Ex Parte Lohia

Board of Patent Appeals and Interferences

Aug 27, 2009

09436920 (B.P.A.I. Aug. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHRINIWAS LOHIA
____________

Appeal 2008-003680
Application 09/436,920
Technology Center 2400
____________

Decided: August 27, 2009
____________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
HOWARD B. BLANKENSHIP, and ST. JOHN COURTENAY III,
Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-26, which are all the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
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Invention
Appellant’s invention relates to data communication and a system for
communicating management information. (Abstract.)

Representative Claim
1. A system for communicating management information,
comprising:
a first interface card;
a second interface card; and
a management card coupled to the first interface card and the
second interface card, the management card operable to:
receive a command from a client, the command
identifying an interface card or a network device associated
with an interface card;
establish a communication link between the client and a
particular one of the first interface card and the second interface
card selected in response to the command communicated by the
client, wherein the communication link forms a complete path
that couples at least the client to at least the particular interface
card; and
communicate management information using the
communication link.

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Prior Art
Flood 4,937,777 Jun. 26, 1990
Schneider 6,304,895 B1 Oct. 16, 2001

Examiner’s Rejections
Claims 1, 7, 14, and 21 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1, 4-7, 10-14, 16, 18-21, 22, and 24-26 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Flood.1
Claims 2, 3, 8, 9, 15, 17, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Flood and Schneider.

Claim Groupings
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal with respect to the rejections over the prior art on the basis of
claims 1 and 22. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
(1) Has Appellant shown that the Examiner has not set forth a
prima facie case that the disclosure fails to support the language, “wherein
the communication link forms a complete path that couples at least the client
to at least the particular interface card[,] and communicate management
information using the communication link?”

1 The Flood patent issued more than one year prior to filing of the instant
application (Nov. 9, 1999), and is thus a reference under 35 U.S.C. § 102(b).
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(2) Has Appellant shown that Flood fails to describe a
communication link that forms a complete path and which couples a client
with an interface card?
(3) Has Appellant shown that Flood fails to teach a first interface
card coupled to a first network device that uses a first operating system and a
second interface card coupled to a second network device that uses a second
operating system?

FINDINGS OF FACT
Flood
Flood describes a programmable controller for operating a machine to
carry out programmed functions, which includes a plurality of program
processors. Abstract.
A programmable controller 10 (Fig. 1) is housed in a rack 12, which
includes slots to receive printed circuit board modules. The modules
communicate through backplane 11 (Fig. 2). Col. 4, ll. 12-21.
The rack 12 (Fig. 1) contains a system controller 16, program
execution processor modules 18, and remote input/output (I/O) scanner
modules 20. Id. at ll. 22-29.
Remote I/O scanner modules 20 interface the controller 10 to external
remote I/O racks 17 via serial I/O data links 15. Each remote I/O rack 17
contains local I/O modules 19 which are coupled to individual sensors and
actuators on the controlled equipment. Id. at ll. 33-39.
The system controller 16 connects through cable 25 to a programming
terminal (personal computer) 24, used to load user programs into the
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programmable controller, configure its operation, and monitor its
performance. The terminal 24 may be disconnected from the system
controller 16 if further monitoring is not required. Id. at ll. 50-61.
The system controller 16 may also connect via cable 26 to a local area
network 28, over which it may receive data and programming instructions,
as well as issue status information and report data to a host computer. A
central host computer or terminal may thus program and control a plurality
of programmable controllers on a factory floor. Id. at ll. 61-68; col. 6, ll. 11-
16.

PRINCIPLES OF LAW
Claim Interpretation
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). Our reviewing court
has repeatedly warned against confining the claims to specific embodiments
described in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323
(Fed. Cir. 2005) (en banc).
During prosecution before the USPTO, claims are to be given their
broadest reasonable interpretation, and the scope of a claim cannot be
narrowed by reading disclosed limitations into the claim. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989); In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). “An
essential purpose of patent examination is to fashion claims that are precise,
clear, correct, and unambiguous. Only in this way can uncertainties of claim
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scope be removed, as much as possible, during the administrative process.”
In re Zletz, 893 F.2d at 322.

Written Description
To comply with the “written description” requirement of 35 U.S.C.
§ 112, first paragraph, an applicant must convey with reasonable clarity to
those skilled in the art that, as of the filing date sought, he or she was in
possession of the invention. The invention is, for purposes of the “written
description” inquiry, whatever is now claimed. Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
One shows “possession” by descriptive means such as words,
structures, figures, diagrams, and formulas that fully set forth the claimed
invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997). The invention claimed does not have to be described in ipsis
verbis in order to satisfy the written description requirement. Union Oil Co.
v. Atlantic Richfield Co., 208 F.3d 989, 1000 (Fed. Cir. 2000).

