Ex Parte Dunbar et al

Patent Trial and Appeal Board

Sep 8, 2014

12103841 (P.T.A.B. Sep. 8, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/103,841 04/16/2008 Linda Dunbar 4194-05801 2761
89394 7590 09/08/2014
Futurewei Technologies, Inc.
c/o Conley Rose, P.C.
5601 Granite Parkway
Suite 500
Plano, TX 75024
EXAMINER
YOUNG, STEVE R
ART UNIT PAPER NUMBER
2477
MAIL DATE DELIVERY MODE
09/08/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LINDA DUNBAR, ROBERT SULTAN, and LUCY YONG
____________

Appeal 2012-003749
Application 12/103,841
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
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–5 and 7–21, which are all the claims pending in the
application. Claim 6 was cancelled during prosecution. We have
jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

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Invention
The claimed invention on appeal is directed to:
An apparatus comprising a plurality of ingress ports, a
routing logic coupled to the ingress ports, and a plurality of
egress ports coupled to the routing logic, wherein the routing
logic is configured to transport a plurality of data frames
associated with a plurality of data flows from the ingress ports
to the egress ports, and wherein the apparatus associates at least
some of the data flows with a bandwidth.
(Abstract).
Representative Claim
Claim 1 is representative:
1. An apparatus comprising:

a plurality of ingress ports;

a routing logic coupled to the ingress ports; and

a plurality of egress ports coupled to the routing logic,

wherein the routing logic is configured to transport a plurality
of data frames associated with a plurality of data flows from the
ingress ports to the egress ports,

wherein the apparatus sorts the flows based upon an actual
bandwidth required for each flow, and

wherein one of the egress ports transmits an alternating
sequence of high bandwidth flows and low bandwidth flows.

(Contested limitations emphasized).

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Rejections

A. Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of U.S.
Patent Application Publication 2006/0168337 A1 (Stahl), U.S. Patent
6,647,419 B1 (Mogul), and U.S. Patent Application Publication
2005/0047334 A1 (Paul).
B. Claims 3 and 4 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over the combined teachings and suggestions of Stahl,
Mogul, Paul and U.S. Patent 7,385,924 B1 (Riddle).
C. Claims 5, 7, and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of U.S.
Patent Application Publication 2004/0228278 A1 (Bruckman), Stahl,
and Mogul.
D. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of
Bruckman, Stahl, Mogul, and Paul.
E. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of
Bruckman, Stahl, Mogul, and U.S. Patent Application Publication
2006/0227704 A1 (Nakagawa).
F. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of
Bruckman, Stahl, Mogul, and U.S. Patent Application Publication
2007/0206501 A1 (Alesi).
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G. Claims 12–14, 16, 17, and 19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combined teachings and suggestions of
U.S. Patent Application Publication 2007/0133618 A1 (Brolin) and
U.S. Patent Application Publication 2004/0158644 A1 (Albuquerque).
H. Claims 15 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of Brolin,
Albuquerque, and Stahl.
I. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of Brolin,
Albuquerque, and Bruckman.
J. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of Brolin,
Albuquerque, Bruckman, and Stahl.

GROUPING OF CLAIMS
Based on Appellants’ arguments, we decide the appeal of:
Rejection A of claims: on the basis of representative claim:
1 Separately
2 Separately
Rejection B of claims 3 and 4 3
Rejection D of claim 8 Separately
Rejection G of claims 12–14, 16, 17,
and 19
12
Rejection H of claims 15 and 18 18

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See 37 C.F.R. § 41.37(c) (1)(vii)(2004).1 We address rejections C, E, F, I,
and J of remaining claims 5, 7, 9–11, 20 and 21 separately, infra.

ANALYSIS
Rejection A of Claim 1
Issue: Under § 103, has the Examiner erred by finding the
cited prior art would have collectively taught or suggested the
contested limitation of: “wherein one of the egress ports
transmits an alternating sequence of high bandwidth flows and
low bandwidth flows,” within the meaning of representative
claim 1?

