Ex Parte Hughes et al

Board of Patent Appeals and Interferences

Aug 27, 2002

08825492 (B.P.A.I. Aug. 27, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 23

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAVID A. HUGHES and ALAN SALDINGER
_____________
Appeal No. 2001-1911
Application No. 08/825,492
______________
HEARD: August 14, 2002
_______________
Before THOMAS, JERRY SMITH and RUGGIERO, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants have appealed to the Board from the examiner’s
final rejection of claims 1 through 3, 5 through 8, 14 through
16, 18 through 22 and 24 through 26.
Representative claims 1 and 21 are reproduced below:
1. A method for merging partially filled ATM cells,
comprising the steps of:
removing a first partially filled ATM cell from an
ATM cell stream;
Appeal No. 2001-1911
Application No. 08/825,492
2
removing a second partially filled ATM cell from
the ATM cell stream; and
merging the first partially filled ATM cell and
the second partially filled ATM cell into a third ATM
cell having a header that includes information
indicative of a merging method used.
21. An ATM cell, comprising:
a payload including information from two or more
partially filled ATM cells; and
a header including information indicative of a
merging method used to construct the ATM cell.
The following reference is relied upon by the examiner:
Takashima 5,509,007 Apr. 16, 1996
Claims 1 through 3, 5 through 8, 14 through 16, 18 through
22 and 24 through 26 stand rejected under 35 U.S.C. § 112, first
paragraph, with the examiner’s analysis focusing upon the written
description portion thereof. Claims 21, 22, and 26 stand
rejected under 35 U.S.C. § 101 as being directed to nonstatutory
subject matter. Finally, claims 1 through 3, 5 through 8, 14
through 16, 18 through 20, 24 and 25 stand rejected under 35
U.S.C. § 102(a) as being anticipated by Takashima. The answer
incorrectly includes claims 21, 22 and 26 in this rejection under
Appeal No. 2001-1911
Application No. 08/825,492
3
35 U.S.C. § 102, since it has been set forth in the final
rejection as not including claims 21, 22 and 26.
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 final rejection and the answer
for the examiner’s positions.
OPINION
As embellished upon here, we sustain the rejection of the
noted claims on appeal under 35 U.S.C. § 101 and 35 U.S.C. § 102
respectively, but reverse the rejection of the claims on appeal
under the first paragraph of 35 U.S.C. § 112.
Turning first to the rejection of the claims under the
written description requirement of the first paragraph of 35
U.S.C. § 112, it is clear to us from our study of the written
description, including the initially filed claims and drawings,
that appellants possessed within 35 U.S.C. § 112, first
paragraph, the subject matter of the claims on appeal pertaining
to language of each of the respective independent claims 1, 14
and 21 on appeal of the ATM cell having “a header that includes
information indicative of a merging method used.” Independent
claim 21 goes on to add to this feature of the method being “used
to construct the ATM cell.”
Appeal No. 2001-1911
Application No. 08/825,492
4
In essence, we are in general agreement with the positions
on this issue advocated by appellants in the brief and reply
brief. From an artisan’s perspective, the logical connection
identification information mentioned in the original and amended
abstract, the summary of the invention at page 5, lines 16
through 18 of the specification as filed as well as at page 7,
lines 9 and 10 indicate to the artisan that this is well known in
the art as Virtual Channel Information otherwise known as VCI.
This understanding is independently confirmed by the teaching in
the paragraph bridging columns 1 and 2 of Takashima, the
reference relied upon by the examiner’s basis for the rejection
under 35 U.S.C. § 102. This VCI information is a part of the
header of the ATM cells. In fact, Fig. 2 of the disclosed
invention shows VCI=a and VCI=b comprising the headers of the
respective cells 30 and 32 to be merged into the new cell 38
comprising a separate header 40 encompassing VCI=c information.
