Ex Parte Hulmani et al

Board of Patent Appeals and Interferences

Oct 6, 2009

10610246 (B.P.A.I. Oct. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte GIRISH HULMANI,
SYED MOHAMMED ALI, ARUL THANGARAJ,
SANDEEP BHATIA, and PRAMOD CHANDRIAH
_____________

Appeal 2009-001437
Application 10/610,246
Technology Center 2600
______________

Decided: September 7, 2009
_______________

Before KENNETH W. HAIRSTON, ROBERT E. NAPPI,
and KARL D. EASTHOM, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-5, 9-13, and 16-18. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm the Examiner’s rejections of these claims.

Appeal 2009-001437
Application 10/610,246

INVENTION
The invention is directed to a system for receiving packetized data.
The system has state logic to detect incoming packetized elementary stream
(PES) headers and a processor which, upon detection of a PES header,
interrupts the execution of a thread and loads the context associated with the
PES header. See page 4 of Appellants’ Specification. Claim 11 is
representative of the invention and reproduced below:
1. A system for processing packets, said system comprising:
state logic for detecting [PES] headers associated with the
packets, the packets comprising DirecTV transport packets;
a processor for loading contexts responsive to the state logic
detecting the [PES] headers; and
a buffer for storing the packets.

REFERENCE
Okamoto US 2004/0076194 A1 Apr. 22, 2004

REJECTIONS AT ISSUE
Claims 1-5, 9-13, and 16-182 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Okamoto. The Examiner’s rejection is on pages 3-4
of the Answer.

1 The Appeal Brief, filed June 15, 2006, the Response to Notice of Non-
Compliant Brief, filed March 23, 2007, and the Amended Reply Brief, filed
August 15, 2007, contain a previous version of the claims. We note that the
above listed Briefs all contain reference to the Amended Claims, filed on
October 11, 2005, and as such, these claims will be used for purposes of this
Opinion.
2 Claims 6-8 and 14-15 were cancelled in an Amendment After Non-Final,
filed October 11, 2005.
2

Appeal 2009-001437
Application 10/610,246

Claims 1-5, 9-13, and 16-18 stand provisionally rejected under the
judicially created doctrine of obviousness-type double patenting. The
Examiner’s rejection is on pages 2-3 of the Answer.
Throughout the opinion, we make reference to the Brief (received
March 23, 2007), Reply Brief (received August 15, 2007) and the Answer
(mailed June 15, 2007) for the respective details thereof.
ISSUES
1) Whether Appellants have shown that the Examiner erred in
rejecting claims 1-5, 9-13, and 16-18 under 35 U.S.C. § 102(e).
2) Whether Appellants have shown that the Examiner erred in
rejecting claims 1-5, 9-13, and 16-18 under the judicially created doctrine of
obviousness-type double patenting.

PRINCIPLES OF LAW
Office personnel must rely on Appellants’ disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995).
“[I]nterpreting what is meant by a word in a claim ‘is not to be confused
with adding an extraneous limitation appearing in the specification, which is
improper.’” (emphasis original) In re Cruciferous Sprout Litigation, 301
F.3d 1343, 1348 (Fed. Cir. 2002) (citing Intervet Am. Inc. v. Kee-Vet Lab.,
Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989).
The Examiner need not give patentable weight to descriptive material
absent a new and unobvious functional relationship between the descriptive
material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84 (Fed.
Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004) and our recent
3

Appeal 2009-001437
Application 10/610,246

final decision in Ex parte Curry, 2005-0509 (BPAI 2007), 84 USPQ2d 1272
(Affirmed, Rule 36, Fed. Cir., slip op. 06-1003, June 2006). “[W]here the
printed matter is not functionally related to the substrate, the printed matter
will not distinguish the invention from the prior art in terms of
patentability.” In re Ngai 367 F.3d at 1339, citing In re Gulack 703 F.2d
1381, 1385 (Fed. Cir. 1983).
37 C.F.R. § 41.37 (c)(1)(vii) states:
For each ground of rejection applying to two or more claims, the
claims may be argued separately or as a group. When multiple claims
subject to the same ground of rejection are argued as a group by
appellant, the Board may select a single claim from the group of
claims that are argued together to decide the appeal with respect to the
group of claims as to the ground of rejection on the basis of the
selected claim alone. Notwithstanding any other provision of this
paragraph, the failure of appellant to separately argue claims which
appellant has grouped together shall constitute a waiver of any
argument that the Board must consider the patentability of any
grouped claim separately…. A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.

