Ex Parte Aloni et al

Patent Trial and Appeal Board

May 14, 2013

11623011 (P.T.A.B. May. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/623,011 01/12/2007 Eliezer Aloni 14528.00597 4063
16378 7590 05/14/2013
Broadcom/BHGL
P.O. Box 10395
Chicago, IL 60610
EXAMINER
NGUYEN, PHUOC H
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
05/14/2013 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 ELIEZER ALONI, URI EL ZUR,
RAFI SHALOM, and CAITLIN BESTLER
____________________
Appeal 2010-012431
Application 11/623,011
Technology Center 2400
____________________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY III, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-012431
Application 11/623,011

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STATEMENT OF THE CASE
Appellants appeals under 35 U.S.C. § 134 from a rejection of claims
1-45. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to a “system and/or method for protocol
offload and direct I/O with I/O sharing in a virtualized network
environment.” (Spec. ¶[0011]). Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method for communicating via a network, the method
comprising:

sharing by a plurality of guest operating systems (GOSs),
a single network interface circuitry, which provides access to a
network; and

handling processing of one or both of: data to be
transmitted to a network and/or data received from a network
directly by said single network interface circuitry for each
of said plurality of GOSs without an intermediary for said
plurality of GOSs handling processing of said one or both of:
said data to be transmitted to said network and/or
said data received from said network.

REJECTIONS
1. Claims 16-30 stand rejected under 35 U.S.C §101 as being directed
to non-statutory subject matter.
2. Claims 1-45 stand rejected under 35 U.S.C §102(e) as being
anticipated by van Riel (US Pat. App. Pub. No. 2007/0061492 A1).

Appeal 2010-012431
Application 11/623,011

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ANALYSIS
Rejection under 35 U.S.C. § 101
Issue: Under §101, did the Examiner err in concluding that the scope
of claims 16-30 covers non-statutory subject matter?
In setting forth a new ground of rejection in the Answer, the Examiner
concludes:
These claims [16-30] are drawn to a "machine-readable storage
medium". The specification is silent regarding the meaning of
this term. Thus, applying the broadest reasonable interpretation
in light of the specification and taking into account the meaning
of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art (MPEP 2111), the
claim as a whole cover[s] both transitory and non-transitory
media. A transitory medium does not fall into any of the four
categories of invention (process, machine, manufacture, or
composition of matter). Therefore, claims 16-30 are directed to
non-statutory subject matter.

(Ans. 3).
Appellants disagree, citing MPEP §2106.01 in support. Appellants
submit “that claims 16-30 define statutory subject matter and are allowable.
Additionally, the Appellants specifically “disclaim[] any strictly non-
statutory implementation of claims 16-30 (to the extent any
‘implementation’ can be considered non-statutory at all).” (Reply Br. 3).1

1 We note that a prosecution disclaimer narrows the ordinary meaning of
claim terms in federal court by excluding specific claim term interpretations
that were disclaimed during prosecution. Omega Eng’g, Inc. v. Raytek
Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003). A prosecution disclaimer
requires “clear and unambiguous disavowal of claim scope,” Storage Tech.
Corp. v. Cisco Sys., Inc., 329 F.3d 823, 833 (Fed. Cir. 2003), which appears
to be the case here. (Reply Br. 3). Because such prosecution disclaimers are
a preliminary consideration in determining literal infringement during
Appeal 2010-012431
Application 11/623,011

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The issue turns on whether the broadest reasonable interpretation of
the “machine-readable storage having stored thereon, a computer program,”
as recited in independent claims 16 and 27, includes non-statutory subject
matter. (Emphasis added).
After reviewing the record, we conclude Appellants’ claimed
“machine-readable storage having stored thereon, a computer program”
broadly but reasonably includes both statutory and non-statutory
embodiments.2 (Claims 16, 27). When we look to Appellants’ Specification
for context, we find a computer program product that includes a broadly
described computer program:
The present invention may also be embedded in a computer
program product, which comprises all the features enabling the
implementation of the methods described herein, and which
when loaded in a computer system is able to carry out these
methods. Computer program in the present context means any
expression, in any language, code or notation, of a set of
instructions intended to cause a system having an information
processing capability to perform a particular function either
directly or after either or both of the following: a) conversion to
another language, code or notation; b) reproduction in a
different material form.

