Ex Parte Chen et al

Patent Trial and Appeal Board

Dec 15, 2014

12262900 (P.T.A.B. Dec. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte XIANGFU CHEN, JOHN G. DE FREITAS,
SHIU F. POON, and RICHARD E. SALZ
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Appeal 2012-000569
Application 12/262,9001
Technology Center 2400
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Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
This is a decision on Appellants' Request for Rehearing of our
Decision on Appeal mailed July 23, 2014.
Appellants' request is denied.

1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 2.
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BACKGROUND2
Appellants have filed a paper under 37 C.F.R. § 41.52 requesting we
reconsider our Decision affirming the Examiner's rejection of claims 1–11
under § 102(b) as being anticipated by Rasanen. Request 2–6.
We reconsider our Decision in light of Appellants' Request, but
decline to change the decision for the reasons provided, infra.
APPELLANTS' ARGUMENTS3
(1) Appellants assert, "the . . . Board appears to have
misapprehended or overlooked certain arguments presented by Appellants
. . . . Specifically, Appellants believe . . . [the Board, in construing] the term

2 Our Decision on Rehearing relies upon and refers to our Decision on
Appeal ("Decision," mailed July 23, 2014); Appellants’ Appeal Brief ("App.
Br.," filed Mar. 28, 2011); Reply Brief ("Reply Br.," filed Aug. 15, 2011);
Examiner’s Answer ("Ans.," mailed June 13, 2011); Final Office Action
("Final Act.," mailed Oct. 28, 2010); and the original Specification ("Spec.,"
filed Oct. 31, 2008).
3 As an initial matter, Appellants state, "the factual findings of the
Honorable Board are reviewed to determine whether they are unsupported
by substantial evidence, and the Board's legal conclusions are reviewed for
correctness in law." Request 2 (citations omitted). While this evidentiary
standard is true for court review of agency decisions, we note the Examiner's
burden of proof is analyzed using the preponderance of the evidence. The
Board's decision is the final agency decision on patentability, and thus the
Board reviews the fact finding using a preponderance of the evidence (more
likely than not) standard of proof. In re Caveney, 761 F.2d 671, 674 (Fed.
Cir. 1985) (other than for fraud or violation of the duty of disclosure,
preponderance of the evidence is the standard that must be met by the PTO
in making rejections). On judicial review of agency action, administrative
findings of fact must be sustained when supported by substantial evidence
on the record considered as a whole. In re Gartside, 203 F.3d 1305, 1315
(Fed. Cir. 2000).
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'direction agnostic' overlooked the plain meaning of the term 'agnostic'" and,
by doing so, overlooked Appellants' arguments "that the 'streaming' of
Rasanen is not direction agnostic but direction specific." Request 2–3.
(2) Particularly, Appellants contend we "established a claim
construction exclusively based upon the teachings of the specification."
Request 4. Further in this regard, Appellants allege, "the Board has not
established a finding of fact in respect to the 'broadest reasonable
interpretation' of the claim term 'direction agnostic'. Instead, the Board
advanced past this critical finding of fact and delved into the teachings of the
specification." Id.
(3) Appellants further contend:
Notwithstanding, the claim term at issue —direction agnostic—
is a claim term of two component words: "direction" and
"agnostic". The term "agnostic" has a dictionary meaning[4] of
"non-committal". Thus, the broadest reasonable interpretation
of "direction agnostic" is "noncommittal in respect to a
particular direction". This proffered claim construction is
entirely consistent with the specification in which it is stated at
paragraph [0018] that a policy that is not explicitly bi-
directional is directionally agnostic. Paragraph [0018] does not
specify that a policy that is unidirectional is directionally
agnostic. Yet, the Board has drawn this conclusion by adopting
a meaning of "not bi -directional" for directionally agnostic.
Request 5.
(4) Appellants conclude their arguments by asserting, "[h]ad the
Honorable Board applied the broadest reasonable interpretation standard to

