Ex Parte Peeters et al

Patent Trial and Appeal Board

Dec 9, 2014

12463935 (P.T.A.B. Dec. 9, 2014)

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.
12/463,935 05/11/2009 Miguel PEETERS 1875.5700002 1580
49579 7590 12/10/2014
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
LEVITAN, DMITRY
ART UNIT PAPER NUMBER
2461
MAIL DATE DELIVERY MODE
12/10/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MIGUEL PEETERS and JEAN-PHILIPPE CORNIL
____________

Appeal 2012-0025101
Application 12/463,935
Technology Center 2400
____________

Before CARL W. WHITEHEAD, JR., BRUCE R. WINSOR,
and JOHN P. PINKERTON, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Miguel Peeters and Jean-Philippe Cornil (“Appellants”) appeal under
35 U.S.C. § 134(a) from the final rejection of claims 1–27.2 We have
jurisdiction under 35 U.S.C. § 6(b). An Oral Hearing was held October 14,
2014. A transcript of the hearing will be placed in the record in due course.
We affirm-in-part.

1 The real party in interest identified by Appellants is Broadcom
Corporation. (App. Br. 3.)
2 Although Appellants indicate that only the rejections of claims 1–26 are
appealed (see App. Br. 4, 28), claim 27 has not been cancelled and remains
rejected (see Ans. 3, 5). See MPEP §§ 1214.05, 1215.03 (8th ed. Rev. 8,
July 2010).
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STATEMENT OF THE CASE
[Appellants’ claimed] invention relates to a method for
transmitting data packets of at least two different priority levels
via one or more bearer channels, and to a packet transport layer
adapted for transmitting data packets via one or more bearer
channels. The invention further relates to a packet transport
layer adapted for receiving code words corresponding to data
packets via one or more bearer channels.
(Spec. ¶ 2.) Claims 1 and 17, which are illustrative of the claims on appeal,
read as follows:
1. A method for transmitting frames of at least two different
priority levels via one or more bearer channels, comprising:
fragmenting a low priority frame into a plurality of
corresponding low priority code words, each low priority code
word in the plurality of corresponding low priority code words
comprising a sync code, with the sync code configured to
indicate a priority level of the corresponding frame;
mapping a priority bit of the frame to at least one of the
sync codes; and
transmitting a plurality of the low priority code words via
the one or more bearer channels after the fragmenting and prior
to transmitting a high priority code word, wherein in case high
priority code words corresponding to a high priority frame
arrive during transmission of the low priority code words, the
following steps are performed: interrupting transmission of the
low priority code words, transmitting the high priority code
words corresponding to the high priority frame, and resuming
the transmission of the low priority code words via the one or
more bearer channels.
17. A packet transport layer adapted for transmitting frames
of at least two different priority levels via one or more bearer
channels, comprising:
a fragmentation unit adapted for fragmenting a frame into
a plurality of corresponding code words prior to transmission,
each of the code words in the plurality of corresponding code
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words comprising a sync code, with the sync code being
adapted for indicating a priority level of the corresponding
frame;
a state machine configured to map priority bits of a
frame’s virtual local area network tag to at least one of the sync
code and a start of frame code of the corresponding code words;
and
a transmission unit adapted for
interrupting transmission of low priority code
words corresponding to a low priority frame in case high
priority code words corresponding to a high priority frame
arrive during transmission of the low priority code words,
transmitting the high priority code words.
The Examiner relies on the following prior art in rejecting the claims:
Delvaux US 2002/0041595 A1 Apr. 11, 2002
Tzeng US 6,438,135 B1 Aug. 20, 2002
Pedersen US 7,006,500 B1 Feb. 28, 2006
IEEE Draft P802.3ahTM/D3.0, IEEE, pages 344–354 (December 5,
2003) (hereinafter “IEEE”).
Claims 17–24 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.3 (Ans. 5.)
Claim 27 stands 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 Applicants regard as the invention. (Id.)
Claims 1, 3, 5, 7, 8, and 16 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Delvaux. (Ans. 6–7.)
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Delvaux and Tzeng. (Ans. 7–8.)

3 A rejection of claim 25 under 35 U.S.C. § 101 is withdrawn. (Ans. 4.)
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Claims 4, 6, and 9–14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Delvaux and IEEE. (Ans. 8–9.)
Claims 15 and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Delvaux and Pedersen. (Ans. 9–10.)
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed on July 22, 2011; “Reply Br.” filed on November 22, 2011 and the
Record (Transcript) of Oral Hearing (“Tr.”) for the positions of Appellants
and the Final Office Action (“Final Act.” mailed on February 24, 2011) and
Answer (“Ans.” mailed on September 22, 2011) for the positions of the
Examiner. Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants did not timely
present have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2011).

