Ex Parte Haley et al

Patent Trial and Appeal Board

Oct 24, 2016

12426632 (P.T.A.B. Oct. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/426,632 0412012009
106095 7590 10/26/2016
Baker Botts LLP
2001 Ross Avenue, 6th Floor
Dallas, TX 75201
FIRST NAMED INVENTOR
Ben Haley
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
063170.9549 5309
EXAMINER
RENNER, BRANDON M
ART UNIT PAPER NUMBER
2478
NOTIFICATION DATE DELIVERY MODE
10/26/2016 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):
PTOmaill@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BEN HALEY, CATHY FULTON, and DAVID JORDAN
Appeal2013-000411
Application 12/426,632
Technology Center 2400
Before ALLEN R. MacDONALD, KEVIN C. TROCK, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
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Application 12/426,632
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-7, 9-15, 17-23, and 25, which constitute all the
claims pending in this application. App. Br. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
Exemplary Claims 1
Exemplary claims 1 and 18 read as follows (emphasis added):
1. A passive method for computing network latency through
the use of flow records wherein the network comprises at least two
endpoint devices and at least one network infrastructure device, the
method comprising the step of:
receiving flow records from at least one device, said flow
records comprising at least two flows associated with a first
transmission sent from a first communications device and a second
transmission from a second communications device, said first
transmission comprising a connection set-up indicator and said second
transmission comprising a connection set-up acknowledgment
indicator; wherein the flow records comprise at least a start time
stamp and an end time stamp of the flow associated with said first
transmission and at least a start time stamp and an end time stamp of
the flow associated with said second transmission;
matching said at least two flows;
wherein said step of matching said at least two flows comprises
the steps of:
matching said at least two flows based on source IP
addresses and destination IP addresses associated with
each of said at least two flows;
1 Claim 18 as reproduced infra is the claim 18 on appeal. The amendment to
claim 18 (and claims 19 and 20) shown in Appellants' Claim Appendix has
not been entered by the Examiner and is not before us.
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matching said at least two flows based on the IP protocol
associated with each of said at least two flows;
matching said at least two flows based on source ports
and destination ports associated with each of said at least
two flows;
verifying that the start time stamp of the flow associated
with said first transmission occurs prior to the start time
stamp of the flow associated with said second
transmission;
verifying that the end time stamp of the flow associated
with said first transmission occurs after the start time
stamp of the flow associated with said second
transmission;
determining [an] intermediate-to-endpoint latency measure
based on said time stamps; and
storing said intermediate-to-endpoint latency measure on a
computer readable storage medium.
18. A system for passively computing network latency,
compnsmg:
a first endpoint communications device configured to send a
first transmission comprising a connection set-up indicator;
a second communications device configured to send a second
transmission in response to said first transmission, said second
transmission comprising a connection set-up acknowledgment
indicator;
at least one device having flow records, said flow records
comprising at least two flows associated with said first transmission
and said second transmission; wherein the flow records comprise at
least a start time stamp and an end time stamp of the flow associated
with said first transmission and at least a start time stamp and an end
time stamp of the flow associated with said second transmission;
a harvester configured to match said two flows, said harvester
matching said two flows based on:
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source IP addresses and destination IP addresses
associated with each of said at least two flows;
matching said at least two flows based on the IP protocol
associated with each of said at least two flows;
source ports and destination ports associated with each of
said at least two flows;
verifying that the start time stamp of the flow associated
with said first transmission occurs prior to the start time
stamp of the flow associated with said second
transmission;
verifying that the end time stamp of the flow associated
with said first transmission occurs after the start time
stamp of the flow associated with said second
transmission; and
said harvester further configured to determine an
intermediate-to-endpoint latency measure based on said time
stamps associated with each of said at least two flows.
References and Rejections on Appeal
1. The Examiner rejected claims 18-23 and 25 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant regards as the
invention. 2
2. The Examiner rejected claims 1, 2, 4--7, 9-15, 17-20, 22, 23,
and 25 under 35 U.S.C. § 103(a) as being unpatentable over the combination
oflakobashvili et al. (US 2006/0028999 Al; Feb. 9, 2006), Metzger et al.