As an initial matter of claim construction, MPEP §2111.04 guides:
Claim scope is not limited by claim language that suggests or
makes optional but does not require steps to be performed, or
by claim language that does not limit a claim to a particular
structure. However, examples of claim language, although not
exhaustive, that may raise a question as to the limiting effect of
the language in a claim are:

(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.

(MPEP §2111.04 Eighth Edition, Rev. 9, Aug. 2012, emphasis added).

1 Appellants filed a Notice of Appeal on April 1, 2011. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex Parte
appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the
2004 version of the Board Rules last published in the 2011 edition of Title
37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to
the appeal. See also Manual of Patent Examining Procedure (MPEP) 8th
ed., Rev. 8, July 2010.
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Following this guidance, we conclude the functional limitations
recited in the “wherein” clause do not limit the scope of the claim because
the contested functional limitations do not further limit the structure of the
apparatus of claim 1.
Moreover, our reviewing court guides the patentability of an apparatus
claim “depends on the claimed structure, not on the use or purpose of that
structure.” Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289
F.3d 801, 809 (Fed. Cir. 2002). “It is well settled that the recitation of a new
intended use for an old product does not make a claim to that old product
patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations
omitted). See also Superior Indus., Inc. v. Masaba, Inc., 553 Fed. Appx.
986, 991 (Fed. Cir. 2014) (Rader, J., concurring) (stating: “[A] system claim
generally covers what the system is, not what the system does.” 2 Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990));
see also Roberts v. Ryer, 91 U.S. 150, 157 [] (1875) ((“The inventor of a
machine is entitled to the benefit of all the uses to which it can be put, no
matter whether he had conceived the idea of the use or not.”). Thus, it is
usually improper to construe non-functional claim terms in system claims in
a way that makes infringement or validity turn on their function. Paragon
Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).).

2 Superior Indus., Inc. v. Masaba, Inc., 553 Fed. Appx. 986, 991 (Fed. Cir.
2014) is a non-precedential opinion of the Court of Appeals for the Federal
Circuit. However, we consider the concurring opinion by former Chief
Judge Rader as guiding because it cites precedential authority in support.
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For these reasons, a question arises as to how much patentable weight,
if any, should be given to the contested functional limitations recited within
the “wherein” clauses of claim 1. Assuming arguendo the contested
functional limitations may be accorded patentable weight by our reviewing
court, we find the preponderance of the evidence supports the Examiner’s
underlying factual findings and ultimate legal conclusion of obviousness for
the reasons discussed below.
Regarding § 103 rejection A of independent claim 1, Appellants
contend: “the cited portion of Paul discloses alternating between high and
low priority flows, not between high and low bandwidth flows.” (App.
Br. 10, emphasis added). In particular, Appellants assert there is no support
for the Examiner’s finding it was well known in the art that the term “class
of service” directly correlates with bandwidth. (App. Br. 11).
Under § 103, the Examiner need only establish that Paul’s “class of
service queues” and “traffic shaping algorithms” (¶115) would have taught
or suggested the claimed “alternating sequence of high bandwidth flows and
low bandwidth flows.”3 (Claim 1). The Examiner’s rejection need not
establish that “class of service” directly correlates with bandwidth, as urged
by Appellants. (App. Br. 11). The Examiner (Ans. 28) additionally points to
Mogul at column 3 as evidence in support of the rejection:

3 “‘A prima facie case of obviousness is established when the teachings from
the prior art itself would appear to have suggested the claimed subject matter
to a person of ordinary skill in the art.’” In re Bell, 991 F.2d 781, 783 (Fed.
Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976)).

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For instance, the default bandwidth allocation policy may
automatically classify data flows into various classes based on
their duration and actual (monitored) bandwidth usage, and then
assign a target bandwidth to each data flow based on its
assigned class.
(Mogul, col. 3, ll. 12-16).

