Ex Parte MOHR et al

Patent Trial and Appeal Board

May 16, 2017

14050954 (P.T.A.B. May. 16, 2017)

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.
14/050,954 10/10/2013 Paul MOHR BOSC.P8349US/11603535 8033
24972 7590 05/18/2017
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
PATEL, DHAIRYA A
ART UNIT PAPER NUMBER
2453
NOTIFICATION DATE DELIVERY MODE
05/18/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL MOHR, STEFAN STRAUB, CHRISTOPHER POHL,
KAI ROETTGER, HERBERT LEUWER, and THOMAS BAYER
Appeal 2017-004235
Application 14/050,9541
Technology Center 2400
Before ALLEN R. MacDONALD, BETH Z. SHAW, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 1—13, which constitute all of the pending claims in the application on
appeal. Appeal Br. 1. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is the applicant, Robert
Bosch GmbH. See Appeal Br. 1.
Appeal 2017-004235
Application 14/050,954
STATEMENT OF THE CASE
According to Appellants, the application relates to achieving a high
data transmission rate by handling references on data to be transmitted,
which are stored in a storage apparatus, instead of the actual data itself. See
Abstract.2
CLAIMED SUBJECT MATTER
Claims 1, 7, and 11 are independent. Claim 1 is representative and is
reproduced below with disputed limitation in italics:
1. A method for transmitting data between two devices
in at least one of a client layer and a transport layer of a
communication system, comprising:
buffering, in a central storage apparatus, the data to be
transmitted; and
performing the data transmission according to the
transport control protocol (TCP);
wherein a TCP protocol operation hardware component
handles references on the data to be transmitted which are stored
in the storage apparatus, instead of the actual data itself
Appeal Br., Claims App’x 1.
2 Throughout this Decision, we refer to the following documents for their
respective details: (1) Appellants’ Specification filed October 10, 2013
(“Spec.”); (2) the Final Office Action (“Final Act.”) mailed December 4,
2015; (3) the Appeal Brief (“Appeal Br.”) filed June 14, 2016; (4) the
Examiner’s Answer (“Ans.”) mailed November 9, 2016; and (5) the Reply
Brief (“Reply Br.”) filed January 9, 2017.
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Application 14/050,954
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal includes:
Niemela et al.
(“Niemela”)
Langworthy et al
(“Langworthy”)
Breed
Schneider, et al.
(“Schneider”)
US 2002/0003783 Al
US 2006/0047947 Al
US 2008/0256271 Al
EP 2 287 691 Al
Jan. 10, 2002
Mar. 2, 2006
Oct. 16, 2008
Aug. 11,2009
REJECTIONS
(1) Claims 1—13 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 2—3.
(2) Claims 1, 5—7, and 9-11 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Breed and
Langworthy. Final Act. 5—8.
(3) Claims 2, 3, 8, 12, and 13 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Breed, Langworthy,
and Schneider. Final Act. 8—11.
(4) Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Breed, Langworthy, Schneider, and
Niemela. Final Act. 11—12.
Our review in this Appeal is limited only to the above rejections and
issues raised by Appellants. We have not considered other possible issues
that have not been raised by Appellants and which are, therefore, not before
us. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 14/050,954
ISSUES
(1) Does the Examiner err in rejecting claims 1—13 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter?
(2) Does the Examiner err in finding the combination of Breed and
Langworthy teaches or suggests “wherein a TCP protocol operation
hardware component handles references on the data to be transmitted which
are stored in the storage apparatus, instead of the actual data itself,” as
recited in claim 1 ?
CONTENTIONS AND ANALYSIS
Issue 1
The Examiner rejects claims 1—13 under 35 U.S.C. § 101 as directed
to non-statutory subject matter that does not amount to significantly more
than an abstract idea because the claims require “no more than a generic
computer to perform generic computer functions that are well understood,
routine and conventional activities previously known to the industry.” Final
Act. 3.
Appellants argue the claims are patent-eligible “because they are
directed to an improvement in technology and not to an abstract idea.”
Appeal Br. 3.
We agree with Appellants’ conclusions as to this rejection of the
claims. The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citingMayo
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Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1296—97
(2012)). According to the Supreme Court’s framework, we must first
determine whether the claims at issue are directed to one of those concepts
(i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, we
must secondly “consider the elements of each claim both individually and
‘as an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id.
(internal citation omitted). The Supreme Court characterizes the second step
of the analysis as “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Id. (internal citation omitted).
According to step one of Alice, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
The “directed to” inquiry [Jcannot simply ask whether the claims
involve a patent-ineligible concept, because essentially every
routinely patent-eligible claim involving physical products and
actions involves a law of nature and/or natural phenomenon—
after all, they take place in the physical world. See Mayo, 132
S. Ct. at 1293 (“For all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or
abstract ideas.”) Rather, the “directed to” inquiry applies a stage-
one filter to claims, considered in light of the specification, based
on whether “their character as a whole is directed to excluded
subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. v.
