Ex Parte Babiarz et al

Patent Trial and Appeal Board

Apr 29, 2016

11530579 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111530,579 09/11/2006 Jozef Babiarz
34845 7590 05/03/2016
Anderson Gorecki & Rouille LLP
33 NA GOG PARK
ACTON, MA 01720
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
127-054 9911
EXAMINER
DUDA,ADAMK
ART UNIT PAPER NUMBER
2473
NOTIFICATION DATE DELIVERY MODE
05/03/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
handerson@smmalaw.com
officeadmin@smmalaw.com
cmorrissette@smmalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOZEF BABIARZ and BAKUL KHANNA
Appeal2014-005172
Application 11/530,579 1
Technology Center 2400
Before ROBERT E. NAPPI, CARLL. SILVERMAN, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-19. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is Avaya, Inc. App. Br.
2.
2 The Examiner "objected" to claims 6, 7, 9-11, 14, and 17-19 and found
they "would be allowable if rewritten to overcome the [Office Action's]
rejection(s) ... and to include all of the limitations of the base claim and
any intervening claims." See Final Act. 1, 23; see also App. Br. 2 ("The
rejections and objections of claims 1-19 are the subject of this appeal.").
Claims 20-27 were cancelled. App. Br. 20-21 (Claims App'x).
Appeal2014-005172
Application 11/530,579
THE CLAIMED INVENTION
Appellants' claimed invention "relates generally to the field of
networking and more particularly to a method and apparatus for directing
traffic around congestion in a network." Spec. i-f 4. Of the claims on appeal,
claim 1 is illustrative of the subject matter of the appeal and is reproduced
below.
1. A computer program product, comprising a non-
transitory computer usable medium having a computer readable
program code embodied therein, said computer readable
program code adapted to be executed to implement a method
for selecting a path for a flow comprising a plurality of packets,
said method comprising:
performing traffic performance measurements on a
primary path to determine congestion, Quality of Service (QoS)
and connectivity; and
selectively routing the flow to an outbound link around
the primary path in response to a comparison of the congestion,
Quality of Service (QoS) and connectivity of the primary path
with congestion, Quality of Service (QoS) and connectivity of
an alternate path.
REJECTIONS ON APPEAL3
(1) The Examiner rejected claim 1, and its dependent claims (2-
19), under 35 U.S.C. § 112, first paragraph, as being based on a disclosure
which is not enabling.
(2) The Examiner rejected claim 1, and its dependent claims (2-
19), under 35 U.S.C. § 112, first paragraph, for failing to disclose the best
mode contemplated by the inventor.
3 The Examiner withdrew the 35 U.S.C. § 103(a) rejection of claims 15 and
16. Ans. 15.
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(3) The Examiner rejected claims 2, 5, 6, 8, and 9, and their
dependent claims (3, 4, 7, 10, and 11) under 35 U.S.C. § 112, first
paragraph, for failing to disclose the best mode contemplated by the
inventor.
(4) The Examiner rejected claim 1, and its dependent claims (2-
19), under 35 U.S.C. § 112, second paragraph, for failing to set forth the
subject matter which Appellants regard as their invention.
(5) The Examiner rejected claim 1, and its dependent claims (2-
19), under 35 U.S.C. § 112, second paragraph, for being indefinite with
respect to the term "Quality of Service."
(6) The Examiner rejected claim 9, and its dependent claims (10
and 11 ), under 35 U.S.C. § 112, second paragraph, for being indefinite with
respect to the term "blackout."
(7) The Examiner rejected claim 2, 5, 6, 8, and their dependent
claims (3, 4, and 7), under 35 U.S.C. § 112, second paragraph, for being
indefinite with respect to the term "brownout."
(8) The Examiner rejected claims 1-5 and 8 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Soumiya et al.