2 Separate patentability is not argued for claims 19-23 and 25. Except for
our ultimate decision, the Examiner's rejection of these claims is not
discussed further herein.
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(US 2006/0239201 Al; Oct. 26, 2006), and Boyd et al. (US 2010/0036895
Al; Feb. 11, 2010). 3
3. The Examiner rejected claims 3 and 21under35 U.S.C.
§ 103(a) as being unpatentable over the combination of Iakobashvili,
Metzger, Boyd, and Givoly et al. (US 2003/0177212 Al; Sept. 18, 2003).4
Appellants' Contentions5
1. Appellants contend that the Examiner erred in construing claim 18
under 35 U.S.C. § 112, sixth paragraph, because:
The Examiner has argued that the claimed terms
"harvester" and "device" are nonstructural and thus 35 U.S.C.
§ 112, sixth paragraph applies to the terms. Appellants
respectfully disagree.
App. Br. 14.
2. Appellants further contend that the Examiner erred in rejecting
claim 18 under 35 U.S.C. § 112, second paragraph, as being indefinite
because:
First, as shown above, the true test for indefiniteness
under 35 U.S.C. § 112 is "whether the claim meets the
threshold requirements of clarity and precision, not whether
more suitable language or modes of expression are available."
M.P.E.P. § 2173.02. This test, as shown above, is aptly met by
the limitations "harvester" and "device" when read in light of
3 Separate patentability is not argued for claims 2, 4--7, 9-15, 17-20, 22, 23,
and 25. Except for our ultimate decision, the Examiner's rejection of
these claims is not discussed further herein.
4 As to this rejection, our decision as to the rejection of claim 1 is
determinative. Therefore, except for our ultimate decision, the rejection of
claims 3 and 21 is not discussed further herein.
5 These contentions are determinative as to the rejections on appeal.
Therefore, Appellants' other contentions are not discussed herein.
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the specification. Consequently, the Examiner's conclusion of
indefiniteness under 35 U.S.C. § 112, second paragraph is
incorrect and its basis in the application of 35 U.S.C. § 112,
sixth paragraph is moot.
Second, as shown above, when the claims limitations
"harvester" and "device" are read in light of the specification as
required under M.P.E.P. §§ 2173.02 and 2111, each describe
sufficient structure for one of skill in the art to understand how
to make and use a harvester to perform the functions described
in the claim. Consequently, the terms are not, as argued by the
inventor, "non structural," and 35 U.S.C. § 112, sixth paragraph
is inapplicable.
App. Br. 14--15.
3. Appellants further contend that the Examiner erred in rejecting
claim 18 under 35 U.S.C. § 112, second paragraph, because:
In addition, the specification details how embodiments
such as Claim 18 may be implemented. Specifically, paragraph
[0081] of the application as filed states that:
[T]he present embodiments may be implemented
in an application specific integrated circuit (ASIC),
a microcontroller, a digital signal processor, or
other electronic circuits designed to perform the
functions described herein. Moreover, the process
and features here described may be stored in
magnetic, optical, or other recording media for
reading and execution by such various signal and
instruction processing systems.
Such information would be used by one of skill in the art to
understand how to make and use a harvester to perform the
functions described in the claim. Consequently, one of skill in
the art would understand what is claimed by a "harvester" . . .
-and furthermore, the structure thereof-when Claim 18 is read
in view of these portions of the specification.
App. Br. 14, emphasis added.
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4. Appellants further contend that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because:
The Examiner argued that Boyd teaches the limitations of
Claim 1 at paragraphs [0006] and [0008], alleging that Boyd
"teaches a starting timestamp of a first epoch is before the
starting timestamp of a second epoch and the ending timestamp
of the first epoch . . . is after the start timestamp of the second
epoch" and that the epochs divide the data into first and second
transmissions. Office Action at 7. Further, in the Advisory
Action at 2, the Examiner continues to conflate "epochs" with
transmissions themselves.
Appellants respectfully disagree because the epochs of
Boyd discussed by the Examiner are not transmissions or
flows as alleged but mere pairs of timestamps, described as "a
period of time between a starting and an ending timestamp
selected from the timestamps." Boyd at paragraph [0006].
