Ex Parte JOHANSSON et al

Board of Patent Appeals and Interferences

Jun 29, 2011

11834731 (B.P.A.I. Jun. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SIXTEN JOHANSSON and ANTTI KANKKUNEN
____________

Appeal 2009-010161
Application 11/834,731
Technology Center 2100
____________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and DENISE M.
POTHIER, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part. We also enter new grounds of rejection under 37 C.F.R.
§ 41.50(b).

STATEMENT OF THE CASE
Appellants’ invention relates to a method for detecting a fault and
performing a switch-over in real time. See generally Spec. 4. Claim 1 is
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reproduced below with the key disputed limitations emphasized:
1. A method for detecting a connection fault and accordingly
performing a switch-over in data communication in accordance with a
set of rules based on Operation and Maintenance data communication
principles, wherein,
an interval for sending connectivity verification data information in
the data communication is such that a real time based data
communication is achievable,
the interval makes a fault detection from the connection fault in the
data communication to occur in less than 200 milliseconds.

The Examiner relies on the following as evidence of unpatentability:
Hamami US 6,222,820 B1 Apr. 24, 2001
Sasagawa US 6,771,645 B1 Aug. 3, 2004
(filed May 25, 2000)

THE REJECTIONS
1. The Examiner rejected claims 1 and 4-15 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Ans. 4-5.1
2. The Examiner rejected claims 1-7, 9, and 12-15 under 35 U.S.C.
§ 103(a) as unpatentable over Hamami and Official Notice. Ans. 5-12.
3. The Examiner rejected claims 8, 10, and 11 under 35 U.S.C.
§ 103(a) as unpatentable over Hamami, Official Notice, and Sasagawa.
Ans. 12.

1 Throughout this opinion, we refer to (1) the Appeal Brief filed November
21, 2008; (2) the Examiner’s Answer mailed January 21, 2009; and (3) the
Reply Brief filed March 20, 2009.
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THE WRITTEN DESCRIPTION REJECTION
Independent claims 1 and 15 recite “in less than 200 milliseconds,”
and independent claim 14 recites “within 200 ms[.]” The Examiner finds
that the range greater than 50 ms but less than 200 ms is not found in the
disclosure. Ans. 4-5, 13. For this reason, the Examiner finds that
Appellants lacked possession of the claimed invention. Ans. 4-5. Citing to
In re Wertheim, 541 F.2d 257 (CCPA 1976), Appellants argue that they are
in possession of the claimed invention. App. Br. 7; Reply Br. 4-5.

ISSUE
Under § 112, first paragraph, has the Examiner erred in rejecting
claim 1 by finding the disclosure fails to convey with reasonable clarity to an
ordinarily skilled artisan that the Appellants were in possession of the
claimed invention of “in less than 200 milliseconds” as of the filing date?

FINDINGS OF FACT (FF)
1. Originally-filed claims 1 and 15 include a recitation to “in less
than 200 milliseconds,” and originally-filed claim 14 includes a recitation to
“within 200 ms.” Spec. 23, 26, 27.

ANALYSIS
Based on the record before us, we find error in the Examiner’s written
description rejection of independent claim 1. Original claim 1 includes a
limitation to less than 200 ms. See FF 1. “[M]any original claims will
satisfy the written description requirement . . . .” Ariad Pharm., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010) (en banc). Also, the
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Manual of Patent Examining Procedure (MPEP) § 2163(I) & (I)(A), Rev. 6,
Sept. 2007, citing to Wertheim, 541 F.2d at 263, states written description
may be satisfied by the original claims, and that there is a strong
presumption an adequate written description of the claimed invention is
present when filed. Claim 1 is no exception.
While certain claims may not satisfy the written description
requirement, Ariad’s examples include original claims reciting generic
claims that cover a vast genus of chemical compounds, and yet questions
remain whether the disclosure demonstrates that an applicant invented
species sufficient to support a claim to a genus. See Ariad, 598 F.3d at 1349.
We do not find that claim 1 falls into this category of original claims. Nor
has the Examiner demonstrated that an ordinarily skilled artisan would not
have recognized in the present disclosure a description of the “in less than
200 milliseconds” defined by claim 1. See Wertheim, 541 F.2d at 263. We
therefore find that the disclosure conveys with reasonable clarity to an
ordinarily skilled artisan that Appellants were in possession of the claimed
200 ms recitation as of the filing date.
For the foregoing reasons, Appellants have persuaded us of error in
the written description rejection of: (1) independent claim 1; (2) independent
claims 14 and 15 which recite commensurate or similar limitations (see FF
1); and (3) dependent claims 4-13 for similar reasons.

