Ex Parte Kumar et al

Board of Patent Appeals and Interferences

Jan 3, 2012

10917988 (B.P.A.I. Jan. 3, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/917,988 08/13/2004 Gopal N. Kumar 67,108-080; Kumar
4-2-20
5076
46368 7590 01/03/2012
CARLSON, GASKEY & OLDS, P.C./Alcatel-Lucent
400 W MAPLE RD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
IBRAHIM, MOHAMED
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
01/03/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GOPAL N. KUMAR, SUBHABRATA BAPI SEN, and
GANAPATHY SUBRAMANIAN SUNDARAM
____________
Appeal 2009-013793
Application 10/917,9881
Technology Center 2400
____________

Before JEFFREY S. SMITH, KALYAN K. DESHPANDE, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on August 13, 2004. The real party in interest is Lucent
Technologies. App. Br. 1.
Appeal 2009-013793
Application 10/917,088

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s Final Rejection of claims 1-15. App. Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b) (2008).
We reverse and enter a new ground of rejection.
Appellants’ Invention
Appellants invented a method and system for handling message
overload that is designed to change an acceptance fraction responsive to a
changing arrival rate of messages. Spec. ¶ [0009].
Illustrative Claim
1. A method of handling message overflow,
comprising:

changing an acceptance fraction responsive to a changing
arrival rate of messages; and

processing at least one message according to the changed
acceptance fraction.

Prior Art Relied Upon
Hosein US 6,442,139 B1 Aug. 27, 2002
Ruutu US 6,940,813 B2 Sept. 6, 2005
(filed Feb. 5, 2003)

Rejections on Appeal
Claims 1-7, 12, and 13 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Hosein. 2 Ans. 3-4.

2 Although the Examiner includes dependent claims 8-11 in the statement of
the rejection (Ans. 3), the Examiner nonetheless does not include these
claims in the corresponding body of the rejection. Id. at 3-4. We will treat
the Examiner’s incorrect statement of the rejection as mere harmless error
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Claims 8-11, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Hosein and Ruutu. Id. at 5-6.
Appellants’ Contentions
Appellants contend that Hosein fails to describe changing an
acceptance fraction based upon an arrival rate of messages, as required by
independent claim 1. App. Br. 3-4. In particular, Appellants argue that
Hosein’s disclosure has nothing to do with an arrival rate of messages, but
rather is based entirely on average message delay or queuing time. Id. at 4-
5. In response to the Answer, Appellants allege that Hosein discloses
computing statistics relating to message processing to determine a control
rate for a next control interval. Reply Br. 2. However, Appellants contend
that Hosein is silent with regards to whether the computed statistics actually
include the arrival rates of messages at either the source controller or the
message processor. Id.
Examiner’s Findings and Conclusions
The Examiner finds that Hosein is a comprehensive reference that
regulates traffic in a communications network using an adaptive control rate.
Ans. 6. In particular, the Examiner finds that Hosein discloses a message
processor that computes statistics relating to message processing that occur
during a control interval or period. Id. Further, the Examiner finds that
Hosein discloses using the computed statistics to determine the control rate
for the next control interval or period. Id. The Examiner finds that Hosein

and, therefore, presume that the Examiner intended to only reject dependent
claims 8-11 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Hosein and Ruutu. Accord App. Br. 2, FN. 1 (confirming
that dependent claims 8-11 are actually only rejected under 35 U.S.C.
§ 103(a)).

Appeal 2009-013793
Application 10/917,088

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discloses that the message processor outputs the desired control rate as a
control parameter feedback to a source controller. Id. Therefore, the
Examiner finds that Hosein’s disclosure of adjusting control parameters
describes changing an acceptance fraction based upon an arrival rate of
messages, as required by independent clam 1. Id. at 7.

II. ISSUE
The pivotal issue before us is whether the Examiner erred in finding
that Hosein describes “changing an acceptance fraction responsive to a
changing arrival rate of messages,” as recited in independent claim 1.

III. FINDINGS OF FACT
The following Findings of Fact (hereinafter “FF”) are shown by a
preponderance of the evidence.
Appellants’ Specification [hereinafter “AAPA”]
FF 1. AAPA discloses that “[t]here are known techniques for
identifying message types and assigning acceptance fractions to different
message types.” Spec. ¶ [00017].
Hosein
FF 2. Hosein’s figure 3 illustrates a message processing system. Col.
4, ll. 51-53. In particular, Hosein discloses that a source controller (10)
receives an offered load (11) and outputs it as a controlled load (12) to a
message processor (20), which processes the messages of the controlled load
(12) in regular control intervals or periods. Id. at ll. 53-57. Hosein discloses
that the message processor (20) computes statistics pertaining to the message
processing that occur during each control interval or period. Id. at ll. 57-61.
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Further, Hosein discloses that the message processor (20) uses the statistics
computed during a control interval or period to determine a control rate for
the next control interval or period. Id. at ll. 61-63. Hosein discloses that the
message processor (20) outputs the desired control rate as control parameter
feedback (14) to the source controller (10), which then regulates the
controlled load (12) in accordance with the received control parameter
feedback (14). Id. at ll. 63-67.

