Ex Parte Jackson et al

Board of Patent Appeals and Interferences

Apr 21, 2010

10357949 (B.P.A.I. Apr. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEPHEN S. JACKSON and MATTHEW B. SQUIRE
____________________

Appeal 2008-001324
Application 10/357,9491
Technology Center 2400
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Decided: April 22, 2010
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Before LANCE LEONARD BARRY, STEPHEN C. SIU, and JAMES R.
HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed February 4, 2003, claiming benefit of Provisional
Application No. 60/354,096 filed February 4, 2002. The real party in
interest is Hatteras Networks. (App. Br. 1.)
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STATEMENT OF THE CASE
The Appellants appeal from the Examiner’s rejection of claims 1-28
under authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appellants’ Invention
Appellants invented a communication system and method utilizing
two different communication media for transferring data between devices.
(Spec. 2, l. 30 to 3, l. 7.)2

Representative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method of communicating, comprising:
communicatively coupling a first device with a second
device using a first communication medium and a second
communication medium having different bandwidths associated
therewith;
establishing a communication session between the first
device and the second device so as to transfer data between the
first device and the second device using the first and second
communication mediums such that a fast data rate is used to
transfer data over the first communication medium and a
second data rate, different than the first data rate, is used to
transfer data over the second communication medium, the data
at least partly comprising non-control information; and

2 We refer to Appellant’s Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed April 2, 2007; and Reply Brief (“Reply Br.”) filed August 20, 2007.
We also refer to the Examiner’s Answer (“Ans.”) mailed June 19, 2007.
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processing the data at least one of the first and second
devices to account for the difference between the first and
second data rates.

References
The Examiner relies on the following reference as evidence of
unpatentability:
Noda US 6,507,566 B1 Jan 14, 2003
(§ 371 date: Aug. 10, 1998)

Yu (Samsung) GB 2331680 A Aug. 11, 19983

Rejections on Appeal
The Examiner rejects claims 1-28 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.4
The Examiner rejects claims 1, 4-8, 11-15, 18-22, and 25-28 under 35
U.S.C. § 102(b) as being anticipated by Samsung.
The Examiner rejects claims 2, 3, 9, 10, 16, 17, 23, and 24 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Samsung and
Noda.

3 We note that the Examiner refers to UK Patent Application GB 2331680 A
as “Samsung.” We adopt the Examiner’s naming convention for this
reference to assure the clarity of the record and for the convenience of the
parties.
4 The Examiner does not formally list this rejection in the Answer. The
Examiner, however, made the Rejection in the Final Office Action (mailed
October 25, 2006) at page 4, and responds to Appellants’ arguments in the
Answer (Ans. 7, 8). We, therefore, view the Examiner’s omission as
harmless error.
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ISSUES
Based on Appellants’ contentions, as well as the findings and
conclusions of the Examiner, the pivotal issues before us are as follows.
1. Does the Examiner err in finding that Appellants’ limitation
reciting a “the data at least partly comprising non-control information” does
not comply with the written description requirement under 35 U.S.C. § 112,
first paragraph?
2. Does the Examiner err in finding the Samsung reference
discloses two different communication mediums used to transfer data
comprising non-control information?

FINDINGS OF FACT (FF)
Appellants’ Specification
1. Appellants’ Specification describes two different
communication media (mediums) that may transfer control information as
well as non-control data:
The network model illustrated in FIG. 3 may be representative
of an access network in which there is both a fiber and a copper
link between a customer equipment device and a network
element device. In some embodiments, the copper
communication medium 310 may provide a unidirectional link
upstream from the customer equipment device 305 to the
network element device 300 and the fiber optic communication
medium 315 may provide a unidirectional link downstream
from the network element device 300 to the customer
equipment device 305. In other embodiments, the copper
communication medium 310 may provide a bidirectional link
between the customer equipment device 305 and the network
element device 310. This may allow the copper communication
medium 310 to be used for management purposes or
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bidirectional connectivity in addition to or in lieu of the fiber
link.
(Spec. 5, ll. 13-24.)
[T]he copper communication medium 310 and the fiber optic
communication medium 315 may be referred to as a hybrid
communication medium that provides asymmetric data rates
between two pieces of communication equipment. For
example, the network element device 300 may transmit data at
a data rate of 1 Gbps towards the customer equipment device
305 over the fiber optic communication medium 315 and the
customer equipment device 305 may transmit data at a data rate
of 10 Mbps towards the network element device 300 over the
copper communication medium 310. Such asymmetry may be
particular useful in Internet applications where the amount of
data transmitted from the network to the customer is
significantly greater than the amount of data transmitted from
the customer back into the network.
(Spec. 5, l. 27 to 6, l. 4.)

