Ex Parte Gupta et al

Board of Patent Appeals and Interferences

Jun 15, 2009

10420153 (B.P.A.I. Jun. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SAMEER GUPTA and HIMANSHU MAHENDRA THAKER
____________
Appeal 2008-004866
Application 10/420,1531
Technology Center 2400
____________
Decided:2 June 16, 2009
____________

Before JAMES D. THOMAS, JEAN R. HOMERE, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on April 22, 2003. The real party in interest is LSI Logic
Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 9, 13, 16, and 17. Claims 10 through 12, 14,
and 15 are objected to as being dependent upon a rejected claim, but would
be allowable if rewritten in independent form to include the limitations of
their respective base claims and any other intervening claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and apparatus for improved pointer
generation when implementing virtual concatenation in a data
communication network. (Spec. 2, ll. 25-26.) In particular, Figure 4 depicts
a virtual concatenation circuit that splits a virtual concatenation stream into a
plurality of data buffers (3101,…310x). (Spec. 8, ll. 6-7.) Each data buffer
works in conjunction with a corresponding counter (4101,…410x) to track
pointer adjustments. (Spec. 10, 13-23.) The virtual concatenation circuitry
utilizes a pointer generation algorithm to substantially equalize the net
pointer adjustments for the incoming and outgoing data buffers
(3101,…310x). (Spec. 11, ll. 1-22.) Thus, when the data buffers
(3101,…310x) are repackaged into an aligned virtual concatenation stream,
the overflow and underflow conditions that account for the differential delay
compensation of respective data buffers are alleviated or eliminated. (Spec.
3, ll. 17-19; Spec. 11, ll. 22-25; Spec. 12, ll. 16-18.)
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Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. An apparatus for use in implementing virtual concatenation
operations in a data communication network, the apparatus comprising:

a network element comprising virtual concatenation circuitry;

the virtual concatenation circuitry being operative: (i) to maintain, for
each of a plurality of member streams of a virtual concatenation stream, a
corresponding counter which tracks pointer adjustments for that member
stream; and (ii) to generate pointers based on values of the counters so as to
substantially equalize incoming and outgoing pointer adjustments for the
member streams at the network element.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatenability:
Susnow US 6,594,329 B1 Jul. 15, 2003
(filed Nov. 1, 1999)

Stadler US 6,842,787 B2 Jan. 11, 2005
(filed Nov. 10, 2001)

Rejection on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 1 through 9, 13, 16, and 17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Stadler and Susnow.

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Appellants’ Contentions
1. Appellants contend that Stadler’s disclosure of a multiframe
counter MFZ does not teach a counter which traces pointer adjustments for a
member stream. (App. Br. 5-6; Reply Br. 2.) In particular, Appellants argue
that Stadler teaches away from the claimed invention because it discloses an
alternative technique. (App. Br. 8.)
2. Appellants contend that Susnow does not disclose generating
pointers based on respective pointer adjustment counters in a manner that
equalizes incoming and outgoing pointer adjustments for member streams.
(App. Br. 6; Reply Br. 3.) In particular, Appellants argue that Susnow
teaches away from the claimed invention because it discloses a different
technique that involves determining when a current read pointer corresponds
to a synchronized write pointer. (App. Br. 6.)
3. Appellants contend that there is no motivation for the proffered
combination. (App. Br. 7; Reply Br. 4.)
4. Appellants contend that neither Stadler nor Susnow teach the
limitations of dependent claims 2 through 9. (App. Br. 9-13; Reply Br. 5-6.)
Examiner’s Findings/Conclusions
1. The Examiner finds that Stadler’s disclosure of a multiframe
counter MFZ that helps adjust the write and read pointers teaches a counter
which traces pointer adjustments for a member stream. (Ans. 7.)
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2. The Examiner finds that Susnow’s disclosure of synchronizing
the writer pointer and read pointer teaches substantially equalizing incoming
and outgoing pointer adjustments for the member streams. (Ans. 7-8.)
3. The Examiner finds that Stadler and Susnow are analogous
prior art and there is sufficient rationale for the proffered combination.
(Ans. 8.) Further, the Examiner concludes that the proffered combination
discloses known elements, that when combined, are capable of achieving a
predictable result. (Ans. 8-9.)
4. The Examiner finds that the proffered combination teaches the
limitations of dependent claims 2 through 9. (Ans. 10.)

