Ex Parte Puthenpura et al

Patent Trial and Appeal Board

Apr 27, 2016

12578053 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/578,053 10/13/2009
83719 7590 04/27/2016
AT & T Legal Department - FKM
AT & T LEGAL DEPARTMENT,
ATTN: PATENT DOCKETING ROOM 2A-207
BEDMINSTER, NJ 07921
FIRST NAMED INVENTOR
Sarat Puthenpura
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2008-2138 (40147/14101) 5532
EXAMINER
PHAM,TITOQ
ART UNIT PAPER NUMBER
2466
MAILDATE DELIVERY MODE
04/27/2016 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 SARAT PUTHENPURA, DAVID G. BELANGER,
ARUN JOTSHI, GOPALAKRISHNAN MEEMPAT,
SAM HOUSTON PARKER, RA VI RAINA, and WENJIE ZHAO
Appeal2014-003230
Application 12/578,053
Technology Center 2400
Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD JR., and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 1-16 and 18. Claim 17 has been canceled. App. Br. 9-
12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-003230
Application 12/578,053
STATEMENT OF THE CASE
Introduction
Appellants' disclosure relates to a "method and apparatus for
clustering based optimal fiber ring deployment." Title. Claims 1, 9 and 18
are independent. Claim 1 is reproduced below for reference (with emphasis
added):
1. A tangible computer readable storage medium including a
set of instructions executable by a processor, the set of
instructions, when executed by the processor, causing the
processor to perform a method comprising:
receiving a data set including data corresponding to a set
of nodes, the data corresponding to each node in the set of nodes
including a node prize, a node cost, and a node value that is the
difference between the node prize and the node cost;
selecting a plurality of nodes from the set of nodes for
inclusion in a cluster, the cluster comprising the selected plurality
of the nodes, a plurality of physical external links, each of the
physical external links connecting one of the nodes in the cluster
to a network, and a physical internal link between nodes of the
cluster, the physical internal link having an internal link cost,
each of the physical external links having an external link cost;
and
determining a plan for incorporating the nodes in the
cluster into the network, the incorporating comprising building
the cluster by building the physical external links and the
physical internal link.
The Examiner's Rejection
Claims 1-8 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Final Act. 2.
Claims 1-16 and 18 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 3.
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Appeal2014-003230
Application 12/578,053
Claims 1-16 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Liu (US 7,184,421 Bl; Feb. 27, 2007), Guo (US
7,756,042 B2; July 13, 2010), and Lee (US 2007/0147361 Al; June 28,
2007). Final Act. 5.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. Except as indicated below with respect
to the 35 U.S.C. § 112, second paragraph rejection, we disagree with
Appellants that the Examiner erred and adopt as our own the findings and
reasons set forth by the Examiner in the Final Action and the Examiner's
Answer. We highlight and address specific findings and arguments for
emphasis as follows.
A. 35 U.S.C. § 101
Appellants argue the Examiner erred in rejecting independent claim 1,
because "the broadest reasonable interpretation of a 'tangible computer
readable storage medium,' as recited in claims 1-8, and as the term would be
understood by one of skill in the art, does not encompass carrier signals,
which are non-statutory subject matter." App. Br. 4.
The Examiner finds that there is no definition of the term "tangible
computer readable [storage] medium" in the Specification, and that under
the broadest reasonable interpretation, the term includes a transitory signal.
Final Act. 3. We agree. See Ex parte Mewherter, 107 USPQ2d 1857, 1862
(PTAB 2013) (precedential) ("[T]hose of ordinary skill in the art would
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Application 12/578,053
understand the claim term 'machine-readable storage medium' would
include signals per se ").
The Examiner additionally finds, and we agree, that because the claim
scope includes a transitory signal, the claim encompasses unpatentable
subject matter. Final Act. 3. See In re Nuijten, 500 F.3d 1346, 1356-57
(Fed. Cir. 2007) ("A transitory, propagating signal like Nuijten's is not a