(US 2001/0037401 Al; Nov. 1, 2001) (hereinafter "Soumiya") and
Kodialam et al. (US 7,593,348 B2; Sept. 22, 2009) (hereinafter
"Kodialam"), collectively referred to as the "combination."
(9) The Examiner rejected claims 12 and 13 under 35 U.S.C.
§ 103 (a) as being unpatentable over the combination of Soumiya, Kodialam,
and Weston-Dawkes (US 6,487,177 Bl; Nov. 26, 2002).
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Application 11/530,579
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner erred. In reaching our Decision, we consider
all evidence presented and all arguments made by Appellants. We below
address specific findings and arguments relating to each of the Examiner's
rejections Appellants are appealing.
(1) Enabling Specification and enablement of claim 1
Appellants contend the Specification complies with the enablement
requirement of 35 U.S.C. § 112, first paragraph, including with respect to
claims 1 and its dependent claims. See App. Br. 6-9; Reply Br. 4--8.
Specifically, Appellants contend the Specification, and its use of the term
Quality of Service ("QoS"), contains sufficient information regarding the
subject matter of the claims so as to enable one skilled in the art to make and
use the claimed invention. See id. As to QoS, Appellants contend it is a
term that is "commonly used and well understood in the art." See App. Br.
6; Reply Br. 4. Appellants illustrate their contention by citing the following
example sources:
The International Telecommunication Union (ITU) standard
X.902, Information technology- Open distributed processing-
Reference Model, refers to QoS as "A set of quality
requirements on the collective behavior of one or more
objects," where QoS parameters describe the speed and
reliability of data transmission, e.g., throughput, transit delay,
and error rate.
App. Br. 7.
The Internet Engineering Task Force (IETF) in RFC 1946,
Native ATM Support for ST2 +, states that "deterministic
delivery services demand that both the source application and
the network infrastructure have capabilities to request, setup,
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Id.
Id.
and enforce the delivery of the data ... [and these] services are
referred to as bandwidth reservation and Quality of Service
(QoS)."
The ATM Lexicon defines QoS as "[a] term which refers to the
set of ATM performance parameters that characterize the traffic
over a given virtual connection," where QoS parameters include
cell loss ratio, cell error rate, cell misinsertion rate, cell delay
variation, cell transfer delay, and average cell transfer delay.
Appellants also argue the Specification does not provide a
narrower definition for QoS, contrary to what the Examiner finds, but
rather provides specific examples of QoS. See App. Br. 8
("[C]ongestion can cause poor quality of service because packets are
dropped or delayed is just one example of how quality of service can
be compromised.") (citing Spec. i-fi-1 8, 17). Specifically, Appellants
contend the Specification does not equate QoS to "congestion," as the
Examiner finds. See App. Br. 8-9 (citing Spec. i135).
The Examiner finds QoS is "a common term in data networking, [but]
there are many different usages and definitions for QoS, leading to
confusing regarding an exact meaning in precise or quantitative terms." See
Ans. 15 (quoting Jorgensen (US 6,640,248 Bl; Oct. 28, 2003), col. 11,
11. 30-33). The Examiner also finds the Specification provides a narrow
definition for QoS by equating "measuring congestion" and "measuring
QoS." See Ans. 15-16 (citing Spec. i1 8). In addition, the Examiner
underscores that "absolutely no where does the ... [S]pecification define a
'measure of congestion' as NOT being a 'measure of Quality of
Service' .... " See Ans. 16. The Examiner, thus, concludes the
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Specification provides an enabling definition for "QOS" where
"[ c ]ongestion anticipates QOS" and no enabling definition for "QOS" where
"[c]ongestion does not anticipate QOS." See Ans. 17 (citing Spec. i-fi-18, 17);
see also Ans. 17-18 (finding ITU's definition for QoS is extremely broad
and would require undue and unreasonable experimentation).
