Ex Parte Grover et al

Patent Trial and Appeal Board

Sep 17, 2012

10254556 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RAJEEV GROVER and WEIYUN SUN
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Appeal 2010-006017
Application 10/254,556
Technology Center 2100
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Before ALLEN R. MacDONALD, KALYAN K. DESHPANDE, and HUNG
H. BUI, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-6 and 9-20.2 We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.

1 The Appellants state that the real party in interest is Hewlett-Packard
Development Company, LP. Appeal Brief filed on October 28, 2009
(“Br.”).
2 Br. 5; Final Office Action mailed on July 1, 2009; Examiner’s Answer
mailed on January 15, 2010 (“Ans.”) at 2.
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I. STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ claims are generally directed to a method for notification
of an error in data exchanged for an application between a client computer
and a server computer. When an error is detected, a message corresponding
to the error is generated such that the error message is separate from data
and is handled such that it has priority over the data. This way, applications
do not have to parse each message for an error message and can handle the
error message expeditiously to avoid delay and save time and network
resource. See generally Abstract, Summary, Spec. pg. 7, ll. 10-19; pg. 8, ll.
1-6; pg. 11, ll. 13-19.
Claims 1-6 and 9-20 are on appeal. Claims 1, 9 and 17 are
independent. Independent claim 1 is illustrative of the claimed subject
matter, and is reproduced below with disputed limitations emphasized:
1. A method for notification of an error in data
exchanged for an application between a client computer telnet
and a server computer telnet, comprising:

detecting said error;

generating an error message corresponding to said error
wherein said error message is separate from said data; and

handling said error message wherein said error message
has priority over said data and wherein said handling is
performed with said error message in the same queue as said
data, wherein said error message is moved to a front of said
queue when said error message is received such that each
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message in said queue does not have to be reviewed for error
messages and each message in said queue, including messages
received prior to said received error message, are not
discarded before said error message is accessed.

Rejection
Claims 1-6 and 9-20 stand rejected under 35 U.S.C. § 112, 1st
paragraph, as failing to comply with the written description requirement.

II. ISSUE
The dispositive issue before us is whether the Examiner has erred in
finding that the original disclosure would not have conveyed to a person
with ordinary skill in the art that the Appellants were in possession of the
claimed invention at the time of filing, specifically with respect to the
limitation “each message in said queue, including messages received prior
to said received error message, are not discarded before said error message
is accessed,” as recited in each of independent claims 1, 9 and 17.

III. FINDINGS OF FACT
The following findings of facts are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).

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The Specification
1. The Specification admits as PRIOR ART in FIG. 1B, as
reproduced below, that data exchange between a client application 115 and a
server 101 often includes errors that occur in the execution of application
instructions, and such an error message 123 is placed in the same queue in a
message stack 121 along with other data messages in the order in which they
are received from the server 101. Each message in the message stack 121
must be read and handled in sequence until the error message 123 is
discovered before correction can be made. This causes delay and
inefficiency since an error message 123 can forestall complete processing of
data in the queue of the client application 115 and new data sent from the
server 101 can also be dropped (lost) (pg. 3, ll. 10-19).

FIG. 1B depicts conventional stacking of an error message
among normal data for routine handling

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2. As a solution to the recognized prior art deficiencies, the
Specification proposes that the error message should be handled separately
from data and with priority over the data in order to avoid delay and save
time and network resource. See generally Abstract, Summary, Spec. pg. 7,
ll. 10-19; pg. 8, ll. 1-6; pg. 11, ll. 13-19.
3. In particular, the Specification discloses two example
embodiments of how an error message can be handled expeditiously with
priority over the data in order to avoid delay and save time and network
resource, shown in FIG. 4, as reproduced below:

FIG. 4 illustrates telnet handling of error messages with stacking
separate from routine data

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4. The Specification discloses, in one embodiment shown in FIG.
4 with reference to the use of an application handler 415, that the error
message 433 containing the error 413 is handled separately from data
messages in the message stack 411 by the application handler 415 (rather
than the client application 203) so that the error message 433 can be
processed separately and expeditiously with priority over normal data
message traffic (pg. 7, ll. 15-16; pg. 9, ll. 19-22; pg. 11, ll. 13-15).
5. The Specification further discloses, in another embodiment also
shown in FIG. 4, that the error message 433 containing the error 413 is
handled with data messages in the same message stack 411 by the client
application 203, but is accorded with head of line privileges so that the error
message 433 can be processed expeditiously with priority over normal data
message traffic (pg. 9, ll. 22-25; pg. 11, ll. 15-19).
6. Specifically, the Specification states:
Upon transmission to the client side, telnet 205 generates
two message stacks. Data message stack 411 contains usable
data for application 203. Error message stack 431 contains error
message 433. Error messages such as error message 433 are
handled in one embodiment by an application handler 415,
rather than by the application 203, as it also handles the data
messages in message stack 411. In another embodiment, error
messages are stacked in the same queue (e.g., queue 411) with
data messages, but are given priority. These arrangements
effectuate expedited handling of error messages such as error
message 433.

