Ex Parte Haq et al

Board of Patent Appeals and Interferences

Apr 30, 2007

09483110 (B.P.A.I. Apr. 30, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FAISAL HAQ and HARI K. LALGUDI
____________

Appeal 2007-0639
Application 09/483,110
Technology Center 2600
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Decided: April 30, 2007
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Before JAMES D. THOMAS, KENNETH W. HAIRSTON,
and ST. JOHN COURTENAY III, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal involves claims 1 through 6, 16 through 21, 31 through 43
and 52 through 57 among pending claims 1 through 64. We have
jurisdiction under 35 U.S.C. §§ 6(b), 134(a).
Appeal 2007-0639
Application 09/483,110

Representative independent claim 1 is reproduced below:
1. A method comprising:
receiving at least one packet; and
disposing of the received at least one packet in response to a walk of a
Hash Table,

wherein
the Hash Table is balanced,
the Hash Table is configured to store Binary Comparison Trees, and
the Hash Table is configured to encode an Access Control List.
The following reference is relied on by the Examiner:
Dobbins US 5,509,123 Apr. 16, 1996
Claims 1 through 6, 16 through 21, 31 through 43 and 52 through 57
stand rejected under 35 U.S.C. § 102(b) as being anticipated by Dobbins.
Rather than repeat the positions of the Appellants and the Examiner,
reference is made to the Brief and Reply Brief for Appellants’ positions, and
to the Answer for the Examiner’s positions.
OPINION
For the reasons set forth below we pro forma reverse the outstanding
rejection of the claims on appeal under 35 U.S.C. § 102. Additionally,
within the provisions of 37 § 41.50(b) we institute two new grounds of
rejection of our own.
We reverse the outstanding rejection under 35 U.S.C. § 102 because
the subject matter encompassed by the claims on appeal must be reasonably
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Application 09/483,110

understood without resort to speculation. Presently, speculation and
conjecture must be utilized by us and by the artisan inasmuch as the claims
on appeal do not definitely reflect what the disclosed invention is. Note In
re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). Note also
In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
The ambiguities reflected in our new ground of rejection under
35 U.S.C. § 112, second paragraph, to be set forth later in this opinion,
render the subject matter of representative independent claim 1 on appeal,
for example, as fatally indefinite within this statutory provision and therefore
lead us to conclude that it is inappropriate according to the just-noted case
law to apply prior art to these claims in this condition. The parties appear to
presume that positively stated features are recited in the claims where we
find otherwise. Since this reversal should not be construed as a reversal on
the merits, once properly definite claims are presented, Dobbins may be
considered to be appropriate prior art to apply against those claims. Should
this situation arise, however, we note from our own cursory review of
Dobbins that this reference does not positively teach of a Hash Table and the
data constructs disclosed that are intended to be associated with it.
With these considerations in mind, we reject all pending claims on
appeal, claims 1 through 64, under the second paragraph of 35 U.S.C. § 112,
within the provisions of 37 C.F.R. § 41.50(b). There are numerous instances
in which representative independent claim 1 on appeal does not positively
recite features. To begin with, the claimed Hash Table is not positively
recited and there is no positively recited feature of walking through this
Hash Table. On the contrary, only a future act of potential walking through
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Appeal 2007-0639
Application 09/483,110

the Hash Table is set forth. This Hash Table is merely configured “to” store
or “to” encode respective Binary Comparison Trees and an Access Control
List. There is no positive statement that the Hash Table actually stores these
elements or otherwise has encoded them in the present tense. The Hash
Table is merely passively recited and the walking capability associated with
it is a future act that may never occur as well as the “to store” and “to
encode” capabilities of the Binary Comparison Trees and Access Control
List. Significantly, the claim is not operative with respect to the claimed
“disposing of” feature. There is no active disposition of anything recited in
claim 1 that makes use of the fact that the Hash Table is considered to be
balanced and any potential future configuration of the Binary Comparison
Trees and Access Control List. Thus, at least with respect to these
recitations, the metes and bounds of this claim are essentially arguable and
not reasonably determinable, and this situation yields the lack of adequate
notice to a potential infringer. Since independent claims 16 and 35 as well
as 52 recite corresponding features, the rejection is extended to them as well
as each of their respective dependent claims. Even though we recognize that
the Hash Table is positively recited in independent claim 52, the other
considerations we raised earlier also equally apply. It is not clear to us what
the metes and bounds of claim 52 are if the claimed network station does not
receive a packet. Likewise, the disposition feature at the end of the claim is
said to be only broadly and indefinitely recited to occur “according to”
additional features.

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Appeal 2007-0639
Application 09/483,110

We also reject all pending claims on appeal under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. Because of the manner in
which the independent claims have been recited and, as indirectly reflected
in the rejection we just set forth under the second paragraph of 35 U.S.C. §
112, what is left is that the claims merely passively recite an abstract data
construct of a Hash Table and its attempted-to-be-defined data structures per
se associated with it. Another view of the pending claims is that there is
merely recited a data construct that may be configured to do something in
the future. All claims on appeal, when considered in the context of the
present and future embodiments contemplated at pages 25 and 26 of the
Specification indicate that there is no limit to the nature of the subject matter
that they are intended to encompass. This feature is most telling with
respect to the broadly recited signal bearing media in independent claim 35
on appeal which is directly recited to encompass the mere transmission of
intangible transmission media.
In summary, we have reversed the outstanding rejection of claims 1
through 6, 16 through 21, 31 through 43 and 52 through 57 rejected under
35 U.S.C. § 102. On the other hand, we have instituted two new grounds of
rejection within the provisions of 37 C.F.R. § 41.50(b). These include the
rejection of all pending claims, claims 1 through 64, under the second
paragraph of 35 U.S.C. § 112 and a separate rejection of these claims under
35 U.S.C. § 101 is being directed to non-statutory subject matter.

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Application 09/483,110

This decision contains two new grounds of rejection pursuant to
37 CFR § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 CFR § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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Appeal 2007-0639
Application 09/483,110

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR §1.136(a). See 37 CFR
§ 1.136(a)(1)(iv).
REVERSED; 37 § 41.50(b)

PGC

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