THE OBVIOUSNESS REJECTION OVER HAMAMI AND OFFICIAL NOTICE
Claims 1, 4-7, 9, and 12-15
Regarding representative independent claim 1, the Examiner finds that
Hamami teaches the recited interval that makes a fault detection occur in
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less than 200 milliseconds. Ans. 5. Specifically, the Examiner states that
the total switchover time, which is at most a few tens of milliseconds,
includes this fault detection time or interval. See Ans. 15.
Appellants argue Hamami does not teach any interval for a fault
detection, and that the Examiner confuses fault detection with the disclosed
switchover time and techniques. App. Br. 13; Reply Br. 5-6.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Hamami would have taught or suggested an interval that makes a fault
detection from the connection fault in the data communication occur in less
than 200 ms?

ADDITIONAL FINDINGS OF FACT
2. Hamami discloses a method of providing redundancy in an
Asynchronous Transfer Mode (ATM) network. The method has a quick,
fast fault detection and subsequent fast switchover traffic to the redundant
path. Hamami, col. 1, ll. 6-10; col. 2, ll. 51-53.
3. Hamami states the failure detection method includes using F5 end
to end loopback Operations, Administration and Maintenance (OAM) cells
to detect failure on the primary path. Upon not receiving the OAM F5 cells
back (i.e., a failure is detected at step 102), the originator of the redundant
virtual circuit (VC) switches the traffic to the redundant VC connection
(VCC) at step 104. Hamami, col. 9, ll. 43-65; Fig. 7.
4. Hamami states “[t]he switchover time is defined by the rate of
transmission of the F5 cells, the round trip delay for the F5 cells, the time to
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detect the absence of the cells and the actual switching of the traffic from the
primary to the redundant VCC.” Hamami, col. 9, l. 66 – col. 10, l. 2.
5. Hamami teaches the estimated “total time for switchover should
be in the range of a few milliseconds to at most a few tens of milliseconds.”
Hamami, col. 10, ll. 3-5.
6. Hamami teaches that any suitable method of switching from the
primary to the redundant connection can be used. Hamami, col. 10,
ll. 10-17.

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of independent claim 1, which recites, in pertinent
part, an interval that makes a fault detection from the connection fault in the
data communication occur in less than 200 ms. Hamami’s language is
somewhat confusing. Hamami distinguishes the fault detection method that
uses the F5 cells (FF 3) from the actual switching of the traffic from the
primary to the redundant connection (FF 3, 6). Yet, Hamami defines the
“switchover time” to include the transmission rate of the F5 cells, the round
trip delay of the F5 cells, and the time to detect the absence of the F5 cells.
See FF 4; see also Ans. 5 (quoting this language). These components of the
defined switchover time (see FF 4) are all parts of the failure or fault
detection method that detects when a failure or fault occurs on a primary
path (e.g., a connection fault in the data communication). See FF 3. Thus,
as the Examiner explains (Ans. 15), the switchover time includes the recited
interval that makes a fault detection from the connection fault in the data
communication occur as recited.
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Additionally, Hamami teaches that the total “switchover” should be
in the range of a few milliseconds to few tens of milliseconds. FF 5.
Because this switchover time includes the interval that detects when a fault
occurs from the connection fault in the data communication, as explained
above, an ordinarily skilled artisan would have recognized that the fault
detection portion of Hamami’s “switchover time,” as defined by Hamami
(see FF 4), would be less than the total switchover (i.e., a few to a few tens
of ms). Hamami also teaches the fault detection is quick and fast. FF 2. We
therefore agree with the Examiner that Hamami teaches or suggests an
interval that detects when a fault from the connection fault in the data
communication occurs is less than 200 milliseconds as recited in claim 1.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of: (1) independent claim 1; (2) independent claims 14 and
15, which recite commensurate limitations; and (3) dependent claims 4-7, 9,
12, and 13 for similar reasons.