We find the portion of Mogul cited by the Examiner further
establishes that “classes of service” (“various classes” – id.) at least suggest
different (i.e., high and low) bandwidth flows, so as to render the contested
limitation obvious under §103, when combined with the teachings and
suggestions of Stahl and Paul. Given this evidence (id.), we find
unpersuasive Appellants’ contention “there is no correlation between CoS
[“classes of service”] and bandwidth.” (App. Br. 11). Thus, we find
unavailing Appellants’ contention that Paul alternates between high and low
priority flows, not between flows having high and low required bandwidths.
(App. Br. 12, 15). We note the Examiner also looks to Paul (¶115) for
teaching or suggesting the claimed egress port feature: “[0115] The output
class of service queues 280 for a particular egress port 114 can be serviced
according to any of a great variety of traffic shaping algorithms.” (Emphasis
added).
For these reasons, and because Appellants’ arguments are directed to
functional limitations recited in a “wherein” clause that do not limit the
structure of apparatus claim 1, we are not persuaded the Examiner erred.
Therefore, we sustain § 103 rejection A of independent claim 1.

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Rejection A of Dependent Claim 2
Claim 2 recites: “The apparatus of claim 1, wherein at least some of
the data flows are associated with the actual bandwidth required using a data
flow table.” (Emphasis added). Appellants contend, inter alia, “the cited
portions of Stahl disclose[] a reserved connection bandwidth table that
associates a flow with a reserved bandwidth, not the actual bandwidth
required to transport the flow” (App. Br. 13, emphasis added).
We find Appellants’ contentions unpersuasive because: (1)
Appellants’ arguments are directed to functional limitations recited in a
“wherein” clause which does not further limit the structure of apparatus
claim 1, as discussed above, (2) we are not persuaded the Examiner’s
broader reading of the contested claim language on Stahl’s internal mapping
table 18 (Ans. 29; Stahl, ¶¶19-25, Fig. 2A) is overly broad or unreasonable,
and, (3) Appellants’ arguments are predicated on non-functional descriptive
material (i.e., the informational content of the data: “data flows are
associated with the actual bandwidth required using a data flow table”)
where the “associated” data flows are not positively recited in claim 2 as
actually being used to change or affect any function of the claimed
apparatus. (Claim 2). See Ex parte Nehls, 88 USPQ2d 1883, 1887–90
(BPAI 2008) (precedential).
Moreover, even assuming, arguendo, “Stahl’s reserved connection
bandwidth table associates the flow with a reserved bandwidth, [and] not the
actual bandwidth required to transport the flow” as Appellants contend
(App. Br. 14-15), we broadly but reasonably construe “associated with” to
cover any nexus or association, even an attenuated nexus. Given our
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construction, we find the “reserved” bandwidth of Stahl is “associated with”
actual bandwidth. Therefore, we find Stahl would have taught or suggested
a nexus (i.e., a transitive association) between data flows and actual
bandwidth, as claimed. (Claim 2). For these reasons, we are not persuaded
the Examiner erred. We therefore sustain § 103 rejection A of dependent
claim 2.
Rejection B of Dependent Claims 3 and 4
Appellants advance no separate arguments for claims 3 and 4.
Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)
(1)(vii)(2004). Therefore, we sustain uncontested § 103 rejection B of
representative dependent claim 3, and of claim 4 (not separately argued)
which falls therewith.
Rejections C, E, and F of Claims 5, 7, and 9–11
Regarding rejections C, E, and F, Appellants expressly indicate claims
5, 7, and 9–11 are “not argued on appeal.” (App. Br. 3). However, the
Notice of Appeal (April 1, 2011) states: “Applicant hereby appeals to the
Board of Patent Appeals and Interferences from the last decision of the
examiner” which includes rejections C, E, and F of claims 5, 7, and 9–11.
Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)
(1)(vii)(2004). Therefore, we sustain uncontested rejections C, E, and F of
claims 5, 7, and 9–11.

