Ex Parte Elzur

Board of Patent Appeals and Interferences

Jan 16, 2008

10651459 (B.P.A.I. Jan. 16, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte URI ELZUR
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Appeal 2007-3129
Application 10/651,459
Technology Center 2600
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Decided: January 16, 2008
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Before JOSEPH F. RUGGIERO, SCOTT R. BOALICK, and KEVIN F.
TURNER, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1-12 and 14-29. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
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Appellant’s claimed invention relates to the processing of
transmission frames and, in particular, the receiving and handling of out-of-
order frames by a network subsystem. The out-of-order frames are placed in
host memory and information relating to one or more holes resulting from
the out-of-order frames is managed in a receive window.
Claim 1 is illustrative of the invention and reads as follows:
1. A method for handling out-of-order frames, comprising the steps
of:
(a) receiving an out-of-order frame via a network subsystem;
(b) placing data of the out-of-order frame in a host memory; and
(c) managing information relating to one or more holes resulting from
the out-of-order frame in a receive window.
The Examiner relies on the following prior art references to show
unpatentability:1
Mallory US 2002/0034182 A1 Mar. 21, 2002
Hayes US 2003/0046330 A1 Mar. 6, 2003

Claims 1, 4-12, and 14-22 stand rejected under 35 U.S.C. § 102 as
being anticipated by Mallory.
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mallory in view of Hayes.
Claims 23-29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mallory in view of Hayes and the admitted prior art.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Briefs and Answer for the respective details.

1 In addition, the Examiner relies upon Appellant’s admissions as to the prior
art at paragraph [09] of Appellant’s Specification.
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ISSUES
(i) Under 35 U.S.C § 102, does Mallory have a disclosure which
anticipates the invention set forth in claims 1, 4-12, and 14-22?
(ii) Under 35 U.S.C § 103(a), with respect to appealed claims 2 and
3, would one of ordinary skill in the art at the time of the invention have
found it obvious to combine Mallory with Hayes to render the claimed
invention unpatentable?
(iii) Under 35 U.S.C § 103(a), with respect to appealed claims 23-
29, would one of ordinary skill in the art at the time of the invention have
found it obvious to combine Mallory with Hayes and the admitted prior art
to render the claimed invention unpatentable?

PRINCIPLES OF LAW
1. ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986) and Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir.
1984).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005), citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992). Anticipation of a patent claim requires a finding that the claim at
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issue “reads on” a prior art reference. Atlas Powder Co. v. IRECO, Inc., 190
F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).

2. OBVIOUSNESS
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17, 467 (1966). “[T]he examiner
bears the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject 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., 127
S. Ct. 1727, 1741 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

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ANALYSIS
35 U.S.C. § 102 REJECTION
Independent claims 1 and 17

With respect to the 35 U.S.C. § 102 rejection of independent claims 1
and 17 based on the teachings of Mallory, the Examiner indicates (Ans. 3)
how the various limitations are read on the disclosure of Mallory. In
particular, the Examiner directs attention to the illustration in Figure 4 of
Mallory as well as the disclosure at paragraphs [0011], [0060], and [0141] of
Mallory.
In our view, the Examiner’s analysis is sufficiently reasonable that we
find that the Examiner has as least satisfied the burden of presenting a prima
facie case of anticipation. The burden is, therefore, upon Appellant to come
forward with evidence and/or arguments which persuasively rebut the
Examiner’s prima facie case. Only those arguments actually made by
Appellant have been considered in this decision. Arguments which
Appellant could have made but chose not to make in the Briefs have not
been considered and are deemed to be waived; see 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellant’s response asserts that the Examiner has not shown how
each of the claimed features is present in the disclosure of Mallory so as to
establish a prima facie case of anticipation. Our review of Appellant’s
arguments (Br. 6-11; Reply Br. 4-7), however, reveals that Appellant has
simply reiterated the features recited in independent claims 1 and 17 and
drawn a conclusion, without more, that the features in Mallory identified by
the Examiner do not correspond to such claimed features. Such arguments
do not, in our view, satisfy Appellant’s burden of providing evidence and/or
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arguments which show how the Examiner has erred in presenting a prima
facie case of anticipation.
For example, Appellant contends that the Examiner has erred in
equating Mallory’s reorder buffer 120 with the claimed host memory.
According to Appellant (Br. 7; Reply Br. 5), the terms “reorder buffer” and
“host memory” have a specific meaning in the relevant arts and are not
equivalent. However, there is no evidence presented from Appellant as to
what that specific meaning might be, let alone any indication that would
support a conclusion that the Examiner has erred in asserting
correspondence of Mallory’s reorder buffer with the claimed host memory.
In our view, although we don’t necessarily agree with the Examiner
that correspondence exists merely because both Mallory’s reorder buffer and
Appellant’s host memory both store out-of-order frames, we do find ample
evidence within the disclosure of Mallory to support the Examiner’s view
that the reorder buffer of Mallory can be considered a host memory as
claimed. As described by Mallory (Fig. 4 and paragraph [0037]), the reorder
buffer 120 exists within LARQ handler 100 which in turn exists within the
data link layer of the network stack illustrated in Figure 1 of Mallory. This
network stack is part of a networked computer environment such as
disclosed in Mallory (Figure 14 and paragraph [145]) operating under
control of personal computer 202. The personal computer 202 would, in our
view, be recognized by skilled artisans as a host computer for the described
network therefore making the LARQ handler reorder buffer a “host”
memory as claimed.2

