Ex Parte Celi et al

Board of Patent Appeals and Interferences

Jan 31, 2011

10999413 (B.P.A.I. Jan. 31, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH CELI, CHARLES W. CROSS, BRETT J. GAVAGNI,
PETER J. GUASTI, and PEEYUSH JAISWAL
____________

Appeal 2009-006879
Application 10/999,413
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and STEPHEN SIU,
Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing appeal or commencing a civil action,
as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAILING DATA”
(paper delivery mode) or the “NOTIFICATION DATA” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006879
Application 10/999,413

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1-17. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We Affirm.

Invention
Appellants’ invention relates to the transmission of real time data over
a computer communications network. More particularly, Appellants’
invention is directed to managing unreliable connections when transferring
real time data over a computer communications network. (Spec. 1).
Claim 1 is illustrative:
1. A real time data exchange suspension method comprising
the steps of:

detecting a network outage condition affecting a real time
data exchange over a connection in a computer communications
network;

selectively suspending but not terminating said real time
data exchange over the connection in the computer
communications network; and,

resuming said real time data exchange over the
connection in the computer communications network when said
network outage condition has been alleviated.

(emphasis added).

The Examiner relies on the following prior art references as evidence
of unpatentability:
Appeal 2009-006879
Application 10/999,413

3
Ahuja US 5,752,185 May 12, 1998
Celi US 2002/0150082 A1 Oct. 17, 2002
Burmeister US 2003/0156550 A1 Aug. 21, 2003

Appellants appeal the following rejections:2
1. Claims 1, 2, 5, 6, 11, 12, 15, and 16 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Ahuja.
2. Claims 3, 4, 7-9, 13, 14, and 17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Ahuja and
Celi.
3. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Ahuja, Celi, and Burmeister.

ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal:

Did the Examiner err as a matter of claim construction
that “a connection” recited in independent claims 1 and
11, and the commensurate “a communicative linkage”
recited in independent claim 8 broadly but reasonably
read on one or more connections (claims 1, 11) and one
or more communicative linkages (claim 8)?

2 The Examiner withdrew the rejection of claims 6 and 16 under 35 U.S.C.
§112, second paragraph. (Ans. 3).
Appeal 2009-006879
Application 10/999,413

4
FACTUAL FINDINGS (FF)
1. Appellants’ Specification discloses:
In accordance with the present invention, an unreliable
connection can be detected as between two host
platforms exchanging real time data over a computer
communications network. The real time data can be
speech data, as an example, and as yet a further example,
the computer communications network can include one
or more wireless communicative linkages. Responsive to
the detection of an unreliable connection, the exchange of
the real time data can be selectively suspended until a
more reliable connection can be re-established.
(Spec. 9, para. [0016]).

2. Appellants’ Specification discloses “[n]otwithstanding, the invention
is not limited to the precise arrangement shown and the entirety of the
process or any portion thereof can be handled within any segment of
the architecture of the client computing device.” (Spec. 11, para.
[0020]).

ANALYSIS
Appellants’ argument in the Reply Brief essentially mirrors the
principal argument presented in the Brief: Appellants contend that the
“Examiner has construed the term ‘a connection’ as meaning one or more
connections. In doing so, Examiner has misconstrued the term ‘a’ beyond its
ordinary meaning and in contravention of basic laws of claim construction.”
(Reply Br. 2).
We disagree for the reasons discussed infra.

Appeal 2009-006879
Application 10/999,413

5
We begin our analysis by noting that the Court of Appeals for the
Federal Circuit has repeatedly emphasized “that an indefinite article ‘a’ or
‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended
claims containing the transitional phrase ‘comprising.’” KCJ Corp. v.
Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (citing Elkay
Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 977 (Fed. Cir. 1999); Abtox, Inc.
v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997); North Am. Vaccine,
Inc. v. American Cyanamid Co., 7 F.3d 1571, 1575-76, (Fed. Cir. 1993)).
Our reviewing court has further determined that “[u]nless the claim is
specific as to the number of elements, the article ‘a’ receives a singular
interpretation only in rare circumstances when the patentee evinces a clear
intent to so limit the article … Under this conventional rule, the claim
limitation ‘a,’ without more, requires at least one.” KCJ Corp., 223 F.3d at
1356. (internal citation omitted). In such cases, we note that our reviewing
court further undertakes an examination of the written description and the
prosecution history to ascertain whether to limit the meaning of “a” or “an”
“when claim language or context suggests an ambiguity in application of the
general meaning of an article.” KCJ Corp., 223 F.3d at 1356.
Here, we observe that each of Appellants’ independent claims recites
the open-ended transitional phrase “comprising . . .” in the preamble.
(Claims 1, 8, 11).
We note that if Appellants are eventually successful in obtaining a
patent grant (after further prosecution), the aforementioned argument that “a
connection” means only one connection could be found by a court to
establish a prosecution disclaimer (in the context of literal infringement) that
Appeal 2009-006879
Application 10/999,413