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Rejection D of Dependent Claim 8
Claim 8 recites: “The network component of claim 5, wherein each
link accommodates an alternating sequence of the data flows with high
required bandwidth and low required bandwidth.” (Emphasis added).
Appellants contend, inter alia, “the combination of Bruckman, Stahl, Mogul,
and Paul fails to disclose that each link accommodates an alternating
sequence of the data flows with high required bandwidth and low required
bandwidth.” (App. Br. 15).
We find Mogul (col. 3, ll. 12-16), as relied on by the Examiner,
establishes that “classes of service” at least suggest different (high and low)
bandwidth flows, so as to render the contested limitation obvious under
§103. See also n.2. supra and our discussion of MPEP §2111.04 regarding
“wherein” clauses that do not further limit the structure of the claimed
apparatus. Should our reviewing court give the contested functional
limitation recited in the “wherein” clause patentable weight, we agree with
the Examiner the claim language for “an alternating sequence of the data
flows with high required bandwidth and low required bandwidth” (claim 8)
is subject to a broad interpretation, and would have been at least suggested
by Paul’s servicing queues and traffic shaping algorithms such as round-
robin or weighted round-robin in combination with the teachings and
suggestion of the other cited references. (Ans. 18–19, 29). For these
reasons, we sustain § 103 rejection D of dependent claim 8.

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Rejection G of Claims 12–14, 16, 17, and 19 4
Issue: Under § 103, has the Examiner erred by finding the
cited prior art would have collectively taught or suggested the
contested limitations of:

A network component comprising a processor configured to:
. . .
[a] disable at least one, but not all data flows assigned to one of
the links when a fault occurs in the link,

[b] wherein all the frames associated with the disabled data
flow are identified as associated with the disabled data flow
after the fault occurs, and are subsequently dropped,

within the meaning of representative claim 12? (Contested limitations
identified as limitations [a] and [b]).

As an initial matter of claim construction, we observe claim 12 is
directed to an apparatus (“A network component comprising a processor
configured to” [perform all claimed functions]). Similar to our discussion
above regarding apparatus claim 1, Appellants attempt to distinguish
apparatus claim 12 over the cited prior art in terms of the functions the
processor is intended to perform. See e.g., Catalina Marketing Int’l., Inc.,
289 F.3d at 809 (Fed. Cir. 2002) (the patentability of an apparatus claim
“depends on the claimed structure, not on the use or purpose of that

4 We note the Examiner includes claim 20 in the heading of Rejection G
(Ans. 21); however, no detailed statement of rejection is provided for claim
20 under Rejection G (see Ans. 23). Instead, the Examiner provides a
heading and detailed statement of rejection for claim 20 on pages 25 and 26
of the Answer. See “Rejection I” supra.
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structure.”). We additionally conclude claim 12’s contested functional
limitations in the [b] “wherein” clause do not further limit the structure of
the processor apparatus. See MPEP §2111.04 Eighth Edition, Rev. 9, Aug.
2012.5 For these reasons, a question arises as to how much patentable
weight, if any, should be given to the contested functional limitations
intended to be performed by the claimed “processor” apparatus (i.e., single
means) which necessarily requires appropriate programming to perform any
function. Assuming, arguendo, our reviewing court may give patentable
weight to the contested functional limitations of claim 12, we find the
preponderance of evidence supports the Examiner’s underlying factional
findings and ultimate legal conclusion of obviousness.
Appellants contend: “The combination of Brolin and Albuquerque
fails to render obvious claims 12-21 because the combination of Brolin and
Albuquerque fails to disclose disabling at least one, but not all data flows
assigned to one of the links when a fault occurs in the link.” (App. Br. 16
regarding limitation [a]). Appellants urge that “the cited portion of Brolin

