Ex Parte Hou

Patent Trial and Appeal BoardOct 31, 2012

10748223 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/748,223 12/31/2003 Cheng-Liang Hou 2875.2880000 7148 49579 7590 10/31/2012 STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. 1100 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 EXAMINER MESFIN, YEMANE ART UNIT PAPER NUMBER 2462 MAIL DATE DELIVERY MODE 10/31/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHENG-LIANG HOU ____________ Appeal 2009-010935 Application 10/748,223 Technology Center 2400 ____________ Before BRADLEY W. BAUMEISTER, DENISE M. POTHIER, and BRUCE R. WINSOR, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Pursuant to 37 C.F.R. § 41.52, Appellant has submitted a timely Request for Rehearing dated July 31, 2012 (hereafter the “Request”), requesting rehearing of the May 31, 2012 Opinion (hereafter “Opinion”). In that Opinion, the Board reversed the Examiner’s rejections of claims 1-19 under §§ 102 or 103 based on Buskirk and affirmed the rejections of claims 1-19 under § 103 based on at least Weberhofer and the Appellant’s Admitted Prior Art (“AAPA”). Opinion 7-8. Appeal 2009-010935 Application 10/748,223 2 We have reconsidered the Opinion in light of Appellant’s comments in the Request. To the extent indicated below, we grant the Request. Appellant first argues that the Opinion fails to address the Examiner’s reliance on and Appellant’s rebuttal to Weberhofer inherently having “a plurality of packet type filters” recited in claim 1. Request 3-5 (citing to Ans. 15). The Examiner states that Weberhofer “teaches” packet type filters. Ans. 7. Specifically, the Examiner finds the mapper 18 and queues 19.1-19.4 constitute the packet type filters because the mapper assigns the asynchronous transfer mode (ATM) cells to corresponding queues based on different quality of service (QoS) classes and, thus, “must” have different “means/elements” for classifying the cells. See id.; Ans. 15. The Examiner clarifies this position in the Response to Argument section, indicating that the Examiner is relying on the concept of inherency when finding Weberhofer’s mapper must have means for classifying the ATM cells. See Ans. 15. In the Opinion and as Appellant notes (Request 3-4), the Board focuses on what Weberhofer teaches or suggest to an ordinarily skilled artisan and does not discuss whether Weberhofer inherently discloses packet type filters. Opinion 5-7. The Board particularly reasons that “the record fails to identify persuasive evidence or argument that any new or unexpected results accrue from” (Opinion 6) having separate filters for distinct packet types as opposed to a single filter for all the different packet types (Opinion 6-7) as taught by Weberhofer (Opinion 5). This above finding that Weberhofer teaches a single filter for different packet types (see Opinion 5- 6) rather than inherently disclosing separate filters for distinct packet types (Ans. 7, 15) is a new fact not found by the Examiner regarding the Appeal 2009-010935 Application 10/748,223 3 differences between Weberhofer and the claimed invention and also changes the rejection’s thrust. Fairness requires that Appellant be given an opportunity to respond. See In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005). Nonetheless, we find the Board’s reasoning is sound. The Board discusses how Weberhofer teaches a mapper that determines a QoS class for a cell among different classes. See Opinion 5-6 (citing to Ans. 14-15 and col. 4, ll. 45-50); see also Final Rej. 12. In order to determine the different QoS classes (e.g., CBR, UBR (see col. 4, ll. 14-33)), the Examiner finds that Weberhofer’s mapper must have mechanism to identify which cells belong to the different classes. See Ans. 7. We agree. Weberhofer provides an example of a technique where the mapper assigns QoS classes to the ATM cells based on data contained in the cell header and an allocation table. See col. 5, ll. 3-6. This illustrates that Weberhofer has a mechanism or program that reads an input (e.g., data from an ATM cell), uses identified data from a header and a table to transform the input into a QoS class information, and then outputs the QoS class information assigned to each cell to a designated destination (e.g., the proper queue 19.1-19.4). See col. 4, ll. 45-50, col. 5, ll. 3-6. Despite Appellant’s argument to the contrary (see Request 6), we find that Weberhofer’s mapper is a filter giving this phrase its broadest reasonable construction. Appellant has not defined the term, filter. See generally Specification. Yet, consistent with Appellant’s disclosure, a packet type filter can be one which “include[s] quality of service (QOS) levels[.]” Spec. ¶ 0020. Similarly, Weberhofer’s mapper determines QoS levels. Col. 4, ll. 45-50. Moreover, a customary meaning of the term, Appeal 2009-010935 Application 10/748,223 4 “filter” includes “[a] program or set of features within a program that reads its standard or designated input, transforms the input in some desired way, and then writes the output to its standard or designated destination.”1 As stated above, Weberhofer acts like a filter according to this customary meaning. The Board notably found that Weberhofer teaches a single filter rather than “a plurality of packet type filters” as recited. See Opinion 6; see also Fig. 2. But as the Examiner indicates (Ans. 7, 15), Weberhofer further describes and shows queues 19.1-19.4 for which the ATM cells are properly directed based on their respective QoS class. See col. 4, ll. 45-50; Fig. 2. This process teaches the mapper can filter different packet types to the proper queue and, at minimum, suggests different filtering operations on information to different destinations. Additionally, as the Opinion suggests (see Opinion 6-7), it would have been within the skill of an ordinary artisan to substitute a single filter used for all different packet types with multiple filters, each performing the filtering operation for one of the distinct packet types discussed in Weberhofer. That is, accounting for inferences and creative steps that an ordinarily skilled artisan would have employed, such a substitution would predictably yield no more than one would expect from such an arrangement -- using multiple filters to perform the same tasks of a single filter. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 417-418 (2007). Also, such a substitution amounts to no more than merely duplicating a known element without producing a new or unexpected result. See In re Harza, 274 F.2d 669, 671 (CCPA 1960). Based on these rationales, we need not demonstrate 1 Microsoft® Computer Dictionary 213 (5th ed. 2002). Appeal 2009-010935 Application 10/748,223 5 that Weberhofer inherently discloses the recited packet type filters. Request 3-5. As for those limitations in claim 1 not discussed, we adopt the Examiner’s undisputed findings and positions that do not conflict with the above discussion. See Ans. 7-9, 14-15. Based on the arguments raised by Appellant in the Request and the record before us now, we are still of the view that: (1) claims 1-3, 6-13, and 16-19 are unpatentable under § 103 based on Weberhofer and AAPA and (2) claims 4, 5, 14, and 15 are unpatentable under § 103 based on Weberhofer, AAPA, and Zhang. Opinion 8. We however designate these rejections as new grounds under 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal 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 § 41.52 by the Board upon the same record. 37 C.F.R. § 41.50(b). 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2010). Appeal 2009-010935 Application 10/748,223 6 REHEARING GRANTED 37 C.F.R. § 41.50(b) gvw Notice of References Cited Application/Control No. 10/748,223 Applicant(s)/Patent Under Patent Appeal No. 2009-010935 Examiner Pothier, Denise 2462 Page 1 of 1 U.S. PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Name Classification A US- B US- C US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Country Name Classification N O P Q R S T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) U Microsoft Computer Dictionary, 2012, Microsoft Press, 5th ed., pg. 213 V W X *A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.