II. ISSUES
Have Appellants shown that the Examiner erred in concluding that the
combination of Stadler and Susnow renders claim 1 unpatentable? In
particular, the issues turn on the following:
1. Whether Stadler teaches a counter which traces pointer
adjustments for a member stream?
2. Whether Susnow teaches generating pointers based on values of
the counters so as to substantially equalize incoming and outgoing pointer
adjustments for the member streams at the network elements?
3. Whether an ordinarily skilled artisan would have found
sufficient rationale for the proffered combination?
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4. Whether the proffered combination teaches the limitations of
dependent claims 2 through 9?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Stadler
1. Stadler discloses a method of converting virtually concatenated
data streams into continuous concatenated data streams. (Col. 1, ll. 13-15.)
2. As depicted in Figure 3, a device converts virtually
concatenated partial data streams by allowing the data streams to pass into
pointer interpreters (PI1 and PI2). (Col. 4, ll. 3-16.) Each pointer interpreter
(PI1 and PI2) contains a multiframe counter MFZ. (Col. 4, ll. 16-17.) The
multiframe counter MFZ measures the time shift using the H4-byte and
filters the multiframe indicator by generating a valid sequence. (Col. 5, ll.
47-63.) Further, a buffer memory (ES1 or ES2) works in conjunction with
the pointer generator (PG1 or PG2) to evaluate the H4-byte measurement
and adjust the write and read pointers accordingly. (Col. 6, ll. 6-37.) Thus,
the local pointer generators are synchronized with respect to each other.
(Col. 4, ll. 21-25.)
Susnow
3. Susnow relates to the transfer of information in a computer
network. (Col. 1, ll. 5-10.) In particular, Susnow discloses an elastic buffer
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designed to absorb delay variations and synchronize a data transmitter with a
data receiver. (Col. 1, ll. 58-65.)
4. As depicted in Figure 4, a writer pointer generation unit (330)
and read pointer generation unit (360) work in conjunction with a
synchronization unit (340) to synchronize the write and read pointers. (Col.
7, ll. 14-35.)
5. Susnow addresses the problem of data overflow and underflow.
(Col. 1, l. 67 through Col. 2, l. 1.) In particular, Susnow discusses the need
to ensure that data is read from a buffer in the same order that it was written
to the buffer. (Col. 2, ll. 2-3.) Susnow solves this problem by using an
elastic buffer in conjunction with a write control mechanism and a read
control mechanism to prohibit data overflow/underflow in memory. (Col. 2,
ll. 27-41.)

IV. PRINCIPLES OF LAW
Claim Construction
"[T]he words of a claim 'are generally given their ordinary and
customary meaning.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (internal citations omitted). "[T]he ordinary and
customary meaning of a claim term is the meaning that the term would have
to a person of ordinary skill in the art in question at the time of the invention,
i.e., as of the effective filing date of the patent application." Id. at 1313.
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"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)). Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d at 1323.

Obviousness
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
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., 550 U.S. 398, 406 (2007).

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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," and discussed circumstances in which a patent might be determined to
be obvious. Id. at 415 (citing Graham v. John 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. at 416.
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 417.
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, 550 U.S. at 416).
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, 550 U.S. at 418-
19).
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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 test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d at 987-88; In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991);
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, in evaluating such
references it is proper to take into account not only the specific teachings of
the references but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826
(CCPA 1968).
In identifying a reason that would have prompted a person of ordinary
skill in the relevant field to combine the prior art teachings, the Examiner
must show some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. KSR, 550 U.S. at 418.

Teaching Away
“What the prior art teaches and whether it teaches toward or away
from the claimed invention . . . is a determination of fact.” Para-Ordnance
Mfg., Inc. v. SGS Importers Int'l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995).
“A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
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path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994). Teaching an alternative or equivalent method, however, does not
teach away from the use of a claimed method. In re Dunn, 349 F.2d 433,
438 (CCPA 1965).

