Ex Parte Philbrick et al

Patent Trial and Appeal Board

Jan 23, 2015

12470980 (P.T.A.B. Jan. 23, 2015)

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.
12/470,980 05/22/2009 Clive M. Philbrick ALA-023A 4934
24501 7590 01/26/2015
MARK A LAUER
SILICON EDGE LAW GROUP LLP
7901 STONERIDGE DRIVE
SUITE 528
PLEASANTON, CA 94588
EXAMINER
MAI, KEVIN S
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
01/26/2015 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CLIVE M. PHILBRICK and PETER K. CRAFT
____________________

Appeal 2012-008635
Application 12/470,9801
Technology Center 2400
____________________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–11, 13–15, 17–22, and 24–27. We have jurisdiction
under 35 U.S.C. § 6(b).
STATEMENT OF THE DECISION
We REVERSE.2

1 Appellants identify the real party in interest as Alacritech, Inc. (App. Br.
1).
2 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
Jan. 27, 2012), Reply Brief (“Reply Br.,” filed Apr. 25, 2012), and the
Examiner’s Answer (“Ans.,” mailed Apr. 10, 2012).
Appeal 2012-008635
Application 12/470,980

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INVENTION
Appellants’ claimed invention relates generally to computer
networking, and particularly to devices that can communicate over a
network using Transport Control Protocol (TCP) over Internet Protocol (IP).
Spec. ¶ 3. Claim 1, reproduced below, is representative of the subject matter
on appeal. App. Br., Claims App’x.
1. A method for communication involving a computer, a network, and
a network interface device of the computer, the network interface
device being coupled to the network, the method comprising:

receiving, by the network interface device from the computer, a
command to transmit application data from the computer to the
network;

sending, by the network interface device to the network, data
corresponding to the command, including prepending a transport layer
header to at least some of the data;

sending, by the network interface device to the computer, a response
to the command indicating that the data has been sent from the
network interface device to the network, prior to receiving, by the
network interface device from the network, an acknowledgement
(ACK) that all the data corresponding to the command has been
received; and

maintaining, by the network interface device, a Transport Control
Protocol (TCP) connection that the command, the data and the ACK
correspond to.

REJECTIONS
The following rejections are before us for review.
Claims 1, 25, and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kelleher (US 6,757,767 B1, iss. June 29, 2004) and Dillon
(US 2004/0202166 A1, pub. Oct. 14, 2004).
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Application 12/470,980

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Claims 2–8, 10, and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kelleher, Dillon and Ruutu (US 2003/0149715 A1, pub.
Aug. 7, 2003).
Claims 9 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kelleher, Dillon and Hansen (US 6,101,590, iss. Aug. 8,
2000).
Claims 14, 15, 17–22, and 27 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kelleher, Dillon, Hansen, and Ruutu.
Claim 24 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kelleher, Dillon and Ruutu.
ANALYSIS
The Examiner finds that Kelleher’s disclosure of a “gateway”
corresponds to “a network interface device of the computer,” as called for in
independent claims 1, 13, and 24–26. Ans. 4–5, citing Kelleher Fig. 2. The
Examiner reasons that “the claim limitation requires a network interface
device OF the computer (emphasis added), not IN the computer or ON the
computer. . . [and] [t]he gateway of Kelleher properly acts as a network
interface device of the computer because the computer is connected to the
network via the gateway.” Ans. 22.
Appellants contend the Examiner’s interpretation of the claim
language “is not reasonable” because a network interface device as
described in the Specification is a “‘peripheral device’ of the host
computer.” App. Br. 6–9, Reply Br. 2–3. Appellants argue that because the
computer in Kelleher is not connected to the network by the gateway, “but
rather the gateway is connected to the computer by the network, and the
computer is connected by the gateway to a SCSI bus. . . it is not reasonable
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to interpret the gateway of Kelleher as a network interface device of the
computer.” App. Br. at 6–7, citing Kelleher 1:15–22, 2:1–4. Thus, “[t]he
ordinary and customary meaning of the ‘network interface device of the
computer’ recited in claim 1, in view of appellant’s specification, would
have been a device ‘of the computer’ that provides an interface ‘to the
network.’” App. Br. 8. Appellants’ contention is persuasive.
Although a gateway serves as an interface between one
communications network and another, the gateway of Kelleher cannot be
considered a network interface device of the computer because one of
ordinary skill in the art would not understand the gateway of Kelleher as
being a peripheral device of the computer. In interpreting claim language,
we apply the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or otherwise that
may be afforded by the Specification. Computer Science and
Communication Dictionary defines a “network interface device” (NID) as “a
device that performs the interface functions, such as code conversion,
protocol conversion, and buffering, required for communications into and
out of the network. . . used to access a bus or a network,” for example, a
modem, bus interface unit, or network interface unit. 3 The Specification
discloses:
For example, in one embodiment multiple TCP connections can
be passed from a host computer to an intelligent network
interface card (INIC) that is coupled to the host computer,
offloading the TCP processing from the host to the card for
these connections. A host can be a computer that acts as a

3 Computer Science and Communication Dictionary, 2001, page 1087.
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source of information or signals. The term can refer to almost
any kind of computer, from a centralized mainframe that is a
host to its terminals, to a server that is host to its clients, to a
desktop PC that is host to its peripherals. In network
architectures, a client station (user’s machine) may be
considered a host, and an adapter that terminates TCP may also
be considered a host, because each is a source of information to
the network in contrast to a device such as a router or switch
that merely directs traffic at the IP level.

FIG. 3 shows a schematic diagram of another system including a
local host 70 that is coupled to a remote host 72 over a network
75. The local host 70 has a CPU 76 that can access host
memory 77 via memory bus 78. A peripheral component
interconnect (PCI) bus 79 couples host 70 to storage 82. A
network interface device such as INIC 80 is coupled between
the PCI bus 79 and the network 75. Although described as an
INIC in this embodiment, one should realize that the network
interface device can take the form of a storage interface such as
a host bus adapter (HBA), for example an interface that
processes Internet SCSI (iSCSI), or the network interface may
be a video interface, an audio interface, or various other
peripheral units.

Spec. ¶¶ 4, 15, emphasis added. In light of the definition of a NID
and Appellants’ Specification, the claimed network interface device is
a peripheral device or unit coupled between the network and the host
computer bus. Each of the examples provided in the Specification is a
peripheral device of the host computer and commensurate with the
definition of a NID, an I/O peripheral unit of the host computer. The
Specification also explicitly contrasts a router or switch with the
network interface device of the claimed invention. Thus, one of
ordinary skill in the art would not have reasonably interpreted the
gateway of Kelleher as a network interface device attached to a
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computer via a PCI bus, because a SAN bridge or gateway is utilized
to interconnect a number of host computers on a Fibre Channel or
similar bus to a plurality of target storage devices, often on one or
more SCSI buses. See Kelleher 1:15–22. Accordingly, the claimed
limitation “a network interface device of the computer” excludes a
construction whereby a gateway could reasonably be considered a
peripheral device of the computer as called for in claims 1, 13, and
24–26.
Therefore, we do not sustain the Examiner’s rejection of independent
claims 1, 13, and 24– 26 under 35 U.S.C. § 103(a). For the same reasons,
we also do not sustain the rejection of their dependent claims. Cf. In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are
nonobvious if the independent claims from which they depend are
nonobvious”).
DECISION
The Examiner’s rejections of claims 1–11, 13–15, 17–22, and 24–27
are reversed.

REVERSED

Ssc