire Zimman Kahn US 2004/0090984 A1 US 2007/0083604 A1 US 2007/0265973 A1 May 13, 2004 Apr. 12, 2007 Nov. 15, 2007 Appeal 2011-010281 Application 12/056,445 3 REJECTIONS The Examiner made the following rejections: (1) Claims 1-6, 10-15, and 19-24 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Saint-Hilaire (Ans. 4-9). (2) Claims 7, 16, and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hilaire and Zimman (Ans. 9-11). (3) Claims 8 and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hilaire and McAlear (Ans. 12-13). (4) Claims 9, 18, and 27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hilaire and Kahn (Ans. 13-15). (5) Claim 26 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Hilaire, Zimman, and McAlear (Ans. 15-17). We have only considered those arguments Appellants actually raised in the Briefs. Arguments Appellants could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). ISSUE 1 35 U.S.C. § 102(b): Claims 1, 10, and 19 Appellants argue their invention is not anticipated by Saint-Hilaire because Saint-Hilaire allegedly does not teach “reserving resources of an Ethernet network for communication of USB traffic,” as recited in claim 1, and commensurately claimed in claims 10 and 19 (App. Br. 7-10). Appeal 2011-010281 Application 12/056,445 4 Issue 1: Has the Examiner erred in finding Saint-Hilaire discloses “reserving resources” as recited in claim 1? ANALYSIS Appellants argue Saint-Hilaire does not teach “reserving resources of an Ethernet network for communication of USB traffic” because this limitation is not inherent in Saint-Hilaire, as maintained by the Examiner (App. Br. 9). We are not persuaded by Appellants’ arguments. Appellants argue although Saint-Hilaire’s TCP/IP stack 220 is configured to handle both USB traffic and UPnP traffic, reserving resources for USB traffic is not inherent in Saint-Hilaire’s system because there is a potential for the network resources to be entirely consumed by UPnP traffic (id.). Notwithstanding this potential scenario, we determine during the times when Saint-Hilaire’s USB traffic is actively transmitted over an Ethernet network, the network resources required to transmit the USB traffic are necessarily reserved to permit the transmission. Furthermore, Saint-Hilaire expressly teaches some USB forwarding devices may not utilize UPnP or other similar discovery protocol, in which case, the UPnP stack 270 may be eliminated from the forwarding device 200 altogether (see Saint-Hilaire, ¶ [0031]). In view of this teaching, we find none of the traffic transmitted to or from the USB forwarding device 200 would be UPnP traffic, and any resources would be reserved for USB traffic. Additionally, Appellants argue the definition of “reserved” connotes future implications and not merely the current use of resources (App. Br. 9). Appeal 2011-010281 Application 12/056,445 5 Appellants cite Merriam-Webster’s Online Dictionary for defining “reserved” as “set apart or aside for future or special use” (id.). We are not persuaded Appellants’ proffered definition of “reserved” necessarily connotes future use. Indeed, the term “reserved,” as defined by Appellants, denotes setting apart or aside for future or special use. Accordingly, the claimed reserving of resources is not necessarily limited to reservations for future use—rather, the full scope of the claimed limitation “reserving” (or “reserve”) also encompasses reservations for present special use. We find Saint-Hilaire sets aside network resources for the “special use” of encapsulating USB traffic transmitted between a computer 510 and a USB forwarding device 200 via an Ethernet network 610, as illustrated in Figure 3 of Saint-Hilaire. For these reasons, we are not persuaded the Examiner erred in finding Saint-Hilaire discloses the invention as recited in independent claim 1 and in commensurately recited independent claims 10 and 19, not separately argued. Therefore, the Examiner did not err in rejecting claims 1, 10, and 19 under 35 U.S.C. § 102(b) for anticipation by Saint-Hilaire. ISSUE 2 35 U.S.C. § 102(b): Claims 4, 13, and 22 Appellants argue their invention is not anticipated by Saint-Hilaire because Saint-Hilaire allegedly does not teach “wherein said one or more fields comprise an Ethertype that distinguishes Ethernet frames comprising USB traffic from Ethernet frames that do not comprise USB traffic,” as Appeal 2011-010281 Application 12/056,445 6 recited in claim 4, and commensurately claimed in claims 13 and 22 (App. Br. 10-13). Issue 2: Has the Examiner erred in finding Saint-Hilaire discloses the disputed invention as claimed in claims 4, 13, and 22? ANALYSIS Appellants argue the claimed Ethertype, which distinguishes Ethernet frames comprising USB traffic from those that do not, is not inherent in Saint-Hilaire’s disclosure (App. Br. 12-13). Specifically, Appellants argue at least four other possibilities exist for enabling the TCP/IP stack 220 to determine whether to