6
would effectively narrow the meaning of the claim terms “a connection”
(claims 1, 11) and “a communicative linkage” (claim 8) by excluding the
plural interpretations. See Omega Eng’g, Inc. v Raytek Corp., 334 F.3d
1314, 1324 (Fed. Cir. 2003).
However, during prosecution before the PTO we are not concerned
with a prosecution disclaimer that could be considered by a court in a
hypothetical patent infringement trial. Here, for purposes of this appeal, we
focus our analysis on whether the Examiner has properly construed the
disputed claims terms by applying the broadest reasonable interpretation in
light of Appellants’ Specification as it would have been interpreted by one
of ordinary skill in the art. 3
Thus, we review Appellants’ Specification for context that may evince
a clear intent to limit the article “a” to only one, and not one or more. On
this record, we find no notice of such intent in the Specification. To the
contrary, we agree with the Examiner (Ans. 11) that Appellants’
Specification fails to provide a specific definition of “a connection” that
would support an argument that the Examiner’s interpretation is
unreasonable.

3 During ex parte prosecution, the Patent & Trademark Office (PTO)
determines the scope of the claims by giving the language “their broadest
reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)).

Appeal 2009-006879
Application 10/999,413

7
Turning to the Specification, we observe that Appellants expressly
refer to “one or more wireless communicative linkages,” as follows:
In accordance with the present invention, an unreliable
connection can be detected as between two host
platforms exchanging real time data over a computer
communications network. The real time data can be
speech data, as an example, and as yet a further example,
the computer communications network can include one

or more wireless communicative linkages. Responsive to
the detection of an unreliable connection, the exchange of
the real time data can be selectively suspended until a
more reliable connection can be re-established.
(FF 1) (emphasis added).

Moreover, we observe that Appellants’ Specification gives
express notice to the artisan that “the invention is not limited to the
precise arrangement shown and the entirety of the process or any
portion thereof can be handled within any segment of the architecture
of the client computing device.” (FF 2)(emphasis added).
For at least these reasons, we find Appellants’ arguments urging
patentability are unpersuasive. Therefore, we sustain the Examiner’s
anticipation rejection of independent claims 1 and 11. Dependent claims 2,
5, 6, 12, 15, and 16 (not argued separately) fall with claims 1 and 11, as
these dependent claims fall with their respective independent claim based on
Appellants’ arguments. See 37 C.F.R. § 1.37(c)(1)(vii).

Appeal 2009-006879
Application 10/999,413

8
Claims 3, 4, 7-9, 13, 14, and 17
The Examiner rejected claims 3, 4, 7-9, 13, 14, and 17 as obvious over
the combination of Ahuja and Celi.
For the same reasons discussed above regarding independent claims 1
and 11, we sustain the Examiner’s § 103 rejection of independent claim 8
which recites a commensurate argued limitation (i.e., “a communicative
linkage”).
Regarding dependent claims 3, 4, 7, 9, 13, 14, and 17, Appellants aver
that these claims are allowable for the same reasons previously advanced for
independent claims 1, 8, and 11. (App. Br. 10). However, for the reasons
discussed above, we do not find Appellants’ arguments persuasive regarding
any purported deficiencies of Ahuja. Therefore, we sustain the Examiner’s
obviousness rejection of claims 3, 4, 7-9, 13, 14, and 17 over Ahuja and
Celi.

Claim 10
The Examiner rejected claim 10 as obvious over the combination of
Ahuja, Celi, and Burmeister.
Appellants aver that claim 10 is allowable for the same reasons
previously advanced for independent claim 8. (App. Br. 11-12). However,
we do not find Appellants’ argument persuasive for the same reasons
discussed above regarding claim 8. Therefore, we sustain the Examiner’s
obviousness rejection of claim 10 over the combination of Ahuja, Celi, and
Burmeister.

Appeal 2009-006879
Application 10/999,413

9
CONCLUSION
On this record, the Examiner did not err as a matter of claim
construction that “a connection” recited in independent claims 1 and
11, and the commensurate “a communicative linkage” recited in
independent claim 8 broadly but reasonably read on one or more
connections (claims 1, 11) and one or more communicative linkages
(claim 8).

DECISION
We affirm the Examiner’s § 102 rejection of claims 1, 2, 5, 6, 11, 12,
15, and 16.
We affirm the Examiner’s § 103 rejections of claims 3, 4, 7-10, 13,
14, and 17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

ORDER
AFFIRMED

pgc

CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487