Ex Parte Picraux

Board of Patent Appeals and Interferences

Dec 7, 2009

10029733 (B.P.A.I. Dec. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JEANINE PICRAUX
__________

Appeal 2008-005424
Application 10/029,733
Technology Center 2400
__________

Decided: December 7, 2009
__________

Before JEAN R. HOMERE, JAY P. LUCAS, and STEPHEN C. SIU,
Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-7, 9-18, and 20-24. Claims 8 and 19 have
been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

The Invention
The disclosed invention relates generally to transmitting data
transactions and additional information between nodes (Spec. 3).
Independent claim 1 is illustrative:
1. A method for transmitting information from a second
node to a first node, comprising the steps of:
establishing a communication link between the first node and
the second node;
the communication link having multiple channels for
transmitting multiple data transactions;
allowing one or more data transactions transmitted on the
communication link between the first node and the second node;
identifying a data stream of a data transaction being transmitted
from the second node to the first node;
stalling the transaction at any time during the transaction;
saving a status of the transaction at the time the transaction is
stalled;
inserting the information into the identified data stream without
regards to a boundary of the transaction; and
based on the saved status, resuming the transaction, thereby
transmitting the information from the second node via the data stream
to the first node;
wherein the information is not part of the data transaction when
the data transaction starts from the second node to the first node.
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The References
The Examiner relies upon the following references as evidence in
support of the rejections:
Grivna US 5,949,799 Sep. 07, 1999
Keller US 6,748,442 B1 Jun. 08, 2004

The Rejections
1. The Examiner rejects claims 9-11, 20-22, and 24 under 35 U.S.C.
§ 102(b) as being anticipated by Grivna.
2. The Examiner rejects claims 1-7, 12-18, and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over Grivna and Keller.

ISSUE 1
Appellant asserts that Grivna fails to disclose “not counting the packet
as a part of the data transaction” as recited in claims 9, 20, and 24 (App. Br.
11). Appellant also asserts that Grivna fails to disclose and “specifically
teaches away from the claimed limitations” (App. Br. 12) of “information
that ‘is not part of the data transaction’” (id.).
Did Appellant demonstrate that the Examiner erred in finding that
Grivna discloses a node counting the packet as not part of the data
transaction or inserting information that is not part of the data transaction?

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ISSUE 2
Appellant asserts that Grivna fails to disclose “that information is
inserted without regard to boundary” (App. Br. 12).
Did Appellants demonstrate that the Examiner erred in finding that
Grivna discloses inserting information into a data stream without regards to
a boundary of the transaction?

ISSUE 3
Appellant asserts that “Grivna is completely lacking in any motivation
or suggestion to reasonably combine the cited references” (App. Br. 14).
Did Appellants demonstrate that the Examiner erred in finding that it
would have been obvious to one of ordinary skill in the art to have combined
the Grivna and Keller references?

ISSUE 4
Appellant asserts that “Grivna does not disclose that a transaction is
stalled” (Reply Br. 3).
Did Appellants demonstrate that the Examiner erred in finding that
Grivna discloses stalling a transaction?

FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
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1. Grivna discloses “packet framing characters [that] typically frame
the data field . . . to indicate the beginning and/or end of the data
packet” (col. 3, ll. 19-21).
2. Grivna discloses an “end-of packet (EOP) located directly after the
data field” (col. 3, ll. 23-24).
3. Grivna discloses that “the EOP is transmitted to inform the receiver
that there are no more data characters in the data field” (col. 3, ll. 24-
25).
4. Grivna discloses “transmitting the data packet . . . and embedding the
commands) . . . into the data packet” (col. 5, ll. 57-59).
5. Grivna discloses that “[w]hen a command . . . such as an ACK is
required, transmission of the packet characters . . . is suspended”
(col. 5, ll. 61-63).
6. Grivna discloses that “command . . . is inserted into the data stream
and transmitted without interruption” (col. 5, ll. 64-65).
7. Grivna discloses that “[a]fter the command . . . is transmitted,
transmission of the packet characters . . . is resumed” (col. 6, ll. 1-2)
and that “[b]y stalling the transmission of packet characters, no data
is lost” (col. 6, ll. 2-3).
8. Grivna discloses “transfer of data between two locations” (Abstract).
9. Keller discloses a “plurality of bytes . . . transferred over the data
lines from a first to a second node on the communication link”
(Abstract).
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10. Keller discloses transmitting “multiple logical I/O streams” (col. 6, l.
27).