5 Further regarding the “processor” of independent claim 12 (“a processor
configured to” [perform all claimed functions]), and in the event of further
prosecution, we leave it to the Examiner to consider whether to reject claim
12 under 35 U.S.C. §112, first paragraph, as a single means which is
nonenabling for the scope of the claim. See MPEP § 2164.08 (a). If the
claimed “processor” is considered as a nonce word (generic placeholder) for
“means,” then “the corresponding structure for a § 112 ¶ 6 claim for a
computer-implemented function is the algorithm disclosed in the
specification.” Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed.
Cir. 2005). See also MPEP § 2181: nonce work or generic placeholder (i.e.,
processor) “configured to” perform function(s).
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discloses redistributing traffic so that no services (i.e. flows) are dropped.
(App. Br. 16).
However, we agree with the Examiner’s findings:
that even while Brolin says "no services are dropped," this
scenario and system is entirely in the context of some
failures/faults. That is, if the network has one line go down, it
may be able to reroute traffic so that higher classes of service
are unaffected (by sacrificing lower priority traffic/best effort
traffic). However, if there was some kind of catastrophe to the
network where many lines (or all of the lines) were downed, at
some point, even "guaranteed" service would be affected (i.e. if
every single network line was down/cut, there would be zero
traffic).
(Ans. 30-31).
Further regarding contested limitation [a], the temporal limitation
“when a fault occurs in the link” is not positively recited as actually
occurring in claim 12. Thus, the contested limitation of “disabl[ing] at least
one, but not all data flows assigned to one of the links” may never be
reached if a fault never occurs. (Id.). Likewise, limitation [b] may never be
reached because of the temporal language “after the fault occurs . . . .”
(Claim 12). “[O]ptional elements do not narrow the claim because they can
always be omitted.” See In re Johnston, 435 F.3d. 1381, 1384 (Fed. Cir.
2006). Based on such interpretation, the Examiner is not required to find the
disclosure of that step in the prior art in order to render the claims obvious.
See Ex parte Katz, 2011 WL 514314, *4 (BPAI 2011).
Regarding contested claim 12 limitation [b], Appellants contend:
the cited portion of Albuquerque discloses dropping the lowest
priority bandwidth reservation (i.e., the bandwidth reserved for
the lowest priority flow), not dropping the frames associated
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with the lowest priority flow. Specifically, Albuquerque's
bandwidth manager (BM) either temporarily rejects/halts or
completely drops/releases an existing bandwidth reservation to
accommodate a higher priority bandwidth request . . . .
(App. Br. 18, emphasis added, referring to Albuquerque's bandwidth
manager as described in ¶¶43-44).
The Supreme Court guides the analysis under § 103 “need not seek
out precise teachings directed to the specific matter of the challenged claim,
for a court can take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc. 550
U.S. 398, 418 (2007). This reasoning is applicable here. We agree with the
Examiner’s findings that the contested [b] limitation of claim 12 is at least
suggested by Albuquerque (when combined with Brolin) for the reasons
articulated on pages 31–32 of the Answer. In particular:
Paragraph [0041] of Albuquerque teaches that if a flow "no
longer needs the resources" or if the flow is "idle" (i.e.
conditions where the flow is NOT active) then the terminal
would issue a release and automatically recover the bandwidth.
In a situation, such as described in FIG 5, the flows can be
active when they are "dropped." The Applicant argues that
Albuquerque's FR may buffer the packets until either another
bandwidth reservation is obtained or the packets can be
transmitted as best effort data, however, as shown in [0044], the
flows can be also "rejected" completely (i.e. "flows having
bandwidths reserved may be temporarily halted or rejected").
(Ans. 31–32).
Regarding the combinability of the cited references, we find
unpersuasive Appellants’ contention that “Brolin cannot be modified to drop
all frames associated with a data flow because to do so would render Brolin
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unsatisfactory for his intended purpose.” (App. Br. 22). Appellants refer to
paragraph 24 (Brolin) and assert “Brolin cannot be modified to drop all