The entire discussion of this figure at specification page
7, line 6 through page 9, line 6 confirms the statements made by
appellants in the brief and reply brief as to the merging methods
of each of the independent claims on appeal. In fact, the
definition of the header 40 in the merged cell 38 shown in
Appeal No. 2001-1911
Application No. 08/825,492
5
Fig. 2 indicates in the sentence bridging pages 7 and 8 of the
specification as filed that it may contain the number of partial
cells contained in the merged cell as well as delineation
information indicating the boundaries of the respective original
cells in the final merged cell. Correspondingly, the sentence
bridging pages 8 and 9 of the specification as filed specifically
states that the “VCI of the merged cell . . . could be used to
represent the merging method.” Corresponding teachings are also
found in the middle paragraph at page 10 of the specification as
filed as well as originally filed claims 3 and 12. Thus, it is
readily apparent to us that the artisan would have well
appreciated that appellants contemplated that the header of the
claimed ATM cells would have included an indication of the
merging method to the extent broadly recited in independent
claims 1, 14 and 21 on appeal. As such, the examiner’s rejection
under 35 U.S.C. § 112, first paragraph, as to this feature of all
claims on appeal must be reversed.
Turning next to the rejection of claims 21, 22 and 26 under
35 U.S.C. § 101, we will sustain this rejection for the reasons
set forth by the examiner in the final rejection and answer. The
examiner’s initial reasoning in the final rejection characterized
the subject matter of independent claim 21 as encompassing a mere
Appeal No. 2001-1911
Application No. 08/825,492
6
data format, whereas this reasoning is expanded upon in the
answer as characterizing the subject matter of this claim as
being directed merely to a data structure per se.
Ample precedent exists in our view to sustain this
rejection of the examiner. Diamond v. Diehr, 450 U.S. 175, 185,
209 USPQ 1 (1981) identified three classes of subject matter that
do not qualify as section 101 statutory subject matter to
include: laws of nature, natural phenomena, and abstract ideas.
Like the examiner, we consider the subject matter of independent
claim 21 as being directed to an abstract idea per se in the form
of a data structure. Essentially, In re Warmerdam, 33 F.3d 1354,
1361-62, 31 USPQ2d, 1754, 1760 (Fed. Cir. 1994) held that a “data
structure” is not a machine or otherwise within the statutory
subject matter of section 101. More recently, the Court of
Appeals for the Federal Circuit in State Street Bank & Trust Co.
v. Signature Fin. Group, Inc., 149 F.3d 1368, 1374, 47 USPQ2d
1596, 1601 (Fed. Cir. 1998), indicated in disfavoring an earlier
test used in determining patentable subject matter that “a
process, machine, manufacture, or composition of matter employing
a law of nature, natural phenomenon, or abstract idea is
Appeal No. 2001-1911
Application No. 08/825,492
7
patentable subject matter even though a law of nature, natural
phenomenon, or abstract idea would not, by itself, be entitled to
such protection.”
As basically reasoned by the examiner, we find that the
subject matter embraced by the claimed ATM cell per se of claim
21 on appeal sets forth a data structure or an abstract idea
which does not fall within the statutory categories of a process,
machine, manufacture or composition of matter of 35 U.S.C. § 101.
Claim 21 merely claims, broadly, a header and a payload, both of
which are well known in the art as revealed by our study of the
specification as filed as well as the disclosure of Takashima.
Claim 21 recites the ATM cell itself, as a mere data structure or
a mere representation of data per se. Moreover, this recited ATM
cell in claim 21 is not a physical structure or a manufacture
within 35 U.S.C. § 101. The ATM cell of claim 21 is not used in
a merging method, as recited in independent claim 1 on appeal,
nor is it used in an apparatus or machine as in the network of
independent claim 14 on appeal.
It is thus apparent that we are unpersuaded by appellants’
arguments in the brief and reply brief as to this issue.
Appellants’ recognition of PTO policy at pages 6 and 7 of the
principal brief on appeal as set forth in MPEP section 2106,
Appeal No. 2001-1911
Application No. 08/825,492
1 We note in passing that the subject matter of dependent claim 22
should apparently depend from dependent claim 26 rather than independent claim
21, since there is no antecedent basis in claim 21 for the claimed information
indicative of the number of partially filled ATM cells recited in claim 22,
but such is defined in dependent claim 26.
8
etc., is noted. However, appellants’ invitation for us to expand
upon the stated policy in this section of the MPEP is
inappropriate since we do not set policy. We remain unpersuaded
therefore as well of appellants’ arguments at page 2 of the reply
brief that the ATM cell of claim 21 is more than just a mere data
structure. The claim itself does not recite anything more than a
data structure even though we recognize that it is capable of
being “used” to convey information in certain mediums, none of
which has been recited as structural elements or methods in claim
21 itself. We disagree with appellants’ view that the ATM cell
of claim 21 is a physical thing and that it is an article.
