Ex Parte Boyd et al

Board of Patent Appeals and Interferences

Oct 27, 2008

10235689 (B.P.A.I. Oct. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WILLIAM TODD BOYD, JEAN L. CALVIGNAC,
CHIH-JEN CHANG, DOUGLAS J. JOSEPH, and RENATO JOHN RECIO
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Appeal 2008-1742
Application 10/235,689
Technology Center 2100
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Decided: October 27, 2008
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Before JOSEPH L. DIXON, JEAN R. HOMERE, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-23 and 27-31. Claims 24-26 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

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THE INVENTION
Appellants’ invention relates generally to communication protocols
between a host computer and an input/output (I/O) device. More
specifically, Appellants’ invention is directed to a hardware implementation
for offloading management of a send queue (Spec. 1).
Independent claim 1 is illustrative:
1. A method, in a data processing system, for managing a
work queue, comprising:

creating a work queue entry in a work queue in response
to a request to send data;

sending a notification to the Internet Protocol Suite
Offload Engine (IPSOE) notifying the IPSOE of the creation of
the work queue entry;

transmitting, via the IPSOE, the data associated with the
work queue entry to a destination device in response to
receiving the notification; and

processing a completion queue entry in a completion
queue in response to receiving a notification that the completion
queue entry has been created by the IPSOE in response to
receiving an acknowledgment of receipt of the data associated
with the work queue entry from the destination device.

THE REJECTION
Claims 1-23 and 27-31 stand rejected under 35 U.S.C. §112, first
paragraph, as failing to comply with the written description requirement.
This is the sole rejection before us.
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APPELLANTS’ CONTENTIONS
Appellants contend that the Examiner erred in rejecting claims 1-23
and 27-31 that stand rejected under 35 U.S.C. §112, first paragraph, as
failing to comply with the written description requirement because the
the subject matter of the claims is disclosed in the specification in such a
way as to reasonably convey to a person skilled in the art at the time the
application was filed, that the inventor had possession of the claimed
invention (App. Br. 9).

ISSUE
We consider the question of whether Appellants have shown that the
Examiner erred in rejecting claims 1-23 and 27-31 under 35 U.S.C. §112,
first paragraph, as failing to comply with the written description
requirement.
PRINCIPLES OF LAW
The determination of whether a patent meets the written description
requirement is a “question of fact, judged from the perspective of one of
ordinary skill in the art as of the relevant filing date.” Falko-Gunter Falkner
v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006) (citing Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64). “To fulfill the written description
requirement, the patent specification must describe an invention in sufficient
detail that one skilled in the art can clearly conclude that the inventor
invented what is claimed.” Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d
1352, 1364 (Fed. Cir. 2003) (citations omitted). Our reviewing court has
cautioned, however, that “[t]he disclosure as originally filed does not . . .
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have to provide in haec verba support for the claimed subject matter at
issue.” Id. at 1364. “Although [the applicant] does not have to describe
exactly the subject matter claimed, … the description must clearly allow
persons of ordinary skill in the art to recognize that [he or she] invented
what is claimed.” In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)
(citations omitted). Put another way, “the applicant must . . . convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention.” Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The written description, although
it need not include information that is already known and available to the
experienced public, must be in sufficient detail to satisfy the statutory
requirements, employing “[w]ords, structures, figures, diagrams, formulas,
etc., that fully set forth the claimed invention.” Space Systems/Loral, Inc. v.
Lockheed Martin Corp., 405 F.3d 985, 987 (Fed. Cir. 2005) (quoting
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)).
Finally, “[p]recisely how close the original description must come to comply
with the description requirement of § 112 must be determined on a
case-by-case basis.” Eiselstein v. Frank, 52 F.3d 1035, 1039 (Fed. Cir.
1995) (citation omitted).

FINDINGS OF FACTS
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. Based upon our review of the record before us, we find that
Appellants’ detailed mapping in the principal Brief of the claimed subject
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matter to the supporting portions of the Specification is supported by a
preponderance of the evidence (see App. Br. 9-10).