2 The Computer Desktop Encyclopedia, Ninth Edition, by Alan Freedman,
McGraw- Hill 2001 defines “host’” as “[a] computer that acts as a source of
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With respect to the claimed feature of managing out-of-order frame
hole information in a “receive window”, our review of Appellant’s
arguments reveals that they follow a similar format to those made with
regard to the previously discussed “host memory” feature. In other words,
Appellant has merely repeated the recited “receive window” feature of
claims 1 and 17, repeated the passages cited by the Examiner from Mallory,
and has drawn the conclusion, without more, that the cited passages do not
teach or suggest the claimed “receive window” feature.
We simply find no error, and there are no persuasive arguments from
Appellant that show any error, in the Examiner’s finding (Ans. 3 and 8) that
Mallory’s disclosure of the window designated as
“MaxRxSaveCountChannel from Receive Sequence Number” can be
reasonably interpreted as a “receive window” as claimed. As disclosed by
Mallory (paragraphs [058], [0140], and [141]), dependent on whether out-of-
order received frame sequence numbers, and the holes created thereby, fall
within the sliding receive window of valid sequence numbers, a
determination is made as to how such frames are processed by the system.
We fail to see why such a determination would not be reasonably considered
by a skilled artisan as anything other than the management of out-of-order
frame holes in a receive window as claimed.

information or signals. The term can refer to almost any kind of computer,
from a centralized mainframe that is a host to its terminals, to a server that is
host to its clients, to a desktop PC that is host to its peripherals. In network
architectures, a client station (user's machine) is also considered a host,
because it is a source of information to the network in contrast to a device
such as a router or switch that directs traffic.”
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Further, with respect to the control information and data information
parsing feature of independent claim 17, we find no arguments from
Appellant that convince us of any error in the Examiner’s finding that such
feature is disclosed by Mallory. We agree with the Examiner (Ans. 11) that
the use of the control bit values of 1 and 0, as described in TABLE 1 of
Mallory and illustrated in Mallory’s Figures 6-8, provide evidence that out-
of-order frames are parsed into control information and data information.
In view of the above discussion, since all of the claimed limitations
are present in the disclosure of Mallory, the Examiner’s 35 U.S.C. § 102
rejection of independent claims 1 and 17, as well as dependent claims 5, 7,
15, 16, and 18-22 not separately argued by Appellant, is sustained.

