Ex Parte Kamath et al

Patent Trial and Appeal Board

Dec 19, 2013

11748412 (P.T.A.B. Dec. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SANJAY KAMATH, MICHAEL A. KONGELF, and
LEIF WOODAHL
____________

Appeal 2011-003505
Application 11/748,412
Technology Center 2400
____________

Before ELENI MANTIS-MERCADER, BRUCE R. WINSOR,
and JENNIFER M. MEYER, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-37, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).

1 The real party in interest is QUALCOMM Incorporated. App. Br. 2.
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We affirm-in-part and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b) (2011).

STATEMENT OF THE CASE
Appellants’ disclosure “relates to the field of wireless communication
systems, and more specifically to flow control between a base station
controller and a base transceiver station.” Spec. ¶ [1001].
Claim 1, which is illustrative, reads as follows:
1. A method by a communication apparatus,
comprising:
incrementing a flow indication counter indicating an
updated number of data packets transmitted from a buffer;
determining a window size of said buffer when said
updated number of data packets transmitted from said buffer is
equa1 to or greater than a threshold number; and
generating a flow indication message, said flow
indication message indicating said window size.

Claim 1 stands rejected under the judicially-created doctrine of
obviousness type double patenting over U.S. Patent 7,237,007 B2. Ans. 9-
10.
Claims 1-37 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Waclawsky (US 5,197,127; Mar. 23, 1993) and Barzilai (US 5,063,562;
Nov. 5, 1991). Ans. 4-9.
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed Sept. 10, 2010; “Reply Br.” filed Dec. 6, 2010) and the Answer
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(“Ans.” mailed Oct. 19, 2010)2 for the respective positions of Appellants and
the Examiner. Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).

NON-STATUTORY DOUBLE PATENTING
Appellants do not traverse the non-statutory obviousness type double
patenting rejection. Appellants state that “‘[u]pon allowance of all art-based
rejected claims in the application, should the Examiner still maintain the
rejection, Applicants will file a terminal disclaimer pursuant to 37 C.F.R.
§1.321(c).’” Reply Br. 5 (quoting Office Action Response filed Jan. 18,
2010). Accordingly, Appellants have waived appeal of the obviousness type
double patenting rejection of claim 1 and we summarily sustain the
rejection.

REJECTION OVER WACLAWSKY AND BARZILAI
ISSUE
The dispositive issue presented by Appellants’ contentions3 is follows:
Did the Examiner err in finding that the combination of Waclawsky and
Barzilai teaches or suggests “determining a window size of [a] buffer when

2 We have not considered the Examiner’s Answer mailed October 6, 2010,
as it is deemed to have been superseded by the Answer mailed October 19,
2010.
3 Appellants’ contentions present additional issues. However, as the
identified issue is dispositive of the rejection before us, we do not reach the
additional issues.
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[an] updated number of data packets transmitted from said buffer is equa1 to
or greater than a threshold number,” (herein the “determining limitation”) as
recited in claim 1?

ANALYSIS
The Examiner finds that Waclawsky teaches the determining
limitation. Ans. 4 (citing Waclawsky, col. 4, ll. 2-5); see also Ans. 11
(citing Waclawsky, col. 4, ll. 23-31). The Examiner finds that Waclawsky
fails to disclose how the window size is calculated, and finds that Barzilai
teaches calculating a window size. Ans. 5 (citing Barzilai, col. 4. ll. 21-39).
Appellants contend that “[a]lthough Waclawsky et al. does adjust the
‘window size’ of a transmission interval, this is entirely different from
determining the ‘window size’ of the buffer, as claimed.” App. Br. 12-13.
We agree with Appellants.
We give the claim 1 its broadest reasonable interpretation in light of
the Specification, In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997),
without importing limitations into the claims from the Specification, In re
Am. Acad. of Science Tech. Ctr., 367 F.3d. 1359, 1369 (Fed. Cir. 2004).
Claim 1, on its face, recites that the window size is a characteristic of the
buffer, not of the transmission of packets from the buffer. The Specification
states “[g]enerally, flow control mechanisms are based on the BTS [(Base
Transceiver Station)] advertising to the BSC [(Base Station Controller)] the
amount of space, or ‘window’, available at the buffer for receiving more
data in order for the BSC to determine how much data to transmit to the
BTS.” Spec. ¶ [1005]. “[F]low control module 120 also monitors the
window size of buffer 118, which is the amount of unoccupied space
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available at buffer 118 for receiving more data from BSC 122.” Spec.
¶ [1023]. We conclude, based on the language of claim 1, in light of the
Specification, that the broadest reasonable interpretation of the “window size
of [the] buffer” is the amount of unoccupied space at the buffer that is
available for receiving more data.
We further conclude, in light of the Specification (see, e.g., Spec.
¶ [1023]), that the broadest reasonable interpretation of the gerund
“determining” is “find[ing] out . . . by investigation, reasoning, or
calculation” (MERRIAM WEBSTER’S COLLEGIATE DICTIONARY 315 (10th ed.
1999) (“determine” definition 4)) rather than “bring[ing] about as a result”
(id. (definition 2 b)).
Neither of the passages relied on by the Examiner teach or suggest
determining (i.e., finding out) the amount of unoccupied space in the buffer
when a number of data packets transmitted from said buffer is equa1 to or
greater than a threshold number. Waclawsky teaches (Waclawsky, col, 3, l.
65—col. 4, l. 5) that if the number of accumulated packages exceeds a
congestion threshold, a congestion bit can be set, from which it can be
inferred that the amount of unoccupied space has dropped below a certain
value (see Ans. 11). However, the Examiner has not established that the
cited passages of Waclawsky teach determining the amount of unoccupied
space. In other words, Waclawsky teaches that if it is determined that the
amount of unoccupied space in the buffer is below a certain threshold, a
congestion bit can be set. Accordingly, we agree with the Examiner that
Waclawsky teaches determining the amount of unoccupied space in the
buffer, i.e, a window size of the buffer.
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However, as pointed out by Appellants (Reply Br. 4), the Examiner
has not identified any teaching in Waclawsky that the window size of the
buffer is determined based on the number of data packets transmitted from
the buffer, i.e., when the number of transmitted data packets exceeds a
threshold number..
For emphasis we note that the passages of Barzilai relied on by the
Examiner (see Ans. 5) to teach a method of determining a window size
(Barzilai, col. 4, ll. 21-39), similarly relate to a window for the transmission
of packets (see Barzilai, col. 4, ll. 5-20), and not to a window of a buffer.
On this record, Appellants have persuaded us of error in the rejection
of claim 1. Accordingly, we do not sustain the rejection under § 103(a) of
(a) claim 1; (2) independent claims 10, 19, 25, and 30, which include
limitations substantially the same as the determining limitation of claim 1;
and (3) claims 2-9, 11-18, 20-24, and 31-37, which depend, directly or
indirectly, from claim 1, 10, 19, 25, or 30.

NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Claims 30-37 are rejected on a new ground of rejection under 35
U.S.C. § 101 as directed to non-statutory subject matter.
Our reviewing court has found that transitory, propagating signals are
not within any of the four statutory categories. Therefore, a claim directed
to a computer readable medium embodied in a signal is not statutory under
35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007); see
also Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential).
“A transitory propagating signal . . . is not a ‘process, machine, manufacture,
or composition of matter.’ [These] four categories define the explicit scope
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and reach of subject matter patentable under 35 U.S.C § 101; thus, such a
signal cannot be patentable subject matter.” Nuijten, 500 F.3d at 1357.
According to U.S. Patent & Trademark Office (USPTO) guidelines:
The broadest reasonable interpretation of a claim drawn to a
computer readablle [sic] medium . . . typically covers forms of
non-transitory tangible media and transitory propagating signals
per se in view of the ordinary and customary meaning of
computer readable media . . . . When the broadest reasonable
interpretation of a claim covers a signal per se, the claim must
be rejected under 35 U.S.C. § 101 as covering non-statutory
subject matter.
David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (“OG Notice”) (citation
omitted); see also Mewherter, 107 USPQ2d at 1862 (“those of ordinary skill
in the art would understand the claim term ‘machine-readable[4] storage
medium’ would include signals per se.”). Moreover, “[a] claim that covers
both statutory and non-statutory embodiments . . . embraces subject matter
that is not eligible for patent protection and therefore is directed to non-
statutory subject matter,” MPEP § 2106(I) (8th ed. 2001, rev. 2012) (citation
omitted) (emphasis added). Cf. In re Lintner, 458 F.2d 1013, 1015 (CCPA
1972).
Claim 30 recites “[a] computer readable medium embodied with a
computer program, said computer program comprising: a first code segment
. . .; a second code segment . . .; and a third code segment . . . .” Claims 31-
37 depend, directly or indirectly, from claim 30 and, therefore, incorporate
the recited language of claim 30. Appellants’ Specification (see Spec. ¶
[1051]) identifies several examples of a “computer readable medium,”

4 We note that “machine-readable” and “computer readable” are equivalent
terms. See Mewherter, 107 USPQ2d at 1859 n.2.
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which may be statutory, but does not provide a narrowed definition of
“computer readable medium.” Indeed, the Specification expressly states
that, in addition to the identified examples, a “computer readable medium”
may be “any other form of computer readable medium known in the art” (id.
(emphasis added)). We conclude that nothing in the Specification or the
claims precludes the “computer readable medium” from encompassing a
transitory signal. Accordingly, giving the phrase its broadest reasonable
interpretation in light of the Specification, see In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997), we construe the recited “computer readable medium”
to encompass a transitory signal and, therefore, to be directed to non-
statutory subject matter.
We note that Appellants are not precluded from amending claims 30-
37 to overcome this rejection. Guidance is provided in the OG Notice (“A
claim drawn to such a computer readable medium that covers both transitory
and non-transitory embodiments may be amended to narrow the claim to
cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101
by adding the limitation ‘non-transitory’ to the claim.”).

ORDER
The decision of the Examiner to reject claim 1 for non-statutory
double patenting is summarily affirmed.
The decision of the Examiner to reject claims 2-37 is reversed.
We enter a new ground of rejection for claims 30-37 under 35 U.S.C.
§ 101.
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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
Section 41.50(b) also provides that 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.
37 C.F.R. § 41.50(b).
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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