Samsung Reference
2. Samsung describes a communication system with two
communication channels comprising two different media – a “first
communication channel, which is made of a first medium 141, . . . and [a]
second communication channel 142, which is made of a second medium.”
(Abstract.)
3. Samsung utilizes the second communication channel for
transmitting communication control signals as well as supplying power –
“second communication channel 142 . . . transfer[s] the plurality of control
signals between the first and second devices” (Abstract):
The HSB cable 140 is a communication channel for performing
data communications between the first device 100 and the
second device 130. The HSB cable 140 includes an optical
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fibre cable 141 and a copper wire cable 142 as shown in Figure
2, which respectively perform different functions. The optical
fibre cable 141 is used to transfer data between the first device
100 and the second device 130. The copper wire cable 142 is
used to transmit data communication control signals between
the devices and share a power supply between the devices.
(p. 6, ll. 23-30.)

PRINCIPLES OF LAW
Burden on Appeal
The allocation of burden requires that the United States Patent and
Trademark Office (USPTO) produce the factual basis for any rejection in
order to provide an applicant with notice of the reasons why the applicant is
not entitled to a patent on the claim scope sought. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir.
1984); Ex Parte Frye, No. 2009-006013, 2010 WL 889747, *3 (BPAI)
(Precedential). An appellant has the opportunity 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 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), overruled in part on other grounds, KSR, 550 U.S. at 422);
Ex Parte Frye, 2010 WL 889747 at *4.

Written Description
“Compliance with the written description requirement is a question of
fact.” ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1376 (Fed.
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Cir. 2009) (citation omitted). The written description requirement requires
us to determine “whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that
time of the later claimed subject matter, rather than the presence or absence
of literal support in the specification for the claim language.” In re Kaslow,
707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations omitted). Thus, “the
description must ‘clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed.’” Ariad Pharmas. v.
Eli Lilly and Co., --- F.3d ----, 2010 WL 1007369, at *12 (Fed. Cir. 2010)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)).
In other words, the test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.
Id.

Anticipation
Anticipation is a question of fact. In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997). Under 35 U.S.C. § 102, “[a] claim is anticipated only
if each and every element as set forth in the claim is found, either expressly
or inherently described, in a single prior art reference.” Verdegaal Bros.,
Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (citations
omitted); see also Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375
(Fed. Cir. 2005)(citation omitted).

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ANALYSIS
Issue 1: Rejection of Claims 1-28 under 35 U.S.C. § 112,
First Paragraph
The Examiner rejects Appellants’ claims 1-28 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
because the claims contain subject matter – “the data at least partly
comprising non-control information” (App. Br. 13, claim 1) – “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.” (Final Office Action
mailed October 25, 2006 at p.4; Ans. 7, 8.) Appellants contend that the
language is supported by the Specification, in particular that “the
Specification states that the copper communication medium may be used for
management purposes (e.g., to carry control information) or for bidirectional
connectivity between the customer equipment device and the network
element.” (App. Br. 6, referencing Spec. 5, l. 9 to 6, l. 4.) Appellants
further assert that:
The Specification goes on to explain that such asymmetry may
be useful in Interact applications. Appellants submit that one
skilled in the art would not interpret the term “data” as used
above with respect to transmitting data between a customer
equipment device and a network element as part of an Internet
application as referring to only control information. Appellants
submit that it is common to download over the Internet non-
control information or data from a network element device 300
to a customer equipment device and to transmit non-control
information or data from the customer equipment device to the
network element as part of the Internet application, e.g.,
browser application.