IV. ANALYSIS
35 U.S.C. § 102(b) Rejection—Hosein
Claim 1
We find error in the Examiner’s anticipation rejection of independent
claim 1. Independent claim 1 recites, inter alia, “changing an acceptance
fraction responsive to a changing arrival rate of messages.”
At best, we find that Hosein discloses that the message processor
computes statistics pertaining to message processing during a first control
interval or period, and uses such statistics to determine a desired control rate
for a second control interval or period. FF 2. However, we find that Hosein
is silent with regards to whether the computed statistics pertaining to
message processing necessarily encompasses determining the arrival rate of
messages, as required by independent claim 1. While Hosein’s computed
statistics pertaining to message processing may include determining the
arrival rates of messages, probabilities and possibilities fall short of
demonstrating that Hosein necessarily describes the claimed “changing” step
and corresponding “arrival rate of messages” as required for an anticipation
rejection. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
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Consequently, we find that the Examiner improperly relied upon Hosein to
describe the disputed claim limitation.
Since Appellants have shown at least one error in the rejection of
independent claim 1, we need not reach the merits of Appellants’ other
arguments. It follows that the Examiner has erred in finding that Hosein
anticipates independent claim 1.
Claims 2-7, 12, and 13
Since dependent claims 2-7, 12, and 13 incorporate by reference the
same claim limitation discussed supra, we find that the Examiner has also
erred in rejecting these claims for the same reasons set forth in our
discussion of independent claim 1.
35 U.S.C. § 103(a) Rejection—Combination of Hosein and Ruutu
Claims 8-11, 14, and 15
We find that Ruutu does not remedy the above-noted deficiency in the
Examiner’s anticipation rejection of independent claim 1. Therefore, since
independent claim 14, and dependent claims 8-11 and 15, either recite the
same or a similar claim limitation as independent claim 1, or incorporate by
reference such claim limitation, we find that the Examiner has also erred in
concluding that the combination of Hosein and Ruutu renders these claims
unpatentable for the same reasons set forth in our discussion of independent
claim 1.

V. NEW GROUND OF REJECTION
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
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35 U.S.C. § 103(a) Rejection—Combination of Hosein and AAPA
Claim 1
In regards to the claim limitations explicitly recited in independent
claim 1, AAPA discloses that techniques for identifying message types and
assigning acceptance fractions to different message types are both old and
well known. FF 1. In light of our analysis supra, we find that an ordinarily
skilled artisan would have appreciated incorporating AAPA’s techniques for
both identifying messages types and assigning acceptance fractions to each
message type into Hosein’s message processor, such that the message
processor is capable of determining and changing the arrival rate of
messages during a first control interval or period. Further, we find that the
combination of AAPA’s techniques with Hosein’s message processor would
have yielded nothing more than predictable results. See KSR Int'l Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007).
Moreover, during a second control interval or period, we find that an
ordinarily skilled artisan would have understood that Hosein’s message
processor is capable of changing the assigned acceptance fraction for each
message type based upon the changing arrival rate of messages during the
first control interval or period, and processing at least one message
according to such change. Thus, we find that the combination of Hosein and
AAPA teaches or suggests each claim limitation explicitly recited in
independent claim 1. As a result, we find that the combination of Hosein
and AAPA renders the subject matter of independent claim 1 unpatentable.

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VI. OTHER ISSUES
The Board of Patent Appeals and Interferences is a review body rather
than a place of initial examination. We have made the rejection regarding
independent claim 1 under 37 C.F.R. § 41.50(b). However, we have not
reviewed the remaining claims 2-15 to the extent necessary to determine
whether these claims are unpatentable over Hosein, AAPA, Ruutu, and/or
other prior art. We leave it to the Examiner to determine the appropriateness
of any further rejections based on these or other references. Our decision
not to enter a new ground of rejection for all claims should not be considered
as an indication regarding the appropriateness of further rejection or
allowance of the non-rejected claims.

VII. CONCLUSIONS OF LAW
1. The Examiner has erred in rejecting claims 1-7, 12, and 13 as
being anticipated under 35 U.S.C. § 102(b).
2. The Examiner has erred in rejecting claims 8-11, 14, and 15 as
being unpatentable under 35 U.S.C. § 103(a).
3. We enter a new ground of rejection against claim 1 as being
unpatentable under 35 U.S.C. § 103(a).

VIII. DECISION
We reverse the Examiner’s decision to reject claims 1-15. However,
we reject claim 1 as being unpatentable under 35 U.S.C. § 103(a).

37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
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37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to
the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record. . . .

REVERSED
37 C.F.R. § 41.50(b)

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