Ex Parte Rasanen

Patent Trial and Appeal Board

Mar 25, 2013

11105401 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JUHA RASANEN
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Appeal 2010-008530
Application 11/105,401
Technology Center 2400
____________

Before JOHN A. JEFFERY, DAVID C. McKONE, and
DANIEL N. FISHMAN, Administrative Patent Judges.

McKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 25-34, 36-52, 54 and 55. See App. Br. 2.1 Claims 1-24
and 35 are cancelled. See id. Claim 53 has been indicated as containing

1 Throughout this opinion, we refer to the Appeal Brief filed August 4, 2009
(“App. Br.”), the Examiner’s Answer mailed March 12, 2010 (“Ans.”), and
the Reply Brief filed May 11, 2010 (“Reply Br.”).
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allowable subject matter.2 See Ans. 7. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

THE INVENTION
Appellant’s invention relates to setting up data compression and error
correction in telecommunications networks. See Spec. 1:3-5. Claim 25,
which is illustrative of the invention, reads as follows:
25. An apparatus, comprising:
a processor configured to
connect a first leg in a first
telecommunications network to a second leg in a second
telecommunications network when an error correction
protocol and data compression are used on each leg, and
delay a set-up of an error correction protocol
of a leg having a faster handshaking and/or delay the data
compression negotiation until a set-up of an error
correction protocol of a leg having a slower handshaking
has been completed and the data compression negotiation
can be started.

THE REJECTIONS
Claims 44-49 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. See Ans. 3.

2 Although the Examiner also indicates that claims 33, 42, and 48 contain
allowable subject matter (Ans. 7), the Examiner nonetheless rejects (1)
claims 33 and 42 under § 112, and (2) claim 48 under § 101. See Ans. 3-4.
We therefore presume that the Examiner’s erroneous indication that these
rejected claims would be allowable if rewritten in independent form is a
harmless typographical error.
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Claims 25-27, 30-34, 36, 38-43, and 553 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement. See Ans. 4.
Claims 25-32, 34, 36-41, 43-47, 49-52, 54, and 55 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Suomi (US 5,809,066; issued
Sept. 15, 1998) and Adler (US 6,256,115 B1; issued July 3, 2001; filed Feb.
21, 1997). See Ans. 4-7.

ISSUES
The issues raised by Appellant’s contentions are:
1) whether claims 44-49 recite statutory subject matter. See App. Br. 32-
34;
2) whether the Specification enables a “processor” configured to perform
the actions of claims 25 and 27 and a “computer readable-medium”
embodying a computer program configured to control a processor to
perform the actions of claims 38 and 55. See App. Br. 9-14; and
3) whether Suomi and Adler teach “delay[ing] a set-up of an error
correction protocol of a leg having a faster handshaking and/or
delay[ing] the data compression negotiation until a set-up of an error
correction protocol of a leg having a slower handshaking has been
completed and the data compression negotiation can be started,” as
recited in claim 25. See App. Br. 14-18.

3 The Examiner also lists claim 35 in the enablement rejection. See Ans. 4.
However, claim 35 is cancelled. See App. Br. 2.
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Appellant’s contentions raise additional issues. Because we are
persuaded of Examiner error by the identified issues, which are dispositive
of the appeal, we do not reach the additional issues.

ANALYSIS
REJECTION OF CLAIMS 44-49 UNDER 35 U.S.C. § 101
The Examiner concludes that process claims 44-49 are not statutory
because they are not tied to a particular machine and do not transform
underlying subject matter. See Ans. 3. Instead, the Examiner reasons, the
elements of independent claim 44 “are broad enough that the claim could be
completely performed mentally, verbally or without a machine . . . .” Id.
Appellant disagrees, arguing that (1) because the claims recite connecting
legs in communication networks, they are tied to a particular machine; and
(2) because the recited steps of “connecting” and “delaying” transform the
state of a memory, the recited process transforms a particular article (the
memory) into a different state or thing. See App. Br. 33-34.
While the Supreme Court (after the briefing in this case) rejected the
notion that the so-called “machine-or-transformation” test is the “sole” or
“exclusive” test for subject-matter eligibility of a process claim, it did
consider that test “a useful and important clue, an investigative tool, for
determining whether some claimed inventions are processes under § 101.”
Bilski v. Kappos, 130 S.Ct. 3218, 3226-27 (2010). We are not persuaded
that claim 44’s manipulation of data in a memory constitutes a
“transformation.” See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1375 (Fed. Cir. 2011) (“The mere manipulation or reorganization of
data, however, does not satisfy the transformation prong.”). However, we
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do agree with Appellant that the process recited in claim 44 is tied to a
particular machine, i.e., first and second telecommunication networks. As
such, we disagree with the Examiner that the connecting and delaying steps
can be “completely performed mentally, verbally or without a machine,”
Ans. 3. Instead, we conclude that claim 44 recites patent-eligible subject
matter.
Accordingly, we do not sustain the rejection of independent claim 44
and claims 45-49, which depend on claim 44.