ANALYSIS
Rejection of claims 1 and 3-5 under 35 U.S.C. § 102(e).
Appellants argue, on pages 8 and 9 of the Brief that Okamoto does not
teach state logic for detecting headers as recited in the claim. Appellants
assert that claim 1 recites that there is state logic and a processor (App. Br.
8). Appellants argue that the term “and” indicates a conjunctive requiring
that there be a state logic in addition to a processor. (App. Br. 8, Reply Br.
7).
4

Appeal 2009-001437
Application 10/610,246

These arguments by Appellants have not persuaded us of error in the
Examiner’s rejection as they are not commensurate with the scope of claim
1. Claim 1 recites “state logic for detecting [PES] headers associated with
the packets…a processor for loading contexts responsive to the state logic
detecting the headers.” Thus, claim 1 does not recite that the state logic is
separate from the processor. Further, as identified by the Examiner on page
4 of the Answer, Appellants’ Specification only mentions the term “state
logic” and does not provide a specific definition of what constitutes state
logic, but rather makes reference that state logic is a process for detecting
packet headers. In addition, Appellants’ originally filed Specification in
paragraph 0026 identifies that header detection, the process claimed to be
performed by the ‘state logic,’ can be accomplished by a combination of
hardware or software executed on the processor. Accordingly, we find that
the scope of claim 1 includes that the state logic includes software, which is
run on the processor. Thus, we are not persuaded by Appellants’ arguments
that the Examiner’s rejection is in error as the reference does not teach the
separate elements of a processor and state logic, and as we do not consider
claim 1 to be so limited.
Appellants argue on pages 9-10 of the Brief and page 8 of the Reply
Brief that the Examiner’s rejection is in error as Okamoto does not teach that
the processor loads contexts. Appellants argue on page 10 of the Brief that
the Examiner’s finding that Okamoto’s teaching of the processor loading the
transport stream data does not read on the claimed loading of contexts.
Appellants assert that the term “context” should be interpreted using the
plain meaning and proffers the following definition: “[t]he information
needed to execute a process including the contents of program counters,
5

Appeal 2009-001437
Application 10/610,246

address and data registers, and stack pointers.” (App. Br. 10). Thus,
Appellants conclude that the Examiner’s rejection is in error as Okamoto
does not teach that the transport stream includes such information as is
associated with the term “context.” (App. Br. 10, Reply Br. 8).
These arguments by Appellants have not persuaded us of error in the
Examiner’s determination, as they relate to an element of the claim which
defines nonfunctional descriptive material. Appellants admit that the term
“context” refers to information. Claim 1 does not recite any functional
relation between the context (information) and the system. Thus, the argued
difference between the prior art, Okamoto, and the claim lies in the type of
nonfunctional information loaded by the processor. As discussed by our
reviewing court, the Examiner does not have to give patentable weight to
nonfunctional descriptive material, as it “will not distinguish the invention
from the prior art in terms of patentability.” In re Ngai, 367 F.3d at 1339.
Accordingly, Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection, as the limitation argued to be missing from the prior
art recites nonfunctional descriptive material which will not distinguish the
claimed invention from Okamoto.
For the aforementioned reasons, Appellants’ arguments have not
persuaded us of error in the Examiner’s rejection of claim 1. Further,
Appellants’ arguments do not address dependent claims 3-5. Thus, we
consider Appellants’ arguments to have grouped dependent claims 3-5
together with independent claim 1 under C.F.R. § 41.37 (c)(1)(vii), and we
affirm the Examiner’s rejection of these claims for the reasons discussed
with respect to claim 1.

