Ex Parte Grover et alDownload PDFPatent Trial and Appeal BoardSep 17, 201210254556 (P.T.A.B. Sep. 17, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RAJEEV GROVER and WEIYUN SUN ____________________ Appeal 2010-006017 Application 10/254,556 Technology Center 2100 ____________________ Before ALLEN R. MacDONALD, KALYAN K. DESHPANDE, and HUNG H. BUI, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellants1appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-6 and 9-20.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The Appellants state that the real party in interest is Hewlett-Packard Development Company, LP. Appeal Brief filed on October 28, 2009 (“Br.”). 2 Br. 5; Final Office Action mailed on July 1, 2009; Examiner’s Answer mailed on January 15, 2010 (“Ans.”) at 2. Appeal 2010-006017 Application 10/254,556 2 I. STATEMENT OF THE CASE Appellants’ Invention Appellants’ claims are generally directed to a method for notification of an error in data exchanged for an application between a client computer and a server computer. When an error is detected, a message corresponding to the error is generated such that the error message is separate from data and is handled such that it has priority over the data. This way, applications do not have to parse each message for an error message and can handle the error message expeditiously to avoid delay and save time and network resource. See generally Abstract, Summary, Spec. pg. 7, ll. 10-19; pg. 8, ll. 1-6; pg. 11, ll. 13-19. Claims 1-6 and 9-20 are on appeal. Claims 1, 9 and 17 are independent. Independent claim 1 is illustrative of the claimed subject matter, and is reproduced below with disputed limitations emphasized: 1. A method for notification of an error in data exchanged for an application between a client computer telnet and a server computer telnet, comprising: detecting said error; generating an error message corresponding to said error wherein said error message is separate from said data; and handling said error message wherein said error message has priority over said data and wherein said handling is performed with said error message in the same queue as said data, wherein said error message is moved to a front of said queue when said error message is received such that each Appeal 2010-006017 Application 10/254,556 3 message in said queue does not have to be reviewed for error messages and each message in said queue, including messages received prior to said received error message, are not discarded before said error message is accessed. Rejection Claims 1-6 and 9-20 stand rejected under 35 U.S.C. § 112, 1st paragraph, as failing to comply with the written description requirement. II. ISSUE The dispositive issue before us is whether the Examiner has erred in finding that the original disclosure would not have conveyed to a person with ordinary skill in the art that the Appellants were in possession of the claimed invention at the time of filing, specifically with respect to the limitation “each message in said queue, including messages received prior to said received error message, are not discarded before said error message is accessed,” as recited in each of independent claims 1, 9 and 17. III. FINDINGS OF FACT The following findings of facts are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). Appeal 2010-006017 Application 10/254,556 4 The Specification 1. The Specification admits as PRIOR ART in FIG. 1B, as reproduced below, that data exchange between a client application 115 and a server 101 often includes errors that occur in the execution of application instructions, and such an error message 123 is placed in the same queue in a message stack 121 along with other data messages in the order in which they are received from the server 101. Each message in the message stack 121 must be read and handled in sequence until the error message 123 is discovered before correction can be made. This causes delay and inefficiency since an error message 123 can forestall complete processing of data in the queue of the client application 115 and new data sent from the server 101 can also be dropped (lost) (pg. 3, ll. 10-19). FIG. 1B depicts conventional stacking of an error message among normal data for routine handling Appeal 2010-006017 Application 10/254,556 5 2. As a solution to the recognized prior art deficiencies, the Specification proposes that the error message should be handled separately from data and with priority over the data in order to avoid delay and save time and network resource. See generally Abstract, Summary, Spec. pg. 7, ll. 10-19; pg. 8, ll. 1-6; pg. 11, ll. 13-19. 3. In particular, the Specification discloses two example embodiments of how an error message can be handled expeditiously with priority over the data in order to avoid delay and save time and network resource, shown in FIG. 4, as reproduced below: FIG. 4 illustrates telnet handling of error messages with stacking separate from routine data Appeal 2010-006017 Application 10/254,556 6 4. The Specification discloses, in one embodiment shown in FIG. 4 with reference to the use of an application handler 415, that the error message 433 containing the error 413 is handled separately from data messages in the message stack 411 by the application handler 415 (rather than the client application 203) so that the error message 433 can be processed separately and expeditiously with priority over normal data message traffic (pg. 7, ll. 15-16; pg. 9, ll. 19-22; pg. 11, ll. 13-15). 