Ex Parte Bortoloso et al

Patent Trial and Appeal Board

Oct 20, 2016

12565921 (P.T.A.B. Oct. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/565,921 0912412009
27350 7590 10/24/2016
LERNER GREENBERG STEMER LLP
Box SA
P.O. BOX 2480
HOLLYWOOD, FL 33022-2480
FIRST NAMED INVENTOR
Luca Antonio Bortoloso
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.
2008P05133 1433
EXAMINER
BELANI, KISHIN G
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
10/24/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
boxsa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUCA ANTONIO BOR TO LOSO, GUIDO GIUFFRIDA, and
ISABELLA RONCAGLIOLO
Appeal2015-006985
Application 12/565,921
Technology Center 2400
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1 and 4--11, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 2, 3, and 12-14 are canceled. See Final Act. 2.
We affirm-in-part and designate our affirmances as new grounds of
rejection within the provisions of 37 C.F.R. § 41.50(b) (2014).
1 According to Appellants, the real party in interest is Siemens
Aktiengesellschaft. App. Br. 1.
Appeal2015-006985
Application 12/565,921
STATEMENT OF THE CASE
The Claims
Claim 1 is independent and illustrative of the subject matter on
appeal:
1. A method of dispatching a plurality of messages
incoming into a dispatching server, each incoming message
being issued by a source application and targeted to at least a
destination application, the source application, the destination
application, and the dispatching server residing within a server-
client network, the method which comprises the following steps:
a) defining a maximum rate of incoming messages per
unit time;
b) choosing a message rate reduction policy;
c) starting a process to periodically determine a current
rate of incoming messages per unit time;
d) dispatching the message if the current rate is smaller
than a maximum rate;
e) activating the message rate reduction policy if the
current rate of incoming messages is higher than the maximum
rate, wherein the message rate reduction policy applies a
hysteresis mechanism by carrying out the following steps:
i. discarding one of the incoming messages if a
priority of the one of the incoming message is lower than
a default threshold priority;
ii. notifying the source application about the
discarding of the one of the incoming messages and
providing to the source application a current message
discarding filter;
111. determining a new current incoming message
rate;
iv. checking if the new current rate has decreased
below the maximum rate;
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Application 12/565,921
v. increasing the default threshold priority to a new
threshold priority in case the new current rate is higher
than the maximum rate of incoming messages per unit
time;
vi. decreasing the new threshold priority in case
the new current rate is lower than the maximum rate of
incoming messages per unit time;
vii. sending an updated message discarding filter
to the source application and restarting at step i; and
t) monitoring a result of the process and adapting a
totality of parameters for the message rate reduction in case the
current rate of incoming messages has dropped below the
maximum rate.
App. Br. 11-12.
The Examiners Rejections
Claims 1 and 4--11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Verzijp2 and one or more of Chean, 3 W olovitz, 4 Von Der
Straten,5 DeVal,6 and Jalali7. See Final Act. 3-17.
2 Verzijp et al. (US 2007/0127491 Al; published June 7, 2007) ("Verzijp").
3 Chean et al. (US 2007/0115848 Al; published May 24, 2007) ("Chean").
4 Wolovitz et al. (US 2007/0130255 Al; published June 7, 2007)
("Wolovitz").
5 Von Der Straten (US 6,704,323 Al; issued Mar. 9, 2004) ("Von Der
Straten").
6 De Val et al. (US 2009/0122705 Al; published May 14, 2009) ("De Val").
7 Jalali (US 2010/0002584 Al; published Jan. 7, 2010) ("Jalali").
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Application 12/565,921
Claims 1 and 4-9
ANALYSIS
Appellants contend the Examiner erred in finding that Chean teaches
the following sub-steps of "activating" step e) of claim 1:
i. discarding one of the incoming messages if a priority
of the one of the incoming message is lower than a default
threshold priority; ...
v. increasing the default threshold priority to a new
threshold priority in case the new current rate is higher than the
maximum rate of incoming messages per unit time; [and]
vi. decreasing the new threshold priority in case the new
current rate is lower than the maximum rate of incoming
messages per unit time.
See App. Br. 4--8; Reply Br. 2---6; Ans. 16-19; Final Act. 3-9.