6

Appeal 2009-001437
Application 10/610,246

Rejection of claim 2 under 35 U.S.C. § 102(e).
Appellants argue, on pages 11-14 of the Brief and 8-11 of the Reply
Brief, that Okamoto does not teach that the state logic interrupts the
processor. Appellants argue that the Examiner’s statement that the normal,
storing routine of the transport stream would temporarily interrupt all other
transport streams meets the claimed interruption is not supported by
evidence of record. (App. Br. 11).
The Examiner responds, on page 4 of the Answer, stating:
[O]ne of ordinary skill in the art may assume that when a header is
detected, the logic is set to the state 1. Otherwise, it is set to the state
0. Depending on the outcome, one of the 2 possible processes is
interrupted. For example, if no header is detected, the state logic of 0
may want to continue detection until a header is found. While doing
so, the subroutine for processing packets with headers is interrupted
until the next header is found.

Appellants’ arguments have persuaded us of error in the rejection of
claim 2. Claim 2 recites “wherein the state logic interrupts the processor,
responsive to detecting the [PES] headers.” Thus, the scope of the claim
includes that the processor is interrupted by the state logic. The Examiner
has not cited a teaching in Okamoto of an interrupt of the processor
functions. The scenario described by the Examiner is not taught by
Okamoto. Further, the Examiner’s scenario describes the flow through a
conditional routine operating on a processor, not the interruption of the
processor. Accordingly, we do not find that the Examiner has shown that
Okamoto teaches all of the limitations of claim 2, and we will not sustain the
Examiner’s rejection of claim 2.

7

Appeal 2009-001437
Application 10/610,246

Rejection of claims 9 and 11-13 under 35 U.S.C. § 102(e).
On page 15 of the Brief and pages 11-12 of the Reply Brief,
Appellants argue that the Examiner’s rejection of claim 9 is in error as
Okamoto does not teach detecting PES headers. Appellants argue that PES
headers are understood by the skilled artisan to be separate and distinct from
the transport stream headers taught by Okamoto. (App. Br. 15, Reply Br.
12). Appellants assert that the PES headers are within the payloads of
transport stream packets. (App. Br. 16). In making this assertion,
Appellants rely upon a US Patent Application Publication
US 2004/0004560.
These arguments by Appellants have not persuaded us of error in the
Examiner’s rejection as they relate to an element of the claim which defines
nonfunctional descriptive material. Claim 9 recites “detecting PES headers”
and “loading contexts responsive to [the] detecting the PES headers.”
Appellants’ Specification identifies that PES stands for packetized
elementary stream, and the PES header identifies the beginning of the
packet. Spec: 1-2. Thus, we construe the PES header to be a header that
identifies the beginning of a packet in a data stream, and the term PES is a
title identifying the type of data stream. While claim 9 does recite that the
header is functionally related to the step of loading contexts, this
functionality is not related to the type of data stream. Thus, we consider the
claim limitation of PES to be a title for the type of header, and as the header
type is not functionally related to the method, we consider it to be
nonfunctional descriptive material. As discussed supra, the Examiner does
not have to give patentable weight to nonfunctional descriptive material, as
it “will not distinguish the invention from the prior art in terms of
8

Appeal 2009-001437
Application 10/610,246

patentability.” In re Ngai, 367 F.3d at 1339. Accordingly, Appellants’
arguments have not persuaded us of error in the Examiner’s rejection, as the
limitation argued to be missing from the prior art recites nonfunctional
descriptive material which will not distinguish the claimed invention from
Okamoto.
Appellants argue on pages 18-19 of the Brief that the Examiner’s
rejection of claim 9 is in error as Okamoto does not teach loading contexts in
response to detecting PES headers.
These arguments by Appellants have not persuaded us of error in the
Examiner’s rejection of claim 9. As discussed supra, with respect to claim
1, we consider the term “context” to refer to nonfunctional descriptive
material. As such, we find that differences between the claimed loading
“context” and Okamoto’s teaching of the processor loading the transport
stream data will not distinguish the claimed invention from Okamoto.
For the aforementioned reasons, Appellants’ arguments have not
persuaded us of error in the Examiner’s rejection of claim 9. Further,
Appellants’ arguments do not address dependent claims 11-13. Thus, we
consider Appellants’ arguments to have grouped dependent claims 11-13
together with independent claim 9 under C.F.R. § 41.37 (c)(1)(vii), and we
affirm the Examiner’s rejection of these claims for the reasons discussed
with respect to claim 9.

