Ex Parte Mathews

Board of Patent Appeals and Interferences

Jun 9, 2011

10359878 (B.P.A.I. Jun. 9, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/359,878 02/07/2003 Greg Mathews RSTN-044 8768
96916 7590 06/10/2011
Wilson Ham & Holman
1811 Santa Rita Road, Ste. 130
Pleasanton, CA 94566
EXAMINER
SHIN, KYUNG H
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
06/10/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte GREG MATHEWS
_____________

Appeal 2009-009152
Application 10/359,878
Technology Center 2400
______________

Before, ROBERT E. NAPPI, MARC S. HOFF, and
DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-5, 7-11, 13-26, 28-29, and 31.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part the Examiner’s rejection of these claims.

1 Claims 6, 12, 27, and 30 were previously cancelled. Claims 3, 4, 5, 7, 10,
11, 13, 14, 17, 21, 24, and 29 have been indicated by the Examiner as
containing allowable subject matter. Ans. 16.
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INVENTION
The invention is directed to a method and system for forwarding cell-
based traffic while maximizing fabric throughput and providing priority
biasing. The method and system contain compound arbitration that includes
a priority-biased arbitration stage and then a throughput-biased arbitration
stage which ultimately allows fair priority-bias arbitration. See Spec: 1-4.
Claim 1 is representative of the invention and is reproduced below:
1. A method of determining how to forward cells from ingress
queues to a switch fabric, comprising:
determining which cells are to be forwarded from ingress
queues to exit first-in-first-out queues (FIFOs) in accordance
with a priority-biased arbitration stage;
determining which cells are to be forwarded from said exit
FIFOs to a switch fabric in accordance with a throughput-
biased arbitration stage;
forwarding first cells from an ingress queue of said ingress
queues to a first exit FIFO of said exit FIFOs;
forwarding second cells from said ingress queue to a second
exit FIFO of said exit FIFOs;
excluding said second exit FIFO from said throughput-biased
arbitration until said second cells are sent from said first exit
FIFO.

REFERENCES
Williams US 2002/0087723 A1 Jul. 4, 2002

Wynne US 2003/0016686 A1 Jan. 23, 2003

Basu US 7,073,005 B1 Jul. 4, 2006
(filed Mar. 8, 2002)

REJECTIONS AT ISSUE
Claims 1, 8, 9, 18, 19, 21, and 31 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by Williams. Ans. 3-7.
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Claims 2 and 22-24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Williams in view of Wynne. Ans. 7-10.
Claims 15, 17, 20, 25, 26, and 28 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Williams in view of Basu. Ans. 10-15.
Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Williams in view of Basu and Wynne. Ans. 15-16.

ISSUE
Claims 1, 8, 9, 18, 19, 21, and 31
Appellant argues on pages 7-11 of the Appeal Brief and pages 4-8 of
the Reply Brief that the Examiner’s rejection of claims 1, 8, 9, 18, 19, 21,
and 31 is in error, because “Williams does not disclose excluding a second
exit FIFO from throughput-biased arbitration,” as recited in independent
claim 1. App. Br. 8.
Thus, with respect to claims 1, 8, 9, 18, 19-21, and 31, Appellant’s
contention presents the issue: Did the Examiner err in finding that Williams
discloses excluding exit FIFOs from throughput-biased arbitration?

Claims 2, 15, 16, 17, 20, and 22-24
Appellant argues on pages 12 and 13 of the Appeal Brief and pages 8
and 9 of the Reply Brief that the Examiner’s rejection of claims 2, 15, 17,
20, and 22-24 is in error. Appellant argues that the claims are allowable
based on their dependency from claim 1. App. Br. 12 and 13; Reply Br. 8
and 9.
Thus, Appellant’s contentions present the same issue as presented
with respect to claim 1.
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Claims 25, 26, and 28
Appellant argues on page 12 of the Appeal Brief and pages 8-9 of the
Reply Brief that the Examiner’s rejection of claims 25, 26, and 28 is in error.
Appellant presents the same arguments with respect to claims 25, 26, and 28
as with respect to claim 1.
Thus, Appellant’s contentions present the same issue as presented
with respect to claim 1.

