Ex Parte Cripe et al

Patent Trial and Appeal Board

Nov 29, 2012

10717730 (P.T.A.B. Nov. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DANIEL N. CRIPE and ROBERT R. TEISBERG
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Appeal 2010-005243
Application 10/717,730
Technology Center 2400
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Before ALLEN R. MacDONALD, BRYAN F. MOORE, and
TREVOR M. JEFFERSON, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/717,730

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This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1-21. App. Br. 5. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a program, executing on the CPU,
may reload an offloaded connection established by the first network
adapter onto the second network adapter if one of a plurality of
packets associated with the offloaded connection is received on the
second network adapter. See Spec. [0003].

Claim 1 is representative of the invention and is reproduced
below:
1. A computer system comprising:
a central processing unit (CPU); and
first and second network adapters teamed together and
configured to receive offloaded connections;
wherein a program executing on the CPU reloads an offloaded
connection established by the first network adapter onto the second
network adapter as a result of one of a plurality of packets associated
with the offloaded connection being received on the second network
adapter.

REFERENCES
Congdon US 6,151,297 Nov. 21, 2000
Mahalingham US 6,314,525 B1 Nov. 6, 2001
Burns US 6,938,092 B2 Aug. 30, 2005

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REJECTIONS AT ISSUE
Claims 1-4 and 6-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Congdon and Burns. Ans. 4-11.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Congdon, Burns, and Mahalingham.
Ans. 11-12.

ISSUE
Did the Examiner incorrectly determine that Burns discloses
“wherein a program executing on the CPU reloads an offloaded
connection established by the first network adapter onto the second
network adapter as a result of one of a plurality of packets associated
with the offloaded connection being received on the second network
adapter” recited in claim 1?
ANALYSIS
35 U.S.C. § 103(a) – Congdon and Burns
Claim 1-4 and 6-21
Appellants’ arguments have persuaded us of error in the Examiner’s
rejection of claims 1-4 and 6-21.
Appellants argue that Burns does not disclose the above limitation.
App. Br. 14. Specifically, Appellants argue “[while,] it is true that Port 2
can receive packets that were originally intended for Port 1 when Port 1
becomes defunct; however, Port 2's reception of these packets does not
cause Port 2 to again become a transmitting port….” Id. at 16. We are
persuaded by this argument.
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The Examiner finds that “the original cause of the updating of the
TCB for TCP connection occurs is the failure of port 1, where the failure of
port 1 results in port 2 receiving packets associated with the offloaded
connection of port 1 (see Figure 4, step 401, step 403, and step 406).” Ans.
13. Examiner further finds that “as a result of the failure of port 1 and port 2
receiving packets associated with the offloaded connection of port 1, Burns
teaches, in the flow chart in Figure 4, the step 406 of updating the TCB for
TCP connection by changing the MAC source address to be the MAC
address of port 2 occurs.” Id. at 13-14. These findings are unsupported.
Claim 1 specifically requires “the CPU reloads an offloaded
connection established by the first network adapter onto the second network
adapter as a result of one of a plurality of packets associated with the
offloaded connection being received on the second network adapter.”
(Emphasis Added) The Examiner asserts that as a result of port 2 receiving
packets the MAC address is changed, however, Figure 4 and the associated
text from the specification of Burns do not require (or even mention) that
port 2 actually receives packets destined for port 1. In fact, if it happens that
port 2 does not receive any packets destined for port 1, the MAC address
would still be changed. That is because, as noted by Appellants, “Burns
teaches that the MAC addresses are switched as a result of the NID 103's
detection of port failure and the subsequent failure signal sent to the PAD
112.” App. Br. 13. Therefore, the Examiner has not presented any evidence
that Burns reloads the connection “in response to” receiving packets. Thus,
we do not sustain the Examiner’s rejection of claim 1.
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For the reasons stated above, we do not sustain the Examiner’s
35 U.S.C. § 103(a) rejection of claims 2-4 and 6-21 dependent thereon, as
unpatentable over the combination of Congdon and Burns.
35 U.S.C. § 103(a) – Congdon, Burns, and Mahalingham
Claim 5
The Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Congdon, Burns, and Mahalingham cites to the same
sections of Burns to show essentially the same limitation as the one
discussed above. See Ans. 11-12. For the same reasons as discussed supra,
we do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claim 5.
NEW GROUND OF REJECTION
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).

PRINCIPLES OF LAW
Transitory propagating signals are unpatentable under 35 U.S.C.
§ 101. In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007). According to
U.S. Patent & Trademark Office (USPTO) guidelines:
A claim that covers both statutory and non-statutory
embodiments . . . embraces subject matter that is not eligible for
patent protection and therefore is directed to non-statutory
subject matter. . . . For example, a claim to a computer readable
medium that can be a compact disc or a carrier wave covers a
non-statutory embodiment and therefore should be rejected
under § 101 as being directed to non-statutory subject matter.
U.S. Patent & Trademark Office, Interim Examination Instructions for
Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 2009, at
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2, available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf (“Interim Instructions”).
The USPTO also provides the following guidance:
The broadest reasonable interpretation of a claim drawn to a
computer readable medium . . . typically covers forms of non-
transitory tangible media and transitory propagating signals per
se in view of the ordinary and customary meaning of computer
readable media, particularly when the specification is silent. . . .
When the broadest reasonable interpretation of a claim covers a
signal per se, the claim must be rejected under 35 U.S.C. § 101
as covering non-statutory subject matter.
David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).

ANALYSIS
35 U.S.C. § 101 Rejection
Claim 12
Independent claim 12 recites, in pertinent part, “[a] computer readable
media storing instructions executable by a computer system.” Upon
reviewing Appellants’ Specification for context, we do not find any
explanation for what constitutes the claimed “computer readable media.”
Therefore, because Appellants’ Specification is silent in this regard, we
conclude that the claimed “computer readable media” can be broadly, but
reasonably, construed to encompass both non-transitory tangible media and
transitory propagating signals per se.1 As independent claim 12 covers both
statutory and non-statutory embodiments, it embraces subject matter that is

1 See, generally, Ex parte Allen, 2012 WL 4483320 (BPAI 2012) (discussing
extrinsic evidence regarding the term “machine readable storage medium.”
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not eligible for patent protection and, therefore, is directed to non-statutory
subject matter. We enter a new ground of rejection of claim 12 under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
Claims 13-15
For the same reason set forth above, dependent claims 13-15 are also
directed to non-statutory subject matter under 35 U.S.C. § 101.

DECISION
The Examiner’s decision to reject claims 1-21 is reversed.
We newly reject claims 12-15 as being directed to non-statutory
subject matter under 35 U.S.C. § 101. 37 C.F.R. § 41.50(b) provides that
“[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 proceedings (37 C.F.R.
§ 1.197 (b)) as to the rejected claims:
(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
37 C.F.R. § 41.52 by the Board upon the same record. . . .

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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).

REVERSED; 37 C.F.R. § 41.50(b)

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