App. Br. 20, emphasis added.
Issues on Appeal
Did the Examiner err in provisionally rejecting claim 18 as being
indefinite?
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred.
As to Appellants' above contentions 1-3, the Federal Circuit has
established use of the term "means" is central to the analysis of whether a
claim limitation should be interpreted in accordance with 35 U.S.C. § 112,
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sixth paragraph. 6 Use of the word "means" creates a rebuttable presumption
that the inventor intended to invoke 35 U.S.C. § 112, sixth paragraph,
whereas failure to use the words "means for" creates a rebuttable
presumption that the inventor did not intend the respective claim limitations
to be governed by 35 U.S.C. § 112, sixth paragraph. Personalized Media
Commc'ns, LLCv. Int'! Trade Comm'n, 161F.3d696, 703--4 (Fed. Cir.
1998). However, this presumption against its invocation can be overcome
and 35 U.S.C. § 112, sixth paragraph applied, if the "claim term fails to
'recite [] sufficiently definite structure' or else recites 'function without
reciting sufficient structure for performing that function."' Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en bane) (quoting
Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).
First, we determine claim 18 does not recite the terms "means for" in
each element; rather, the harvester limitation recites an element "configured
to" achieve a result "based on" performing a series of functions. More
specifically, the limitation recites (emphases added): "a harvester configured
to match said two flows ... based on ... matching ... verifying
... verifying ... and ... further configured to determine an intermediate-to-
endpoint latency measure" (claim 18). Thus, we look to determine if the
presumption against invocation of 35 U.S.C. § 112, sixth paragraph has been
overcome. Within claim 18, this limitation fails to recite sufficiently definite
structure; rather, the limitation recites functions without reciting sufficient
6 An element in a claim for a combination may be expressed as a means or
step for performing a specified function without the recital of structure,
material, or acts in support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts described in the
specification and equivalents thereof. (Emphasis added).
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structure for performing the functions (Williamson, 792 F .3d at 1348
(citation omitted)). We must determine "whether the term is one that is
understood to describe structure, as opposed to a term that is simply a nonce
word or a verbal construct that is not recognized as the name of structure and
is simply a substitute for the term 'means for.'" Lighting World, Inc. v.
Birchwood Lighting, Inc., 382 F.3d 1354, 1360 (Fed. Cir. 2004).
We have looked to both general and subject matter specific
dictionaries 7 and we find no evidence that the term "harvester" has achieved
recognition as a noun denoting structure. Similarly, our review of the record
and search of the prior art finds no evidence that this term has achieved
recognition as a noun denoting structure. Therefore, based upon our
consultation of dictionaries, a review of the record before us, and a search of
the prior art patents in this field, we conclude that the term "harvester" is not
an art-recognized structure to perform the claimed functions, and claim 18
does not recite any other structure that would perform these claimed
functions.
Moreover, Appellants have not persuaded us the term "harvester"
identifies or connotes a definite structure. More specifically, we are not
persuaded the term "harvester" is used in "common parlance or by persons
of skill in the pertinent art to designate structure," such that it connotes
sufficient structure to avoid the application of 35 U.S.C. § 112, sixth
paragraph (Lighting World, 382 F.3d at 1359, overruled on other grounds by
Williamson, 792 F.3d at 1348--49). Accordingly, we determine the
7 Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002;
Computer Science and Communications Dictionary, Volume 2 By Martin H.
Weik, 2000; The American Heritage Dictionary of the English Language,
4th edition, 2006.
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"harvester" limitation invokes the application of 35 U.S.C. § 112, sixth
paragraph because the limitation fails to describe sufficient structure and
instead, recites an abstract element "configured to" (i.e., "for") causing
actions (Advanced Ground Information Systems, Inc. v. Life360, Inc., 830
F.3d 1341, 1347 (Fed. Cir. 2016)).