We find Appellants' arguments persuasive. We agree with Appellants
that QoS is a "commonly used and well understood [term] in the art," and
the Specification's use of the term QoS contains sufficient information
regarding the subject matter of the claims so as to enable one skilled in the
art to make and use the claimed invention. See Spec. i-fi-18, 17, 35; supra
ITU's and IETF's QoS definitions. We also agree with Appellants that the
Examiner cited portions of the Specification provide specific examples
concerning QoS rather than re-defining the term. See Spec. i-fi-1 8, 1 7.
Accordingly, we do not sustain this rejection.
(2) Best mode requirements for claim 1 and its dependents
Appellants contend the Specification complies with the best mode
requirement of 35 U.S.C. § 112, first paragraph, including with respect to
claims 1 and its dependent claims. See App. Br. 10; Reply Br. 9-10.
Furthermore, Appellants contend, in making a best mode rejection, the
Examiner was required, but failed to (i) "[d]etermine whether, at the time the
application was filed, the inventor knew of a mode of practicing the claimed
invention that the inventor considered to be better than any other," and (ii)
"[c]ompare what was known ... with what was disclosed." See App. Br. 10
(citing Chemcast Corp. v. Arco Indus., 913 F.2d 923 (Fed. Cir. 1990)).
The Examiner finds Appellants' arguments as to the proper meaning
for "congestion" and "QoS" - including that they are not equatable - are
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unsupported by the Specification. See Ans. 18 (citing App. Br. 13; Spec.
i-fi-18, 17); see also Final Act. 9 (citing Appellants' Oct. 18, 2011 Remarks).
The Examiner also finds the Specification supports only aspects of the
invention (i.e., paragraphs 8 and 17 regarding congestion) but fails to
illustrate other aspects of the invention (i.e., the alleged different scope for
QoS). See Ans. 18 (citing Spec. i-fi-1 8, 17). Accordingly, the Examiner
concludes "[t]his appears to be a concealment of the best mode to practice
the instant invention." See Ans. 18.
We find Appellants' arguments persuasive. We find the Examiner did
not make a prima facie case that the inventor knew of a mode of practicing
the claimed invention that the inventor considered to be better than what was
disclosed in the Specification. Accordingly, we do not sustain this rejection.
(3) Best mode requirements for claims 2, 5, 6, 8, 9, and dependents
Appellants contend the Specification complies with the best mode
requirement of 35 U.S.C. § 112, first paragraph, with respect to the claims
reciting "blackout" or "brownout." See App. Br. 11-12; Reply Br. 9-10.
Specifically, Appellants contend the Examiner was required, but failed to
(i) "[ d]etermine whether, at the time the application was filed, the inventor
knew of a mode of practicing the claimed invention that the inventor
considered to be better than any other," and (ii) "[c]ompare what was known
... with what was disclosed." See App. Br. 10 (stating the same reasoning
above regarding the best mode rejection as to QoS, also applies here) (citing
Chemcast Corp. v. Arco Indus., 913 F.2d 923 (Fed. Cir. 1990)).
The Examiner finds "evidence of concealment of the best mode is
based upon the definitions for the terms 'Blackout State' and 'Brownout
State' ... wherein the definitions have overlapping boundaries indicating
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that a 'Blackout State' can be called a 'Brownout State' and a 'Brownout
State' can be called a 'Blackout State."' See Final Act. 10 (citing Spec.
ii 35).
We find Appellants' arguments persuasive. We find the Examiner did
not make a prima facie case that the inventor knew of a mode of practicing
the claimed invention that the inventor considered to be better than what was
disclosed in the Specification. Accordingly, we do not sustain this rejection.
(4) Written description (or claim 1 and its dependents
Appellants contend the Specification complies with the written
description requirement of 35 U.S.C. § 112, first paragraph, with respect to
claim 1. See App. Br. 12; Reply Br. 2. Specifically, Appellants contend, as
discussed above, that the Examiner mischaracterizes paragraphs 8 and 17 of
the Specification as defining QoS, rather than providing examples of the
well understood term QoS. See id.