(Spec. [00130], emphasis added).

infringement proceedings in federal district courts, Appellants’ disclaimer
statement has no impact on our claim construction. (Reply Br. 3). Rather,
“during patent examination, the pending claims must be given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
2 If a claim covers material not found in any of the four statutory categories,
that claim falls outside the plainly expressed scope of § 101 even if the
subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346,
1356-57 (Fed. Cir. 2007).
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Application 11/623,011

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Regarding the support in the Specification, we find “reproduction in a
different material form” (id.) may include transitory signal embodiments.
(Id.). Therefore, we conclude the claimed “machine-readable storage
having stored thereon, a computer program” is not limited to only statutory
embodiments. (Independent claims 16, 27).3 Accordingly, we sustain the
Examiner’s rejection under § 101 of claims 16-30.

Rejection under 35 U.S.C. § 102
Independent claim 1
Issue: Under §102, did the Examiner err in finding that van Riel
expressly or inherently discloses:
handling processing of one or both of: data to be
transmitted to a network and/or data received from a network
directly by said single network interface circuitry for each of
said plurality of GOSs without an intermediary for said
plurality of GOSs handling processing of said one or both of:
said data to be transmitted to said network and/or said data
received from said network.

within the meaning of claim 1? (Emphasis added).

ANALYSIS
Under 35 U.S.C. § 102, “[a] single prior art reference that discloses,
either expressly or inherently, each limitation of a claim invalidates that
claim by anticipation.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368,

3 See also U.S. Patent & Trademark Office, Evaluating Subject Matter
Eligibility Under 35 USC § 101 (Aug. 2012 Update); pp. 11-14, available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf.

Appeal 2010-012431
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1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg. Co. v. Johnson &
Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed. Cir. 1992).
Regarding claim 1, Appellants contend:
Van Riel neither discloses nor suggests at least the limitation of
"handling processing ... directly by said single network
interface circuitry for each of said plurality of GOSs without an
intermediary for said plurality of GOSs," as claimed by the
Appellant in independent claim 1. Instead, Van Riel discloses
that to achieve a zero-copy network receive, the host OS
receives a subset of network state information from the guest
process and determines a virtual memory address associated
with a target guest process that is to receive the network packet
data payloads. See Van Riel at paragraph 0059, lines 1-25.
Furthermore, Van Riel discloses that the host OS performs the
virtual memory address translations enabling it to directly copy
the virtual network packet header from one guest OS to the
kernel buffer of the second guest OS. See Van Riel at paragraph
0065, lines 15-20. Furthermore, the Examiner admits that Van
Riel discloses in "Figures 2 wherein the data is communicated
to/from GOSs and Internet cloud 99 via NIC 20 through either
the Host OS as TGOS or the hypervisor." See the Office Action
at page 5. Accordingly, Van Riel clearly discloses a host OS
that acts as an intermediary for handling processing of data, but
does not disclose or suggest "handling processing ... directly by
said single network interface circuitry for each of said plurality
of GOSs without an intermediary for said plurality of GOSs,"
as claimed by the Appellant in independent claim 1.
(App. Br. 10-11).
The Examiner disagrees, pointing to Figure 2(c) in support. (Ans. 9).
At the outset, we observe that the disputed negative limitation
“without an intermediary” is recited in the original claims. (Original claims
1, 16, and 31). Moreover, we find the originally-filed Specification provides
support for the disputed negative limitation in the form of a reason to
exclude the intermediary between a Guest Operating System (GOS) and a
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hardware Network Interface Card (NIC): “this invention may allow
reduction in overhead and number of copies that may be required to move
the data to/from the GOS application buffer.” (Spec. ¶[0025]).4
Turning to the reference, Riel describes in pertinent part:
Thus, the NIC hardware 21, without intervention by the host
O/S, is enabled to directly copy the header (H) and data (D)
portions of a packet 25 to be sent, subject to application of
firewall rules. The host O/S will only need to examine the
header (and possibly modify it for firewall rules) and perform
an address translation for the data without actually needing to
copy the data itself.