frames associated with a data flow because Brolin redistributes traffic when
a failure occurs so that no services (i.e., flows) are dropped.” (App. Br. 23;
see also Reply Br. 13). However, we agree with the Examiner’s response:
the intended purpose of Brolin, which is to try not to have any
services affected which have an actual priority class (i.e. higher
than best effort), is the same as Albuquerque. The only
difference, as previously illustrated in (E) above, is that
Albuquerque is dealing with issues when cutting only best
effort traffic is not enough (i.e. when enough lines are down
that certain lower priority classes are going to have to be
affected). If simply cutting best effort was enough, since it's the
lowest priority data, that would be cut first and none of the
other higher priority services would be affected (just like in
Brolin).
(Ans. 32).
We observe in the Reply Brief, Appellants “disagree that Brolin and
Albuquerque share the same intended purpose”; however, “Appellants
recognize that a central objective in telecommunications is to transport data
without dropping the data.” (Reply Br. 19). We note the Supreme Court
guides that the skilled artisan would “be able to fit the teachings of multiple
patents together like pieces of a puzzle” since the skilled artisan is “a person
of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420-21. We
find this reasoning applicable to the Examiner’s proffered combination.
Therefore, we are not persuaded the Examiner erred by improperly
combining the references under § 103.
For these reasons, we sustain the Examiner’s § 103 rejection G of
representative independent claim 12, and of grouped claims 13, 14, 16, 17,
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and 19 (not argued separately) that fall therewith. See Grouping of Claims,
supra.
Rejection H of Dependent Claims 15 and 18
Claim 18 recites: “The network component of claim 16, wherein the
data flows comprises traffic-engineered (TE) data flows, and wherein the TE
data flows transported through the remaining links are unaffected by the
disabling or the redistribution.” Appellants contend, inter alia, “even
assuming arguendo that Brolin disables the best effort flow (without
conceding such), TE flows are, by definition, not best effort flows (i.e., TE
flows are guaranteed), therefore Brolin's best effort flow is not a TE flow.”
(App. Br. 25).
The Examiner responds by referring to the previous responses: “(G)
Regarding arguments in section (G), see responses in (E) and (F) above.”
(Ans. 32).
We observe claim 18 is silent regarding the argued: “TE flows are, by
definition, not best effort flows (i.e., TE flows are guaranteed).” (App.
Br. 25). We decline to read limitations from the Specification into the claim.
Similar to our discussion above regarding claim 12, the contested “wherein”
clause functional limitations do not further limit the structure of apparatus
claim 18. Further, the contested limitations of claim 18 are directed to data
flows (“TE data flows”) that we conclude are non-functional descriptive
material. The informational content of the recited “TE data flows” does not
further limit the structure of apparatus claim 18. Moreover, the
informational content of the “TE data flows” is not positively recited as
actually being used to change or affect any machine or computer function.
See Ex parte Nehls, 88 USPQ2d at 1887–90 (BPAI 2008) (precedential).
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We find unavailing Appellants’ attempt to distinguish apparatus claim 18
over the cited prior art in terms of the functions the “processor” (claim 12) is
intended to perform. See e.g., Catalina Marketing Int’l., Inc., 289 F.3d at
809 (Fed. Cir. 2002) (the patentability of an apparatus claim “depends on the
claimed structure, not on the use or purpose of that structure.”). For all of
these reasons, and for the reasons articulated by the Examiner (Ans. 32), we
sustain the Examiner’s § 103 rejection H of dependent claim 18, and of
claim 15 (not argued separately). See Grouping of Claims, supra.

Rejections I and J of Dependent Claims 20 and 21
Appellants advance no separate arguments for dependent claims 20
and 21. Arguments not made are considered waived. See 37 C.F.R.
§ 41.37(c) (1)(vii)(2004). Therefore, we sustain §103 rejection I of claim 20
and §103 rejection J of claim 21.

DECISION
We affirm the Examiner’s decision rejecting claims 1–5 and 7–21
under 35 U.S.C. § 103.
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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