send a received frame to the control software module 242 or to the USB forwarding software 244 (Ans. 12). We have considered Appellants’ arguments, but we are not persuaded. Specifically, claims 4, 13, and 22 recite the one or more fields comprise an “Ethertype,” per se, which corresponds to data contained in the one or more fields. Although the Ethertype does distinguish frames comprising USB traffic from those that do not, the Ethertype does not impart functionality to or otherwise cause functional change in the claimed method, machine- readable storage medium, and system. Rather, we find the Ethertype is merely non-functional descriptive data that, according to the claims, is not utilized for any particular purpose or function. Moreover, the name given to the data, “Ethertype,” is not entitled to weight in the patentability analysis. See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential) (discussing non-functional descriptive material). The Examiner need not give patentable weight to descriptive material absent a new and unobvious Appeal 2011-010281 Application 12/056,445 7 functional relationship between the descriptive material and the substrate. See In re Lowry, 32 F.3d 1579, 1582-83 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (nonfunctional descriptive material cannot render nonobvious an invention that would have otherwise been obvious). See also Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff'd, 191 Fed.Appx. 959 (Fed. Cir. 2006). Accordingly, we sustain the Examiner’s rejection of claims 4, 13, and 22 under 35 U.S.C. § 102(b) for anticipation by Saint-Hilaire. ISSUE 3 35 U.S.C. § 102(b): Claims 5, 6, 14, 15, 23, and 24 Appellants argue their invention is not anticipated by Saint-Hilaire because Saint-Hilaire allegedly does not teach “wherein said one or more fields comprise one or more subtype fields,” as recited in claim 5, and commensurately claimed in claims 14 and 23 (App. Br. 13-16). Specifically, Appellants argue their invention is not anticipated by Saint-Hilaire because Saint-Hilaire allegedly does not teach “wherein said subtype fields comprise a bus identifier,” as recited in claims 6, 15, and 24 (App. Br. 16). Issue 3: Has the Examiner erred in finding Saint-Hilaire discloses “said one or more fields comprise one or more subtype fields,” as recited in claims 5, 14, and 23 and “said one or more subtype fields comprise a bus identifier,” as claimed in claims 6, 15, and 24? Appeal 2011-010281 Application 12/056,445 8 ANALYSIS We note that the recitations of “one or more fields comprise one or more subtype fields” and “said one or more subtype fields comprise a bus identifier” rely solely upon, respectively, a non-functional descriptive label of a data structure element per se and a non-functional descriptive label of data per se to patentably distinguish the claims over the prior art of record. The claimed elements, “subtype field” and “bus identifier,” do not impart functionality to or otherwise cause functional change in the claimed method, machine-readable storage, or system and therefore constitute non-functional descriptive material not entitled to any patentable weight for substantially the same reasons given for claims 4, 13, and 22 supra. Thus, we are not persuaded the Examiner erred in finding Saint-Hilaire discloses the invention as recited and accordingly, sustain the rejection of claims 5, 6, 14, 15, 23, and 24 under 35 U.S.C. § 102(b) for anticipation by Saint-Hilaire.1 Claims 2, 3, 7-9, 11, 12, 16-18, 20, 21, and 25-27 Appellants did not proffer separate arguments for claims 2, 3, 7-9, 11, 12, 16-18, 20, 21, and 25-27. Therefore, these claims fall with their respective independent claims. 1 We also note that Figure 5 of Saint-Hilaire teaches encapsulating bus protocol data within a network protocol packet. Appeal 2011-010281 Application 12/056,445 9 DECISION The Examiner’s rejection of claims 1-6, 10-15, and 19-24 under 35 U.S.C. § 102(b) as being anticipated by Saint-Hilaire is affirmed.2 The Examiner’s rejection of claims 7, 16, and 25 under 35 U.S.C. § 103(a) as being unpatentable over Saint-Hilaire and Zimman is affirmed. The Examiner’s rejection of claims 8 and 17 under 35 U.S.C. § 103(a) as being unpatentable over Saint-Hilaire and McAlear is affirmed. The Examiner’s rejection of claims 9, 18, and 27 under 35 U.S.C. § 103(a) as being unpatentable over Saint-Hilaire and Kahn is affirmed. The Examiner’s rejection of claim 26 under 35 U.S.C. § 103(a) as being unpatentable over Saint-Hilaire, Zimman, and McAlear is affirmed. 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). AFFIRMED msc 2 We have decided the appeal before us. However, should there be further prosecution with respect to claims 10-18, the Examiner’s attention is directed to In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), and Subject Matter Eligibility of Computer Readable Media, 1351 OFFICIAL GAZETTE U.S. PAT. & TRADEMARK OFF. 212 (Feb. 23, 2010).