4 We note Appellants argue, without evidence, a purported dictionary
definition of "agnostic" which means "non-committal" that allegedly
supports their preferred claim construction.
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the claimed 'direction agnostic', the Board would have drawn an opposite
conclusion in respect to the 'streaming' of Rasanen which is inherently
directionally committal in a direction of the streaming data." Request 6.
RESPONSE TO ARGUMENTS
We have only considered those timely arguments actually made by
Appellants in deciding this Request. Arguments which Appellants could
have timely made but chose not to make in Request or in the prior Appeal
and Reply Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).
We have reviewed Appellants' Specification, previous arguments, and
arguments made in the Request. We note Appellants' specific arguments for
reversing the Examiner in this Request are new arguments not identical to
those previously presented, as discussed below.
Appellants' Previous Arguments
With respect to the narrow issue identified in the Request, as
mentioned above, we based our Decision upon Appellants' arguments and
claim support found in the Appeal and Reply Briefs, as follows:
A. Appellants state support for the disputed limitation, implicitly
including the disputed phrase "direction agnostic" raised in this Request,
may be found in the Specification at paragraph 19, lines 7–9 , i.e., "[i]n
block 340, a policy can be extracted from the policy document and in
decision block 350 it can be determined whether the extracted policy is bi-
directional or direction agnostic." App. Br. 3 (SUMMARY OF CLAIMED
SUBJECT MATTER).
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B. "Integral to claim 1, and also claims 5 and 8 which recite
similar operable limitations, is the determination of whether an extracted
policy is bi-directional or direction agnostic. This limitation cannot be
found in Rasanen." App. Br. 8; and see Reply Br. 2.
C. Appellants allege the Examiner's reliance upon Rasanen is
misplaced, i.e., "[c]olumn 10, lines 53 through 67 of Rasanen, however, does
not relate to a policy extracted from a policy document—but to mapping
rules for mapping media flows to a streaming service." App. Br. 8.
D. With respect to the cited portion of Rasanen, Appellants allege
it "shows no determination of whether or not a policy is bi-directional or
direction agnostic. Rather, the citation . . . is clear the directionality taught
by Rasanen refers not to the mapping rules, but to a 'streaming service.'"
App. Br. 9.
E. Appellants further contend:
Appellants' claim language requires the determination not of a
traffic class, but of whether or not a policy is bi-directional or
direction agnostic. Irrespective of whether a traffic class is
streaming and thus direction agnostic in the view of Examiner,
or whether the traffic class is conversational and thus
bidirectional in the view of the Examiner, Examiner still has not
shown that the "traffic class" can be equated to a "policy".
Reply Br. 3–4.
F. Appellants conclude by arguing:
Thus, to the extent that a "traffic class" is not fairly equated to a
"policy" and further to the extent that the assignment of a traffic
class as "streaming" is not necessarily the same as "direction
agnostic"—there is no proven correlation set forth by the
Examiner that "streaming" necessarily requires that no sense of
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directionality exists for the "traffic class"—Examiner has failed
to locate each claimed teaching of claims 1, 5 and 8 in the
singular Rasanen reference.
Reply Br. 4.
Analysis
We first note, 37 C.F.R. 41.37(c)(iv) governs the content of Appeal
Briefs, and states, in pertinent part: "Argument: . . . Except as provided for
in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in
the appeal brief will be refused consideration by the Board for purposes of
the present appeal."
In the Request, we note Appellants attempt to introduce new
arguments not previously presented during prosecution, specifically: (i)
Rasanen's streaming is direction specific and not direction agnostic
(Request 3); and (ii) "The term 'agnostic' has a dictionary meaning of 'non-
committal' . . . [such that] the broadest reasonable interpretation of 'direction
agnostic' is 'noncommittal in respect to a particular direction.'" Request 5.
In addition, Appellants allude to, but do not specifically cite new
authority related to new argument (ii), above, i.e., "[t]he term 'agnostic' has a
dictionary meaning of 'non-committal.'" Id.
Thus, we find Appellants' new arguments (i) and (ii) in the Request
identified above to be untimely because Appellants had full opportunity to
amend the claims and/or introduce dictionary definitions or other extrinsic
rebuttal evidence in response to the Examiner's claim construction and
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findings of fact.5 To the extent our reviewing court may disagree regarding
the timeliness of Appellants’ arguments presented in the Request, we
provide additional responses and clarification, infra. In response to
Appellants' Argument (2), supra, that "the Board has not established a
finding of fact in respect to the 'broadest reasonable interpretation' of the
claim term 'direction agnostic,'" we disagree and point to pages 46 and 77 of
our Decision.8 Appellants cite ICON Health in supposed support of their
contentions. Request 4 n.1. To the contrary, we find ICON Health supports
our claim construction.
"[T]he PTO must give claims their broadest reasonable construction
consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). Therefore, we look to the specification to see if

5 See App. Br. 14 ("IX. EVIDENCE APPENDIX . . . No evidence
submitted pursuant to 37 C.F.R. §§ 1.130, 1.131, or 1.132 of this title or of
any other evidence entered by the Examiner has been relied upon by
Appellants in this Appeal, and thus no evidence is attached hereto.").
6 "We disagree with Appellants' arguments with respect to claim 1, and we
adopt as our own (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken and (2) the reasons and rebuttals
set forth by the Examiner in the Examiner's Answer in response to
Appellants' arguments." Decision 4 (emphasis added).
7 "[W]e agree with the Examiner's findings [and resulting claim
construction] . . . that the recited 'determining whether the extracted policy is
bi-directional or direction agnostic' reads on Rasanen's disclosure of
determining whether a flow is either 'conversational,' hence bi-directional, or
'streaming,' hence direction agnostic, i.e., not bi-directional . . . ."
Decision 7.
8 "Claim construction is a matter of law and is reviewed de novo on appeal."
Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed.
Cir. 2001) (citing Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456, 46
USPQ2d 1169, 1174 (Fed.Cir.1998) (en banc)).
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it provides a definition for claim terms, but otherwise apply a broad but
reasonable interpretation consistent with the Specification." In re ICON
Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Our reviewing court guides: "[A]lthough the specification often
describes very specific embodiments of the invention, we have repeatedly
warned against confining the claims to those embodiments. . . . [C]laims
may embrace ‘different subject matter than is illustrated in the specific
embodiments in the specification.'" Phillips v. AWH Corp., 415 F.3d 1303,
1323 (Fed. Cir. 2005) (en banc) (citations omitted). Because "applicants
may amend claims to narrow their scope, a broad construction during
prosecution creates no unfairness to the applicant or patentee." ICON
Health and Fitness, 496 F.3d at 1379 (citation omitted).
Although the scope of the claim is not limited to the descriptions in
the Specification, the exemplary embodiments described in the Specification
at least fall within the scope of the claims. Thus, our broad, but reasonable
reading of the contested claim term "direction agnostic" on the cited
reference is fully consistent with Appellants' Specification, but is not limited
in scope by the exemplary embodiment(s) described in the Specification.
(i.e., in the context of claim 1, "a direction agnostic policy includes a policy
that is not bi-directional." See Decision 6, and see App. Br. 3 (SUMMARY
OF CLAIMED SUBJECT MATTER)).9

