Ex Parte Venkatsubra et al

Patent Trial and Appeal Board

Jun 25, 2014

11334658 (P.T.A.B. Jun. 25, 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.
11/334,658 01/18/2006 Venkat Venkatsubra AUS920050748US1 8354
61043 7590 06/25/2014
IBM CORPORATION (MH)
c/o MITCH HARRIS, ATTORNEY AT LAW, L.L.C.
P.O. BOX 7998
ATHENS, GA 30604
EXAMINER
GOLDBERG, ANDREW C
ART UNIT PAPER NUMBER
2491
MAIL DATE DELIVERY MODE
06/25/2014 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 VENKAT VENKATSUBRA and
RICHARD PERRY YOUNGMAN
____________

Appeal 2011-009133
Application 11/334,6581
Technology Center 2400
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 21–40. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE and ENTER A NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).

1 According to the Appellants, the real party in interest is International
Business Machines Corporation (App. Br. 3).
Appeal 2011-009133
Application 11/334,658

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Claimed Subject Matter
Claims 21, 28, and 35 are the independent claims on appeal.
Claim 21, reproduced below, with emphasis added, is illustrative of the
subject matter on appeal.

21. A computer-performed method of processing data received
by a networking protocol stack of a computer system, the
method comprising:
first receiving multiple fragments of a packet at the
networking protocol stack of the computer system;
determining that one or more fragments of the packet are
missing;
second receiving an indication that a target application
to receive the packet can accept incomplete packets;
responsive to the second receiving the indication that the
target application can accept incomplete packets, selectively
filling the portions of the packet represented by the fragments
with a predetermined constant value to produce a filled packet;
and
further responsive to the second receiving the indication
that the target application can accept incomplete packets,
selectively sending the filled packet onward in the networking
stack of the computer system to a target application, wherein if
the indication that the target application can accept incomplete
packets is not received, the filling and the sending are not
performed and the packet is rejected.

Rejections
The Appellants request our review of the following Examiner’s
rejections.
I. claims 21, 22, 27–29, 34–36, and 40 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Shuaib et al., “A Cell Loss Padding
Technique for the Transport of MPEG-2 Transport Stream over
ATM/AAL,” IIS 1997, Dec. 1997, pp. 450-454, hereinafter “Shuaib,”
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and Dixit et al., al., “MPEG-2 over ATM for Video Dial Tone
Networks: Issues and Strategies,” IEEE Network, Sept./Oct. 1995, pp.
30-40, hereinafter “Dixit”;
II. claims 23, 30, and 37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shuaib, Dixit, and Bobier (US 2006/0009170 A1,
pub. Jan. 12, 2006);
III. claims 24, 25, 31, 32, and 38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shuaib, Dixit, and Maughan (US 2006/0133422 Al,
pub. Jun. 22, 2006); and
IV. claims 26, 33, and 39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shuaib, Dixit, and Reeve (EP 1170975 A1, pub.
Jan. 9, 2002).

NEW GROUND OF REJECTION
Independent claims 21, 28, and 35 are 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 applicant regards as the invention.
Each of these independent claims includes steps or instructions that
contradict one another. More particularly, these claims include a step or
instruction for “receiving an indication that a target application to receive
the packet can accept incomplete packets,” however, in a contradictory
manner, the claims also recite “wherein if the indication that the target
application can accept incomplete packets is not received . . . .” Put simply,
the claims are indefinite because there is no situation in which there could be
(1) a step of or instruction for receiving an indication, and also (2) be a lack
of receiving the indication.
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Application 11/334,658

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Thus, independent claims 21, 28, and 35 are indefinite under 35
U.S.C. § 112, second paragraph. Accordingly, claims 22–27, 29–34, and
36–40, which depend from claims 21, 28, and 35, respectively, are also
indefinite under 35 U.S.C. § 112, second paragraph. This NEW GROUND
OF REJECTION is pursuant to our authority under 37 C.F.R. § 41.50(b).

ANALYSIS
In view of our determination that claims 21–40 are indefinite, it
follows that the prior art rejections of claims 21–40 must fall because they
are necessarily based on a speculative assumption as to the meaning of the
claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). It should be
understood, however, that our decision in this regard is based solely on the
indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of the prior art evidence applied in support of the rejection.

DECISION
We REVERSE the rejections of claims 21–40.
We enter a NEW GROUND OF REJECTION of 21–40 under 35
U.S.C. § 112, second paragraph, as indefinite pursuant to our authority under
37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that 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 the appeal as to the rejected claims:
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(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 § 41.52 by the Board
upon the same record . . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

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