Upon handling error message 433, client application 203
ceases sending requests for new data to server 211 until the
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error is resolved. Advantageously, this increases efficiency,
saves time, and allows the content of error messages to be
ascertained such that errors can be expeditiously detected and
corrected and corrective action taken, prior to backing up queue
403 in server 211. This has the further advantage of
economizing server and network resources. Less data will be
lost, less time will be wasted, and server and network resources
will be not be heavily taxed, since compounded effects of re-
sending replacement data for what is lost is minimized and
amelioration for such lost data is largely obviated.

(Pg. 9, line 17 – pg. 10, line 6).3

IV. APPLICABLE LEGAL PRINCIPLES
The test for determining compliance with the written description
requirement of 35 U.S.C. § 112, first paragraph for later claimed subject
matter is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that
time of the filing of the later claimed subject matter, rather than the presence
or absence of literal support in the specification for the claim language. See
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991) and In
re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). “[T]he disclosure as
originally filed does not have to provide in haec verba support for the
claimed subject matter at issue." Purdue Pharma L.P. v. Faulding Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000). In some cases, “drawings alone may

3 See Amendment filed on May 5, 2008 in which the specification was
revised and for entry by the Examiner in the Final Office Action mailed on
July 31, 2008.
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provide a ‘written description’ of an invention as required by § 112.” Vas-
Cath, Inc. v. Mahurkar, 935 F.2d at 1565. Regardless, the disclosure must
convey with reasonable clarity to those skilled in the art that the inventor
was in possession of the invention. See id.

V. ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejections and the Examiner’s responses to the Appellants’
arguments. We are persuaded by the Appellants’ arguments and concur with
the Appellants’ conclusions. In addition, we further emphasize the
following:
Independent claims 1, 9 and 17 recite, inter alia: “wherein … each
message in said queue, including messages received prior to said received
error message, are not discarded before said error message is accessed.”
The Examiner maintains that the appealed claims run afoul of the
written description requirement of 35 U.S.C. § 112, 1st paragraph because
the original disclosure does not disclose the limitation, i.e., “each message in
said queue, including messages received prior to said received error
message, are not discarded before said error message is accessed.” (Ans. 3
and 4). In this regard, the Examiner asserts that any claim containing a
negative limitation which does not have basis in the original disclosure
should be rejected under 35 U.S.C. § 112, 1st paragraph as failing to comply
with the written description requirement (Ans. 4).
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We agree with the Appellants’ contentions that the Specification4 and
FIGS. 4-6 demonstrate that messages are not discarded before an error
message is accessed (App. Br. 9-11; Rep. Br. 1-3). In particular, we find
that FIG. 4 of the Specification shows that each message is placed in the
queue 411, and how an error message can be handled expeditiously with
priority over the data in order to avoid delay and save time and network
resource. “[D]rawings alone may provide a ‘written description’ of as
invention as required by § 112.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d at
1565.
For example, in an embodiment where an error message 433
containing an error 413 is handled with data messages in the same message
stack 411 by the client application 203, the error message 433 is accorded
with head of line privileges so that the error message 433 can be processed
with priority over normal data message traffic. However, data messages
remain in the same message stack 411, “including messages received prior
to said received error message, are not discarded before said error message
is accessed” as recited in independent claims 1, 9 and 17.

VI. CONCLUSION
On the record before us, we conclude that the Appellants have shown
that Examiner erred in rejecting claims 1-6 and 9-20 under 35 U.S.C. § 112,
1st paragraph, as failing to comply with the written description requirement.

4 See Appellants’ Specification, page 10, ll. 10-20; page 11, ll. 13-19 and
FIGS. 4-6.
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VII. DECISION
As such, we reverse the Examiner’s decisions to reject claims 1-6 and
9-20 under 35 U.S.C. § 112, 1st paragraph, as failing to comply with the
written description requirement.

REVERSED

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