The Examiner found that Chean' s disclosure of marking a packet with
lower priority teaches or suggests "i. discarding one of the incoming
messages" because, at least in the case of congestion, the marking results in
dropping or canceling the packet. See Ans. 17 (citing Chean i-f 20); Final
Act. 6-7 (citing Chean i-fi-1 18-19). The Examiner further found Chean' s
disclosures of increasing the bit transmission rate of incoming messages in
the presence of lesser network congestion and decreasing the bit
transmission rate in the presence of congestion teach or suggest
"v. increasing the default threshold priority to a new threshold priority" and
"vi. decreasing the new threshold priority." See Final Act. 8-9 (citing
Chean i-fi-122-23); Ans. 17-19. According to the Examiner,
the bit transmission rate may be decreased by imposing a higher
default threshold priority to shut off the transmission of packets
or drop packets that have been assigned [a] priority lower than
the higher default threshold priority .... The bit transmission
rate may be increased by lowering the default threshold priority
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Application 12/565,921
that allows packets of lower priority that were previously
blocked from being transmitted or dropped, to be transmitted as
well.
Adv. Act. 3. The Examiner further explained that (1) by reducing the bit
transmission rate, the threshold priority is automatically increased to limit
the flow of incoming packets; and (2) setting the bit transmission rate back
to its previous rate will cause the default threshold priority to be decreased to
its previous value. See Ans. 17-19.
Appellants argue that Chean's disclosure of marking a packet with a
lower priority-while yielding a higher probability that the packet will be
dropped-is not an event or condition that will necessarily result in dropping
the packet ("discarding one of the incoming messages"). See App. Br. 4--5;
Reply Br. 2--4. Appellants further argue that although Chean discloses
adjusting a bit transmission rate, Chean does not disclose or suggest
"increasing the default threshold priority to a new threshold priority" or
"decreasing the new threshold priority." See App. Br. 6-8; Reply Br. 4---6.
Appellants contend ( 1) "there is no such teaching of decreasing the bit
transmission rate by imposing a higher default threshold priority in Chean"
and (2) "[t]here is no teaching that a default threshold priority of a particular
queue or of some other network element will be adjusted (increased or
decreased) based on the rate of incoming messages per unit time." App. Br.
8.
We find Appellants' arguments unpersuasive because the arguments
are not commensurate with the broadest reasonable interpretation of claim 1.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. See In re Am. A cad. of Sci.
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Application 12/565,921
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) ("Construing claims
broadly during prosecution is not unfair to the applicant ... because the
applicant has the opportunity to amend the claims to obtain more precise
claim coverage."). Here, claim 1 recites a method of dispatching a plurality
of messages incoming into a dispatching server, where the method recites
several steps that require performance only if certain conditions precedent
are met. See App. Br. 11-12. For example, claim 1 recites, in pertinent part:
c) starting a process to periodically determine a current
rate of incoming messages per unit time;
d) dispatching the message if the current rate is smaller
than a maximum rate;
e) activating the message rate reduction policy if the
current rate of incoming messages is higher than the maximum
rate, wherein the message rate reduction policy applies a
hysteresis mechanism by carrying out the following steps: ...
i. discarding one of the incoming messages if a
priority of the one of the incoming message is lower than
a default threshold priority; ...
v. increasing the default threshold priority to a new
threshold priority in case the new current rate is higher
than the maximum rate of incoming messages per unit
time; [and]
vi. decreasing the new threshold priority in case
the new current rate is lower than the maximum rate of
incoming messages per unit time.
App. Br. 11-12 (emphasis added). Due to the language in the "dispatching"
and "activating" steps, logically, these steps do not need to be performed
after the "starting" step if the condition precedent recited in each step is not
met. In fact, the "dispatching" and "activating" steps are mutually
exclusive. If the current rate of incoming messages is smaller than a
maximum rate, then the message is dispatched and the "activating" step does
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Application 12/565,921
not need to be performed. See, e.g., Fig. 1, Spec. iii! 15-17. Therefore, in
accord with our precedent, the broadest reasonable interpretation of claim 1
encompasses a method where only steps a), b ), c ), d), and t) are performed.
See Ex Parte Schulhauser et al., Appeal 2013 007847, 2016 WL_
(precedential) (PTAB Apr. 28, 2016) (finding that in a method claim, a step
reciting a condition precedent does not need to be performed if the condition
precedent is not met); see also Ex Parte Fleming, Appeal 2014-002849,
2014 WL 7146104 (PTAB Dec. 12, 2014) (expanded panel decision on
rehearing); Ex Parte Urbanet, Appeal 2011-002606, 2012 WL 4460637
(PTAB Sept. 19, 2012); Ex Parte Katz, Appeal 2010-006083, 2011 WL
514314 (BPAI Jan. 27, 2011).