Claims 2 and 3
Regarding independent claim 2, the Examiner finds that Hamami does
not disclose the interval for sending connectivity verification (CV) data
information that comprises one CV packet per 10 milliseconds. Ans. 7-8.
The Examiner takes Official Notice of a 10 ms heartbeat. Ans. 7.
Additionally, the Examiner states that heartbeats (intervals) are well known
for monitoring failure in an OAM environment, and that an ordinarily skilled
artisan would have recognized in a relatively short recovery period system,
like Hamami’s, that a 10 ms heartbeat is an obvious interval. See Ans. 7-8,
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16-17. The Examiner also states the particular value of the interval is a
matter of design and provides no technological innovation. Ans. 8.
Appellants argue Hamami does not teach the recited CV packet rate
for sending connectivity verification. App. Br. 15-16.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 2 by finding
that Hamami and Official Notice collectively would have taught or
suggested an interval for sending CV data information that comprises one
CV packet per 10 ms?

ANALYSIS
Based on the record before us, we find error in the Examiner’s
obviousness rejection of independent claim 2, which recites an interval for
sending CV data information that comprises one CV packet per 10 ms. As
discussed above, Hamami teaches the switchover time includes the
transmission rate of the F5 cells or an interval for sending CV data
information that comprises a CV packet. See FF 4. Hamami further teaches
the total switchover time ranges from few to a few tens of milliseconds. See
FF 5. However, Hamami fails to discuss the time spent for each component
of the defined switchover time, including the specific time used to transmit
the F5 cells or the F5 cells transmission rate (e.g., an interval for a CV
packet). See FF 3-5. Thus, other than deducing that the interval for one CV
packet must be less than the total time (i.e., a few to a few tens of ms),
Hamami does not provide an ordinarily skilled artisan with any guidance
regarding the specific time interval for one CV packet, as recited in claim 2.
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We therefore find, contrary to the Examiner’s position (see Ans. 7-8), that a
system that uses an interval having a CV packet per 10 ms in an OAM
environment is not well known based on Hamami.
Regarding the Examiner’s taking of Official Notice, we do not find
that a 10 millisecond heartbeat or interval is capable of instant and
unquestionable demonstration as being well known. See In re Ahlert, 424
F.2d 1088, 1091 (CCPA 1970). In fact, Appellants have disclosed a
standard solution of sending a CV packet in an OAM environment of one
second per packet. See Spec. 2:15 – 3:3. Moreover, the Examiner’s
assertion that any particular value within Hamami’s total switchover time
range would have been an obvious matter of design choice (Ans. 8) for an
ordinarily skilled artisan is unsupported by the record. That is, the Examiner
has not articulated a reason with some rational underpinning to support a
conclusion that Hamami’s disclosed total switchover time teaches or
suggests the CV packet interval (i.e., one of four time components in the
total switchover time) can be any particular value in the total disclosed time,
including 10 milliseconds. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Claim 3 is similar in scope, reciting the interval comprises one CV
packet per 15 milliseconds. We will not sustain this rejection for the same
reasons and refer to our previous discussion.
For the foregoing reasons, Appellants have persuaded us of error in
the rejection of independent claims 2 and 3.

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THE OBVIOUSNESS REJECTION OVER HAMAMI, OFFICIAL NOTICE, AND
SASAGAWA

Representative claim 8 depends from claim 1. For this claim,
Appellants refer to the arguments made for claim 1. App. Br. 16-17. We are
not persuaded for the above reasons and need not address whether Sasagawa
cures the purported missing limitation (see App. Br. 17). For the foregoing
reasons, Appellants have not persuaded us of error in the rejection of claim 8
and claims 10 and 11 which are not argued with particularity
(App. Br. 16-17).

New Ground of Rejection Under 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter new grounds of rejection under
(1) 35 U.S.C. § 112, second paragraph for claims 1-13, as being indefinite,
and (2) 35 U.S.C. § 101 for claims 1-3, as being directed to non-statutory
subject matter.

