Ex Parte Lund

Patent Trial and Appeal Board

Jul 30, 2013

11442801 (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARTIN LUND

Appeal 2011-000905
1

Application 11/442,801
Technology Center 2400
____________________

Before JEAN R. HOMERE, KALYAN K. DESHPANDE, and
JEREMY J. CURCURI, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1
The real party in interest is Broadcom Corp. (App Br. 2.)
Appeal 2011-000905
Application 11/442,801

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-22. (App. Br. 2.) We have jurisdiction under 35
U.S.C. § 6(b).
We reverse and enter a new ground of the rejection against claims 8-
14 under 35 U.S.C. § 101.
Appellant’s Invention
Appellant invented a method and system for allocating incoming
packets received at a plurality of input ports (1-106, 2-104) to a shared
portion or a fixed portion of memory within a network switch (102). (Figs. 1
& 4, Spec. [0034].) In particular, a classifier (406) within the switch (402)
examines each received packet frame to determine the type of data contained
therein before placing the frame in one of a plurality of packet queues
forwarded to a memory management unit (MMU) for subsequent allocation.
The MMU then allocates to a fixed portion of memory all pre-allocated
queues containing an anticipated type of application data, whereas queues
containing application data that have been updated are dynamically assigned
to a shared portion of memory. (Fig. 5A, Spec. [0062], [0067], [0068].)
Illustrative Claims
Independent claims 1 and 8 further illustrate the invention. They read
as follows:
1. A method for handling data in a communication network,
the method comprising:
pre-allocating memory from a pool of memory in a
network switching device based on anticipation of a type of
Appeal 2011-000905
Application 11/442,801

3
application data being handled by a particular port of said
network switching device according to packet classification and
tracking; and
dynamically allocating and deallocating memory from
said pool of memory for said particular port of said network
switching device based on changes to said application data.

8. A computer-readable storage having stored thereon, a
computer program having at least one code section for handling
data in a communication network, the at least one code section
being executable by a machine for causing the computer to
perform steps comprising:
pre-allocating memory from a pool of memory in a
network switching device based on anticipation of a type of
application data being handled by a particular port of said
network switching device according to packet classification and
tracking; and
dynamically allocating and deallocating memory from
said pool of memory for said particular port of said network
switching device based on changes to said application data.

Prior Art Relied Upon
Muller US 6,021,132 Feb. 1, 2000
Lavian US 2004/0076161 A1 Apr. 22, 2004

Rejection on Appeal
The Examiner rejects claims 1-22 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Muller and Lavian.

Appeal 2011-000905
Application 11/442,801

4
ANALYSIS
We consider Appellant’s arguments seriatim as they are presented in
the Appeal Brief, pages 3-10 and the Reply Brief, pages 2-5.

Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in
finding the combination of Muller and Lavian teaches or suggests pre-
allocating memory in a network switching device based on anticipation of a
type of application data being handled by a port of the switch, as recited in
claim 1?

Appellant argues that the proffered combination does not teach or
suggest the disputed limitations emphasized above. (App. Br. 5-10, Reply
Br. 2-5.) In particular, Appellant argues Muller discloses allocating memory
based on actual traffic through a given port as opposed to pre-allocating
memory based on anticipated traffic through that port. (App. Br. 6-8, Reply
Br. 2-5). Further, Appellant argues Lavian’s disclosure of appending a
buffer to either a priority queue or a best effort queue depending on whether
a priority bit is set does not teach or suggest allocating the packet based on
the type of data being handled, as required by claim 1 (App. Br. at 9.)
In response, the Examiner finds that Muller’s disclosure of allocating
a buffer to a predetermined value teaches pre-allocating a buffer to a
predetermined size to receive packets at a port of a switching network at
different times. (Ans. 18.) Further, the Examiner finds Lavian’s disclosure
of allocating memory for priority queuing based on the traffic class received
Appeal 2011-000905
Application 11/442,801

5
at a port teaches allocating memory in anticipation of an application type
being handled at the port. (Ans. 19.) Consequently, the Examiner concludes
that the combination of Muller and Lavian renders claim 1 unpatentable.
Based upon our review of the record before us, we find error with the
Examiner’s rejection of claim 1. Muller discloses a dynamic buffer
allocation scheme wherein a shared memory manager allocates data packets
to queues in a shared memory proportionally to the amount of traffic through
a given port. (Col. 7, ll. 48-58). In the buffer allocation process, a count
field is set to a predetermined value, which may be updated to reflect the
current number of output ports that will transmit the buffer by reading the
content thereof. (Col. 11, ll. 58-65.) We agree with Appellant that Muller’s
disclosure of allocating memory to a port proportionally to the volume of
traffic flowing therefrom teaches that such allocation is based on actual
traffic recorded at the ports, as opposed to an anticipated traffic volume. We
further agree with Appellant that Muller’s disclosure of setting a count field
to a predetermined value is for the purpose of keeping track of the number of
output ports currently using a buffer in shared memory, as opposed to
assigning a predetermined buffer size thereto. (Reply Br. 3.) Additionally,
we agree with Appellant that Lavian’s disclosure of appending a buffer to a
queue based on a priority bit does not remedy the noted deficiencies of
Muller. Because Appellant has shown at least one error in the Examiner’s
rejection, we need not reach Appellant’s other arguments. Consequently,
Appellant has shown error in the Examiner’s obviousness rejection of claim
1.
Appeal 2011-000905
Application 11/442,801

6
Because claims 2-22 also recite the disputed limitations discussed
above, we find for the foregoing reasons that Appellant has similarly shown
error in the Examiner’s rejection of those claims.
New Ground of Rejection
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
8-14 as being directed to nonstatutory subject matter under 35 U.S.C. § 101
because the program product recited therein consists of a computer-readable
storage medium, which encompasses a transitory medium. In particular,
Appellant’s Specification states:
[A] machine- readable storage, having stored thereon, a
computer program having at least one code section executable
by a machine, thereby causing the machine to perform the steps
as described above for adaptive queue and buffer control based
on monitoring in a packet network switch.