V. CLAIM GROUPING
Appellants argue the rejection of claims 1, 13, 16, and 17 as a group.
Further, Appellants separately argue the patentability of claims 2 through 9.
In accordance with 37 C.F.R. § 41.37(c)(1)(vii), claims 13, 16, and 17 stand
and fall with claim 1. We will separately address the rejections of claims 2
through 9.

VI. ANALYSIS
Claim 1
1. Stadler
Independent claim 1 recites, in relevant part, a virtual concatenation
circuitry being operative: (i) to maintain…a corresponding counter which
tracks pointer adjustments for that member stream….
As detailed in the Findings of Fact section, Stadler discloses a device
that converts virtually concatenated partial data streams utilizing pointer
interpreters (PI1 and PI2) containing multiframe counters MFZ. (FF 2.)
The multiframe counters MFZ, buffer memories (ES1 or ES2), and pointer
generators (PG1 or PG2) work in conjunction to adjust the write and read
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pointers accordingly, thereby synchronizing the local pointer generators with
respect to each other. (FF 2.) We find that Stadler’s multiframe counter
MFZ adjusts pointers for data streams. In particular, we find that Stadler’s
use of counters in converting data streams, and adjusting pointers associated
therewith, teaches or suggests a multiframe counter MFZ that adjusts
pointers for data streams, amounting to a corresponding counter which
tracks pointer adjustments for a respective member stream. We therefore do
not agree with Appellants that Stadler’s disclosure of a multiframe counter
MFZ does not teach a counter which traces pointer adjustments for a
member stream. (App. Br. 5-6; Reply Br. 2.)
Further, Appellants argue that Stadler teaches away from the claimed
corresponding counter which tracks pointer adjustments for a member
stream. (App. Br. 8.) We do not agree. As set forth above, we find that
Stadler discloses a multiframe counter MFZ that adjusts pointers for data
streams. Appellants have shown nothing in Stadler that would have
discouraged an ordinarily skilled artisan from trying to utilize a multiframe
counter MFZ to track pointer adjustments for a member stream. Appellants
have not pointed to an explicit disclosure within Stadler stating that the
multiframe counter MFZ cannot track pointer adjustments for a member
stream. Instead, as admitted by Appellants, Stadler’s disclosure of a
multiframe counter MFZ that adjusts pointers for partial data streams is an
alternative or equivalent teaching to a corresponding counter which tracks
pointer adjustments for that member stream. (App. Br. 8.) Therefore,
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Appellants have not shown that Stadler’s disclosure of a multiframe counter
MFZ that adjusts pointers for data streams teaches away from the claimed
corresponding counter which tracks pointer adjustments for a member
stream.
2. Susnow
Independent claim 1 recites, in relevant part, a virtual concatenation
circuitry being operative: (ii)… so as to substantially equalize incoming and
outgoing pointer adjustments for the member streams at the network
element.
As detailed in the Findings of Fact section, Susnow discloses an
elastic buffer designed to absorb delay variations and to synchronize a data
transmitter with a data receiver. (FF 3.) In particular, Susnow discloses that
the elastic buffer contains a writer pointer generation unit (330), a read
pointer generation unit (360), and a synchronization unit (340) that work in
conjunction to synchronize the write and read pointers. (FF 4.) We find that
Susnow’s elastic buffer synchronizes the write and read pointers for a data
stream. In particular, we find Susnow’s elastic buffer (that synchronizes the
write and read pointers of a data stream) substantially equalizes incoming
and outgoing pointer adjustments for member streams at the network
element. We therefore do not agree with Appellants that Susnow does not
disclose generating pointers based on respective pointer adjustment counters
in a manner that equalizes incoming and outgoing pointer adjustments for
member streams. (App. Br. 6; Reply Br. 3.)
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Further, Appellants argue that Susnow teaches away from the claimed
equalizing of incoming and outgoing pointer adjustments for member
streams at the network element. (App. Br. 6.) We do not agree. As set forth
above, we find that Susnow discloses an elastic buffer that synchronizes the
write and read pointers for a data stream. Appellants have shown nothing in
Susnow that would have discouraged an ordinarily skilled artisan from
trying to equalize incoming and outgoing pointer adjustments for member
streams at the network element using an elastic buffer. Appellants have not
pointed to an explicit disclosure within Susnow stating that an elastic buffer
cannot equalize incoming and outgoing pointer adjustments for member
streams at the network element. Instead, as admitted by Appellants,
Susnow’s disclosure of an elastic buffer that synchronizes the write and read
pointers for a data stream is an alternative or equivalent teaching to
equalizing incoming and outgoing pointer adjustments for member streams
at the network element. (App. Br. 6.) Therefore, Appellants have not shown
that Susnow’s disclosure of an elastic buffer that synchronizes the write and
read pointers for a data stream teaches away from the claimed equalizing
incoming and outgoing pointer adjustments for member streams at the
network element.