Indefiniteness
Claim 1 does not particularly point or distinctly claim the subject
matter that the Appellants regard as their invention. See 35 U.S.C. § 112,
second paragraph. Claim 1 recites in the preamble a method “for detecting a
connection fault and accordingly performing a switch-over in the data
communication . . . .” This preamble, however, is merely descriptive and
does not limit the claim because it does not recite any essential structure or
steps and is not necessarily to give meaning to the claim. Am. Med. Sys.,
Inc. v. Biolitec, 618 F.3d 1354, 1358 (Fed. Cir. 2010) (internal citations
omitted). Additionally, the limitation is merely functional, requiring only
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the ability to perform the function, and does not actually recite an active step
of performing detection or a switchover. See In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997).
Claim 1’s body also recites two limitations to “an interval” or time.
The first interval limitation is “an interval for sending connectivity
verification data information in the data communication is such that a real
time based data communication is achievable.” (emphasis added). As with
the preamble, this is a functional recitation and does not recite an active step
of sending information. See Schreiber, 128 F.3d at 1478. The second
interval recitation, “the interval makes a fault detection from the connection
fault in the data communication to occur in less than 200 milliseconds”
(emphasis added) also does not recite an active step of detecting the fault,
but rather only defines the interval that makes a fault detection occur within
a given time. Also, as time or a time interval does not detect the fault but
only defines the time for detecting the fault, the claim does not recite who or
what sends the CV data information or detects the fault.
The Specification also does not assist in understanding the metes and
the bounds of the method being claimed. Boxes (e.g., 412, 414) show and
describe the fault detection and switch-over steps (see Spec. 19:18-21; Fig.
4), while the CV data information is sent and decided at previous steps or
boxes (e.g., 402, 404, 406, 408, 410; Spec. 18:19-20; 19:11-17; 20:1-5; Fig.
4). As there are no active method steps in claim 1 and the disclosure does
not assist in understanding what is being claimed, we conclude that an
ordinarily skilled artisan would not be able to discern the boundaries of
claim 1, and therefore would be unable to determine what the scope of the
recited method for detecting a connection fault and performing a switch-over
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in data communications is. See Orthokinetics, Inc. v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted).
Dependent claims 4-13 are indefinite for the same reasons.
Claims 2 and 3 include the same preamble as claim 1 and a limitation
to an interval for sending CV data information in the data communication.
Claims 2 and 3 also further define the interval. Claims 2 and 3 are indefinite
for similar reasons to those explained above for claim 1, and we refer to the
above discussion.

Non-Statutory Subject Matter
Claims 1-3 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Under § 101, there are four categories of
statutory subject matter: processes, machines, manufactures, and
compositions of matter. See In re Bilski, 130 S.Ct. 3218, 3225 (2010)
(internal citation omitted). While claims 1-3 recite a “method” or process,
there are no active method steps -- only functional recitations and a time
interval -- as discussed above in connection with the indefiniteness rejection.
Statutory process claims “require action.” See In re Nuijten, 500 F.3d 1346,
1355 (Fed. Cir. 2007).
Also, a time interval is not directed to a composition of matter or a
composition “of two or more substances” or “composite articles” that are the
result “of chemical union, or of mechanical mixture . . . whether they be
gases, fluids, powders or solids.” See id. at 1357 (internal citations omitted).
A time interval is not a machine or “a ‘concrete thing, consisting of parts, or
of certain devices and combinations of devices’” See In re Ferguson, 558
F.3d 1359, 1364 (Fed. Cir. 2009) (quoting Nuijten, 500 F.3d at 1355).
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Additionally, a time interval is not a manufacture or an article or commodity
produced for use from materials that are given “new forms, qualities,
properties, or combinations, whether by hand-labor or by machinery.” See
Nuijten, 500 F.3d at 1356 (internal citations omitted).
Rather, the recited time interval defines the period for achieving
real-time based data communications and detecting a fault. Thus, we
conclude that the recited time interval is both a phenomena of nature and an
abstract intellectual concept. “Phenomena of nature, though just discovered,
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work.” Ferguson, 558
F.3d at 1363 (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
Additionally, claim 1 is not tied to a particular machine and does not
transform an article into a different state or thing. See Bilski, 130 S.Ct. at
3226-27 (noting the machine-or-transformation test is a useful tool for
determining whether claimed inventions are processes under § 101). Claim
1 merely recites a time interval that makes real-time based data
communication achievable and makes a fault detection to occur in less than
200 milliseconds.
Claims 2 and 3 include similar time interval limitations and are
equally non-statutory for reasons similar to those explained above in
connection with claim 1.
Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does
not mean the remaining claims are patentable under 35 U.S.C. § 101.
Rather, we merely leave the patentability determination of these claims to
the Examiner. See MPEP § 1213.02.
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CONCLUSION
Under § 112, first paragraph, the Examiner erred in rejecting claims 1
and 4-15.
Under § 103, the Examiner did not err in rejecting claims 1 and 4-15,
but erred in rejecting claims 2 and 3.
Claims 1-13 are rejected under 35 U.S.C. § 112, second paragraph.
Claims 1-3 are rejected under 35 U.S.C. § 101.

DECISION
The Examiner’s decision rejecting claims 1-15 is affirmed-in-part.
New grounds of rejection under 37 C.F.R. § 41.50(b) for claims 1-13
have been entered.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, 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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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

msc