Ex Parte Hulmani et al

Board of Patent Appeals and Interferences

Jun 27, 2008

10610149 (B.P.A.I. Jun. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte GIRISH HULMANI,
SYED MOHAMMED ALI, ARUL THANGARAJ,
SANDEEP BHATIA, and PRAMOD CHANDRIAH
_____________

Appeal 2008-0741
Application 10/610,149
Technology Center 2600
______________

Decided: June 27, 2008
_______________

Before ANITA PELLMAN GROSS, ROBERT E. NAPPI,
and KARL D. EASTHOM, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 6(b) of the final
rejection of claims 1 through 5, 9 through 13, and 16 through 18.
We affirm the Examiner’s rejections of these claims.

Appeal 2008-0741
Application 10/610,149

2

INVENTION
The invention is directed to a system for receiving packetized data.
The system has state logic to detect incoming packetized elementary stream
(PES) headers and a processor which, upon detection of a PES header,
interrupts the execution of a thread and loads the context associated with the
PES header. See page 4 of Appellants’ Specification. Claim 1 is
representative of the invention and reproduced below:
1. A system for processing packets, said system comprising:
state logic for detecting headers associated with the packets;
a processor for loading contexts responsive to the state logic
detecting the headers; and
a buffer for storing the packets.

REFERENCE
Okamoto US 2004/0076194 A1 Apr. 22, 2004

REJECTIONS AT ISSUE
Claims 1 through 5, 9 through 13, and 16 through 18 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by Okamoto. The Examiner’s
rejection is on page 3 of the Answer.
Claims 1 through 5, 9 through 13, and 16 through 18 stand
provisionally rejected under the judicially created doctrine of obviousness-
type double patenting. The Examiner’s rejection is on pages 3 and 4 of the
Answer.
Throughout the opinion, we make reference to the Brief (received
November 13, 2006), Reply Brief (received June 18, 2007) and the Answer
(mailed January 25, 2007) for the respective details thereof.
Appeal 2008-0741
Application 10/610,149

3

ISSUES
1) Whether Appellants have shown that the Examiner erred in
rejecting claims 1 through 5, 9 through 13, and 16 through 18 under 35
U.S.C. § 102(e).
2) Whether Appellants have shown that the Examiner erred in
rejecting claims 1 through 5, 9 through 13, and 16 through 18 under the
judicially created doctrine of obviousness-type double patenting.

PRINCIPLES OF LAW
Office personnel must rely on Appellants’ disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995).
“[I]nterpreting what is meant by a word in a claim ‘is not to be confused
with adding an extraneous limitation appearing in the specification, which is
improper.’” (emphasis original) In re Cruciferous Sprout Litigation, 301
F.3d 1343, 1348 (Fed. Cir. 2002) (citing Intervet Am. Inc. v. Kee-Vet Lab.,
Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989).
The Examiner need not give patentable weight to descriptive material
absent a new and unobvious functional relationship between the descriptive
material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84 (Fed.
Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004) and our recent
final decision in Ex parte Curry, 2005-0509 (BPAI 2007) , 84 USPQ2d 1272
(Affirmed, Rule 36, Fed. Cir., slip op. 06-1003, June 2006). “[W]here the
printed matter is not functionally related to the substrate, the printed matter
will not distinguish the invention from the prior art in terms of
Appeal 2008-0741
Application 10/610,149

4

patentability.” In Re Nagi 367 F.3d at 1339, citing In Re Gulack 703 F.2d
1381, 1385 (Fed. Cir. 1983).
37 C.F.R. § 41.37 (c)(1)(vii) states:
For each ground of rejection applying to two or more claims, the
claims may be argued separately or as a group. When multiple claims
subject to the same ground of rejection are argued as a group by
appellant, the Board may select a single claim from the group of
claims that are argued together to decide the appeal with respect to the
group of claims as to the ground of rejection on the basis of the
selected claim alone. Notwithstanding any other provision of this
paragraph, the failure of appellant to separately argue claims which
appellant has grouped together shall constitute a waiver of any
argument that the Board must consider the patentability of any
grouped claim separately…. A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.

ANALYSIS
Rejection of claims 1 and 3 through 5 under 35 U.S.C. § 102(e).
Appellants argue, on pages 8 and 9 of the Brief that Okamoto does not
teach state logic for detecting headers as recited in the claim. Appellants
assert that claim 1 recites that there is state logic and a processor (App. Br.
8). Appellants argue that “it is clear from both the plain meaning of ‘state
logic’ (emphasis added) as well as the specification (see Figure 3, State
Logic 305) that ‘state logic’ does not read on ‘software programs that run the
system.’” (App. Br. 9). Further, Appellants point out that even if it were
software it would reside on the PBA and not be separate from the processor.
(App. Br. 9, Reply Br. 7).
These arguments by Appellants have not persuaded us of error in the
Examiner’s rejection as they are not commensurate with the scope of claim
1. Claim 1 recites “state logic for detecting headers associated with the
Appeal 2008-0741
Application 10/610,149