As Appellants' arguments merely challenge the Examiner's rejection
of sub-steps that do not need to be performed under the broadest reasonable
interpretation of claim 1 (e.g., sub-steps i., v., and vi., of step e )) (see App.
Br. 4--8; Reply Br. 2---6); Appellants have not presented persuasive argument
or evidence that the Examiner erred in rejecting step a), b ), c ), d), or t) of
claim 1. Accordingly, we disagree with Appellants' arguments regarding
claim 1 and affirm the Examiner's rejection of claim 1. Because our
analysis deviates from the reasoning in the Examiner's Final Rejection,
Advisory Action, and Answer (see Final Act. 3-9; Adv. Act. 2-3; Ans. 16-
19), however, we designate our affirmance as a new ground of rejection
within 37 C.F.R. § 41.50(b) for claim 1. As per dependent claims 4--9, for
the same reasons discussed above, we affirm and designate our affirmances
as new grounds of rejection within 37 C.F.R. § 41.50(b).
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Claims 1 {}-11
Claim 10 recites "a module for implementing the method according to
claim 1, comprising a user interface, a data communication interface, a
network protocol manager, and a message storage entity commonly
configured for implementing the method according to claim 1." App. Br.
13. Although claim 10 includes the steps of method claim 1, claim 10 is
directed to a module, which is a system claim. Our precedent informs us
that
[ t ]he broadest reasonable interpretation of a system claim having
structure that performs a function, which only needs to occur if a
condition precedent is met, still requires structure for performing
the function should the condition occur. Thus, in order to show
anticipation or obviousness of a claim reciting structure that
performs a function tied to a condition precedent, the Examiner
must cite prior art that discloses or renders obvious such
structure.
Schulhauser, 2016 WL at __ . Accordingly, to make a prima facie case of
obviousness for claim 10, the Examiner needed to provide evidence that
discloses or renders obvious a structure capable of performing all the recited
functions of claim 1. Having reviewed Appellants' arguments in light of the
Examiner's findings, reasoning, and conclusions, we conclude the Examiner
erred and has failed to satisfy this burden of making a prima facie case of
obviousness.
More specifically, as Appellants argue, the Examiner erred by failing
to show that the combination of V erzijp and Chean teaches or suggests
"increasing the default threshold priority to a new threshold priority" and
"decreasing the new threshold priority," as recited in claim 1 and therefore
required by claim 10. See App. Br. 6---8; Reply Br. 4---6. We agree with the
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Application 12/565,921
Examiner that Chean discloses increasing the bit transmission rate of
incoming messages in the presence of lesser network congestion and
decreasing the bit transmission rate in the presence of congestion. See Final
Act. 8-9 (citing Chean i-fi-122-23); Ans. 17-19. But the Examiner has not
adequately explained how these disclosures of Chean (or any other prior art
disclosures) teach or suggest "increasing the default threshold priority to a
new threshold priority" and "decreasing the new threshold priority" as
claimed. See Final Act. 3-9, 10-11; Adv. Act. 2-3; Ans. 16-19. For
example, the Examiner has not adequately explained how or why reducing
or increasing the bit transmission rate would automatically increase or
decrease, respectively, the default or new threshold priority. See Ans. 17-
19. Further, the Examiner's reasoning that increasing or decreasing the
default threshold priority may result in a decrease or an increase,
respectively, in the bit transmission rate has no bearing on whether or not
adjusting the bit transmission rate teaches or suggests an adjustment to the
default threshold priority. See Adv. Act. 3.
For these reasons, we agree with Appellants that the Examiner has not
established that the combination of Verzijp and Chean teaches or suggests
claim 10. We do not sustain the Examiner's rejection of claim 10, as well as
the rejection of dependent claim 11, which includes the same deficiency (see
App. Br. 13) and has not been cured by Jalali. See Final Act. 15-17; Adv.
Act. 2-3; Ans. 16-19.
DECISION
The decision of the Examiner to reject claims 1 and 4--9 under
35 U.S.C. § 103(a) is affirmed.
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The decision of the Examiner to reject claims 10 and 11 under
35 U.S.C. § 103(a) is reversed.
Because in some instances the claim interpretation and reasoning we
rely on to sustain the rejections of claims 1 and 4--9 differs from the
Examiner's claim interpretation, we designate our affirmance of the
rejections of these claims as new grounds of rejection so as to provide
Appellants with a full and fair opportunity to respond to the thrust of the
rejections.
This decision contains new grounds of rejection pursuant to 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 Appellants, 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
prosecution 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.
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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 ).
See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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