Ex Parte Chiabrera

Patent Trial and Appeal Board

Mar 29, 2013

11396056 (P.T.A.B. Mar. 29, 2013)

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

Ex parte MICHELE CHIABRERA

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Appeal 2010-010963
Application 11/396,056
Technology Center 2100
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Before ALLEN R. MacDONALD, JUSTIN BUSCH, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

BRADEN, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2010-010963
Application 11/396,056

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This is an appeal
1
under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-23.
2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to communication networks and an
apparatus and method for transmitting and recovering encoded data streams
across multiple physical medium attachments. (Spec. [0001].)

Exemplary Claim
Independent claim 1 is representative of the invention, and is
reproduced below with disputed limitations in italics:
1. A method for operating a transmitter, the method comprising:

generating an encoded data block;

dividing the encoded data block into a plurality of sub-blocks; and

transmitting the plurality of sub-blocks over a plurality of physical
medium attachments.

Examiner’s Rejections
1. Claims 1-11 stand rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter. (Ans. 3.)

1
The Real Party in Interest is STMicroelectronics, Inc.
2
Claims 15-16 and 18-20 are objected to by the Examiner, and are deemed
allowable if rewritten in independent form. (Ans. 10.) Therefore, claims
15-16 and 18-20 are not before the Board on appeal.
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2. Claims 1-2, 6-7, 12-14, 17, and 23 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Lo (US Patent No. 7,251,699 B1).
(Ans. 5.)

3. Claims 3-5, 8, and 21-223 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lo (US Patent No. 7,251,699 B1) in view of
Taborek, Sr. (US Patent No. 7,020,729 B2). (Ans. 8.)

ISSUE 1
§ 101 Rejection of Claims 1-11
Appellant contends that the 35 U.S.C. § 101 rejections are legally
deficient. (App. Br. 13.)

Issue 1: Has the Examiner erred in finding that the claims are directed
to non-statutory subject matter?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We are persuaded the 35 U.S.C.
§ 101 rejections are legally deficient.
The Court of Appeals for the Federal Circuit (“CAFC”) has clarified
the law regarding patent eligible subject matter for process claims. In re
Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), aff’d sub nom. Bilski v.
Kappos, 130 S. Ct. 3218 (2010). The en banc court in Bilski held that “the

3
The Examiner stated that claims 9-11 have overcome the art rejection.
(Ans. 16.)
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machine-or-transformation test, properly applied, is the governing test for
determining patent eligibility of a process under § 101.” Id. at 956.
The Examiner’s post-Bilski Answer does not acknowledge the
decision in Bilski. Thus, the Examiner’s analysis is not consistent with the
USPTO § 101 subject matter eligibility determination guidance issued to all
USPTO examiners on August 24, 2009
4
and July 27, 2010.
5
That guidance
was incorporated in Revision 9 of the Eighth Edition of The Manual of
Patent Examining Procedure (MPEP) issued in August 2012. (See MPEP §
2106; 8th Ed., Rev. 9). Accordingly, we reverse the rejection of claims 1-11
under 35 U.S.C. § 101.

ISSUE 2
§ 102(e) Rejection of Claims 1-2, 6-7, 12-14, 17, and 23
Appellant contends that the claim limitation “dividing the encoded
data block into a plurality of sub-blocks” is not disclosed in Lo. (App. Br.
15.)

4
Memorandum from Andrew H. Hirshfeld, Acting Deputy Comm’r for
Patent Examination Policy, U.S. Patent and Trademark Office (to the
Technology Center Directors), New Interim Patent Subject Matter Eligibility
Examination Instructions (August 24, 2009) available at
http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_instructions.pdf.
5
Memorandum from Robert W. Bahr, Acting Assoc. Comm’r for Patent
Examination Policy, U.S. Patent and Trademark Office (to the Patent
Examining Corps), Interim Guidance for Determining Subject Matter
Eligibility for Process Claims in View of Bilski v. Kappos (July 27, 2010)
available at
http://www.uspto.gov/patents/law/exam/bilski_guidance_27jul2010.pdf
(including Interim Guidance for Determining Subject Matter Eligibility for
Process Claims in View of Bilski v. Kappos, 75 Fed. Reg. 43,922 (July 27,
2010)(notice)).
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Issue 2: Has the Examiner erred in finding that Lo discloses “dividing
the encoded data block into a plurality of sub-blocks” as recited in
independent claim 1?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We are unpersuaded by Appellant’s
arguments. (App. Br. 14-17)
Appellant contends that “Lo expressly discloses that the encoder
provides data formatting and organizes the data into data blocks, such as
bytes” (App. Br. 15, citing Lo column 1, lines 29-32), and the Examiner
finds that Lo’s disclosure of dividing a data block into n sub-blocks, such as
bytes, falls within the scope of the claims (Ans. 12; see Lo col. 1, ll. 36-37
and 61-64, and col. 2, ll. 29-37). Here, the Appellant’s argument is not
commensurate with the limitations of claims, because Appellant appears to
be narrowly interpreting the claims. However, there is nothing in either the
claims themselves or the Appellant’s Specification that limits the claim
scope to exclude bytes as being a recognizable sub-block of an encoded data
block. Further, the PTO is required to give claims their broadest reasonable
interpretation. See In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004)
(quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). Thus, we agree
with the Examiner’s findings.
Appellant further contends that Lo only discloses that data is
multiplexed and encoded into a single encoded data block so that only one
data block is output and transmitted. (App. Br. 15) Appellant argues that
“[t]he Examiner appears to misinterpret ‘multiplexing a data block from a
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plurality of bytes and encoding the multiplexed data block into an encoded
data block that includes the plurality of bytes’ as dividing an already
generated encoded block into a plurality of sub-blocks.” (App. Br. 16.)
According to Appellant:
Multiplexing and encoding data is not the same or an equivalent to
‘dividing the encoded block into a plurality of sub-blocks,’ and
cannot meet this element. Multiplexing requires combining and
encoding the multiplexed data block outputs a single encoded data
block. In contrast, dividing requires a separation of the encoded
data block into two or more parts. Lo teaches, and is limited to
teaching, that a single encoded data block that includes the bytes.

