Ex Parte Franzen et al

Patent Trial and Appeal Board

May 24, 2017

13900008 (P.T.A.B. May. 24, 2017)

United States Patent and Trademark Office
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.
13/900,008 05/22/2013 Ortwin Ludger FRANZEN 1012/0116PUS2 1344
60601 7590 05/24/2017
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
EXAMINER
VO, TIM T
ART UNIT PAPER NUMBER
2185
MAIL DATE DELIVERY MODE
05/24/2017 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 ORTWIN LUNDGER FRANZEN,
RALF STOLPE, and ULRICH KIFFMEIER
Appeal 2017-004633
Application 13/900,008
Technology Center 2100
Before JOHNNY A. KUMAR, CATHERINE SHIANG, and LINZY T.
McCARTNEY, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—13, which are all the claims pending and rejected in
application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-
part.
STATEMENT OF THE CASE
Introduction
Appeal 2017-004633
Application 13/900,008
According to the Specification, the present invention relates to
manipulating a bus communication of a control device. See generally Spec.
1. Claim 1 is exemplary:
1. A method for manipulating a bus communication of a control
device, the bus communication comprising at least one bus hardware-
independent first communication layer and at least one bus hardware-
dependent second communication layer, the method comprising:
encoding, via the first communication layer, at least one piece of
information in a first protocol data unit and transmitting the protocol data
unit to the second communication layer and/or the first communication layer
receives the first protocol data unit from the second communication layer
and decodes the first information from the first protocol data unit;
generating, via the second communication layer, bus hardware-
dependent bus information from the first protocol data unit or from an
additional protocol data unit derived from the first protocol data unit for
transmission via the bus and/or the second communication layer generates
the first protocol data unit or an additional protocol data unit from which the
first protocol data unit is derived, at least from a bus hardware-dependent
bus information;
manipulating, via at least one send manipulation layer realized
between the first communication layer and the second communication layer,
the first protocol data unit and/or at least one additional protocol data unit
derived from the first protocol data unit; and
providing the manipulated first protocol data unit and/or the
manipulated additional protocol data unit to the second communication layer
for further processing and/or manipulating,
via at least one receive manipulation layer realized between the first
communication layer and the second communication layer, the additional
protocol data unit and/or the first protocol data unit derived from the
additional protocol data unit and providing the manipulated additional
protocol data unit and/or the manipulated first protocol data unit to the
second communication layer for further processing,
wherein the first communication layer is realized in software.
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Application 13/900,008
References and Rejections
Claims 1—13 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1—11 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Prior Art Admitted by Appellants (AAPA) and Jibbe (US
2011/0099426 Al; Apr. 28, 2011).
Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over AAPA and Jibbe.
ANALYSIS
35 U.S.C. § 112, First Paragraph
The Examiner finds: “In claims 1 [through 13], the language ‘the first
communication layer is realized in software’ does not have adequate support
from the originally filed specification.” Final Act. 2.
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellant possessed the claimed
invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc). Specifically, the
description must “clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed” and
the test requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill
in the art. Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and
show that the inventor actually invented the invention claimed.
Id. (internal quotations and citations omitted).
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Application 13/900,008
We agree with Appellants that paragraph 21 of the Specification
reasonably conveys to skilled artisans that Appellants possessed the claimed
invention as of the filing date. See App. Br. 9; Spec. 121. The Examiner’s
assertion that the claim requires “the ‘first communication layer’ is only
software” (Ans. 5—6 (emphasis added)) is not commensurate with the scope
of the claim.
Because the Examiner fails to provide sufficient basis to support the
rejection, we reverse the Examiner’s rejection of claims 1—13 under 35
U.S.C. § 112, first paragraph.
Obviousness
On this record, the Examiner did not err in rejecting claim 1.
We disagree with Appellants’ arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.1
Appellants contend:
The Examiner acknowledges that the APA does not
disclose the claimed manipulating layer. The Examiner
therefore cites to the Jibbe reference. . . .
[T]he Examiner responds to the . . . comments by
indicating that para. [0004] of Jibbe discloses an analyzer
placed between an initiator and target device to intercept and
modify a PDU (i.e., to allegedly disclose a manipulation layer
between the initiator and target). . .
1 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. §41.41 (b)(2).
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Appeal 2017-004633
Application 13/900,008
Paragraph [0004] of Jibbe discloses a setup of hardware
components (the cited Finisar Xgig protocol analyzer is clearly
hardware). In such system, the manipulation of the PDU is
performed between a sender (hardware) and a receiver
(hardware). As such, there is no hardware-independent
communication layer, as recited in claim 1 (also the alleged
manipulation layer is realized in hardware too). In this regard,
Applicant previously amended claim I to clarity that the first
communication layer is realized in software. Applicant submits,
however, that such recitation is already inherent in the
originally claimed “hardware-independent first communication
layer.” As such, even though the Examiner specifically rejects
the phrase “realized in software,” as set forth in the 112
rejection discussed above, Applicant's arguments with regard to
the prior art rejection still apply based on the original