5

packets; a processor for loading contexts responsive to the state logic
detecting the headers.” Thus, claim 1 does not recite that the state logic is
separate from the processor. Further, as identified by the Examiner on page
4 of the Answer, Appellants’ Specification only mentions the term “state
logic” in one location and does not provide a definition of what constitutes
state logic. However, Appellants’ originally filed Specification in paragraph
0025 identifies that header detection, the process claimed to be performed by
the ‘state logic,’ can be accomplished by a combination of hardware or
software executed on the processor. Accordingly, we find that the scope of
claim 1 includes that the state logic includes software, which necessarily is
run on the processor. Thus, we are not persuaded by Appellants’ arguments
that the Examiner’s rejection is in error as the reference does not teach the
separate elements of a processor and state logic, as we do not consider claim
1 to be so limited.
Appellants argue on pages 9 and 10 of the Brief that the Examiner’s
rejection is in error as Okamoto does not teach that the processor loads
contexts. Appellants argue on page 10 of the Brief that the Examiner’s
finding that Okamoto’s teaching of the processor loading the transport
stream data does not read on the claimed loading of contexts. Appellants
assert that the term “context” should be interpreted using the plain meaning
and proffers the following definition: “[t]he information needed to execute a
process including the contents of program counters, address and data
registers, and stack pointers.” (App. Br. 10). Thus, Appellants conclude
that the Examiner’s rejection is in error as Okamoto does not teach that the
transport stream includes such information as is associated with the term
“context.” (App. Br. 10, Reply Br. 8).
Appeal 2008-0741
Application 10/610,149

6

These arguments by Appellants have not persuaded us of error in the
Examiner’s determination, as they relate to an element of the claim which
defines nonfunctional descriptive material. Appellants admit that the term
“context” refers to information in the packet. Claim 1 does not recite any
functional relation between the context (information) and the system. Thus,
the argued difference between the prior art, Okamoto, and the claim lies in
the type of nonfunctional information loaded by the processor. As discussed
by our reviewing court, the Examiner does not need to give patentable
weight to nonfunctional descriptive material, as it “will not distinguish the
invention from the prior art in terms of patentability.” In Re Ngai, at 1339.
Accordingly, Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection, as the limitation argued to be missing from the prior
art recites nonfunctional descriptive material which will not distinguish the
claimed invention from Okamoto.
For the aforementioned reasons, Appellants’ arguments have not
persuaded us of error in the Examiner’s rejection of claim 1. Further,
Appellants’ arguments do not address dependent claims 3 through 5. Thus,
we consider Appellants’ arguments to have grouped dependent claims 3
through 5 together with independent claim 1 under C.F.R. § 41.37
(c)(1)(vii), and we affirm the Examiner’s rejection of these claims for the
reasons discussed with respect to claim 1.

Rejection of claim 2 under 35 U.S.C. § 102(e).
Appellants argue, on pages 11 through 15 of the Brief, that Okamoto
does not teach that the state logic interrupts the processor. Appellants argue
that the Examiner’s statement that the normal, storing routine of the
Appeal 2008-0741
Application 10/610,149

7

transport stream would temporarily interrupt all other transport streams
meets the claimed interruption is not supported by evidence of record.
The Examiner responds, on page 4 of the Answer, stating:
[O]ne of ordinary skill in the art may assume that when a header is
detected, the logic is set to the state 1. Otherwise, it is set to the state
0. Depending on the outcome, one of the 2 possible processes is
interrupted. For example, if no header is detected, the state logic of 0
may want to continue detection until a header is found. While doing
so, the subroutine for processing packets with headers is interrupted
until the next header is found.

Appellants’ arguments have persuaded us of error in the rejection of
claim 2. Claim 2 recites “where the state logic interrupts the processor,
responsive to detecting the headers.” Thus, the scope of the claim includes
that the processor is interrupted by the state logic. The Examiner has not
cited a teaching in Okamoto of an interrupt of the processor functions. The
scenario, described by the Examiner, is not taught by Okamoto. Further, the
Examiner’s scenario describes the flow through a conditional routine
operating on a processor, not the interruption of the processor. Accordingly,
we do not find that the Examiner has shown that Okamoto teaches all of the
limitations of claim 2, and we will not sustain the Examiner’s rejection of
claim 2.

