09967601 (B.P.A.I. Aug. 6, 2012)

Ex Parte Vo

Board of Patent Appeals and InterferencesAug 6, 2012

09967601 (B.P.A.I. Aug. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte HAHN VO ____________________ Appeal 2010-006844 Application 09/967,601 Technology Center 2400 ____________________ Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and CAROLYN D. THOMAS, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-006844 Application 09/967,601 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a final rejection of claims 1-7, 9, 11-22, and 32-34. Claims 8, 10, and 23-31 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. Invention The invention on appeal is directed to a computer network which is “equipped to facilitate increased bandwidth for a large number of network data communications among a number of network devices.” (Abstract). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer network comprising: a plurality of network devices; and a network coupled to the plurality of network devices, wherein the network comprises a machine readable tangible medium storing code, the code adapted to provide a multi-tiered thread protocol that provides a tier having a virtual port, the virtual port comprising a send thread to send outgoing data and a receive thread to receive incoming data, wherein the send thread is adapted to send the outgoing data concurrently with the receive thread receiving the incoming data. (disputed limitations emphasized). Appeal 2010-006844 Application 09/967,601 3 PRIOR DECISION Appeal No. 2007-1061, (Application No. 09/967,601) mailed March 27, 2007. (Examiner Affirmed-In-Part). Note: In Appeal No. 2007-1061, the Examiner relied on Hipp (US 6,859,835) as evidence in support of a single §102(e) rejection. REJECTION Claims 1-7, 9, 11-22 and 32-34 stand rejected under 35 U.S.C § 103(a) as being unpatentable over the combination of Hipp (US 6,859,835) in view of Banerjee (US 2002/0199000). GROUPING OF CLAIMS Based on Appellant’s arguments (App. Br. 5-16), we decide the appeal on the basis of claims 1 and 3. See 37 C.F.R. § 41.37(c)(1)(vii). ISSUE Under § 103, did the Examiner err in finding that the cited references, either alone or in combination, would have taught or suggested: [a] virtual port comprising a send thread to send outgoing data and a receive thread to receive incoming data, wherein the send thread is adapted to send the outgoing data concurrently with the receive thread receiving the incoming data, within the meaning of independent claim 1 and the commensurate limitations recited in independent claims 9, 16, and 32? Appeal 2010-006844 Application 09/967,601 4 ANALYSIS Independent Claims 1, 9, 16, and 32 This appeal turns upon claim construction. In particular, the Examiner concludes that the disputed claim term “virtual port” should be construed more broadly than the interpretation argued by Appellant:1 In response, Examiner sets forth that the “virtual port” set forth in the claim [“]does not preclude the use of a second port with an intended first port.” [See Board Decision filed, March 27, 2007, page 3]. As also stated in the Board Decision, Hipp creates a virtual port by multiplexing the send and receive data between at least two ports (col. 3, 11. 22 to 33; col. 4, 11.27 to 40; col. 5, 11. 15 to 18, 39 to 42, and 64 to 67; col. 6, 11.15 to 17; col. 7,1.66 to col. 8,1.12; col. 8,11.53 to 58). Hipp uses the term “a virtual port” because the second port is transparent to the two applications that are sending and receiving data to an intended first port (col. 2, 11.33 to 36 and 52 to 55; col. 3, 11.1 to 22; col. 6, 11. 15 to 17). (Ans. 12, emphasis added). We agree with the Examiner (and the prior BPAI Decision at 4) that under a broad but reasonable construction, the claimed “virtual port” does not preclude the use of a second port with an intended first port, as taught or suggested by Hipp. (Id.). In particular, representative claim 1 utilizes the transitional term “comprising” (“the virtual port comprising . . .”) which “is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.” Georgia-Pacific Corp. v. U.S. Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999) (citing M.P.E.P. § 2111.03 (6th ed.1997)). “A drafter uses the term ‘comprising’ to mean ‘I claim at least what follows and 1 See App. Br. 5, et seq. Appeal 2010-006844 Application 09/967,601 5 potentially more.’” Vehicular Techs. Corp. v. Titan Wheel Int’l, Inc., 212 F.3d 1377, 1383 (Fed. Cir. 2000); see also Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising’ is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.”) (emphasis added) (citation omitted). This reasoning is applicable here, given the use of “comprising” in Appellant’s claims.2 Moreover, when we look to Appellant’s Specification for context, we conclude that the scope of the disputed claim term “virtual port” broadly covers any connection(s) between software applications: “Virtual port and port are used interchangeably to identify connections between software applications, i.e., between the OS and device drivers.” (Spec., para. [0007], emphasis added). Nor does Appellant disclose in the Specification that the claim term “virtual port” has any particular recognized meaning in the art. 3 Regarding the disputed claimed send and receive threads, the Examiner (Ans. 4, 10-11) points to Appellant’s Specification, which acknowledges that “to activate a particular socket for communication, a send or receive thread is called according to well known techniques in the art.” 4 2 Claim 32 recites equivalent open-ended language: “each of the virtual ports includes . . . .” 3 Any special meaning assigned to a term “must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.” Multiform Desiccants, Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998). 