(van Riel, ¶[0064]).

We acknowledge the Examiner has located a close reference that
describes the NIC hardware 21 as being enabled to directly copy the header
(H) and data (D) portions of a packet 25 to be sent, without intervention by
the host O/S, subject to application of address translation and firewall rules.
(Id.).
However, van Riel also reveals that the lack of host O/S intervention
is not absolute, as “the host O/S will only need to examine the header (and
possibly modify it for firewall rules) and perform an address translation for
the data without actually needing to copy the data itself.” (Id., emphasis
added).

4 See Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed.
Cir. 2012). ("Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation. Such
written description support need not rise to the level of disclaimer. In fact, it
is possible for the patentee to support both the inclusion and exclusion of the
same material.")
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Given this description, we agree with Appellants that “Van Riel
clearly discloses a host as that acts as an intermediary for handling
processing of data.” (App. Br. 11, emphasis added). Therefore, we find van
Riel is not an anticipatory reference because it does not disclose the
aforementioned negative limitation which requires “handling processing ...
directly by said single network interface circuitry for each of said plurality
of GOSs without an intermediary for said plurality of GOSs,” as Appellants
contend. (App. Br. 11).
Accordingly, we are constrained by the record to reverse the
Examiner’s anticipation rejection of independent claims 1, 16, and 31, and
the anticipation rejection of each associated dependent claim.

Independent claims 12, 27, and 42
Regarding remaining independent claims 12, 27, and 42, Appellants
contend, inter alia:
Van Riel neither discloses nor suggests at least the limitation of
"handling processing of one or both of: data to be transmitted to
a network and/or data received from a network, through a
trusted guest operating system (TGOS)," as claimed by the
Appellant in independent claim 12. Instead, Van Riel discloses
that to achieve a zero-copy network receive, the host as receives
a subset of network state information from the guest process
and determines a virtual memory address associated with a
target guest process that is to receive the network packet data
payloads. See Van Riel at paragraph 0059, lines 1-25. The
Examiner is apparently suggesting that a host OS is equivalent
to a trusted guest operating system. The Appellant respectfully
disagrees. Accordingly, Van Riel discloses a host OS as an
intermediary for processing receive and transmit data from the
network, and does not disclose or suggest "handling processing
of one or both of: data to be transmitted to a network and/or
data received from a network, through a trusted guest operating
Appeal 2010-012431
Application 11/623,011

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system (TGOS)," as claimed by the Appellant in independent
claim 12.

(App. Br. 25).
The Examiner disagrees: “[t]he examiner respectfully submits that a
similar response as seen in the first argument can be applied here and
further, the TGOS can be either any GOS and host OS as hypervisor.” (Ans.
11, ll. 1-2, emphasis added).
Although van Riel describes a GOS (e.g., “guest O/S 50” ¶[0064]),
the Examiner has not pointed to an express disclosure of a Trusted Guest
Operating System (TGOS), as required by the plain language of independent
claims 12, 27, and 42. Nor has the Examiner fully developed the record to
establish that a TGOS is inherently disclosed by van Riel (cf. Ans. 11, ll. 1-
2: “the TGOS can be either any GOS and host OS as hypervisor.” emphasis
added). Our reviewing court guides that “[i]nherency … may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” In re
Robertson, 169 F.3d 743, 745, (Fed. Cir. 1999) (citations omitted).
This reasoning is applicable here. Therefore, for essentially the same
reasons argued by Appellants (App. Br. 25), we reverse the Examiner’s
anticipation rejection of independent claims 12, 27, and 42, and the
anticipation rejection of each associated dependent claim.

Appeal 2010-012431
Application 11/623,011

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DECISION
We affirm the Examiner's rejection of claims 16-30 under §101.
We reverse the Examiner's rejection of claims 1-45 under §102.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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