(App. Br. 16.) However, there is nothing in Appellant’s Specification that
supports Appellant’s interpretation. Moreover, there is nothing in the claims
as currently written that would limit the scope of the claims to be as narrow
as argued by Appellant.
In the Reply Brief, Appellant contends that “an encoded data block
that includes n data blocks does not expressly or inherently teach dividing an
encoded [data block] into a plurality of sub-blocks.” (Reply Br. 6.) We
disagree. However, Lo does expressly discloses that “[t]he encoded data
block includes n data blocks….” (Lo, col. 2, ll. 34-35.). If an encoded data
block includes n data blocks, those n data blocks are sub-blocks that are part
of the overall encoded data block.
Appellant then contends that Lo does not disclose “a plurality of
physical medium attachments.” (App. Br. 17.) According to Appellant “Lo
teaches a ‘physical layer devices includes a serializer/de-serializer that has
an input and an output that outputs an encoded block’ (physical layer device
includes a serial/de-serializer that has an input and an output that outputs an
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encoded data block) at column 2, lines 29-32 and column 3, lines 35-36,” so
that the Examiner has only identified that Lo teaches a single output
outputting a single encoded block. (App. Br. 16, 17, emphasis in
original.) However, the Examiner finds that Lo at col. 1, ll. 23-28 teaches
Ethernet devices with physical layer devices, including a physical coding
sublayer (that has a SER/DER per Lo, col 2, ll. 29-34) and a physical
medium attachment layer. (Ans. 12-13.) Each layer has a SER/DER input
and output. (Lo, col 2, ll. 29-34.) Appellant appears to interpret the claims
to mean each individual sub-block must be transmitted separately across
different physical medium attachments; however, the broadest reasonable
interpretation of the claims does not have such a limitation. Thus, we agree
with the Examiner’s findings.
Appellant has not presented any substantially different arguments for
claims 2, 6-7, 12-14, 17, and 23, which require the same or similar disputed
claim limitations as representative claim 1, thus, these claims fall together.
Accordingly, we affirm the rejection of claims 1-2, 6-7, 12-14, 17, and 23
under 35 U.S.C. § 102(e).

ISSUE 3
§ 103(a) Rejection of Claims 3-5, 8, and 21-22
Appellant contends that Taborek is provided for its alleged teaching of
8B/10B encoding, but that Taborek does not provide a disclosure that cures
the deficiencies of Lo. (App. Br. 22.) Therefore, according to Appellant,
Claims 3-5, 8-11, 15-16, and 18-22 are allowable at a minimum due to their
dependence from allowable base claims. (Id.) For the reasons discussed
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above, we disagree. Accordingly, we affirm the rejection of claims 3-5, 8-
11, 15-16, and 18-22 under 35 U.S.C. § 103(a).

ISSUE 4
§ 103(a) Rejection of Claim 4
Appellant contends that the claim limitation “plurality of gearboxes”
in claim 4 is not disclosed in Lo. (App. Br. 23.) According to Appellant, Lo
expressly teaches that gearbox (44) is included in a transmitter (36) and
gearbox (46) is included in a receiver (38), meaning that Lo expressly
teaches transmitting performed using one gearbox that is gearbox (44). (Id.)
However, the Examiner finds that a plurality of gearboxes is inherent in the
system of Lo because Lo, col. 1, ll. 16-55, discloses a plurality of ethernet
network devices include physical layer devices that transmit and receive data
over a medium, each physical layer device includes a physical coding
sublayer (PCS) and a physical medium attachment layer (PMA). (Ans.
14.) Per the Examiner, the plurality of physical medium attachments
inherently teaches the use of a plurality of gearboxes. We agree with the
Examiner, because the use of a plurality of gearboxes would have been
obvious to one of skill in the art based on Lo’s teaching of a plurality of
physical medium attachments. Accordingly, we affirm the rejection of claim
4 under 35 U.S.C. § 103(a).

ISSUE 5
§ 103(a) Rejection of Claim 5
Appellant contends that the claim limitation “one sub-block that comprises
synchronization data for that encoded data block” in claim 5 is not disclosed
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in Lo. (App. Br. 24.) According to Appellant, because Lo teaches that the
encoder assembles data blocks that include data bytes and/or control codes
for transmission and that the encoded data block output by the encoder
includes a 2 bit sync header (82), this means that the control code cannot
reasonably be construed as synchronization data since Lo expressly teaches
synchronization data in the sync header (82). (App. Br. 25.) Instead,
Appellant argues that the control code should be interpreted as data for
transmission, not synchronization data. (Id.)
However, the Examiner finds that Lo discloses dividing the encoded
data block into a plurality of sub-blocks (n data blocks, col. 1, ll. 36-38,l. 61-
64, and col. 2, ll. 34-35), including one sub-block that comprises
synchronization data (control code, col. 3, ll. 47-50) for that encoded data
block (col. 4, ll. 46-52. (Ans. 14.) We agree with the Examiner.
Accordingly, we affirm the rejection of claim 5 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision to reject claims 1-2, 6-7, 12-14, 17, and 23
under 35 U.S.C. 102(e) is affirmed. The Examiner’s decision to reject
claims 3-5, 8, and 21-22 under 35 U.S.C. 103(a) is affirmed. The
Examiner’s decision to reject claims 1-11 under 35 U.S.C. 101 is reversed.
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).

AFFIRMED-IN-PART

ELD