Second, as we have determined the recited "harvester" limitation
invokes 35 U.S.C. § 112, sixth paragraph, we next "construe the disputed
claim term by identifying the corresponding structure, material, or acts
described in the specification to which the claim term will be limited"
(Robert Bosch, LLC v. Snap-On, Inc., 769 F.3d 1094, 1097 (Fed. Cir. 2014)
(internal quotation marks and citation omitted)). If Appellants'
Specification fails to set forth adequate disclosure of the structure
corresponding to the claimed function, Appellants will have failed to
particularly point out and distinctly claim the invention, thereby rendering
the claim indefinite. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371,
1382 (Fed. Cir. 2009) (internal quotation marks and citation omitted).
Thus, for the "harvester" limitation, we determine if Appellants'
Specification provides sufficient disclosure. Appellants assert the recited
"harvester" is supported by paragraph 81 of Appellants' Specification (App.
Br. 14). Further, Appellants' Specification at paragraph 43 indicates that
"[i]n one embodiment, harvester 70 is implemented through a DELLâ„¢
Poweredgeâ„¢ 1950 Server." Although Appellants argue paragraph 81 of
their Specification discloses the structure of the recited "harvester" (App. Br.
14), we are not persuaded such structure is sufficiently disclosed by
paragraph 81 alone. Instead, we determine the claim limitation is a
computer-implemented claim limitation. For a computer-implemented claim
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limitation interpreted under 35 U.S.C. § 112, sixth paragraph, the
corresponding structure must include the algorithm needed to transform the
general purpose computer or processor disclosed in the specification into the
special purpose computer programmed to perform the disclosed algorithm
(Aristocrat Techs. Australia Pty Ltd. v. Int'! Game Tech., 521F.3d1328,
1333 (Fed. Cir. 2008); see also Function Media, L.L.C. v. Google, Inc., 708
F.3d 1310, 1318 (Fed. Cir. 2013)). An algorithm is defined, for example, as
"a finite sequence of steps for solving a logical or mathematical problem or
performing a task" (MICROSOFT Computer Dictionary 23 (5th ed. 2002)
(see also Merriam-Webster's Collegiate Dictionary 30 (11th ed. 2007)
defining algorithm as "a step-by-step procedure for solving a problem or
accomplishing some end esp. by a computer")). An applicant may express
the algorithm in any understandable terms including as a mathematical
formula, in prose, in a flow chart, or "in any other manner that provides
sufficient structure" (Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323,
1340 (Fed. Cir. 2008)).
Thus, because we conclude the "harvester" limitation recites a
computer-implemented function, we look to Appellants' Specification for an
algorithm for performing the claimed functions of the harvester. "An
indefiniteness rejection under§ 112, second paragraph, is appropriate if the
specification discloses no corresponding algorithm associated with a
computer or processor." Aristocrat, 521 F.3d at 1337-38. However, we
determine the Specification at paragraphs 49-52 provides such an algorithm,
part of a general purpose computer, capable of performing the claimed
functions of the harvester. Unlike the complex equation in Aristocrat which
was "merely a mathematical expression that describe[ d] the outcome of
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performing the function" (521 F.3d at 1334), the equations at paragraphs 49-
52 are descriptive of simple computer functions and the equations form "an
algorithm that describes how the function is performed" (Id.).
Accordingly, we conclude the "harvester" claim limitation is
construed under 35 U.S.C. § 112, sixth paragraph, and is definite under 35
U.S.C. § 112, second paragraph.
As to Appellants' above contention 4, we agree. We conclude,
consistent with Appellants' argument, there is insufficient articulated
reasoning to support the Examiner's conclusion. The Examiner relies on
Boyd to teach first and second transmissions. Advisory Act. 2. We disagree
with this finding.
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 18-23 and 25 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
(2) Appellants have established that the Examiner erred in rejecting
claims 1-7, 9-15, 17-23, and 25 as being unpatentable under 35 U.S.C.
§ 103(a).
(3) On this record, these claims have not been shown to be
unpatentable.
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DECISION
The Examiner's rejection of claims 1-7, 9-15, 17-23, and 25 as being
unpatentable under 35 U.S.C. § 103(a) is reversed.
The Examiner's provisional rejection of claims 18-23 and 25 under
35 U.S.C. § 112, second paragraph, is reversed.
REVERSED
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