4 “Valid prior art may be created by the admissions of the parties. . . . [A] statement by an applicant during prosecution identifying certain matter not the work of the inventor as ‘prior art’ is an admission that the matter is prior Appeal 2010-006844 Application 09/967,601 6 (Spec. 2, para. [0007]). We also observe that Banerjee specifically teaches that “multiple threads may be processed by the processor simultaneously.” (Banerjee, para. [0007], emphasis added). As pointed out by the Examiner, the rejection is based on the combined teachings and suggestions of the Hipp and Banerjee references. (Ans. 10-11). Regarding the secondary Banerjee reference, Appellant also presents a “teaching away” argument regarding the Examiner’s proffered combination: The secondary reference cited by the Examiner, Banerjee, does not change the fact that Hipp would have led a person of ordinary skill in the art away from the claimed subject matter. Specifically, Banerjee does not disclose anything that can reasonably be construed as disclosing a send thread adapted to send the outgoing data concurrently with the receive thread receiving the incoming data. Paragraph [0007] of Banerjee cited by the Examiner simply discloses processing multiple threads in parallel, which has nothing to do with a send thread and receive thread that are part of a virtual port that concurrently send and receive data. In fact, Banerjee notes that a “socket is used to connect a thread to a virtual port.” Banerjee, ¶ [0008]. Thus, according to Banerjee, one socket connects one thread to one port, which does not provide any hint of concurrent bidirectional communications using a single virtual port that has a send thread and a receive thread that can operate concurrently. Rather, Banerjee, like Hipp, discloses sequential communication. See, e.g., Banerjee, ¶¶ [0042]-[0045] (describing transmitting data and then receiving data from a port selected in a round robin manner). (Reply Br. 4; See also App. Br. 10). art.” Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003) (citations omitted); see also Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a patent that something is in the prior art is binding on the applicant and patentee for determinations of anticipation and obviousness.”) (Citation omitted). Appeal 2010-006844 Application 09/967,601 7 However, merely teaching an alternative or equivalent method does not teach away from the use of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965). “The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed . . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (emphasis added). This reasoning is applicable here. Appellant’s independent claims are silent regarding sockets. In reviewing the record, we find the Examiner provides an articulated reasoning with some rational underpinning that sufficiently supports the legal conclusion of obviousness. (Ans. 4-5). We find this is a case, as the Supreme Court guides, where the skilled artisan would “be able to fit the teachings of multiple patents together like pieces of a puzzle” since the skilled artisan is “a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U. S. 398, 420-21 (2007). Moreover, “[t]he combination of familiar elements [e.g., network devices, virtual ports, send and receive threads– claim 1] according to known methods is likely to be obvious when it does no more than yield predictable results.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (quoting KSR, 550 U. S. at 416). Appellant has presented no evidence that combining the teachings of Hipp with the features relied on by the Examiner in Banerjee would have been “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” Leapfrog, 485 F.3d at 1162 (citing KSR, 550 U.S. at 418-19). Appeal 2010-006844 Application 09/967,601 8 Although the Examiner’s construction of “virtual port” is broad (Ans. 12), because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). On this record, Appellant has not persuaded us that the Examiner’s construction of the disputed claim term “virtual port” is overly broad, unreasonable, or inconsistent with the Specification. For essentially the same reasons set forth by the Examiner (Ans. 8-14), and for the reasons discussed above, we are of the view that the disputed limitations are at least suggested by the cited combination of Hipp and Banerjee. For these reasons, we are not persuaded of error regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness. Accordingly, we sustain the Examiner’s obviousness rejection of claim 1, and claims 9, 16, and 32 which recite commensurate limitations. See 37 C.F.R. § 41.37(c)(1)(vii)(“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”). Dependent Claims 3 and 15 Regarding the additional argued limitations of send and receive threads being sub-threads of the master communication thread (App. Br. 11- 12), we agree with the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness for the reasons articulated by the Examiner. (Ans. 14-15). As previously discussed, Appellant’s Specification discloses that “[t]o activate a particular socket for communication, a send or receive Appeal 2010-006844 Application 09/967,601 9 thread is called according to well known techniques in the art.” (Spec. 2, para. [0007], emphasis added). Banerjee specifically teaches that “multiple threads may be processed by the processor simultaneously” (Banerjee, para. [0007], emphasis added). Therefore, we sustain the Examiner’s rejection of dependent claims 3 and 15. The remaining dependent claims (not argued separately) fall for the same reasons discussed above regarding the respective independent claims. Arguments not made are considered waived. 5 See 37 C.F.R. § 41.37(c)(1)(vii). DECISION We affirm the Examiner’s § 103 rejection of claims 1-7, 9, 11-22, and 32-34 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. § 41.50(f). ORDER AFFIRMED peb 5 See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a ground of rejection to the Board, section 1.192(c)(7) [(now section 41.37(c)(1)(vii))] imposes no burden on the Board to consider the merits of that ground of rejection . . . . [T]he Board may treat any argument with respect to that ground of rejection as waived.”).