Merial L.L.C., 818 F.3d 1369, 1375, 2016 WL 1393573, at *5
(Fed. Cir. 2016) (inquiring into “the focus of the claimed advance
over the prior art”).
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Application 14/050,954
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). “The
Supreme Court has suggested that claims ‘purporting] to improve the
functioning of the computer itself,’” or “improving] an existing
technological process” might not succumb to the abstract idea exception.
Enfish, 822 F.3d at 1335 (citing Alice, 134 S. Ct. at 2358—59).
Thus, our reviewing court guides that the first step in the Alice inquiry
asks whether the focus of the claims is on a specific asserted improvement in
computer capabilities or an existing technological process, or, instead, on a
process that qualifies as an “abstract idea” for which computers are invoked
merely as a tool. Enfish, 822 F.3d at 1335—1336. AccordMcRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (“We
therefore look to whether the claims in these patents focus on a specific
means or method that improves the relevant technology or are instead
directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery.”).
In this case, we agree with Appellants that the claims are directed to a
specific asserted improvement in transmitting data between two devices in a
communication system. As an example, claim 1 recites “[a] method for
transmitting data between two devices in at least one of a client layer and a
transport layer of a communication system.” Claims App’x 1. The claim
improves efficiency by using a hardware component to “handle[] references
on the data to be transmitted which are stored in the storage apparatus,
instead of the actual data itself.” That is, the claim is not broadly directed to
the abstract concept of data transmission or to all forms of transmitting data
but instead is specifically directed to performing data transmission according
to TCP “wherein a TCP protocol operation hardware component handles
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references on the data to be transmitted which are stored in the storage
apparatus, instead of the actual data itself.” Claims App’x 1. As a further
example that the claim is not broadly directed to the abstract concept of data
transmission, the Specification teaches that the
central buffer 12 of the present invention replaces the socket buffer 3
and the plurality of client buffers in the prior art of Figure 1. The
TCPHW component 10 of the present invention handles and processes
only references on the data stored in the central buffer 12 instead of
the actual raw data.
Spec. 15: 7-10.
Moreover, our conclusion that the claim is directed to an improvement
of an existing technology is bolstered by the Specification’s teachings that
the claimed invention achieves benefits over a conventional TCP in
hardware solution. “For instance, using 8 byte descriptors for segments of
128 or 256 byte size reduces the amount of data storage by a factor of up to
32. This enables the implementation of socket buffers for multiple TCP
instances using internal FPGA RAM, which saves considerable processing
performance and power.” Spec. 12: 24—28. In addition, “[t]he bit toggle rate
on interfaces is largely reduced with the transmission of data references
instead of data values. This is particularly true for external interfaces with
high pin capacities.” Spec. 13: 1-3.
Accordingly, we disagree with the Examiner’s conclusion that claim 1
is directed to an abstract idea. Rather, we conclude the focus of the claims
are on a specific asserted improvement in an existing technological process.
Thus, according to step one of the Alice test, claim 1 is not directed to an
abstract idea. Because we find that claim 1 is not directed to ineligible
subject matter, we do not reach step two of the Alice test. Enfish, 822 F.3d
at 1339.
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We, therefore, do not sustain the Examiner’s rejection of claim 1 as
being directed to patent ineligible subject matter. For the same reasons, we
further do not sustain the rejections of independent claims 7 and 11, and
dependent claims 2—6, and 8—10 under 35 U.S.C. § 101.
Issue 2
With respect to the rejection of independent claim 1 under 35 U.S.C.
§ 103(a), we disagree with Appellants’ argument and we adopt as our own:
(1) the findings and reasons set forth by the Examiner in the Office Action
from which this appeal is taken (Final Act. 5—6) and (2) the reasons set forth
by the Examiner in the Examiner’s Answer in response to Appellants’
Appeal Brief (Ans. 4—8). We highlight the following points for emphasis.
The Examiner relies on the combination of Breed and Langworthy to
teach or suggest “wherein a TCP protocol operation hardware component
handles references on the data to be transmitted which are stored in the
storage apparatus, instead of the actual data itself,” as recited in claim 1.
Final Act. 5—6; Ans. 4—8 (citing Breed Tflf 19, 22, 61, Fig. 3). Specifically,
the Examiner finds Breed’s retransmission buffer, such as buffer 508,
teaches handling references instead of the actual data itself. Final Act. 6
(citing Breed 119, see also Breed Fig. 5).
Appellants argue because claim 1 recites ‘“a TCP protocol operation
hardware component’ and ‘the storage apparatus’ as different apparatuses, it
is evident that whatever the Examiner relies on to meet the storage apparatus
cannot meet as well the TCP component.” Appeal Br. 6.