'process, machine, manufacture, or composition of matter.' ... [T]hus, such
a signal cannot be patentable subject matter.").
Accordingly, we sustain the Examiner's rejection of independent
claim 1, and dependent claims 2-8. 1
B. 35 U.S.C. § 112, Second Paragraph
The Examiner rejects all pending claims for being indefinite. Final
Act. 3--4. Specifically, each independent claim recites "each of the physical
external links connecting one of the nodes in the cluster to a network," and
the Examiner finds it "is unclear whether the 'connecting one' is a same
node or different node in the cluster." Final Act. 4.
Appellants contend the Examiner's indefiniteness rejection is in error
because "the word 'connecting' is used in the claims as a verb; each of the
physical external links connects one of the nodes in the cluster to a network.
(See, e.g., Specification, i-f [0025], Fig. 2)." App. Br. 5.
1 In the event of further prosecution, the Examiner may wish to evaluate all
claims for compliance with the requirements of 35 U.S.C. § 101 in view of
the "July 2015 Update on Subject Matter Eligibility," 80 Fed. Reg. 45429
(July 30, 2015), which supplements the "2014 Interim Guidance on Patent
Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014).
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Application 12/578,053
We agree with Appellants that the word 'connecting' is used in the
claims as a verb, and that one of ordinary skill in the art would understand
each physical external link is a connection between one of the nodes in the
cluster and a network. See In re Gardner, 427 F .2d 786, 788 (CCP A 1970)
("Breadth is not indefiniteness.").
Accordingly, we do not sustain the Examiner's rejection of claims 1-
16 and 18 under 35 U.S.C. § 112, second paragraph.
c. 35U.S.C.§103
Appellants argue the Examiner erred in rejecting independent claim 1,
because the cited references fail to teach the recited "the incorporating
comprising building the cluster by building the physical external links and
the physical internal link." App. Br. 6. Particularly, Appellants contend
"[ n ]owhere does Lee disclose or suggest building new clusters from
individual nodes; Lee only relates to unifying existing clusters." App. Br. 6.
We are not persuaded of Examiner error. The Examiner finds that
Lee discloses "the incorporating comprising building the cluster by building
the physical external links and the physical internal link (Figures 4--6,
paragraphs 17-21, 25, and 70)." Final Act. 6. Appellants' argument is not
commensurate with the scope of the claim. Specifically, claim 1 requires
"building the cluster," whereas Appellants' argument focuses on "building
new clusters." Further, Appellants' Specification provides examples, but no
limiting definition of "cluster." See, e.g., Spec. i-f 14. Thus, the claim
language does not preclude Lee's building the cluster by "unifying existing
clusters." App. Br. 6.
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Appeal2014-003230
Application 12/578,053
Appellants present new arguments in the Reply Brief that both Liu
and Lee are "only directed to setting up virtual links between nodes." Reply
Br. 7. Appellants had an opportunity to raise the arguments in the Appeal
Brief, and have provided this record with no such showing of good cause for
not doing so. In the absence of a showing of good cause by Appellants, the
new arguments by Appellants are thus deemed waived. See 37 C.F.R. §
41.41(b)(2); see also Optivus Tech., Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d
978, 989 (Fed. Cir 2006) ("[A]n issue not raised by an appellant in its
opening brief ... is waived.") (citations and quotation marks omitted).
Accordingly, we sustain the Examiner's rejection of independent
claim 1, and claims 2-16 and 18 which were not argued separately with
particularity. See App. Br. 7.
CONCLUSION
We disagree with Appellants' conclusion that the Examiner erred in
rejecting claims 1-8 under 35 U.S.C. § 101 and in rejecting claims 1-16 and
18 under 35 U.S.C. § 103; however, we agree with Appellants' conclusion
that the Examiner erred in rejecting claims 1-16 and 18 under 35 U.S.C. §
112, second paragraph.
DECISION
We affirm the Examiner's rejection of claims 1-16 and 18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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