Ex Parte Chang et al

Patent Trial and Appeal Board

Sep 25, 2012

11222306 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DARDA CHANG, MICHAEL SEAN MCGEE, and
MATTHEW S. REEVES
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Appeal 2010-005418
Application 11/222,3061
Technology Center 2400
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Before JOSEPH L. DIXON, THU A. DANG, and JAMES R. HUGHES,
Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-5 and 7-25, which are all the claims remaining in the
application. Claim 6 was cancelled during prosecution. (App. Br. 2.) We
have jurisdiction under 35 U.S.C. § 6(b).

1 Application filed on September 8, 2005. The Real Party in Interest is
Hewlett-Packard Development Co., L.P.
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We affirm.
Invention
Appellants’ invention relates generally to graphical representations
depicting the current status of aggregation groups. (Spec. 2: ¶ [06].)2
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. An apparatus comprising:
a plurality of network ports forming aggregation groups of the
network ports;
a respective aggregation group having a formation that is
statically formed in a static mode, dynamically formed in a dynamic
mode, unknown if in the dynamic mode the aggregation group is not
successfully formed, and empty if all team members in the
aggregation group are disabled or uninstalled;
a respective aggregation group having a state that is one of a
working state, a degraded state or a failed state; and
graphical representations of the formations and states of the
aggregation groups output on a display device, the graphical
representations depicting current status of the aggregation groups of
network ports.

Rejections on Appeal
1. The Examiner rejects claims 1, 3-5, 8-13, and 15-20 under 35
U.S.C. § 103(a) as being unpatentable over McIntyre (U.S. Patent No.
6,229,538 B1 issued May 8, 2001) and IEEE (Institute of Electrical and

2 We refer to Appellants’ Specification (“Spec.”); Reply Brief (“Reply Br.”)
filed Febuary 27, 2010, and Appeal Brief (“Br.”) filed November 5, 2009.
We also refer to the Examiner’s Answer (“Ans.”) mailed Febuary 5, 2010.
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Electronics Engineers, Amendment to Carrier Sense Multiple Access with
Collision Detection (CSMA/CD) Access Method and Physical Layer
Specifications – Aggregation of Multiple Link Segments, IEEE (1998)).
2. The Examiner rejects claims 2, 7 and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over McIntyre, IEEE, and Pajak (U.S. Patent
No. 5,065,347 issued Nov. 12, 1991).
3. The Examiner rejects claims 21-23 and 25 under 35 U.S.C.
§ 103(a) as being unpatentable over McIntyre and Charlton (U.S. Patent No.
6,975,330 B1, issued Dec. 13, 2005 (filed Aug. 8, 2001)).
4. The Examiner rejects claim 24 under 35 U.S.C. § 103(a) as
being unpatentable over McIntyre, Charlton, and IEEE.
Grouping of Claims
Based on Appellants’ arguments in the Brief, we will decide the
appeal on the basis of representative claims 1 and 21. See 37 C.F.R.
§ 41.37(c)(1)(vii).

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows.

ISSUES
1. Under § 103, did the Examiner err in finding that the
combination of McIntyre and Graham would have collectively taught or
suggested “a respective aggregation group having a formation that is
statically formed in a static mode, dynamically formed in a dynamic mode,
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unknown if in the dynamic mode the aggregation group is not successfully
formed, and empty if all team members in the aggregation group are
disabled or uninstalled” (emphasis added), within the meaning of
independent claim 1 and the commensurate limitations recited in
independent claims 5 and 13?
2. Under § 103, did the Examiner err in finding that the
combination of McIntyre and Graham would have collectively taught or
suggested “graphically representing the aggregation groups as the
aggregation groups are formed” (emphasis added), within the meaning of
claim 21 and commensurate language recited in claim 20?