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We find this argument unpersuasive because we agree with the
Examiner that Appellants’ argument is not commensurate with the scope of
claim 1. The Examiner correctly finds that the “claim language does not
distinctly state or spell out that TCP protocol operation hardware component
(hereinafter TCPHW) is in a different apparatus than the storage apparatus
or that TCP protocol operation hardware component is a separate apparatus
than storage apparatus.” Ans. 5.
Appellants next argue,
the Examiner is incorrect in asserting that the specification
supports reading these two claimed terms as referring to a
single hardware component. The specification refers to the
claimed buffer as central buffer 12, which Figure 2 quite plainly
illustrates as an element distinct from TCPHW component 10,
which corresponds to the claimed TCP protocol hardware
component.
Appeal Br. 7.
We find this argument unpersuasive because we agree with the
Examiner’s finding that the claimed TCPHW and central buffer can be
interpreted as part of the same apparatus in view of Appellants’
Specification. Ans. 5. As an initial matter, we note that Appellants fail to
persuasively rebut the Examiner’s interpretation that “TCPHW and storage
apparatus can be [the] same apparatus NOT [a] different apparatus” in view
of Figure 3 of the Specification. Ans. 5. Furthermore, we note without
reliance in sustaining the rejection, that Figure 2 of Appellants’ Specification
also supports the Examiner’s finding.
Figure 2 is reproduced below for illustration.
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Application 14/050,954
Figure 2 of Appellants’ Specification illustrates Embedded
Acquisition Device communicating with embedded ECU interface device 8
and with an off-the-shelf personal computer running a measurement
application software tool 9 “for the reliable transport of measurement,
calibration and diagnostic[s] (MCD) data.” Spec. 1:8—12; See also Spec.
15:25—28. Figure 2 also illustrates both central buffer 12 and TCPHW 10 as
included/installed within Embedded Acquisition Device.
Accordingly, we find Appellants have not established that the
Examiner’s interpretation of claim 1 as failing to limit the TCPHW and the
central storage apparatus to separate apparatuses is inconsistent with
Appellants’ Specification.
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Appellants next argue “[w]hen the buffering refers to ‘the’data to be
transmitted, the use of the definite article signifies that the entirety of the
actual data to be transmitted between the devices is buffered in the central
storage device.” Appeal Br. 7. Therefore, Breed fails to teach “buffering, in
a central storage apparatus, the data to be transmitted,” because Breed
instead “teaches ... a transmission buffer architecture that will store less
than all the data that is to be transmitted.” Id.
We do not agree that by using the definite article “the” in the
limitation “the data to be transmitted,” claim 1 limits the buffering to the
entirety of the actual data to be transmitted. Accordingly, Appellants argue
for patentability on the basis of a limitation that is not recited in the claims.
Limitations not appearing in the claims cannot be relied upon for
patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellants further argue “even if the Examiner were correct in
interpreting the claim to be satisfied by a single component serving as
central storage apparatus and TCP hardware component, there still would be
no basis for asserting that Breed meets these claim limitations” because the
claimed “TCP hardware component handles ‘references on the data to be
transmitted!”] which are stored in the storage apparatus, instead of the actual
data itself.” Appeal Br. 7. Thus, the “claim language does not encompass []
the possibility of handling some of the actual data to be transmitted and
handling some other of this data just through the references thereto.” Appeal
Br. 8.
Appellants’ argument is not persuasive. Appellants do not dispute
that Breed suggests handling/buffering references instead of the actual data
itself. Rather, Appellants argue that Breed separately suggests buffering
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data from RAM 506 in addition to the buffering of references from
ROM/Flash 504, and the claim does not encompass the possibility of
handling some of the actual data to be transmitted and handling some other
of this data just through the references, as in Breed. Appeal Br. 8. Breed’s
separate teaching of buffering data from RAM 506, however, does not
negate Breed’s teaching of buffering references, instead of the data itself, for
data sourced from ROM/Flash 504. Nor have Appellants established that
the claim is limited to a system that only ever buffers references on the data
to be transmitted. Therefore, we find this argument is not commensurate
with the scope of the claim. See Self, 671 at 1348.
Appellants argue for the first time in the Reply Brief
to meet the express language of the claim, a prior art
transmission method would have to handle references on data
"to be transmitted" that has already been buffered. However,
that is not the case with Breed because in Breed the alleged
"references" are to ROM data that are not buffered.
Reply Br. 3.
This argument is untimely and need not be considered in the absence
of any good faith showing why it could not have been timely presented in
Appellants’ Appeal Brief. 37 C.F.R. § 41.41(b)(2) (2013). Therefore, we do
not address this belated argument. See also Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (Informative) (explaining that under the previous
rules, which are similar to the current rules, “the reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.”).
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 1. The rejection of independent claims 7 and 11, and dependent
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claims 2—6 and 8—10, which are not argued separately, is sustained for
similar reasons.
DECISION
We reverse the Examiner’s decision rejecting claims 1—13 under
35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 1—13 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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