REJECTION OF CLAIMS 25-27, 30-34, 36, 38-43, AND 55
UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
Independent claim 25 recites “a processor configured to” perform
certain steps. The Examiner concludes that the Specification fails to
disclose a processor configured to perform these steps. See Ans. 4.
Independent claim 38 recites a “computer program embodied on a computer
readable medium,” the program configured to control a processor to perform
certain steps. The Examiner concludes that the Specification does not
“disclose or support” such a computer readable medium. Id.
Appellant contends that the Examiner erred by not properly
considering factors associated with undue experimentation in the enablement
analysis. See App. Br. 10. For instance, Appellant contends that the
processors and memories recited in claims 25 and 38 are conventional and
that persons of ordinary skill in the art would have commonly understood
that network devices contain processors and memory. See App. Br. 11.
Appellant also identifies a description of a processor as part of an
interworking function (“IWF”) of a channel controller in the Specification at
page 13, lines 14-16, and a description of an IWF requiring memory at
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Specification, page 3, lines 4-6, as providing enabling disclosures of the
recited processor and computer-readable medium. See App. Br. 11-12.
When rejecting a claim under the enablement
requirement of section 112, the PTO bears an initial burden of
setting forth a reasonable explanation as to why it believes that
the scope of protection provided by that claim is not adequately
enabled by the description of the invention provided in the
specification of the application.
In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993). The Federal Circuit
has listed several exemplary factors to consider in determining whether a
disclosure would require undue experimentation, and thus be non-enabling,
including the quantity of experimentation needed to make or use the
invention based on the content of the disclosure; the amount of direction or
guidance presented; the existence of working examples; the nature of the
invention; the state of the prior art; the relative skill of those in the art; the
level of predictability in the art; and the breadth of the claims. See In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).4
The rejection does not meet the burden set forth in Wright.
Specifically, the rejection does not adequately analyze whether (and why)
undue experimentation would be required to make and use a processor
configured to perform the actions recited in claim 25 or a computer-readable
medium storing a program configured to control a processor to perform the

4 We note the Examiner’s citation to MPEP § 2163.04 and finding that the
Specification does not “reasonably convey that the inventor had possession
of the subject matter,” see Ans. 8, are germane to § 112, first paragraph’s
written description requirement. However, the enablement and written
description requirements are separate requirements. See Ariad Pharm., Inc.
v. Eli Lilly & Co., 598 F.3d 1336, 1344 (Fed. Cir. 2010) (en banc). The
rejection states that it is pursuant to the enablement requirement; thus, we
analyze the rejection under the law applicable to enablement.
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actions recited in claim 38. See Ans. 4. For example, the rejection does not
adequately evaluate evidence showing undue experimentation, including any
of the factors suggested in Wands. See id. In light of the Specification’s
disclosure of a processor and memory for implementing an IWF and the lack
of analysis in the rejection, we are not persuaded that the Specification fails
to enable claims 25 and 38.5
Accordingly, we do not sustain the rejection of (1) independent claims
25 and 38; (2) independent claims 27 and 55, which include limitations
commensurate to claims 25 and 38; (3) claims 26, 30-34, and 36, which
depend on claim 25; and (4) claims 39-436, which depend on claim 28.

REJECTION OF CLAIMS 25-32, 34, 36-41, 43-47,
49-52, 54, AND 55 UNDER 35 U.S.C. § 103(a)
The Examiner finds that Suomi teaches each limitation of independent
claim 25 except for the processor being configured to “delay a set-up of an
error correction protocol of a leg having a faster handshaking and/or delay
the data compression negotiation until a set-up of an error correction
protocol of a leg having a slower handshaking has been completed and the
data compression negotiation can be started.” See Ans. 5. The Examiner
finds the missing limitation taught in Adler. See id. According to the
Examiner, it would have been obvious to incorporate these teachings of

5 If prosecution should continue, the Examiner should consider whether a
recitation of a “processor configured to” perform certain steps, as in claims
25 and 27, is purely functional. See, e.g., Ex parte Rodriguez, 92 USPQ2d
1395 (BPAI 2009) (precedential).
6 We note that claims 39-43 do not recite a “computer-readable medium”
and depend on claim 28 which was not rejected under § 112. For this
reason, the rejection of claims 39-43 is erroneous.
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Adler into Suomi “so as to enhance overall network performance by
providing for optimum error free data transmission between end points of
interest.” Id.
Appellant contends that the Examiner has cited large sections of Adler
without providing any reasoning, and thus Appellant is not reasonably
apprised as to what the Examiner relies on in Adler. See App. Br. 16.
Nevertheless, Appellant contends that Adler does not teach the limitation the
Examiner finds missing from Suomi. Instead, Appellant argues, Adler’s
teaching is limited to delaying transmission of fax messages, and does not
address delaying a set-up of an error correction protocol in a leg with a faster
handshaking. See App. Br. 17. According to Appellant, Adler “has nothing
to do with error correction protocols or legs with different handshaking
times.” Id. In response, the Examiner states that the cited portions of Adler
are “self explanatory” and need no further explanation. Ans. 9.
We agree with Appellant. Adler teaches delaying various aspects of a
fax transmission to account for negotiating communication links. See Adler,
col. 15, ll. 1-5; col. 16, ll. 44-56. It also discusses negotiating
interconnections through a network “with the encryption/compression
operation taking place ‘on the fly.’” Adler, col. 15, ll. 28-33. However, the
Examiner has not identified in Adler a teaching of delaying a set-up of an
error correction protocol. Nor do the Examiner’s citations to Adler show
delaying a data compression negotiation until the completion of the set-up of
an error correction protocol of the leg with the slower handshaking. In other
words, Adler does not address the limitation that the Examiner finds missing
from Suomi. Thus, the rejection does not establish a prima facie case of
obviousness.
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Accordingly, we do not sustain the rejection of (1) independent claim
25; (2) independent claims 27-29, 37, 38, 44, and 55, each of which recites a
limitation commensurate with the limitation in claim 25 we find not to be
taught by the cited prior art; (3) claims 26, 30-32, 34, and 36, which depend
on claim 25; (4) claims 50-52 and 54, which depend on claim 27; (5) claims
39-41 and 43, which depend on claim 28; and (6) claims 45-47 and 49,
which depend on claim 44.

ORDER
The decision of the Examiner to reject claims 25-34, 36-52, 54, and
55 is reversed.

REVERSED

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