The Examiner finds, based on Appellants' prior remarks regarding
prior art teachings, what Appellants regard as their invention uses a different
definition for QoS than how the Specification defines QoS, and therefore,
the Specification fails to evidence Appellants had possession of the scope of
the invention as claimed in claim 1 at the time the Specification was filed.
See Final Act. 10-11 (citing Oct. 18, 2011 Remarks; Spec. i-fi-1 8, 17 (finding
the Specification provides a different definition for QoS).
In accordance with our findings above, we find Appellants' arguments
persuasive. We find that one of ordinary skill in the art would understand
the scope of QoS to be commensurate with what is claimed, and one skilled
in the art would reasonably conclude that Appellants had possession of this
aspect of the claimed invention at the time the Specification was filed. See
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Jn re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989); Spec. iii! 8, 17, 35.
Accordingly, we do not sustain this rejection.
(5) Indefiniteness of QoS
Appellants contend the Examiner erred in rejecting claim 1 and its
dependent claims for being indefinite. See App. Br. 5; Reply Br. 3.
Specifically, as above for enablement of claim 1, Appellants argue QoS is a
term that is "commonly used and well understood in the art." See App. Br. 6
(citing QoS definitions); Reply Br. 4.
The Examiner finds QoS is a relative term which is extremely
subjective, and renders the claim indefinite. See Final Act. 11. The
Examiner also finds QoS is not defined by claim 1 and the Specification
does not provide a sufficient definition. See id.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted);seealsoExparteMiyazaki, 89USPQ2d 1207, 1210-13 (BPAI
2008) (precedential) (applying the Orthokinetics standard).
We agree with Appellants that one of ordinary skill in the art would
understand the scope of what is being claimed in claim 1. For example, we
agree that QoS is a "commonly used and well understood [term] in the art,"
and one of skill in the art would understand what is claimed in reading claim
1 in light of the Specification. See Spec. iii! 8, 17, 3 5; supra ITU' s and
IETF' s QoS definitions. Accordingly, we do not sustain this rejection.
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(6) Indefiniteness ofblackout
Appellants contend the Examiner erred in rejecting claim 9 and its
dependent claims 10 and 11 for being indefinite. See App. Br. 11-12; Reply
Br. 11-12. Specifically, Appellants argue claim 9 sufficiently defines the
term blackout (i.e., "blackout condition indicating a failure in the primary
path"). See App. Br. 11. Appellants also argue "the general population
understands ... that an electrical blackout is a loss of electric power." See
id.
The Examiner finds "blackout" is a relative term which renders the
claim indefinite. See Final Act. 11. The Examiner also finds "blackout" is
not defined by the claim nor the Specification. See id. (citing Spec. i-f 35
(finding the terms "blackout" and "brownout" are defined as comprising
overlapping scope, and thus, one of ordinary skill in the art would not be
reasonably apprised of the scope of the invention).
We agree with Appellants that one of ordinary skill in the art would
understand the scope of "blackout" in claim 9. We also agree the language
of claim 9 defines the proper scope for "blackout" (i.e., a failure in the
primary path). Accordingly, we do not sustain this rejection.
(7) Indefiniteness ofbrownout
Appellants contend the Examiner erred in rejecting claims 2, 5, 6, 7,
and 8 for being indefinite. See App. Br. 11-12; Reply Br. 11-12.
Specifically, Appellants argue "brownout" is a well-known term, and "the
general population understands . . . an electrical brownout is a sag [or] is a
drop in power that can cause lights to dim and poor performance of
equipment." See App. Br. 11; see also Reply Br. 10 ("Brownout state may
indicate congested or QoS/performance below defined limit and connectivity
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OK.") (citing Spec. if 35 ).
The Examiner finds "brownout" is a relative term which renders the
claims indefinite. See Final Act. 12. The Examiner also finds "brownout" is
not defined by the claims nor the Specification. See id. (citing Spec. if 35).