ISSUES
The issues presented by Appellants arguments are as follows:
Does the broadest reasonable interpretation of claim 17 encompass
software per se?
Does Delvaux disclose “mapping a priority bit of the frame to at least
one of the sync codes” as recited in claim 1?

ANALYSIS
REJECTION UNDER 35 U.S.C. § 101
The Examiner concludes as follows:
The claim's 17 [sic] limitations are directed to a packet
transport layer, comprising fragmentation unit, state machine
and a transmission unit in the limitations of claim 17, which are
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not identified as a process, a machine, a manufacture or a
composition of matter.
A packet transport layer of claim 17 was interpreted as
software, comprising different software entities.
(Ans. 5.) The Examiner points to Appellants’ Specification as supporting
this interpretation (id.): “The present invention provides a software program
or product, preferably stored on a data carrier.” (Spec. ¶ 27.) The Examiner
also explains as follows:
Claim 17 limitations are directed to “a packet transport
layer” without explicitly excluding signal or carrier wave from
the claim interpretations.
“Layers” are known as a software concept in networking
art. Protocol layers can perform multiple operations between
different layers of a layer stack without any direct use of
hardware elements. Layers are known to pass/transmit,
fragment and receive data from one layer to the other without
any hardware involvement.
(Ans. 10.)
Appellants contend as follows:
Because it is made up of data packets transmitted via a physical
bearer channel, fragmenting and manipulating a data packet to
be transmitted via a physical bearer channel necessarily require
a computer for execution. Accordingly, “a fragmentation unit
adapted for fragmenting a frame” and “a state machine
configured to map priority bits of a frame’s virtual local area
network tag” as recited in claim 17 necessarily require a
computer implementation. Since the fragmentation unit and the
state machine require specific implementation on a computer,
claim 17 is directed to a machine, not to software per se.
(App. Br. 10.) Appellants’ position is exemplified by the following line of
reasoning:
[C]laim 17 recites “a transmission unit adapted for interrupting
transmission of low priority code words . . . transmitting the
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high priority code words, and resuming the transmission of the
low priority code words . . .” These different priority code
words correspond to different priority frames. Claim 17 recites
that these different priority frames are transmitted via “one or
more bearer channels.” The transmission unit, therefore, is not
a transmission unit for merely passing data between layers;
rather, the transmission unit is adapted for transmission across a
“bearer channel,” otherwise referred to as a “physical link.”
The transmission unit must be capable of physical connection to
the one or more bearer channels.
(Reply Br. 3 (ellipses in original).)
Appellants also argue the Examiner has taken the quote from ¶ 27 of
the Specification out of context:
The paragraph from which the Examiner quotes, however,
states in its entirety: “[t]he present invention provides a
software program or product, preferably stored on a data
carrier, for executing the above described method when said
computer program product is executed on a computer,
processing unit, digital signal processor, or the like.”
(Specification, para. 0027 (emphasis added).)
(Reply Br. 4.)
We are not persuaded of error. We give the claims their “broadest
reasonable interpretation” in light of the Specification, In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997) (citations omitted), without importing
limitations into the claims from the Specification, SuperGuide Corp. v.
DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). When the
“broadest reasonable interpretation” of a claim encompasses both statutory
and non-statutory embodiments, the claim is properly rejected as directed to
non-statutory subject matter. Cf. In re Lintner, 458 F.2d 1013, 1015 (CCPA
1972) (citation omitted) (“Claims which are broad enough to read on
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obvious subject matter are unpatentable even though they also read on
nonobvious subject matter.”).
As admitted by Appellants, claim 17 does not positively recite a
computer. (See App. Br. 10.) Nor does claim 17 positively recite any other
physical element that would necessitate our concluding that claim 17 is
limited to statutory embodiments. We note, for example, contrary to
Appellants’ arguments, claim 17 does not recite a “physical bearer channel”
(App. Br. 10) or a “physical link” (Reply Br. 3). We are not persuaded that
claim 17 inherently recites physical machine elements. One of ordinary skill
in the art would have understood the functionalities of claim 17’s recited
“fragmentation unit,” “state machine,” and “transmission unit” are adapted
or configured to perform would be implemented in software. We conclude
the “broadest reasonable interpretation” of claim 17’s recited “fragmentation
unit,” “state machine,” and “transmission unit” encompasses software
modules that are adapted or configured to have the recited functionalities,
i.e. software per se.4
We agree with the Examiner that Appellants’ Specification supports
this claim construction. (Ans. 5 (citing Spec. ¶ 27).) Therefore, although
claim 17 may encompass statutory embodiments, it also encompasses
embodiments that are not among the four classes of statutory subject matter,
and is, therefore, non-statutory. Cf. Lintner, 458 F.2d at 1015. Accordingly,

4 Appellants urge us to consider the Examiner’s withdrawal of the rejection
of claim 25 under 25 U.S.C. §101 (Ans. 4) as probative that the rejection of
claim 17 was in error. (Tr. 6:16–21.) However, the question of whether the
Examiner correctly construed claim 25 is not before us, and we decline to
take it up sua sponte.
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we sustain the rejection of claim 17, and claims 18–24, which are not
separately argued with particularity. (See Ans. 13.)

REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH
Appellants do not traverse the rejection of claim 27. (See App. Br. 4,
28.) Therefore, Appellants have waived argument as to the rejection of
claim 27. See 37 C.F.R. § 41.37(c)(1)(vii). Accordingly, we summarily
sustain the rejection of claim 27 pro forma.

REJECTIONS UNDER 35 U.S.C. §§ 102(b) AND 103(a)
The Examiner maps the recited “sync code” to Delvaux’s special start
flag 910. (Ans. 6 (citing Delvaux Figs. 9[A–C]; ¶¶ 69–70).) Delvaux
discloses “the priority information that was previously conveyed in the
header of the data stream is now contained in a special start flag 910, which
is unique to different priority data streams.” (Delvaux ¶ 69.) The Examiner
also finds Delvaux discloses the sync code is included in each code word
created by fragmenting a low priority frame. (Ans. 6 (citing Delvaux Fig.
2A; ¶¶ 3–7).)
Appellants contend, inter alia, as follows:
Delvaux indicates only that the start flag 910 is inserted
into the transmit FIFO 571 to begin data transmission. Mere
mention of this start flag 910 and its insertion into a transmit
FIFO does not expressly or inherently disclose the mapping of
priority bits to a sync code, as recited in claim 1.
(App. Br. 18.)
Delvaux’s start flags are not equivalent to the claimed “sync
codes.” As claim 1 recites, a frame is fragmented into a
plurality of code words. A sync code is part of each code word.
(See Specification, para. 0067.) . . . Delvaux’s special start
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flags are associated with the overall data stream — the opening,
closing, suspension, and continuation of data streams — not
specifically designated blocks of data from within a frame, such
as the code words of the present invention. (See id.) The sync
code of claim 1 therefore simply cannot be equated to the start
flags of Delvaux.
(Reply Br. 6 (underlined emphases added).) In other words, Appellants
contend that because Delvaux’s special start flag only appears at the
beginning of a priority data stream and is not in one of the code words
produced by Delvaux’s fragmenting process, the special flag cannot be a
“sync code” as recited in claim 1.
We agree with Appellants. “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). “These
elements must be arranged as in the claim under review, but this is not an
‘ipsissimis verbis’ test”. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990)
(citations omitted).
As explained by Appellants (see Tr. 10:8–24, 11:8–11, 12:12–13:3)
the Examiner relies on Delvaux’s discussion of prior art fragmentation
schemes to disclose inserting a flag into each code word or frame fragment
(Ans. 6 (citing Delvaux Fig. 2A; ¶¶ 3–7)), while relying on one of Delvaux’s
own embodiments to disclose inclusion of a priority bit in a start flag (Ans. 6
(citing Delvaux Figs. 9[A–C]; ¶¶ 69–70).) By relying on one embodiment to
disclose certain limitations of claim 1, while relying on a different
embodiment to disclose other limitation of claim 1, the Examiner has failed
to demonstrate Delvaux discloses the recited “elements . . . arranged as in
the claim under review,” Bond, 910 F.2d at 832. Therefore, the Examiner
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has failed to establish a prima facie case of anticipation of claim 1 by
Delvaux. Accordingly, we do not sustain the rejection of claim 1 and claims
3, 5, 7, 8, and 16, which depend from claim 1.

REJECTIONS UNDER 35 U.S.C. § 103(a)
Appellants rely on the argument made regarding claim 1 in asserting
the patentability of claims 2, 4, 6, 9–15, and 26, adding that Tzeng, IEEE,
and Pedersen fail to cure the deficiencies in Delvaux’s disclosure. (See App.
Br. 19–22.) Although claims 2, 4, 6, 9–15, and 26 are rejected for
obviousness rather than anticipation, the Examiner fails to establish a prima
facie case of obviousness under 35 U.S.C. § 103(a) because the Examiner
does not articulate any reasoning or rational underpinnings to support
combining the embodiments of Delvaux relied on in rejecting claim 1. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Therefore, we are
persuaded of error in the rejections of claims 2, 4, 6, 9–15, and 26 and do not
sustain the various rejections.

ORDER
The decision of the Examiner to reject claims 17–24 is affirmed.
The decision of the Examiner to reject claim 27 is summarily
affirmed.
The decision of the Examiner to reject claims 1–16 and 26 is reversed.
Claim 25 is not subject to any outstanding ground of rejection, and is
no longer before us.
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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