recitations, i.e., Jibbe fails to disclose a hardware-independent
first communication layer.
App. Br. 11—12 (original emphases omitted); see also App. Br. 12—13;
Reply Br. 4—7. Appellants also contend the Examiner’s alternative
cumulative mapping is incorrect. See also App. Br. 11, 13—14; Reply
Br. 7.
Appellants have not persuaded us of error. The Examiner finds—and
Appellants do not dispute—AAPA teaches the claimed “bus hardware-
independent first communication layer,” “bus hardware-dependent second
communication layer,” and “the first communication layer is realized in
software.” See Final Act. 3^4. Therefore, Jibbe does not need to separately
teach those limitations.2 The Examiner finds—and Appellants do not
2 The Examiner correctly finds according to paragraph 6 of the
Specification, “bus hardware-independent first communication layer” means
“[t]he first communication layer ... is bus hardware-independent, because
only such services are implemented in it that are independent of the specific
bus hardware.” Ans. 3^4 (original emphases omitted), 13; Spec. 1 6.
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Application 13/900,008
provide substantive arguments to dispute—Jibbe’s paragraph 4 teaches a
‘“manipulation layer’ between an initiator [a first entity] and a target [a
second entity].” See Final Act. 5; Jibbe 14 (“Such an analyzer is placed
between an initiator and a target device.”).3 Therefore, the Examiner
modifies AAPA’s method to incorporate Jibbe’s teaching for the limitation
“at least one send manipulation layer realized between the first
communication layer and the second communication layer.” See Final Act.
3-6;
Appellants’ arguments about Jibbe’s paragraphs 17 and 25 (App. Br.
12; Reply Br. 6) are unpersuasive of error, because the Examiner cites those
paragraphs for an alternative cumulative mapping (Final Act. 5—6), which
the Examiner does not use for this Appeal (Ans. 15).4 In any event, such
arguments are unpersuasive. Jibbe’s paragraph 17 merely states “In one
example ... a /PROC virtual file system may be implemented to inject error
during PDU generation.” Jibbe 117 (emphases added). Further, Appellants
have not shown that sentence leads to their argued conclusion that “there is
no manipulation between a first hardware-independent communication layer
and a second hardware-dependent communication layer.” App. Br. 12;
Reply Br. 6. Similarly, Appellants’ argument that “in para. [0025] of Jibbe,
there is no detailed description of how manipulation is done. Thus, it can be
assumed, based on the disclosure of Jibbe, that the manipulation is
3 Appellants’ argument that Jibbe’s PROC circuit 114 “is realized within the
initiator 102” (App. Br. 11; Reply Br. 5) is not directed to the Examiner’s
mapping.
4 Because as discussed above, Appellants fail to show error in the
Examiner’s mapping, the Examiner’s alternative cumulative mapping is
unnecessary.
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Appeal 2017-004633
Application 13/900,008
performed in a second (hardware-dependent) communication layer” (App.
Br. 12 (emphasis added); see also Reply Br. 6) is unsubstantiated. Just
because one paragraph of Jibbe does not provide the detailed description,
Appellants may not speculate on how the process is performed. Appellants
assert their speculation is “based on the disclosure of Jibbe” (App. Br. 12;
Reply Br. 6), but does not state where and how.
Finally, Appellants argue:
As set forth above, Jibbe fails to disclose use of a first
hardware-independent communication layer in its manipulation.
Thus, assuming one skilled in the art was motivated to combine
the references, the APA would be modified to accommodate the
teachings of Jibbe. There is no rational reason to remove the
hardware-dependent aspect of Jibbe when incorporating its
specific manipulation teachings into the APA. Such alleged
modification, as asserted in the Final Office Action, is thus
based on impermissible hindsight reasoning.
App. Br. 13; Reply Br. 6.
Appellants’ argument is not commensurate with the scope of the
claim, as Appellants have not shown the claim requires the “use of a first
hardware-independent communication layer in its manipulation.” As
discussed above, the proposed combination modifies AAPA’s method to
incorporate Jibbe’s teachings of “a manipulator layer realized between . . . .”
The Examiner does not remove any feature of Jibbe to accomplish the
combination. And the Examiner has provided articulated reasoning with a
rational underpinning as to why one skilled in the art would have found it
obvious to modify AAPA’s method to incorporate Jibbe’s teachings. Non-
Final Act. 5; Ans. 17—18. Appellants do not persuasively show why such
reasoning is incorrect.
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In short, because Appellants fail to persuasively respond to the
Examiner’s findings, they fail to show Examiner error. See In re Baxter
TravenolLabs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of
this court [or this Board] to examine the claims in greater detail than argued
by an appellant, looking for [patentable] distinctions over the prior art.”).
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of independent claim 1, and independent
claims 12 for similar reasons.
We also sustain the Examiner’s rejection of corresponding dependent
claims 2—11, as Appellants do not advance separate substantive arguments
about those claims.
Regarding dependent claim 13, we agree with Appellants that the
Examiner has not shown the references, either individually or collectively,
teach “at least one receive manipulation layer.” See App. Br. 14. The
Examiner cites Jibbe’s paragraphs 4 and 5 for teaching that claim limitation.
See Ans. 23. However, as discussed above, the Examiner has already cited
the same teachings for the claimed “at least one send manipulation layer.”
Therefore, the Examiner incorrectly cites the same Jibbe’s teachings for two
distinctive claim terms. Because the Examiner fails to provide sufficient
evidence or explanation to support the rejection, we are constrained by the
record to reverse the Examiner’s rejection of dependent claim 13.
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Appeal 2017-004633
Application 13/900,008
DECISION
We affirm the Examiner’s decision rejecting claims 1—12.
We reverse the Examiner’s decision rejecting claim 13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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