Therefore, we sustain the rejection of independent claim 21 and
dependent claims 22 and 26.1
Finally, we also sustain the rejection of claims 1 through
3, 5 through 8, 14 through 16, 18 through 20, 24 and 25 under
35 U.S.C. § 102 for the reasons stated by the examiner in the
final rejection as amplified in the answer. Significantly, page
Appeal No. 2001-1911
Application No. 08/825,492
9
3 of the final rejection makes specific reference to Figs. 15, 18
through 20 and 28 through 31 as well as various corresponding
columns in Takashima that discuss these figures.
Equally significant is appellants’ admission in the middle
of page 5 of the principal brief on appeal that Takashima does
disclose the merging of two or more ATM cells into a new ATM cell
in the discussion with respect to Fig. 15 at column 10. It is
not understood how appellant can recognize here that Takashima
teaches that Takashima’s header information indicates the number
of merged cells or the data boundary of those cells according to
the teachings at column 10 and the showing of Fig. 15 of
Takashima and yet argue that this teaching does not indicate “a
merging method” to the extent broadly recited in independent
claims 1 and 14 on appeal. As indicated earlier in this opinion
with respect to our discussion of the reversal of the rejection
of the claims under the first paragraph of 35 U.S.C. § 112,
appellants’ methodology clearly encompasses both by indicating,
in the preamble or the header of the disclosed ATM cell, the
ability to indicate the number of merged cells and their
respective data boundaries. Significantly, there is also no
methodology per se recited in representative independent claim
1 on appeal. Nor are we persuaded by appellants’ argument at
Appeal No. 2001-1911
Application No. 08/825,492
10
page 2 of the reply brief that the language of representative
independent claim 1 on appeal of “a merging method” found in the
header of the merged ATM cell is more than just information
including the number of cells in the merged cells. Again, there
is no recitation of any additional information in representative
independent claim 1 on appeal according to any methodology.
The discussion of the second embodiment beginning at column
9 and the discussion thereof relative to Fig. 13 of Takashima
indicates that a plurality of known ATM cells such
as “cells 1, 2, etc.” are specifically taught to be merged into a
new cell labeled as cell #A. The discussion at column
10 indicates that the header information indicates the number of
cells in the combined cell as well as data length information
therein which permits determination of the allocation of
positional information with respect to each of the old cells that
have been merged. Similar teachings associated with the fourth
embodiment of column 12 indicate that the VCI information of the
header of that embodiment indicates prefixing information
associated with respect to the methodology as recited in
representative independent claim 1 on appeal. Figs. 28 through
31 and their corresponding discussion beginning at column 14 of
Takashima indicates the use of a plurality of different types of
Appeal No. 2001-1911
Application No. 08/825,492
2 Although no formal rejection was before us of claims 21, 22 and 26
under 35 U.S.C. § 102, it should be apparent to the reader that in view of our
extensive discussion in this opinion, the subject matter set forth in these
claims would have been clearly anticipated as well by the teachings in
Takashima to the extent argued in the manner corresponding to independent
claims 1 and 14 had claims 21, 22 and 26 been rejected by the examiner.
11
headers which clearly teach as well various methodologies to the
extent broadly recited in representative independent claim 1 on
appeal.
In conclusion, we have reversed the rejection of all of the
claims on appeal under the first paragraph of 35 U.S.C. § 112.
We have sustained the rejection of independent claim 21 under 35
U.S.C. § 101 and of its dependent claims 22 and 26 since no
arguments have been presented in the brief and reply brief as to
the features recited in these two dependent claims. Finally, we
have also sustained the rejection of independent claim 1 on
appeal under 35 U.S.C. § 102 as a representative claim of all the
claims rejected thereunder.2 As to this rejection, no argument
is presented as to any other claim on appeal. Since our
affirmance of the examiner’s rejection of the claims under 35
U.S.C. § 101 and 35 U.S.C. § 102 encompasses all of the claims on
appeal, the decision of the examiner is affirmed.
Appeal No. 2001-1911
Application No. 08/825,492
12
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JDT:vsh
Appeal No. 2001-1911
Application No. 08/825,492
13
TAREK N. FAHMI
BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN
12400 WILSHIRE BOULEVARD
7TH FLOOR
LOS ANGELES, CA 90025