ANALYSIS
Aggregation Groups
Claims 1, 3, 4, 8-13, and 15-19
Appellants contend:
However, there is no disclosure or even suggestion in any
of these citations of a dynamic mode. Therefore, there is no
disclosure or even suggestion of a respective aggregation group
having a formation that is unknown if in the dynamic mode the
aggregation group is not successfully formed, and empty if all
team members in the aggregation group are disabled or
uninstalled.
(App. Br. 8.)
Based upon our review of the record, we find Appellants’ arguments
urging patentability are predicated on nonfunctional descriptive material.
The content of nonfunctional descriptive material is not entitled to
weight in the patentability analysis. See Ex parte Curry, 84 USPQ2d 1272,
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1274 (BPAI 2005) (informative), aff’d, No. 06-1003 (Fed. Cir. June 12,
2006) (Rule 36) (“wellness-related” data in databases and communicated on
distributed network did not functionally change either the data storage
system or the communication system used in the claimed method).
“[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art." Ex
parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative), aff'd,
191 Fed.Appx. 959 (Fed. Cir. 2006) (citing In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004)). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90
(BPAI 2008) (precedential) (discussing nonfunctional descriptive material).
Here, we conclude that the particular content of the claimed
“aggregation group” does not affect or otherwise alter the recited structure or
functionality of the “apparatus” or the “graphical representations of the
formations and states of aggregations groups output.” (Claim 1.) The
present claims do not indicate how the aggregation groups are formed in
either mode of operation (static or dynamic). As such, the aggregation
groups of ports are merely “data.” Therefore, the informational content of
the claimed “aggregation group” represents nonfunctional descriptive
material that is entitled to no weight in the patentability analysis.
We also observe that the argued features merely pertain to statements
of intended use recited in claim 1: “a respective aggregation group having a
formation that is . . . ” and “graphical representations of the formations
[(data)] . . . output on a display device.” “An intended use or purpose
usually will not limit the scope of the claim because such statements usually
do no more than define a context in which the invention operates.”
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
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1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear
in the claim's preamble,” a statement of intended use or purpose can appear
elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987).
From the above discussion, we conclude that the disputed limitations
merely specify what the claimed data represents, which constitutes
nonfunctional descriptive material that cannot lend patentability to an
invention that would have otherwise been rendered obvious by the prior art.
Likewise, limitations specifying an intended use or purpose of the claimed
apparatus also fail to limit the scope of claim 1.
Moreover, assuming arguendo that the non-functional descriptive
material and statements of intended use in independent claims 1, 5, and 13
are afforded patentable weight, we find Appellants’ arguments unavailing.
We agree with and adopt the Examiner’s findings. (Ans. 4-6, 23-27.)
Specifically, we agree with the Examiner that the cited references, in
particular IEEE, teach or suggest a dynamic mode in which the aggregation
group is not formed and is empty if all members in the aggregation group are
disabled or uninstalled. (Ans. 5.) The Examiner found that IEEE discloses
detaching a port from the Aggregator (not forming a group) due to system
constraints which may include device failures and detecting the detachment
(dynamic). (Ans. 5-6, 24-26; IEEE, 114.)
Appellants contend that “device failures” are not the same as the
failure to form a group with dynamic protocols as defined in Appellants’
Specification. (Reply Br. 4.) We disagree because IEEE discloses that the
port is detached from the group, therefore suggesting that if one or more
devices fail, the group is not formed. We also agree with the Examiner that
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the cited references disclose an empty list that indicates that there are no
Aggregation ports attached (all members are uninstalled).3
Based on this record, we conclude that the Examiner did not err in
finding that independent claims 1, 5, and 13 would have taught or suggested
a respective aggregation group having a formation that is unknown if in the
dynamic mode the aggregation group is not successfully formed, and empty
if all team members in the aggregation group are disabled or uninstalled.
Accordingly, we affirm the Examiner’s rejections of representative claim 1
and claims 3-4, 8-13, and 15-19 not separately argued with particularity.
Graphically Representing the Aggregation Groups
Claims 20-23 and 25
Appellants contend that the cited references fail to teach or suggest
“graphically representing the aggregation groups as the aggregation groups
are formed,” as recited in independent claim 21 and dependent claim 20.
(App. Br. 10, 12; Reply Br. 6.)
The Examiner found that McIntyre disclosed this limitation. (Ans. 17,
19, 26-27.) We agree with and adopt the Examiner’s findings with respect

3 We also find Appellants’ conclusory arguments (i.e., “However, the
‘device failures’ in IEEE Std are not the same as the failure to form a group
with dynamic protocols as defined in Appellant’s specification” and
“[h]owever, the ‘empty list’ in the IEEE standard is not the same as a place
holder to indicate that all the ports within the aggregation group are disabled
or un-installed”) are insufficient to persuade us of error in the Examiner’s
finding of obviousness. (See Reply Br. 4-5.) This form of argument is
ineffective in demonstrating error in the Examiner’s findings or legal
conclusions to establish the patentability of the claims on appeal. See Ex
parte Belinne, No. 2009-004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10,
2009) (informative); see also 37 C.F.R. § 41.37(c)(1)(vii).

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to the present limitation. McIntyre discloses that the status of each port is
continuously or periodically updated and the configuration application
correspondingly updates the graphic representations to keep the user
informed of port status. (McIntyre, col. 15, ll. 40-47.) We also agree with
the Examiner’s conclusion that the cited portion of McIntyre teaches or
suggests that the graphic representation of each port as the aggregation
groups are formed because the status of each port is continuously updated,
which would reflect the formation of aggregation groups as they are formed.
(See Ans. 26-27.)
Based on this record, we conclude that the Examiner did not err in
finding that the cited combination of references would have taught or
suggested graphically representing the aggregation groups as the aggregation
groups are formed as recited in independent claim 21 and dependent claim
20. Accordingly, we affirm the Examiner’s rejection of independent claim
21, dependent claim 20, and associated dependent claims 22, 23 and 25 not
separately argued with particularity.

Claims 2, 7, 14, and 24
As noted above, the Examiner rejects claims 2, 7, and 14 as
unpatentable over two different combinations of references. Appellants
have not separately argued the patentability of the aforementioned claims.
(App. Br. 12, 13.) Accordingly, we affirm the Examiner’s rejections of
these claims for the same reasons discussed supra.

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CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1-5 and 7-25 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1-5 and 7-25 under 35
U.S.C. § 103(a).

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)(iv).

AFFIRMED

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