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(App. Br. 6, referencing Spec. 5, l. 9 to 6, l. 4.) Accordingly, we decide the
question of whether the claimed subject matter complies with the written
description requirement.
After reviewing the record on appeal, we find Appellants’ arguments
to be persuasive. Appellants explain that support for the disputed limitation
– “the data at least partly comprising non-control information” – is disclosed
in Appellants’ Specification at pages 5 to 6. (App. Br. 5-6.) Although
Appellants’ Specification does not explicitly recite or define “data at least
partly comprising non-control information,” the cited portions of the
Specification describe transmitting asymmetric data, as well as using the
copper medium for management purposes (i.e., to transmit control
information). (FF 1.) We find that a skilled artisan would understand the
cited portions of the Specification to describe transferring control
information as well as non-control data. (FF 1.) Accordingly, we find
Appellants provide support for the limitation. “[T]he test for sufficiency is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date. Ariad, --- F.3d ----, 2010 WL 1007369 at
*12 (citing Vas-Cath, 935 F.2d at 1563.) We agree with the Examiner that
Appellants’ Specification is not a model of clarity in this regard; however,
we find that it would reasonably convey possession of the claimed limitation
to one skilled in the art as of the filing date.
For the foregoing reasons, Appellants have persuaded us of error in
the Examiner’s written description rejection of claims 1-28. Accordingly,
we reverse the Examiner’s written description rejection of these claims.

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Issue 2: Rejection of Claims 1, 4-8, 11-15, 18-22, and 25-28
under 35 U.S.C. § 102(b)
Appellants contend that Samsung does not disclose “two different
communication mediums are used to transfer data that comprises non-
control information. (App. Br. 9.) The Examiner finds that Samsung
discloses each feature of Appellants’ independent claim 1 (and independent
claims 8, 15, and 22) and maintains that the claim is properly rejected. (Ans.
3-5, 7-8.) Specifically, the Examiner finds that:
Samsung teaches in page 6 lines 26-30, optical fibre cable 141
is used to transfer data between devices, and the copper wire
cable 142 is used to transmit data communication control
signals between the devices. Data (which may be media, files,
word documents) are at least partly non-control information.
Data and signals are sent through cable 140, and the signal is
needed to control the transmitted and received data, the data
itself is the content communicated between devices. Therefore
Samsung teaches the data that passes through cable 140 are at
least partly non-control information.

(Ans. 8.) Accordingly, we decide the question of whether the Examiner
erred in finding the Samsung reference discloses the disputed features of
Appellants’ claim 1.
After reviewing the record on appeal, we agree with Appellants, and
we find the Samsung reference does not disclose two different
communication media utilized to transfer data comprising non-control
information. The Samsung reference explicitly states that its second
(copper) medium transfers only control signals (information) and supplies
power. (FF 2, 3.) There is simply no explicit or inherent disclosure in
Samsung of “transfer[ring] data over the second communication medium,
the data at least partly comprising non-control information” as recited in
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Appellants’ claim 1. Thus, we are constrained by the record before us to
find that Samsung does not disclose transferring non-control information
over both communication channels (media). Accordingly, we reverse the
Examiner’s anticipation rejection of independent claim 1 and its dependent
claims 4-7.
Appellant’s independent claims 8, 15, and 22 include limitations of
similar scope directed to transferring data over a second communication
medium where the data at least partly comprises non-control information.
We, therefore, reverse the Examiner’s anticipation rejection of independent
claims 8, 15, and 22 and their respective dependent claims 11-14, 18-21, and
25-28 for the reasons set forth with respect to claim 1, supra.
Appellants’ dependent claims 2, 3, 9, 10, 16, 17, 23, and 24 depend,
respectively, from independent claims 1, 8, 15, and 22 discussed, supra.
Because we do not find, and the Examiner does not establish, that Noda
overcomes the deficiencies of Samsung, we also reverse the Examiner’s
rejection of claims 2, 3, 9, 10, 16, 17, 23, and 24 under 35 U.S.C. § 103(a)
for the same reasons previously presented with respect to claim 1, supra.

CONCLUSION OF LAW
On the record before us, we find the Examiner erred in finding that
Appellants’ recited “the data at least partly comprising non-control
information” does not comply with the written description requirement
under 35 U.S.C. § 112, first paragraph. We further find that the Examiner
erred in finding that the Samsung reference discloses two different
communication mediums used to transfer data comprising non-control
information.
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DECISION
We reverse the Examiner’s rejection of claims 1-28 under 35
U.S.C. § 112, first paragraph.
We reverse the Examiner’s rejection of claims 1, 4-8, 11-15, 18-22,
and 25-28 under 35 U.S.C. § 102(b).
We reverse the Examiner’s rejection of claims 2, 3, 9, 10, 16, 17, 23,
and 24 under 35 U.S.C. § 103(a).

REVERSED

erc

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