Ex Parte Denby et al

Patent Trial and Appeal Board

May 27, 2014

11678940 (P.T.A.B. May. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LORRAINE DENBY, JEAN MELOCHE, and
JOHN R. TUCK, JR.
____________________

Appeal 2011-001548
Application 11/678,940
Technology Center 2400
____________________

Before ST. JOHN COURTENAY III, THU A. DANG,
and LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-4, 6, 7, 10-17, 19-21, and 23. We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 8 and 9 were cancelled during prosecution and claims 5, 18,
and 22 were withdrawn in response to a restriction requirement.
We affirm.
The claims are directed to communication networks, and more
particularly to techniques for detecting asymmetric routes in a network
(Spec. p. 1, ll. 4-5). Independent claim 1, reproduced below, is
representative of the subject matter on appeal:
1. A method comprising:
executing a route tracing program, at a first network
element, the route tracing program transmitting a sequence of
packets with different time-to-live values along a forward route
that spans from the first network element to a second network
element, wherein the route tracing program specifies the second
network element as the destination of the sequence of packets,
and wherein a reverse route spans from the second network
element to the first network element;

collecting performance measurements, in response to
executing the route tracing program, the performance
measurements corresponding to the different time-to-live
values; and

identifying the forward route and the reverse route as
being asymmetric with each other when a performance
measurement that corresponds to an individual time-to-live
value indicates a significant deviation from an expected
monotonic characteristic that is exhibited by at least some of
the performance measurements in relation to the different time-
to-live values.

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REJECTIONS1
The following rejections are before us for review:
A. Claims 1-4, 6, 7, 10-17, 19-21, and 23 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement
requirement.
B. Claims 1-4, 6, 7, 10-17, 19-21, and 23 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which applicant
regards as the invention.2
ANALYSIS
Rejection A under 35 U.S.C. § 112, First Paragraph
Issue: Did the Examiner err in rejecting claim 1 under 35 U.S.C. §
112, first paragraph, as failing to comply with the enablement requirement?
Appellants contend that “a person skilled in the art… is capable of
determining how the claimed invention collects performance measurements,
such as round-trip delay data.” (App. Br. 24). Appellants submit
evidentiary support to show what one skilled in the art knew at the time of
filing the application. (See Affidavit filed Dec. 24, 2009).
The Examiner considers the Affidavit only to the extent that it is
purportedly not “commensurate in scope with Appellant's disclosure as
originally filed”:
Regarding the Affidavit under 37 CFR 1.132 filed December
24, 2009, Examiner notes that the details described therein (i.e.,

1 We note the Examiner withdrew the rejection of claims 1-4, 6, 7, and 10-14
under 35 U.S.C. § 101 (See Ans. 3). Therefore, this rejection is not before
us on appeal.
2 We observe the Examiner’s rejection heading (Ans. 5) includes claims 8
and 9. We note this typographical error since claims 8 and 9 are cancelled.
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item 14 which describes calculating the round-trip delay) are
not commensurate in scope with Appellant's disclosure as
originally filed, as shown in the passages from page 5, lines 15-
24 described above or the claim language in Claims 1 and 17.

(Ans. 8).
We agree with Appellants’ contentions. As pointed out by
Appellants, the MPEP guides: “[a] patent need not teach, and preferably
omits, what is well known in the art.” (App. Br. 24, citing MPEP 2164.01;
see also In re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991)). Moreover, the
scope of enablement is not limited to what is disclosed in the specification; it
also includes “‘what would be known to one of ordinary skill in the art
without undue experimentation.’” See Abbott Labs v. Andrx
Pharmaceuticals, Inc., 452 F.3d 1331, 1341 (Fed. Cir. 2006) (citation
omitted).
The "enablement requirement is satisfied when one skilled in the art,
after reading the specification, could practice the claimed invention without
undue experimentation." AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244
(Fed. Cir. 2003) (citation omitted). Whether undue experimentation is
required is a legal conclusion reached by weighing several underlying
factual inquiries. See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988):
Factors to be considered in determining whether a
disclosure would require undue experimentation . . . include (1)
the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.