We agree with the Examiner that "brownout" is a relative term which
renders the claims indefinite. We find one of ordinary skill in the art would
not understand the scope of what is claimed when read in light of the
specification. For example, paragraph 35's recitation that a "[b]rownout
state may indicate congested or QoS/performance below defined limit and
connectivity OK," does not serve to clarify the proper scope of the term. See
Spec. if 35. We also agree with the Examiner that the language of the claims
do not define "brownout." See App. Br. 17-18 (Claim App'x).
Accordingly, we sustain this rejection.
(8) Obviousness of claims 1-5 and 8, and claims 12 and 13
Appellants contend that the combination, and Soumiya in particular,
fails to teach or suggest "a comparison of the congestion, Quality of Service
(QoS) and connectivity of the primary path with congestion, Quality of
Service (QoS) and connectivity of an alternate path," as recited in claim 1.
See App. Br. 13-14 (emphasis added). Appellants argue Soumiya instead
teaches comparing, inter alia, congestion, but not QoS, in making routing
decisions. See App. Br. 13 (citing Soumiya if 230).
The Examiner finds Soumiya teaches or suggests making routing
decisions based on a comparison of, inter alia, QoS. See Final Act. 15.
Specifically, the Examiner finds (i) Soumiya teaches comparing congestion
values and (ii) the Specification teaches "measured congestion indicates that
a certain quality of service exists," and thus, Soumiya teaches comparing
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QoS values. See Final Act. 15-16 (citing Soumiya if 230; Spec. iii! 8, 17).
We find Appellants' argument persuasive, and in accordance with our
above reasoning, we find the Examiner cited portions of Soumiya fails to
teach or suggest a comparison of the QoS of a primary path with the QoS of
an alternate path. See Soumiya if 230 (teaching comparing congestion
values rather than QoS values). Furthermore, the claim recites a comparison
of both congestion and QoS, and each term should be given meaning.
Accordingly, we do not sustain this rejection.
Furthermore, claims 12 and 13 depend from claim 1 and incorporate
this disputed limitation. The Examiner's §103(a) rejection of claims 12 and
13 relies on the cited combination for claim 1, and thus, we also do not
sustain the Examiner's§ 103(a) rejection of claims 12 and 13.
DECISION
(1) We reverse the Examiner's rejection of claim 1, and its
dependent claims, under 35 U.S.C. § 112, first paragraph, as being based on
a disclosure which is not enabling.
(2) We reverse the Examiner's rejection of claim 1, and its
dependent claims, under 35 U.S.C. § 112, first paragraph, for failing to
disclose the best mode contemplated by the inventor.
(3) We reverse the Examiner's rejection of claims 2, 5, 6, 8, and 9,
and dependent claims 3, 4, 7, 10, and 11, under 35 U.S.C. § 112, first
paragraph, for failing to disclose the best mode contemplated by the
inventor.
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( 4) We reverse the Examiner's rejection of claim 1, and its
dependent claims, under 35 U.S.C. § 112, second paragraph, for failing to
set forth the subject matter which Appellants regard as their invention.
(5) We reverse the Examiner's rejection of claim 1, and its
dependent claims, under 35 U.S.C. § 112, second paragraph, for being
indefinite with respect to the term "Quality of Service."
(6) We reverse the Examiner's rejection of claim 9, and its
dependent claims 10 and 11, under 35 U.S.C. § 112, second paragraph, for
being indefinite with respect to the term "blackout."
(7) We affirm the Examiner rejection of claims 2, 5, 6, 8, and their
dependent claims 3, 4, and 7, under 35 U.S.C. § 112, second paragraph, for
being indefinite with respect to the term "brownout."
(8) We reverse the Examiner's 35 U.S.C. § 103(a) rejections of
claims 1-5, 8, 12, and 13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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