3. Rationale to Combine
As set forth in the Findings of Fact section, Stadler discloses a method
of converting virtually concatenated data streams into continuous
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concatenated data streams utilizing pointer interpreters (PI1 and PI2)
containing multiframe counters MFZ. (FF 1, 2.) Further, Susnow
compliments Stadler by disclosing an elastic buffer that contains a writer
pointer generation unit (330), a read pointer generation unit (360), and a
synchronization unit (340) that work in conjunction to synchronize the write
and read pointers. (FF 3, 4.) Thus, we find that Stadler and Susnow disclose
prior art elements that perform their ordinary functions to predictably result
in an apparatus and method of implementing virtual concatenation
operations utilizing member streams with corresponding counters to
synchronize incoming and outgoing pointer adjustments. See KSR, 550 U.S.
at 418-419.
Assuming arguendo that the Examiner must articulate some additional
reasoning for combining the references, the Examiner provides ample
reasoning for the proffered combination. In particular, the Examiner
explained that it would have been obvious to an ordinarily skilled artisan at
the time of the invention to modify Stadler’s multiframe counter MFZ that
adjusts pointers for partial data streams with Susnow’s disclosure of an
elastic buffer that synchronizes the write and read pointers for a data stream
in order to prevent data loss by ensuring that data overflow/underflow in
memory is prohibited. (FF 5.) We find that the cited references are within
the same field of endeavor as the claimed invention because each reference
pertains to transfer of information in a computer network. (FF 1, 3.)
Therefore, Appellants have failed to show that the Examiner has provided
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insufficient rationale to warrant the proffered combination. (App. Br. 7;
Reply Br. 4-5.) It follows that Appellants have not shown that the Examiner
erred in concluding that the combination of Stadler and Susnow renders
independent claim 1 unpatentable.

Claims 2 through 9
Regarding dependent claims 2 through 9, we note that Appellants
generally allege that neither Stadler nor Susnow teach the claimed
limitations. (App. Br. 9-13; Reply Br. 5-6.) However, Appellants have not
presented any evidence to substantiate such allegations. Appellants have not
even attempted to compare and contrast the claimed invention with the cited
textual portions relied upon by the Examiner to establish the alleged
distinction. Appellants are reminded that a statement that merely points out
what the claim recites will not be considered as an argument for separate
patentability of the claim. 37 C.F.R. § 41.37(c)(1)(vii). Appellants are
further reminded that a general allegation that the claims define a patentable
invention without specifically pointing out how the language of the claims
patentably distinguishes them from the references does not constitute a
persuasive response. 37 C.F.R. § 1.111(b). Therefore, Appellants’
arguments are unpersuasive.

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VII. CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in concluding that
the combination of Stadler and Susnow renders claims 1 through 9, 13, 16,
and 17 unpatentable under 35 U.S.C. § 103(a).

VIII. DECISION
We affirm the Examiner’s decision rejecting claims 1 through 9, 13,
16, and 17 as being unpatentable under 35 U.S.C. § 103(a).
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

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