ANALYSIS -- WRITTEN DESCRIPTION
Claims 1, 7, 14, and 21 are rejected under 35 U.S.C. § 112, first
paragraph. The Examiner finds that “wherein the communication link forms
a complete path that couples at least the client to at least the particular
interface card; and communication management information using the
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communication link” was not described in the Specification in such a way to
show possession at the time of invention.2 (Ans. 5.)
Appellant responds that the disclosure at “[p]age 9, [l]ines 24-27
(emphasis added)” states that “a communication link 22 comprises any
switched communication path that couples client 18 to an interface card 14
and communicates management information using any suitable
communication protocols, standards, and/or formats.” (App. Br. 18.) We do
not find these words at the indicated section, but we do find them at page 6,
lines 26 through 30 of the Specification.
Appellant also submits that Figure 1 supports a particular embodiment
of the language in controversy. “In particular FIGURE 1, illustrates a path
completed between client 18 and the interface card 14 on the far left side of
FIGURE 1.” (App. Br. 18.)
We reproduce the Examiner’s complete response, including
whitespace, to Appellant’s arguments. “Response to applicant’s argument is
as follows.

For the above reason, it is believed that the rejections should be
sustained.” (Ans. 16.)

2 Claims 1, 7, 14, and 21 are independent claims. Why the Examiner rejects
these claims, but not the dependent claims that incorporate the limitations of
the respective base claims, including the “wherein” clause for which the
independent claims are rejected, is unknown.
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The Examiner has thus not explained why the disclosure relied upon
by Appellant fails to support the aspect of the presently claimed invention
for which the claims are rejected under § 112, first paragraph. Although the
disclosure does not provide in haec verba support for the invention now
claimed, we conclude that the Examiner has not set forth a prima facie case
of unpatentability under § 112, first paragraph, for lack of written
description support.
We therefore do not sustain the § 112, first paragraph rejection of
claims 1, 7, 14, and 21.

ANALYSIS -- PRIOR ART
I. Appellant’s Contentions
Appellant submits that, in view of an earlier appeal in this application,
instant claim 1 has been amended to distinguish over the Flood reference. In
particular, the claimed “communication link” has been further limited by the
language “wherein the communication link forms a complete path that
couples at least the client to at least the particular interface card.” Appellant
submits that the recitation distinguishes over Flood, as “reasonably inferred”
from the Board’s discussion in the Response to Rehearing Request in the
earlier appeal. (App. Br. 20.)
With respect to Flood as applied against claim 1, Appellant submits
“at no point in time does the system of Flood establish all portions of a
‘communication link’ so as to form a ‘complete path.’” (Id.) Appellant
refers to material in Flood at column 7 indicating that Flood uses an
arbitration circuit 40 (Fig. 3) in the system controller such that transmitted
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data is temporarily stored in RAM 38. According to Appellant, only one
device may be transmitting data to and from RAM 38 at a time. “As a
result, no ‘communication link’ that forms a ‘complete path’ between
terminal 24 and execution processors 18 is ever established, despite any
indirect communication of information from terminal 24 to execution
processors 18.” (App. Br. 21.)
Appellant also submits that the combination of Flood and Schneider
does not teach (as recited in claim 22) “a first interface card coupled to a
first network device that uses a first operating system” and “a second
interface card coupled to a second network device that uses a second
operating system.” Appellant argues that this lack of teaching is
demonstrated by the reversal of claim 3 in the earlier appeal of the § 103(a)
rejection over Flood and Schneider, which contained substantially the same
limitations with regard to the interface cards and the respective operating
systems. (App. Br. 22-23.)

II. Earlier Appeal
In Appeal Number 2005-0521 in this application, the Board sustained
a § 102(e) rejection of claim 1 over Flood. Instant claim 1 differs from the
earlier version of claim 1 by the addition of the language “wherein the
communication link forms a complete path that couples at least the client to
at least the particular interface card.” (See Decision on Appeal 2005-0521
(May 24, 2005) at 2 and 6.)
In the earlier appeal, the Board did not sustain a § 103(a) rejection of
claims 3, 9, and 17 over Flood and Schneider.
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We will not sustain the examiner's rejection of claims 3,
9 and 17 for essentially the reasons argued by appellant in the
briefs. Specifically, the applied prior art makes no mention of
first and second operating systems and of configuring
management information for the operating system. The
examiner’s “finding” of different operating systems in Flood is
nothing more than speculation and has no support in the
reference. While we suspect that different devices can operate
under different operating systems, and that communicated
information must be configured based on the operating system,
we are not permitted to substitute our opinions or beliefs for
evidence lacking in the record. The examiner is required to
provide a clear evidentiary record to support the rejection of
each claim. The prior art applied in the examiner's rejection
simply does not provide the support needed to reject claims 3, 9
and 17.

(Dec. on Appeal 2005-0521 at 12-13.)
In view of the rejections that were sustained, Appellant filed a request
for rehearing that the earlier panel subsequently denied.
Appellant argues that there is no “communication link”
between terminal 24 and processing modules 18. Appellant
bases this argument on his position that terminal 24 and
program execution modules 18 cannot concurrently access
buses 31-33 of system controller 16. Thus, appellant argues
that Flood never establishes a communication link between
terminal 24 and processors 18. In other words, appellant’s
argument is apparently based on appellant’s view that a
“communication link” requires that the complete path from
terminal 24 to processors 18 must exist at the same time.