ANALYSIS
Claims 1, 8, 9, 18, 19, 21, and 31 and Claims 2, 15, 16, 17, 20, and 22-24
Appellant argues with respect to independent claim 1 that “Williams
does not disclose excluding a second exit FIFO from throughput-biased
arbitration.” App. Br. 8.
When reviewing all of claim 1, we note that the claimed method
forwards first cells to a first exit FIFO and second cells to a second exit
FIFO. Additionally, the claim requires excluding the second exit FIFO from
throughput-biased arbitration until the second cells are sent from the first
exit FIFO. Thus, ambiguity in this claim arises because there is nothing in
the claim that requires the second cells to be sent to the first exit FIFO.
Appellant indicates that paragraph [0038] on page 4 of the Specification
(App. Br. 5) discloses the portion of the claim that is ambiguous. However,
neither page 4 of the Specification nor paragraph [0038] clarifies the
ambiguity. Additionally, we do not find anywhere in the Specification or
claims as originally filed that clarifies the ambiguity. As a result, we find
that the limitation “excluding said second exit FIFO from said throughput-
biased arbitration” is ambiguous and inconsistent with the Specification
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especially since the exclusion occurs “until said second cells are sent from
said first exit FIFO.” See In re Cohn, 438 F.2d 989, 993 (CCPA 1971);
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed
Cir. 1986). Claims 2-5, 8-11, and 13-24 depend from claim 1 and thus
contain the same indefinite language. Since claims 1-5, 8-11, and 13-24 are
indefinite, the prior art rejections must fall because they are necessarily
based on a speculative assumption as to the meaning of the claims. See In re
Steele, 305 F.2d 859, 862-63 (CCPA 1962). Accordingly, we do not sustain
any of the Examiner’s rejections under 35 U.S.C. §§ 102 and 103. It should
be understood, however, that our decision in this regard is based solely on
the indefiniteness of the claimed subject matter, and does not reflect on the
adequacy of the prior art evidence applied in support of the rejection.
As indicated above, we find no description in the Specification
wherein excluding second exit FIFOs are excluded from throughput-biased
arbitration until second cells are sent from the first exit FIFO. The purpose
of the written description requirement in 35 U.S.C. § 112, first paragraph, is
to convey with reasonable clarity to those skilled in the art, as of the filing
date sought, the applicant was in possession of the invention as now
claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991). Since we find no such description in the Specification, we find that
the application does not convey with reasonable clarity to those skilled in the
art that, as of the filing date sought, Appellant was in possession of the
invention now as claimed. Claims 2-5, 8-11, and 13-24 depend from claim 1
and likewise contain the same unsupported limitations.

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NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1-5, 8-11, and 13-24 under 35 U.S.C. § 112, second paragraph, as indefinite
and under 35 U.S.C. § 112, first paragraph, for failing to comply with the
written description requirement. As explained above, claim 1 is ambiguous
and inexplicably inconsistent with the Specification. Further, claim 1
contains limitations not supported by the written description as originally
filed. Claims 2-5, 8-11, and 13-24 depend from claim 1 and likewise
contain the same inconsistency and lack of written description.
Claim 31
Appellant makes the same arguments with respect to claim 31 as with
claim 1 even though “claim 31 differs from the language of claim 1.” App.
Br. 11. However, the arguments directed to claim 1 are based upon
Williams not disclosing excluding throughput-biased arbitration. App. Br.
7-11; Reply Br. 4-8. Claim 31 does not recite excluding throughput-biased
arbitration until second cells are sent from the first exit FIFO. Therefore, we
do not find these arguments to be persuasive as applied to claim 31. As a
result, we sustain the Examiner’s rejection of claim 31.
Claims 25, 26, and 28
Appellant makes the same arguments with respect to claims 25, 26,
and 28 as with claim 1 even though “claim 25 differs from the language of
claim 1.” App. Br. 12. Appellant selects claim 25 as representative of the
group comprising claims 25, 26, and 28. App. Br. 12; Reply Br. 9.
However, the arguments directed to claim 1 are based upon Williams’ lack
of disclosure concerning excluding throughput-biased arbitration. App. Br.
7-11; Reply Br. 4-8. Claim 25 does not recite excluding throughput-biased
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arbitration until second cells are sent from the first exit FIFO. Therefore, we
do not find these arguments to be persuasive as applied to claim 25. As a
result, we sustain the Examiner’s rejection of claim 25 as well as claims 26
and 28 that have been grouped with claim 25.

CONCLUSION
The Examiner erred in finding that Williams discloses excluding a
second exit FIFO from throughput-biased arbitration since we enter a new
ground of rejection concerning this claim limitation.

SUMMARY
The Examiner’s decision to reject claims 1-2, 8-9, 15-16, 18-20, 22-24
is reversed and we enter a new ground of rejection for claims 1-5, 8-11, and
13-24.
The Examiner’s decision to reject claims 25, 26, 28, and 31 is
affirmed.
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 “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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,
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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.…
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)

ELD