10193194 (B.P.A.I. Jun. 2, 2010)

Ex Parte Greene

Board of Patent Appeals and InterferencesJun 2, 2010

10193194 (B.P.A.I. Jun. 2, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte SPENCER GREENE ____________ Appeal 2009-005931 Application 10/193,194 Technology Center 2400 ____________ Decided: June 3, 2010 ____________ Before JOHN A. JEFFERY, JOSEPH L. DIXON, and JEAN R. HOMERE, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-25 and 39. Claim 26 has been canceled (see April 17, 2007 Amendment), and claims 27-38 are withdrawn (see App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2009-005931 Application 10/193,194 2 STATEMENT OF THE CASE Appellant invented a method and device for measuring network traffic that accounts for overhead information. See generally Spec. ¶¶ 0001, 0005- 07. Claim 1 is illustrative: 1. A method for measuring traffic, comprising: tracking an amount of data and a number of data units; predicting an amount of padding associated with the data units; and determining an amount of traffic based on the predicted padding, the amount of data, and the number of data units. The Examiner relies on the following as evidence of unpatentability: Sambamurthy US 6,085,248 July 4, 2000 Ni US 2003/0076832 A1 April 24, 2003 (filed Oct. 22, 2001) THE REJECTION The Examiner rejected claims 1-251 and 39 under 35 U.S.C. § 103(a) as unpatentable over Ni and Sambamurthy. Ans. 3-8.2 1 The Examiner discusses cancelled claim 26 in the rejection. Ans. 3, 8. Since claim 26 is canceled, we will not address this claim and deem the error harmless. 2 Throughout this opinion, we refer to (1) the Appeal Brief filed December 12, 2007; (2) the Examiner’s Answer mailed April 14, 2008; and (3) the Reply Brief filed April 14, 2008. Appeal 2009-005931 Application 10/193,194 3 CONTENTIONS Regarding independent claim 1, the Examiner finds that Ni teaches the recited predicting step, and Sambamurthy teaches the tracking and determining steps. Ans. 3-4. The Examiner’s reason for combining the references’ teachings is to allow a network manager to diagnose, plan, and tune the network by analyzing various traffic characteristics, including total traffic. Ans. 4. Appellant argues that Ni’s disclosure of adding null bytes to the header cell is not predicting any information, let alone padding associated with the data units. App. Br. 6-8. Because Ni purportedly does not teach the predicting step, and Sambamurthy does not cure this deficiency (App. Br. 8-10), Appellant also asserts that the combination does not teach determining the traffic amount based on padding information. App. Br. 10- 13. Appellant further argues that the cited prior art fails to teach determining traffic based on a tracked data amount, a tracked data units’ number, and a predicted padding amount. App. Br. 13-14; Reply Br. 5-8. The issues before us, then, are as follows: ISSUES Under § 103, has the Examiner erred in rejecting claim 1 by finding that Ni and Sambamurthy collectively would have taught or suggested: (1) predicting padding amount associated with the data units, and (2) determining a traffic amount based on the predicted padding, the data amount, and the data units’ number? Appeal 2009-005931 Application 10/193,194 4 FINDINGS OF FACT (FF) (1) Ni discloses a packet 106 consisting of cells 104 and receives the packet’s cells at 200. Ni teaches removing the header from the cell containing the header (header cell) at 210. Ni next counts the remaining bytes in the header cell at step 220, and determines whether the bytes are a multiple of a predetermined number, such as a burst size, at step 230. Based on step 230’s determination, Ni adds either (1) no padding to the header cell at step 235, or (2) null bytes to the cell at step 240. Ni, ¶¶ 0046, 0051-52; Figs. 1 and 3A. (2) Sambamurthy provides transmit and receive status information, including total transmitted and received (1) byte fields (e.g., Total Tx bytes at the packet generator and processor), and (2) packet fields (e.g., Total Tx packets at the packet generator and processor). Sambamurthy, col. 34, ll. 7-54; Fig. 15. (3) Sambamurthy displays a transmit rate window 1514 and a receive rate window 1516 with corresponding transmit and receive rates denoted in packets per second (pkts/sec). Sambamurthy, col. 34, ll. 55-64; Fig. 15A. (4) Sambamurthy discusses network management operations used to select network statistics, such as throughput, collisions, and traffic flow characteristics. Monitoring these statistics allows the network manager to analyze traffic statistics and parameters for fault diagnostic, planning, and performance tuning. Sambamurthy, col. 12, ll. 42-52. (5) The Specification describes padding “prediction” involves calculating the padding based on (1) the packet size; (2) header size; and (3) the cell size, and uses addition, subtraction and division. Spec. ¶¶ 0051-54. Appeal 2009-005931 Application 10/193,194 5 PRINCIPLES OF LAW “It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). ANALYSIS Based on the record before us, we find error in the Examiner’s obviousness rejection of independent claim 1, which calls for predicting a padding amount associated with the data units. The Specification provides no definition for the term “predicting.” See generally Specification. In fact, Appellants state that they use the term according to the dictionary’s definition. See App. Br. 9. We therefore construe the term “predict” with its ordinary and customary meaning. