Ex Parte Miller

Patent Trial and Appeal BoardNov 18, 2014

11865981 (P.T.A.B. Nov. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DOUGLAS R. MILLER ____________ Appeal 2012-007685 Application 11/865,9811 Technology Center 2400 ____________ Before BIBHU R. MOHANTY, MICHAEL W. KIM, and SCOTT C. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Claims 1–18 are pending in the subject patent application. Appeal Br. 2, Ans. 3. Appellant timely appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–18. Appeal Br. 3. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. 1 Appellant states that the real party in interest is International Business Machines Corp. Appeal Br. 1. Appeal 2012-007685 Application 11/865,981 2 Claimed Subject Matter Claims 1, 7, and 13 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method for minimally buffered data transfers between nodes in a data communications network, the method comprising: receiving, by an origin messaging module on an origin node from an application on the origin node, a storage identifier, a complex origin data type, and a complex target data type, the storage identifier specifying origin application storage containing data on the origin node, the complex origin data type describing a subset of the data contained in the origin application storage, the complex target data type describing an arrangement of the subset of the data in target application storage on a target node; creating, by the origin messaging module, origin metadata describing the complex origin data type; selecting, by the origin messaging module from the origin application storage in dependence upon the origin metadata and the storage identifier, the subset of the data for transmission to the target node; and transmitting, by the origin messaging module to a target messaging module on the target node, the selected subset of the data for storing in the target application storage in dependence upon the complex target data type without any type of buffering the subset of the data in a temporary buffer on the target node. Rejections The Examiner relies on the following prior art references in rejecting the claims on appeal: MPI-2: Extensions to the Message-Passing Interface, (Nov. 15, 2003) (hereinafter “MPI-2”); Kadakia (US 7,032,224 B2, issued Appeal 2012-007685 Application 11/865,981 3 Apr. 18, 2006); William Saphir, Message Buffering and its Effect on the Communication Performance of Parallel Computers (Apr. 1994); MPI Performance Topics, https://computing.llnl.gov/tutorials/mpi_performance/ (Dec. 5, 2007). Claims 1, 5–7, 11–13, 17, and 18 stand rejected under 35 U.S.C. § 102(b) as being anticipated by MPI-2.2 Claims 2–4, 8–10, and 14–16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over MPI-2 and Kadakia. ANALYSIS Rejection of Claims 1, 5–7, 11–13, 17, and 18 under 35 U.S.C. § 103 Appellant argues that the Examiner erred in determining that the MPI-2 reference describes “transmitting, by the origin messaging module to a target messaging module on the target node, the selected subset of the data for storing in the target application storage in dependence upon the complex target data type without any type of buffering the subset of the data in a temporary buffer on the target node,” as required by claim 1. Appeal Br. 7. In response, the Examiner notes that “MPI-2 is inherently ambiguous as to whether buffering is performed at the origin node, at the target node, or not at all.” Ans. 11–12. The Examiner then cites two other references as extrinsic evidence to show: (1) that the MPI-2 reference is “deliberately vague” as to buffering; and (2) that one of ordinary skill in the art seeking to implement the MPI-2 standard would “would decide whether to buffer data 2 The Examiner uses the abbreviation “NPL” to refer to the MPI-2 reference. Appeal 2012-007685 Application 11/865,981 4 at the target node based [on] a variety of well-known factors.” Id. at 12 (citations and internal quotations omitted). “To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). “[A]bsence from the reference of any claimed element negates anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986). Because the Examiner’s rejection is based on anticipation under 35 U.S.C. § 102—and not obviousness under 35 U.S.C. § 103—the Examiner may only use extrinsic evidence for the limited purpose of explaining what is inherent in the MPI-2 reference. See, e.g., In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (“Extrinsic evidence may be considered when it is used to explain, but not to expand, the meaning of a reference [relied upon to show anticipation].”) (emphasis added). Here, the Examiner would be permitted to cite extrinsic evidence to show that the MPI-2 reference is vague because such extrinsic evidence merely explains what is inherent in the MPI-2 reference. But because the claims stand rejected under 35 U.S.C. § 102, extrinsic evidence could not be used to expand on the MPI-2 reference by, e.g., identifying different ways that one of ordinary skill in the art might choose to implement the MPI-2 standard. Put simply, the nature of the rejection would require us to disregard the Examiner’s extrinsic evidence that one of ordinary skill might have chosen to implement the MPI-2 standard without buffering data at the target node, based on a variety of well-known factors. Where a “reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence,” Appeal 2012-007685 Application 11/865,981 5 but “such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill . . . .” Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991) (citations omitted, emphasis added). Here, the Examiner has not cited any evidence that is proper in the context of a 35 U.S.C. § 102 rejection that the MPI-2 reference explicitly or inherently teaches “transmitting . . . the selected subset of the data for storing in the target application storage . . . without any type of buffering the subset of the data in a temporary buffer on the target node.” To the contrary, the Examiner concedes that the MPI-2 reference is silent as to whether buffering occurs. For these reasons, we are persuaded by Appellant’s argument that the MPI-2 reference does not expressly or inherently disclose all elements of claim 1. Thus, we do not sustain the Examiner’s decision to reject independent claim 1 under 35 U.S.C. § 102. Independent claims 7 and 13 similarly require “transmitting . . . the selected subset of the data for storing in the target application storage . . . without buffering the subset of the data in a temporary buffer on the target node.” Appeal Br. 43, 45. Thus, we also do not sustain the Examiner’s decision to reject independent claims 7 and 13 under 35 U.S.C. § 102. The remaining claims that the Examiner rejected under 35 U.S.C. § 102 (dependent claims 5, 6, 11, 12, 17, and 18) each depend from—and thus incorporate the limitations of—claim 1, claim 7, or claim 13. Thus, we also do not sustain the Examiner’s decision to reject dependent claims 5, 6, 11, 12, 17, and 18 under 35 U.S.C. § 102. Appeal 2012-007685 Application 11/865,981 6 Rejection of Claims 2–4, 8–10, and 14–16 under 35 U.S.C. § 103 Claims 2–4, 8–10, and 14–16 all depend from—and thus incorporate the limitations of—claim 1, claim 7, or claim 13. The Examiner’s rejection of claims 2–4, 8–10, and 14–16 relies on the reasoning that the Examiner used to reject independent claims 1, 7, and 13. The Examiner also does not find that the Kadakia reference cures the deficiency in the MPI-2 reference that is discussed above. Thus, we also do not sustain the Examiner’s rejection of dependent claims 2–4, 8–10, and 14–16. DECISION For the foregoing reasons, we reverse the Examiner’s decision rejecting claims 1–18. REVERSED Ssc