(Spec. [0082].)

While Appellant’s Specification indicates that the machine-readable
storage medium can also store data, it fails to define a computer-readable
storage medium, let alone provide a definition of such a medium that
excludes transitory media.
2
Therefore, the broadest reasonable construction
of a computer-readable storage medium, according to its ordinary and

2
See Ex parte Mewherter (available at http://e-
foia.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2012007692-05-
08-2013-4) wherein an expanded panel held that a computer-readable
storage medium that does not exclude non-transitory media is directed to
non-statutory subject matter.
Appeal 2011-000905
Application 11/442,801

7
customary meanings to a person of ordinary skill in the art, encompasses
both non-transitory and transitory media.
3
In assessing the ordinary and
customary meanings attributed to the term computer-readable storage
medium, the ordinary skilled artisan needs to consider several factors
including intrinsic evidence as provided in Appellant’s Specification, as well

3
See Mewherter at 6 n.4 (stating “[a]lthough not binding on this Board, we
do find noteworthy that the Office recently mandated in training to its
examiners that, in such cases, a claim reciting computer-readable storage
media must be construed under the broadest reasonable interpretation as
encompassing a signal per se unless amended to avoid such language. U.S.
Patent & Trademark Office, Evaluating Subject Matter Eligibility Under 35
USC § 101 (Aug. 2012 Update); pp. 11-14, available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf.”).
See id. at 7-8 n.5 (stating “there are several factors to consider when
determining whether a ‘computer readable storage medium’ type claim
avoids encompassing a non-statutory signal:
(1) Extrinsic evidence relevant to the meaning as would be understood by
one skilled in the art at the time of the effective filing date of the patent
application. As opposed to the voluminous extrinsic evidence dated 2002
and thereafter which is discussed in this decision, before 2002 there is little
evidence that the ordinary and customary meaning of such ‘storage medium’
terms encompassed a signal.
(2) Whether there is express intent in applicant’s specification to limit the
term, i.e., applicant’s specification is not silent as to the meaning of such
terms.
(3) Whether the claim expressly limits the medium to ‘non-transitory’
embodiments.
(4) Whether the claim implicitly limits the medium to ‘non-transitory’
embodiments. The most common form of this is the use of ‘means plus
function’ elements in the claim (i.e., a true Beauregard type claim). Such
means plus function elements are limited by statute to the corresponding
structure in the specification and equivalents thereof. Such a structure
requirement limits the claim to non-transitory embodiments.”).
Appeal 2011-000905
Application 11/442,801

8
extrinsic evidence (e.g., dictionary definitions, prior uses of the term or
equivalents thereof by Appellant and other industry participants).
(Mewherter at 9-12.) In particular, we held that:
[T]hose of ordinary skill in the art would understand the claim
term “machine-readable storage medium” would include signals
per se. Further, where, as here, the broadest reasonable
interpretations of all the claims each covers a signal per se, the
claims must be rejected under 35 U.S.C. § 101 as covering non-
statutory subject matter. See In re Nuijten, 500 F.3d 1346,
1356-57 (Fed. Cir. 2007) (transitory embodiments are not
directed to statutory subject matter); Subject Matter Eligibility
of Computer-Readable Media, supra; U.S. Patent & Trademark
Office, Interim Examination Instructions for Evaluating Subject
Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2,
available
at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf; U.S. Patent & Trademark
Office, Evaluating Subject Matter Eligibility Under 35 USC
§ 101 (August 2012 Update); pp. 11-14, available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.
pdf.
We note that Appellants are not precluded from
amending these claims to overcome this rejection. Guidance on
this point is provided in U.S. Patent & Trademark Office,
Subject Matter Eligibility of Computer Readable Media, 1351
Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (“A claim drawn to
such a computer readable medium that covers both transitory
and non-transitory embodiments may be amended to narrow the
claim to cover only statutory embodiments to avoid a rejection
under 35 U.S.C. § 101 by adding the limitation ‘non-transitory’
to the claim.”). See also U.S. Patent & Trademark Office,
Evaluating Subject Matter Eligibility Under 35 USC § 101
(August 2012 Update) (pp. 11-14),
available at http://www.uspto.gov/patents/law/exam/101_traini
Appeal 2011-000905
Application 11/442,801

9
ng_aug2012.pdf (noting that while the recitation “non-
transitory” is a viable option for overcoming the presumption
that those media encompass signals or carrier waves, merely
indicating that such media are “physical” or tangible” will not
overcome such presumption).

(Id. at 13-14.)
In this case, our construction of a computer-readable storage medium
as encompassing transitory media is appropriate because: (1) there was
voluminous extrinsic evidence at the time of the effective filing date of
Appellant’s patent application that a “storage medium” encompasses a
signal; (2) Appellant’s Specification fails to expressly limit a “computer-
readable storage medium” to non-transitory media; and (3) the claim does
not include recitations either expressly or implicitly limiting the “computer-
readable storage medium” to non-transitory media. Thus, we conclude that
claim 8 encompasses a transitory medium and is, therefore, directed to non-
statutory subject matter under 35 U.S.C. § 101. Similarly, we conclude that
claims 9-14 depending therefrom are also directed to non-statutory subject
matter.

Appeal 2011-000905
Application 11/442,801

10
DECISION
We reverse the Examiner’s rejection of claims 2-22 as set forth above.
However, we enter a new ground of rejection against claims 8-14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED
37 C.F.R. § 41.50(b)

ELD