9 Although not dispositive to our original Decision affirming the Examiner's
rejections or to our present affirmance, we note there is no evidence of
record that defines a reference point with respect to which the "direction"
involved with "direction agnostic" or Appellants' now preferred "direction
non-committal" is defined. Thus, an extracted policy related to streaming,
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In our Decision (6), we stated: "under a broad but reasonable
construction, we conclude a direction agnostic policy includes a policy that
is not bi-directional." We find the language in Appellants’ Specification
(¶13, "For each extracted policy that is not bi-directional and hence
directionally agnostic") and the express language of claim 1 ("determining
whether the extracted policy is bi-directional or direction agnostic") would
reasonably guide an artisan to conclude that "bi-directional" and
"directionally agnostic" are mutually exclusive.
We note it is Appellants’ burden to precisely define the invention, not
the PTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Although a
patent applicant is entitled to be his or her own lexicographer of patent claim
terms, in ex parte prosecution it must be within limits. In re Corr, 347 F.2d
578, 580 (CCPA 1965). The applicant must do so by placing such
definitions in the Specification with sufficient clarity to provide a person of
ordinary skill in the art with clear and precise notice of the meaning that is to
be construed. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)
(although an inventor is free to define the specific terms used to describe the
invention, this must be done with reasonable clarity, deliberateness, and
precision; where an inventor chooses to give terms uncommon meanings, the
inventor must set out any uncommon definition in some manner within the
patent disclosure so as to give one of ordinary skill in the art notice of the
change).
Here, Appellants have not established where a definition is set forth in
the Specification that provides an artisan with notice of a special or

discussed infra, would not appear to be precluded by the recitations of
claim 1.
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uncommon meaning for the contested limitation of a "direction agnostic"
policy that would preclude our broad but reasonable interpretation. As
previously mentioned, Appellants have not established in the record a
common or plain meaning for the claim limitation "direction agnostic" for
example, by providing the Examiner with an extrinsic dictionary definition
as rebuttal evidence for entry into the record. See MPEP §2145 Eighth
Edition, Rev. 9, Aug. 2012. Nor is there a declaration of record to consider
as evidence regarding the intended metes and bounds of the contested
"direction agnostic" claim limitation. (Claims 1 and 8). We note
"[a]rgument in the brief does not take the place of evidence in the record."
In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole, 326 F.2d
769, 773 (CCPA 1964)). Attorney arguments and conclusory statements
that are unsupported by factual evidence are entitled to little probative value.
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
The common practice of failing to precisely define claim terms in the
Specification, and then later arguing these undefined terms are not taught by
the cited reference(s) only serves to undermine the fundamental public
notice function of a U.S. Patent grant, and has the potential to create
unnecessary litigation costs to the public, which is entitled to a clear warning
from the patent owner as to what constitutes infringement of the claimed
invention. See Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379
(Fed. Cir. 2000).
With respect to previous Arguments (C) and (D), the Examiner finds,
and we still agree, Rasanen's disclosure of Policy Decision Function
(PDF) 222 functions to make policy decisions regarding maximum
authorized traffic classes for given flows (e.g., bi-directional flows or
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direction agnostic flows). Ans. 8–9. We find the teachings of Rasanen cited
by the Examiner at column 6, lines 6–20, column 19, lines 36–40, and
Figure 3 disclose the disputed limitation, i.e., "determining whether the
extracted policy is bi-directional or direction agnostic." Claim 1 (emphasis
added). Thus, we are not persuaded by Appellants' argument that Rasanen is
merely directed to streaming and does not disclose extracting a policy from a
policy document, and then determining whether the extracted policy is bi-
directional or direction agnostic.
CONCLUSION
In view of the above, Appellants have not persuasively shown that we
misapprehended or overlooked any of their arguments, or that our Decision
should otherwise be reversed. For the aforementioned reasons, Appellants'
contentions have not persuaded us of error in our Decision on Appeal of
July 23, 2014.
DECISION
Accordingly, while we have granted Appellants' Request for
Rehearing to the extent that we have reconsidered our Decision, that request
is denied with respect to making any changes therein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
REQUEST FOR REHEARING DENIED

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