Dependent claims 4, 6, and 8-12
Turning to a consideration of the Examiner’s 35 U.S.C. § 102
rejection of separately argued dependent claims 4, 6, and 8-12 based on
Mallory, we sustain this rejection as well. With respect to dependent claim
4, we find no error in the Examiner’s finding that steps S5, S9, and S10
illustrated in the flow chart of Mallory’s Figure 10 provide a disclosure of
“missing” frames not being stored as claimed. We also refer to the
discussion at paragraphs [0059] and [0106] of Mallory which discloses that
“missing” frames declared as “lost” are discarded and are not stored.
With respect to dependent claims 6 and 8, we agree with the Examiner
(Ans. 9), Appellant’s arguments to the contrary notwithstanding, that
Mallory’s disclosure (e.g., paragraphs [0057], [0058], [0140], and [0141])
can reasonably be interpreted as disclosing that out-of-order frames
identified as “old” are those which do not fall within the receive window of
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valid sequence numbers and those identified as “not too old” fall within the
receive window. We also find no basis in the disclosure of Mallory for
Appellant’s conclusion (Reply Br. 9) that “too-old” frames in Mallory still
qualify as out-of-order frames inside the receive window.
With respect to dependent claims 9-11, we find no error in the
Examiner’s finding that Mallory’s status table 122 and the illustrations in
Figure 9 of Mallory as well as the description at paragraph [0074] of
Mallory disclose the storing of information related to holes created by
placement of out-of-order frame data. While Appellant is correct (Reply
Br. 12) that Mallory’s Figure 9a is an illustration of the channel table 110, it
is also apparent that Mallory’s Figure 9c illustration describes an example of
information stored in status table 122 as it shows information such as receive
time and miss time. As also pointed out by the Examiner (Ans. 10), the
language of claims 9 and 10 requires only “one or more of” storing new hole
information, updating existing hole information, and deleting plugged hole
information. We further agree with the Examiner (Ans. 10) that the Figure 4
illustration in Mallory, which includes the receiver control logic 106, reorder
buffer 120, and status table 122, is a disclosure of a network subsystem as
claimed.
With respect to dependent claim 12, we are in agreement with the
Examiner (Ans. 10) that Mallory discloses in paragraph [0140] the updating
of a “receive window as claimed.” Appellant reiterates the argument (Reply
Br. 13) that Mallory does not disclose a “receive window” as claimed, an
argument we found to be unpersuasive as discussed supra.

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Dependent claim 14
Turning to a consideration of the Examiner’s 35 U.S.C. § 102
rejection of dependent claim 14 based on Mallory, we do not sustain this
rejection. We note that, while we found Appellant’s arguments to be
unpersuasive with respect to the Examiner’s anticipation rejection of claims
1, 4-12, and 15-22, we reach the opposite conclusion with respect to the
rejection of claim 14. In addressing the language of dependent claim 14
which requires “mapping TCP space into host buffer space,” the Examiner
attempts (Ans. 10-11) to equate Mallory’s mere storing of received frames in
reorder buffer 120 with the claimed mapping of host buffer space. We agree
with Appellant, however, that the mere storing of a received frame in a
buffer memory does not necessarily mean that the buffer memory space was
mapped. As pointed out by Appellant (Br. 15; Reply Br. 14), information
can be stored in a memory space using physical memory address information
in which the memory addresses are not mapped to a corresponding space.

35 U.S.C. § 103(a) REJECTIONS
Dependent claims 2 and 3

Appellant’s arguments (Br. 16-20; Reply Br. 16) in response to the
Examiner’s obviousness rejection of dependent claims 2 and 3 based on the
combination of Mallory and Hayes assert a failure by the Examiner to
establish a prima facie case of obviousness since proper motivation for the
Examiner’s proposed combination of references has not been established.
We find, however, that contrary to Appellant’s contention that the Examiner
has merely identified isolated claimed elements such as the TCP offload
engine (TOE) and the TCP-enabled Ethernet controller (TEEC) in the
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secondary reference to Hayes, the Examiner has set forth an articulated line
of reasoning for establishing the basis for the proposed of combination of
Hayes with Mallory. We simply find no error, and there are no persuasive
arguments from Appellant that show any error, in the Examiner’s finding
(Ans. 6, 12, and 13) of obviousness to the skilled artisan of utilizing an
offload engine such as taught by Hayes in the system of Mallory to support
high bandwidth communication.

Claims 23-29
Similarly, with respect to appealed claims 23-29, we find no error in
the Examiner’s reliance on Hayes and the admitted prior art in combination
with Mallory to establish a prima facie case of obviousness with respect to
these claims, which include a recitation to a network subsystem. Appellant’s
arguments in response (Br. 21; Reply Br. 16) reiterate the alleged lack of
disclosure by Mallory of the claimed “receive window,” which arguments
we found to be unpersuasive for all of the reasons discussed supra.
For the above reasons, since it is our opinion that the Examiner’s
prima facie case of obviousness has not been overcome by any convincing
arguments from Appellant, the Examiner’s 35 U.S.C. § 103(a) rejection of
claims 2, 3, and 23-29 is sustained.

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CONCLUSION
In summary, with respect to the Examiner’s 35 U.S.C. § 102
rejections of appealed claims 1, 4-12, and 14-22, we have sustained the
rejection of claims 1, 4-12, and 15-22, but have not sustained the rejection of
claim 14. We have sustained the Examiner’s 35 U.S.C. § 103(a) rejection of
claims 2, 3, and 23-29. Accordingly, the Examiner’s decision rejecting
appealed claims 1-12 and 14-29 is affirmed-in-part.
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)(effective
September 13, 2004).

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AFFIRMED-IN-PART

eld

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