Rejection of claims 9 and 11 through 13 under 35 U.S.C. § 102(e).
On page 15 of the Brief, Appellants argue that the Examiner’s
rejection of claim 9 is in error as Okamoto does not teach state logic for
detecting PES headers. Appellants argue that PES headers are understood
by the skilled artisan to be separate and distinct from the transport stream
Appeal 2008-0741
Application 10/610,149

8

headers taught by Okamoto. (App. Br. 16). Appellants assert that the PES
headers are within the payloads of transport stream packets. (Br. 16). In
making this assertion, Appellants rely upon a US Patent Application
Publication US 2004/0004560.
These arguments by Appellants have not persuaded us of error in the
Examiner’s rejection as they relate to an element of the claim which defines
nonfunctional descriptive material. Claim 9 recites “detecting PES headers”
and “loading contexts responsive to detecting the PES headers.” Appellants’
Specification identifies that PES stands for packetized elementary stream,
and the PES header identifies the beginning of the packet. Thus, we
construe the PES header to be a header that identifies the beginning of a
packet in a data stream, and the term PES is a title identifying the type of
data stream. While claim 9 does recite that the header is functionally related
to the step of loading contexts, this functionality is not related to the type of
data stream, rather that a header is detected. Thus, we consider the claim
limitation of PES to be a title for the type of header, and as the header type is
not functionally related to the method, we consider it to be nonfunctional
descriptive material. As discussed supra, the Examiner does not need to
give patentable weight to nonfunctional descriptive material, as it “will not
distinguish the invention from the prior art in terms of patentability.” In Re
Ngai, at 1339. Accordingly, Appellants’ arguments have not persuaded us
of error in the Examiner’s rejection, as the limitation argued to be missing
from the prior art recites nonfunctional descriptive material which will not
distinguish the claimed invention from Okamoto.
Appeal 2008-0741
Application 10/610,149

9

Appellants argue on pages 17 and 18 of the Brief that the Examiner’s
rejection of claim 9 is in error as Okamoto does not teach loading contexts in
response to detecting PES headers.
These arguments by Appellants have not persuaded us of error in the
Examiner’s rejection of claim 9. As discussed supra, with respect to claim
1, we consider the term “context” to refer to nonfunctional descriptive
material. As such, we find that differences between the claimed loading
“context” and Okamoto’s teaching of the processor loading the transport
stream data will not distinguish the claimed invention from Okamoto.
For the aforementioned reasons, Appellants’ arguments have not
persuaded us of error in the Examiner’s rejection of claim 9. Further,
Appellants’ arguments do not address dependent claims 11 through 13.
Thus, we consider Appellants’ arguments to have grouped dependent claims
11 through 13 together with independent claim 9 under C.F.R. § 41.37
(c)(1)(vii), and we affirm the Examiner’s rejection of these claims for the
reasons discussed with respect to claim 9.

Rejection of claim 10 under 35 U.S.C. § 102(e).
Appellants argue on pages 18 through 20 of the Brief that Okamoto
does not teach generating an interrupt responsive to detecting the PES
headers. Appellants’ argument is similar to that discussed with respect to
claim 2.
Appellants’ argument has persuaded us of error in the Examiner’s
rejection of claim 10. As discussed above with respect to claim 2, the
Examiner has not cited a teaching in Okamoto of an interrupt of the
processor functions, and we are not persuaded by the Examiner’s rationale
Appeal 2008-0741
Application 10/610,149

10

as to how Okamoto suggests such an interrupt. Accordingly, for the reasons
discussed supra with respect to claim 2, we will not sustain the Examiner’s
rejection of claim 10.

Rejection of claims 16, 17, and 18 under 35 U.S.C. § 102(e).
Appellants argue on pages 22 and 23 of the Brief that Okamoto does
not teach or suggest that the packets and the headers associated with the
packets are carried in the payload of a transport packet stream as recited in
claim 16. Appellants present similar arguments directed to claims 17 and 18
on pages 26, 27, 29, and 30 of the Brief.
Appellants’ arguments have persuaded us of error in the Examiner’s
rejection of claims 16, 17 and 18. Claim 16 recites “wherein the packets and
the headers associated with the packets are carried in at least one payload of
at least one transport stream packet.” Claims 17 and 18 recite similar
limitations. The Examiner, in the Answer, has not addressed Appellants’
arguments, and it is not clear from the Examiner’s statement of the rejection
what teachings of Okamoto that the Examiner considers to anticipate this
limitation. Accordingly, we do not consider the Examiner to have
established that Okamoto anticipates all of the limitations of claims 16, 17,
and 18, and we will not sustain the Examiner’s rejection of claims 16, 17,
and 18.

Provisional rejection under the judicially created doctrine of
obviousness-type double patenting.

Appellants have not presented arguments that the Examiner’s
provisional rejection of claims 1 through 5, 9 through 13, and 16 through 18
Appeal 2008-0741
Application 10/610,149

11

under the judicially created doctrine of obviousness-type double patenting is
in error. Thus we find no error in the rejection and affirm the Examiner’s
rejection pro forma.

CONCLUSION
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claims 1, 3 through 5, 9, and 11 through 13 under 35
U.S.C. § 102(e); however, they have persuaded us of error in the Examiner’s
rejection of claims 2, 10, and 16 through 18 under 35 U.S.C. § 102(e).
Further, Appellants have not persuaded us that the Examiner erred in
provisionally rejecting claims 1 through 5, 9 through 13, and 16 through 18
under the judicially created doctrine of obviousness-type double patenting.

ORDER
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

KIS

MCANDREWS HELD & MALLOY, LTD.
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661