(Dec. on Request for Rehearing in Appeal 2005-0521 (Sep. 16, 2005) at 2
(emphasis added).)
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The earlier panel found that the meaning of “communication link” had
not been argued in the briefs, but addressed the bounds of the recitation in
the Rehearing. “We now find that the fact that data in Flood is sent from
terminal 24 to processors 18 is sufficient to meet the broadest reasonable
interpretation of the term ‘communication link.’” (Id. at 2-3.) “For purposes
of this decision, and based on the record of prosecution, we simply find that
a communication link exists between the terminal 24 and the processors 18
of Flood because information is transferred between them.” (Id. at 3.)

III. Claim 1-- § 102 over Flood
According to Appellant, Flood does not disclose a communication
link between the client and an interface card in which “the communication
link forms a complete path that couples at least the client to at least the
particular interface card.” However, Appellant acknowledges that the
language of the claim 1 “wherein” clause is not contained in the original
disclosure. (See App. Br. 18.) As also submitted by Appellant, the original
disclosure indicated that the communication link between the client and
interface should be interpreted broadly, as any switched communication path
that couples the client to an interface card. (See id.)
Appellant seems to have taken, from the Board’s discussion in the
Response to Rehearing Request in the earlier appeal, that the language the
“wherein” clause adds to claim 1 would distinguish over Flood. We find no
such indication in the Response, but discussion of how Appellant seemed to
be arguing alleged differences between claim 1 and Flood that were not
required by the language of the claim that was brought on appeal.
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We are not persuaded by Appellant’s argument that the Flood
apparatus forms no communication link within the meaning of a “complete
path” as claimed because transmitted data may be temporarily stored in
RAM 38 (Flood Fig. 3). Even in the particular embodiment of the invention
depicted in Appellant’s Figure 1, the “complete path” includes modem 30
and processor 54 (shown in Fig. 2, part of management card 12), each of
which would insert processing delays in the “complete path” of the
communication link. We do not see how the “wherein” clause of claim 1
can be considered to distinguish over the apparatus described by Flood,
under the broadest reasonable interpretation of the claim in view of the
Specification, especially since the “complete path” is described only by
example, as opposed to a careful definition set forth that would exclude
temporary storage of data in RAM. Even if the embodiment of instant
Figure 1 differed in substance from the communication link described by
Flood, we do not see why claim 1 should be limited to the details of that
particular embodiment. Our reviewing court has repeatedly warned against
confining the claims to specific embodiments described in the specification.
Phillips v. AWH Corp., 415 F.3d at 1323.
We are thus not persuaded of error in the § 102 rejection of claim 1
over Flood. We sustain the rejection of claim 1, and that of claims 2, 4-8,
10-16, and 18-21 which fall with claim 1.

IV. Claim 22 -- § 102 over Flood
We do not sustain the § 102 rejection of claim 22, nor that of claims
23 through 26 which incorporate the limitations of claim 22. Claims 22 and
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24 through 26 are nominally rejected under 35 U.S.C. § 102(e), but the
statement of the rejection in the Final Rejection and the Answer do not
appear to address the claims.
Claims 3, 9, and 17 are rejected under § 103(a) over Flood and
Schneider. However, claim 22 (and by reference dependent claims 23
through 26) recites limitations similar to those of claims 3, 9, and 17 with
respect to a first interface card coupled to a first network device that uses a
first operating system and a second interface card coupled to a second
network device that uses a second operating system.
In any event, the Examiner asserts that the limitations of claims 3, 9,
and 17 are taught by Flood (Ans. 10, 14-15), which was the Examiner’s
position on appeal in the earlier rejection of claims 3, 9, and 17. We do not
sustain the § 103(a) rejection of claims 3, 9, and 17 for the same reasons we
did not sustain the rejection in the earlier appeal (supra at 9-10).

CONCLUSIONS OF LAW
(1) Appellant has shown that the Examiner has not set forth a prima
facie case that the disclosure fails to support the language, “wherein the
communication link forms a complete path that couples at least the client to
at least the particular interface card[,] and communicate management
information using the communication link.”
(2) Appellant has not shown that Flood fails to describe a
communication link that forms a complete path and which couples a client
with an interface card.
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(3) Appellant has shown that Flood fails to teach a first interface
card coupled to a first network device thus uses a first operating system and
a second interface card coupled to a second network device that uses a
second operating system.

DECISION
The rejection of claims 1, 7, 14, and 21 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
reversed.
The rejection of claims 1, 4-7, 10-14, 16, 18-21, 22, and 24-26 under
35 U.S.C. § 102(e) as being anticipated by Flood is affirmed with respect to
claims 1, 4-7, 10-14, 16, and 18-21 but reversed with respect to claims 22
and 24-26.
The rejection of claims 2, 3, 8, 9, 15, 17, and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over Flood and Schneider is affirmed with
respect to claims 2, 8, and 15 but reversed with respect to claims 3, 9, 17,
and 23.
The Examiner’s decision is thus affirmed with respect to claims 1, 2,
4-8, 10-16, and 18-21 but reversed with respect to claims 3, 9, 17, and 22-
26.
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-IN-PART

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