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations omitted). “Predict” is defined as “[t]o foretell; to tell beforehand something that is to happen.”3 The cited references must therefore teach foretelling or forecasting the padding amount before the padding occurs. Ni discloses a process for determining whether to pad (e.g., add null bytes) a cell or not. See FF 1. Specifically, Ni discloses receiving packet cells (e.g., 104) at 200 and removing the header from the header cell at 210. Id. Ni then counts the bytes in the header cell at step 220 and determines whether the bytes are a multiple of a predetermined number at step 230. Id. Depending on whether the bytes are a multiple or not, Ni will pad the header 3 Webster’s 1828 Dictionary, available at http://1828.mshaffer.com/d/word/predict (last visited May 7, 2010). Appeal 2009-005931 Application 10/193,194 6 cell at step 240 or not at step 235. Id. Thus, when viewed from the perspective of steps 235 and 240, Ni teaches forecasting the padding at step 230, however brief in time, before actually padding a cell step 240 or not at step 235. While acknowledging predicting can involve calculating, Appellant nonetheless contends that “calculating” is not the same as “predicting.” App. Br. 9-10. We agree with Appellant, but also find that the Examiner’s position that these terms are the synonymous (Ans. 9) in the present appeal is not groundless. That is, during examination, a claim is given its broadest reasonable construction in light of the Specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Specification describes “predicting” the padding amount involves no more than simple mathematical calculations to determine the padding, including no padding. See FF 6. Appellant’s form of “predicting” the padding amount (e.g., using a simple mathematical formula to determine whether to pad or not) is therefore similar to how Ni determines the padded amount. Unlike Ni, the Specification does not disclose actually using the calculated padding amount to pad a packet, and is therefore a projected or “predicted” padding amount. Claim 1, however, does not recite this difference, and we will not import the disclosure into the claim. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Additionally, as the header cell (e.g., 104) is part of the packet (i.e., a data unit) (see FF 1), Ni teaches calculating a padding amount associated with data units. But we agree with Appellant that Ni does not disclose the tracking step in claim 1 (App. Br. 8), and that “the data units” refer to the data units in the recited step calling for tracking a number of data units. Appeal 2009-005931 Application 10/193,194 7 However, attacking Ni individually does not show nonobviousness when the rejection is based on Ni and Sambamurthry. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Sambamurthry cures this alleged deficiency by teaching tracking packets or data units (e.g. total transmitted packet field). When Sambamurthy is combined with Ni and viewed with respect to Ni’s steps 235 and 240, we therefore find these references collectively teach predicting a padding amount associated with the data units that are tracked as recited in claim 1. Nonetheless, Sambamurthy fails to teach the step of determining the traffic amount based on the predicted padding, the data amount, and the data units’ number as required by claim 1. Sambamurthy teaches tracking data amounts (e.g., Total Tx bytes) and number of data units (e.g., Total Tx packets). FF 2. Additionally, Sambamurthy teaches determining a transmit and receive rate (e.g., pkts/sec) (FF 3), which can be considered a traffic amount or data quantity between communication network points.4 Sambamurthy, however, does not teach determining an amount of traffic based on a predicted padding. See FF 3-4. The Examiner relies on Sambamurthy’s discussion of using network statistics (e.g., traffic flow characteristics) (FF 4) to provide a reason (i.e., allow a network manager to analyze traffic statistics for diagnostic, planning, and performance tuning) to include Ni’s predicting padding amount with Sambamurthy’s teaching. Ans. 3-4. While Sambamurthy generally discusses analyzing traffic flow characteristics (FF 4), we find no suggestion to use a predicted padding, such as Ni’s, in determining a traffic amount. Based on the record before us, we are therefore constrained to find 4 Valerie Illingworth, A Dictionary of Computing 508 (1997). Appeal 2009-005931 Application 10/193,194 8 no rational basis, absent impermissible hindsight, to combine Sambamurthy’s teaching with Ni so as to determine the traffic based on the predicted padding. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); see also Fritch, 972 F.2d at 1266. Independent claim 39 recites a device with means-plus-function limitations that are commensurate in scope with independent claim 1. For the reasons discussed above regarding claim 1, we also find that Ni and Sambamurthy fail to teach a means for determining traffic in a network device based on the predicted padding, the length, and the data units’ number. Independent claim 11 recites a network device having a first processing unit configured to predict a padding amount to be added to the data units and to calculate an amount of traffic based on a predicted padding amount. As previously discussed in connection with claim 1, the combination of Ni and Sambamurthy similarly fails to teach a processing unit that calculates traffic based on a predicted padding amount. For the foregoing reasons, Appellant has shown error in the obviousness rejection of independent claims 1, 11, and 39 based on the combination of Ni and Sambamurthy. We therefore will not sustain the rejection of independent claims 1, 11, and 39 and claims 2-10 and 12-255 which depend directly or indirectly from claims 1 and 11 respectively. CONCLUSION The Examiner erred in rejecting claims 1-25 and 39 under § 103. 5 We note in passing that, unlike other claims depending on claim 11, claim 18 recites the term “method”— not “network device”— in the preamble. Appeal 2009-005931 Application 10/193,194 9 ORDER The Examiner’s decision rejecting claims 1-25 and 39 is reversed. REVERSED pgc HARRITY & HARRITY, LLP 11350 Random Hills Road SUITE 600 FAIRFAX, VA 22030 Appeal 2009-005931 Application 10/193,194 10 EVIDENCE APPENDIX Valerie Illingworth, A Dictionary of Computing 508 (1997).