5. The Specification further discloses, in another embodiment also shown in FIG. 4, that the error message 433 containing the error 413 is handled with data messages in the same message stack 411 by the client application 203, but is accorded with head of line privileges so that the error message 433 can be processed expeditiously with priority over normal data message traffic (pg. 9, ll. 22-25; pg. 11, ll. 15-19). 6. Specifically, the Specification states: Upon transmission to the client side, telnet 205 generates two message stacks. Data message stack 411 contains usable data for application 203. Error message stack 431 contains error message 433. Error messages such as error message 433 are handled in one embodiment by an application handler 415, rather than by the application 203, as it also handles the data messages in message stack 411. In another embodiment, error messages are stacked in the same queue (e.g., queue 411) with data messages, but are given priority. These arrangements effectuate expedited handling of error messages such as error message 433. Upon handling error message 433, client application 203 ceases sending requests for new data to server 211 until the Appeal 2010-006017 Application 10/254,556 7 error is resolved. Advantageously, this increases efficiency, saves time, and allows the content of error messages to be ascertained such that errors can be expeditiously detected and corrected and corrective action taken, prior to backing up queue 403 in server 211. This has the further advantage of economizing server and network resources. Less data will be lost, less time will be wasted, and server and network resources will be not be heavily taxed, since compounded effects of re- sending replacement data for what is lost is minimized and amelioration for such lost data is largely obviated. (Pg. 9, line 17 – pg. 10, line 6).3 IV. APPLICABLE LEGAL PRINCIPLES The test for determining compliance with the written description requirement of 35 U.S.C. § 112, first paragraph for later claimed subject matter is whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of the filing of the later claimed subject matter, rather than the presence or absence of literal support in the specification for the claim language. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991) and In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). “[T]he disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue." Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). In some cases, “drawings alone may 3 See Amendment filed on May 5, 2008 in which the specification was revised and for entry by the Examiner in the Final Office Action mailed on July 31, 2008. Appeal 2010-006017 Application 10/254,556 8 provide a ‘written description’ of an invention as required by § 112.” Vas- Cath, Inc. v. Mahurkar, 935 F.2d at 1565. Regardless, the disclosure must convey with reasonable clarity to those skilled in the art that the inventor was in possession of the invention. See id. V. ANALYSIS We have reviewed Appellants’ arguments in the Briefs, the Examiner’s rejections and the Examiner’s responses to the Appellants’ arguments. We are persuaded by the Appellants’ arguments and concur with the Appellants’ conclusions. In addition, we further emphasize the following: Independent claims 1, 9 and 17 recite, inter alia: “wherein … each message in said queue, including messages received prior to said received error message, are not discarded before said error message is accessed.” The Examiner maintains that the appealed claims run afoul of the written description requirement of 35 U.S.C. § 112, 1st paragraph because the original disclosure does not disclose the limitation, i.e., “each message in said queue, including messages received prior to said received error message, are not discarded before said error message is accessed.” (Ans. 3 and 4). In this regard, the Examiner asserts that any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. § 112, 1st paragraph as failing to comply with the written description requirement (Ans. 4). Appeal 2010-006017 Application 10/254,556 9 We agree with the Appellants’ contentions that the Specification4 and FIGS. 4-6 demonstrate that messages are not discarded before an error message is accessed (App. Br. 9-11; Rep. Br. 1-3). In particular, we find that FIG. 4 of the Specification shows that each message is placed in the queue 411, and how an error message can be handled expeditiously with priority over the data in order to avoid delay and save time and network resource. “[D]rawings alone may provide a ‘written description’ of as invention as required by § 112.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1565. For example, in an embodiment where an error message 433 containing an error 413 is handled with data messages in the same message stack 411 by the client application 203, the error message 433 is accorded with head of line privileges so that the error message 433 can be processed with priority over normal data message traffic. However, data messages remain in the same message stack 411, “including messages received prior to said received error message, are not discarded before said error message is accessed” as recited in independent claims 1, 9 and 17. VI. CONCLUSION On the record before us, we conclude that the Appellants have shown that Examiner erred in rejecting claims 1-6 and 9-20 under 35 U.S.C. § 112, 1st paragraph, as failing to comply with the written description requirement. 4 See Appellants’ Specification, page 10, ll. 10-20; page 11, ll. 13-19 and FIGS. 4-6. Appeal 2010-006017 Application 10/254,556 10 VII. DECISION As such, we reverse the Examiner’s decisions to reject claims 1-6 and 9-20 under 35 U.S.C. § 112, 1st paragraph, as failing to comply with the written description requirement. REVERSED tj Copy with citationCopy as parenthetical citation