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We particularly note that Wands’ factor (6) pertains to the knowledge
and skill of an artisan, for which Appellants have provided evidence of
record in the form of the Rule 1.132 Affidavit listed in the Evidence
Appendix to the Brief (App. Br. 38).
Here, we observe the Examiner erred by not fully considering the
evidence contained in Appellants’ Affidavit as to what would have been
known to one of ordinary skill in the art without undue experimentation.
Moreover, the Examiner’s use of the term “scope” is misplaced with
reference to the Affidavit and the Specification, as “scope” is a term
applicable to the broadest reasonable interpretation of the claims. (Ans. 8).
We find Appellants’ Affidavit under Rule 1.132 contains underlying
factual evidence to support the legal conclusion of enablement. Therefore,
for essentially the same reasons argued by Appellants (App. Br. 23-25), we
reverse the § 112, first paragraph enablement rejection of claim 1, and of
claims 2-4, 6, 7, 10-17, 19-21, and 23 which were rejected for the same
reason.
Rejection B under 35 U.S.C. § 112, Second Paragraph
Issue: Did the Examiner err in rejecting claim 1 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant regards as the
invention regarding the contested “significant deviation” limitation?
The Examiner concludes:
[The] Examiner submits that the metes and bounds of the
phrase "significant deviation" are indefinite because the degree
to which a deviation would be considered to be significant is
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not clear based on the claim language and Appellant's
specification.

(Ans. 10-11).

Appellants contend “the specification discusses using, for example, a
‘deviation threshold’ to determine a significant deviation at P7, L3-15…”
(App. Br. 30).
However, we agree with the Examiner “there is no requirement in the
claim language for a ‘specific threshold’” (Ans. 10). “Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Because “applicants may
amend claims to narrow their scope, a broad construction during prosecution
creates no unfairness to the applicant or patentee.” In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
We decline to import the argued “deviation threshold” (App. Br. 30)
from the Specification into the claims to define the subjective claim term
“significant deviation.” We conclude the scope of this claim term depends
solely on the unrestrained, subjective opinion of a particular individual
purportedly practicing the invention. See Datamize, LLC v. Plumtree
Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005):
The scope of claim language cannot depend solely on the
unrestrained, subjective opinion of a particular individual
purportedly practicing the invention. See Application of
Musgrave, 57 C.C.P.A. 1352, 431 F.2d 882, 893 (1970) (noting
that “[a] step requiring the exercise of subjective judgment
without restriction might be objectionable as rendering a claim
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indefinite”). Some objective standard must be provided in order
to allow the public to determine the scope of the claimed
invention.

(Emphases added).
Moreover, because the scope of the claim term “significant deviation”
is subjective, we conclude this term is amenable to two or more plausible
claim constructions and is therefore indefinite under the holding of Ex parte
Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim
is amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim . . . indefinite.”). See
also In re Packard, 2014 WL 1775996 No. 13-1204, slip. op. at 15 (Fed.
Cir. 2014)(J. Plager concurring)(“In my view (and that of the per curiam
court), it is within the authority of the USPTO to so interpret the applicable
standard”). We note the claim term “significant deviation” is recited in each
independent claim on appeal.
Therefore, for essentially the same reasons articulated by the
Examiner in the Answer (10-11), as discussed above, we sustain the § 112,
second paragraph rejection of independent claim 1. We note the indefinite
claim term “significant deviation” is recited in each of independent claims 1,
17, and 21 on appeal. Associated dependent claims 2-4, 6, 7, 10-16, 19-20,
and 23 fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).

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DECISION
We reverse the Examiner’s decision rejecting claims 1-4, 6, 7, 10-17,
19-21, and 23 under § 112 first paragraph.
We affirm the Examiner’s decision rejecting claims 1-4, 6, 7, 10-17,
19-21, and 23 under § 112 second paragraph.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
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). See
37 C.F.R. § 41.50(f).
AFFIRMED

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