ANALYSIS
We decide the question of whether Appellants have shown that the
Examiner erred in rejecting claims 1-23 and 27-31 under 35 U.S.C. § 112
first paragraph, as failing to comply with the written description
requirement.
The Examiner contends that the amendment filed by Appellants on
Aug. 20, 2006, added new matter which is not supported by the original
disclosure (Ans. 3). The Examiner objects to the amendment under
35 U.S.C. § 132(a) as purportedly containing new matter. The Examiner
also indicates that if Appellants wish to delete background information from
the Specification, the proper procedure is a petition to expunge (Ans. 4).
Appellants respond in the principal Brief, as follows:
Applicants previously stated that the description of the
present invention was inadvertently and erroneously placed in
the Related Art section of the application and requested that
lines 5-31 on page 3 of the specification be removed to avoid
confusion. An amendment to correct an obvious
error does not constitute new matter where one skilled in the art
would not only recognize the existence of error in the
specification, but also the appropriate correction. In re Oda, 443
F.2d 1200, 170 USPQ 260 (CCPA 1971). Applicants assert that
one skilled in the art would not only recognize the existence of
error in the specification, but also the appropriate correction
because the portion of text that was inadvertently placed in the
background section of the application is reiterated
numerous times throughout other parts of the disclosure as
shown above in claims 1-11.
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Additionally, Applicants respectfully disagree with the
Examiner's assertion that the removal of the inadvertent
disclosure constitutes the introduction of new matter. As stated
in the MPEP, new matter is subject matter which has no
antecedent basis in the original specification, drawings or
claim (MPEP 1504.04). Applicants have shown above that the
claims are fully supported by the original specification and
drawings despite the removal of the inadvertent
disclosure.
Furthermore, the Examiner has failed to specifically
identify in the Office Action the subject matter which is not
considered to be supported by the original disclosure. (See,
MPEP § 1504.04). A statement by the Examiner that merely
generalizes that the amended drawing, specification or
title contains new matter is not sufficient. Id.
(App. Br. 12).

Significantly, (as pointed out by Appellants) the Examiner has failed
to specifically identify in the Office Action the subject matter which is not
considered to be supported by the original disclosure. See MPEP § 1504.04.
Moreover, based upon our review of the record before us, we find that
Appellants’ detailed mapping in the principal Brief of claimed subject matter
to the supporting portions of the Specification is supported by a
preponderance of the evidence (FF 1). Therefore, we find Appellants have
sufficiently conveyed with reasonable clarity to those skilled in the art that
Appellants were in possession of the invention as of the filing date.
Accordingly, we find Appellants have met the burden of showing error in
the Examiner’s proffered prima facie case under 35 U.S.C. § 112, first
paragraph.

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Petition to Expunge
To decide this appeal, we need not reach the issue of the Examiner’s
requirement for petition to expunge (See Ans. 4; see also Reply Br. 2-3).
This relates to a petitionable issue and not an appealable issue. See In re
Schneider, 481 F.2d 1350, 1356-57 (CCPA 1973) and In re Mindick, 371
F.2d 892, 894 (CCPA 1967). See also Manual of Patent Examining
Procedure (MPEP) (8th Ed., Rev. July 2008), § 1002.02(c), items 3(c)
(“requirement to cancel "new matter" from specification, MPEP
§ 608.04(c)”) and 3(g) (“refusal to enter an amendment, 37 CFR § 1.127,
MPEP § 714.19”), and MPEP § 1201 (“The line of demarcation between
appealable matters for the Board of Patent Appeals and Interferences
(Board) and petitionable matters for the Director of the U.S. Patent and
Trademark Office (Director) should be carefully observed.”). Thus, the
relief sought by the Appellants would have been properly presented by a
petition to the Commissioner under 37 C.F.R. § 1.181 instead of by appeal
to this Board. Accordingly, we will not further consider this issue.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have met their burden of showing that the Examiner erred in
rejecting claims 1-23 and 27-31 under 35 U.S.C. §112, first paragraph, as
failing to comply with the written description requirement.
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DECISION
We reverse the Examiner’s decision rejecting claims 1-23 and 27-31.

REVERSED

pgc

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