Ex Parte Kish et al

Patent Trial and Appeal Board

Nov 12, 2014

11267477 (P.T.A.B. Nov. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WILLIAM S. KISH and JOHN CHANAK
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Appeal 2012-004799
Application 11/267,477
Technology Center 2400
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Before CARLA M. KRIVAK, CARL W. WHITEHEAD JR., and
DANIEL N. FISHMAN, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 1–25 under 35
U.S.C. § 134(a).1 Appeal Brief 3. We have jurisdiction under 35 U.S.C.
§ 6(b) (2012).
We affirm.
Introduction
The invention is directed to “systems, devices, and methods for
throughput enhancement by acknowledgment suppression.” Specification
¶ 16.

1 Appellants filed an amendment after the Notice of Appeal (May 8, 2011)
cancelling claims 21–25. There is no evidence the amendment was entered
during prosecution, therefore, claims 21–25 are still pending.
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Representative Claim (disputed limitations emphasized)
1. A method for increasing data throughput, the method
comprising:
transmitting data, according to a higher layer protocol,
from a source to a destination through an intermediate device
between the source and the destination;

receiving a first acknowledgment, according to a lower
layer protocol, transmitted from the destination to the
intermediate device; and

transmitting a second acknowledgment, according to the
higher layer protocol, to the source from the intermediate device
based on the first acknowledgment, whereby reliable data
throughput is increased without delaying acknowledgment
transmissions to the source.

Rejections on Appeal
Claims 21–25 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter, which Appellants regards as the
invention. Answer 5.
Claims 1–5, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Raya (US Patent Application Publication Number
2005/0185666 A1; published August 25, 2005). Answer 6–10.
Claims 6–11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Raya, Negus (US Patent Application Publication Number
2001/0055312 A1; publication December 27, 2001), and Takagi (US Patent
Application Publication Number 2001/0047474 A1; published November
29, 2001). Answer 10–13.
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Claims 12–15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Raya and Negus. Answer 13–15.
Claims 21–25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Raya and Takagi. Answer 16–17.
Claims 18–20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Raya and Li (US Patent Application Publication Number
2006/0098605 A1; published May 11, 2006). Answer 18–19.

ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed June 2, 2011), the Answer (mailed August
24, 2011), and the Reply Brief (filed October 24, 2011) for the respective
details. We have considered in this Decision only those arguments
Appellants actually raised in the Briefs. Any other arguments which
Appellants could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the analysis as follows.

35 U.S.C. § 112, second paragraph rejection
Appellants do not contest the 35 U.S.C. § 112, second paragraph
rejection of claims 21–25 because Appellants believed the claims were
cancelled. See Appeal Brief 3. Therefore, we sustain the Examiner’s
indefinite rejection.

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35 U.S.C. § 103 rejections
Appellants contend claim 1 “requires more than simply ‘increasing
throughput’ but requires that throughput be increased without delaying
acknowledgment transmissions.” Appeal Brief 10. The Examiner finds
Raya discloses all of the limitations recited in claim 1 with the exception of
increasing throughput “without delaying acknowledgement transmissions to
the source.” Answer 8. As a result of Raya’s disclosure, the Examiner finds
the claimed increasing throughput without delaying acknowledgment
transmissions is obvious to one of ordinary skill in the art. Id.
Consequently, we do not find Appellants’ arguments persuasive
because Appellants have not provided any evidence showing Raya’s method
delays acknowledgment transmissions.2 Contrary to Appellants’ arguments,
the burden of proof does not fall upon the Examiner.3 See Appeal Brief 9.
Therefore, we agree with the Examiner’s findings because we find
increasing throughput limitation recited in claim 1 is not a separate method

2 “[T]he PTO can require an applicant to prove that the prior art products do
not necessarily or inherently possess the characteristics of his claimed
product.” In re Best, 562 F.2d.1252, 1255 (CCPA 1977) (citation omitted).
“Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on
‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the PTO’s
inability to manufacture products or to obtain and compare prior art
products.” Id. (citations omitted).

3 Once the Examiner has satisfied the burden of presenting a prima facie
case of obviousness, the burden then shifts to Appellants to present evidence
and/or arguments that persuasively rebut the Examiner's prima facie case.
See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

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step, but a result of the accumulation of the previous method steps. Raya
discloses all of the accumulated steps. See Answer 20–21.4
We, therefore, sustain the Examiner’s obviousness rejection of claim
1, as well as independent claims 6, 12, and 16 not separately argued. See
Appeal Brief 11. We also sustain the Examiner’s obviousness rejections of
claims 2–5, 7–11, 13–15and 17–25 not separately argued.

DECISION
The Examiner’s 35 U.S.C. § 112, second paragraph rejection of
claims 21–25 is affirmed.
The Examiner’s 35 U.S.C. § 103(a) rejections of claims 1–25 are
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). See
37 C.F.R. § 41.50(f).

AFFIRMED

tj

4 Furthermore, a “whereby” clause may not be given weight “when it simply
expresses the intended result of a process step positively recited.” MPEP
§ 2111.04 (citing Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir.
2005)); see also Answer 20.
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