Rejection of claim 10 under 35 U.S.C. § 102(e).
Appellants argue on pages 20-23 of the Brief that Okamoto does not
teach generating an interrupt responsive to detecting the PES headers.
Appellants’ argument is similar to that discussed with respect to claim 2.
9

Appeal 2009-001437
Application 10/610,246

Appellants’ argument has persuaded us of error in the Examiner’s
rejection of claim 10. As discussed above with respect to claim 2, the
Examiner has not cited a teaching in Okamoto of an interrupt of the
processor functions, and we are not persuaded by the Examiner’s rationale
as to how Okamoto suggests such an interrupt. Accordingly, for the reasons
discussed supra with respect to claim 2, we will not sustain the Examiner’s
rejection of claim 10.

Rejection of claims 16 and 17 under 35 U.S.C. § 102(e).
Appellants argue on pages 24-28 of the Brief and pages 12-14 of the
Reply Brief that Okamoto does not teach or suggest that the packets and the
headers associated with the packets are carried in the payload of a transport
packet stream as recited in claim 16. Appellants present similar arguments
directed to claim 17 on pages 28-30 of the Brief.
Appellants’ arguments have persuaded us of error in the Examiner’s
rejection of claims 16 and 17. Claim 16 recites “wherein the packets and the
headers associated with the packets are carried in at least one payload of at
least one DirecTV transport stream packet.” Claim 17 recites similar
limitations. The Examiner, in the Answer, has not addressed Appellants’
arguments, and it is not clear from the Examiner’s statement of the rejection
what teachings of Okamoto that the Examiner considers to anticipate this
limitation. Accordingly, we do not consider the Examiner to have
established that Okamoto anticipates all of the limitations of claims 16 and
17, and we will not sustain the Examiner’s rejection of claims 16 and 17.

10

Appeal 2009-001437
Application 10/610,246

Rejection of claim 18 under 35 U.S.C. § 102(e).
Appellants argue on pages 33-35 of the Brief and pages 12-14 of the
Reply Brief that Okamoto does not teach or suggest that the packets and the
headers associated with the packets are carried in the payload of a transport
packet stream as recited in claim 18.
Appellants’ arguments have persuaded us of error in the Examiner’s
rejection of claim 18. Claim 18 recites “wherein the packets and the headers
associated with the packets are carried in at least one payload of at least one
DirecTV transport stream packet.” The Examiner, in the Answer, has not
addressed Appellants’ arguments, and it is not clear from the Examiner’s
statement of the rejection what teachings of Okamoto that the Examiner
considers to anticipate this limitation.
Accordingly, we do not consider the Examiner to have established
that Okamoto anticipates all of the limitations of claim 18, and we will not
sustain the Examiner’s rejection of claims 18.

Provisional rejection under the judicially created doctrine of
obviousness-type double patenting.

Appellants have not presented arguments that the Examiner’s
provisional rejection of claims 1-5, 9-13, and 16-18 under the judicially
created doctrine of obviousness-type double patenting is in error. Thus we
find no error in the rejection and affirm the Examiner’s rejection pro forma.

11

Appeal 2009-001437
Application 10/610,246

CONCLUSION
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claims 1, 3-5, 9, and 11-13 under 35 U.S.C.
§ 102(e); however, they have persuaded us of error in the Examiner’s
rejection of claims 2, 10, and 16-18 under 35 U.S.C. § 102(e). Further,
Appellants have not persuaded us that the Examiner erred in provisionally
rejecting claims 1-5, 9-13, and 16-18 under the judicially created doctrine of
obviousness-type double patenting.

12

Appeal 2009-001437
Application 10/610,246

ORDER
The decision of the Examiner 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).

AFFIRMED

ELD

CHRISTOPHER C. WINSLADE
MCANDREWS HELD & MALLOY, LTD.
500 WEST MADISON STREET
34TH FLOOR
CHICAGO, IL 60661
13