PRINCIPLES OF LAW

35 U.S.C. § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
“Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346 (Fed. Cir. 1999) (citation omitted). “In other words, if granting
patent protection on the disputed claim would allow the patentee to exclude
the public from practicing the prior art, then that claim is anticipated,
regardless of whether it also covers subject matter not in the prior art.” (Id.)
(citation omitted).
Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
Issue 1
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal of claims 1-7, 9-18, and 20-24 with respect to issue 1 on the basis
of independent claims 1, 9, 12, 20, 23, and 24 alone. See 37 C.F.R. §
41.37(c)(1)(vii).
Regarding the limitation recited in claims 9, 20, and 24 that a packet
is not counted as part of the data transaction, we agree with the Examiner
that Grivna discloses this feature. In Grivna, data (i.e., a “packet”) is not
counted as part of a data transaction since “packet characters” (i.e., a “data
transaction”) are transmitted but a command “is inserted into the data
stream” when required (FF 4-7). If the command (i.e., “packet”) is inserted
into the data stream, we find, based on Grivna’s teachings, that the
command is not counted as a part of the data stream prior to insertion.
Clearly, if the command was counted as already a part of the data stream,
there would be no need to then insert the command into the data stream
since the command would already be present in the data stream.
In addition, Grivna discloses that the end of a data packet is marked
by an “EOP” and that the inserted command (e.g., an “ACK”, Fig. 5) is
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located after the EOP (i.e., outside of the data packet, see Fig. 5) (FF 1-3).
As such, the inserted command (i.e., the inserted “packet”) is positioned
outside of the data stream (i.e., beyond the end of the packet (EOP)), and is
therefore considered not a part of the data stream.
Our observations apply equally to the limitation recited in claims 1,
12, and 23 of information that is not part of the data transaction. As
described above, the command of Grivna is not part of the data stream but is
inserted into a data stream. Since the command must be inserted into the
data stream, the command (i.e., “information”) is not already part of the data
stream (i.e., “data transaction”). This fact is highlighted in Fig. 5 of Grivna
in which the inserted command is positioned outside of the data packet (i.e.,
beyond the “EOP”).
For at least the aforementioned reasons, we conclude that Appellant
has not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of independent
claims 1, 9, 12, 20, 23, and 24, or of claims 2-7, 10, 11, 13-18, 21, and 22,
which fall therewith with respect to issue 1.

Issue 2
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal of claims 1-7, 12-18, and 23 with respect to issue 2 on the basis of
claim 1 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
We agree with the Examiner that Grivna discloses or suggests
inserting information without regard to boundary since, as the Examiner
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points out, data (or a “command”) in Grivna is inserted into a data stream
without regard to a transaction boundary (i.e., a boundary delineated by data
in the data stream). Grivna discloses that a command is inserted into a data
stream when required and without interruption (FF 4-6). If the command is
inserted whenever it is required and without interruption, the insertion of the
command cannot be subject to boundaries of the transaction. If the data
insertion of Grivna were subject to transaction boundaries, the insertion
could not be performed until the end of the transaction and could not be
performed either “without interruption” or “when required” as explicitly
disclosed by Grivna. Hence, we cannot agree with Appellant’s contention
that Grivna supposedly fails to disclose this feature.
For at least the aforementioned reasons, we conclude that Appellant
has not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claim 1, or of
claims 2-7, 12-18, and 23, which depend therewith with respect to issue 2.

Issue 3
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal of claims 1-7, 12-18, and 23 with respect to issue 3 on the basis of
claim 1 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
As described above, Appellant argues that one of ordinary skill in the
art would not have been motivated to combine the Grivna and Keller
references because, according to Appellant, there is no motivation or
suggestion in the Grivna reference to do so. However, our reviewing court
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has held that whether a patent claim would have been obvious is based on
“the objective reach of the claim” and is not “confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.” KSR, 550 U.S. at 419. As such, we do not find
persuasive Appellant’s argument that Grivna supposedly fails to provide an
explicit “motivation” for one of ordinary skill in the art to have combined
the Grivna and Keller references. In determining whether a patent claim
would have been obvious, “neither the particular motivation nor the avowed
purpose of the patentee controls” (id.).
Both Grivna and Keller disclose transmitting data between two
locations (FF 8-9). Keller also discloses that the data transmitted between
two locations (i.e., from a first node to a second node) may further include
multiple logical I/O streams (FF 10). Combining the known method of
transmitting data between two locations (Grivna and/or Keller) with the
known method of transmitting multiple data streams between the two
locations (Keller) would have merely entailed rearranging and combining
known elements, each performing a known function, to achieve a predictable
result of successful data transmission in which the transmitted data may
include multiple data streams. “[W]hen a patent ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR, 550 U.S. at 417 (citing
Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976)).
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For at least the aforementioned reasons, we conclude that Appellant
has not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claim 1, or of
claims 2-7, 12-18, and 23, which depend therewith with respect to issue 3.

Issue 4
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal of claims 1-7, 9-18, and 20-24 with respect to issue 4 on the basis
of claim 1 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues that Grivna fails to disclose that a transaction is
stalled. Because Appellant presents this argument for the first time in the
Reply Brief, the argument is untimely. Nevertheless, we agree with the
Examiner that Grivna discloses stalling a transaction. Grivna discloses that
when a command is required, the transmission of packet characters is
suspended and that no data is lost “by stalling” the transmission of
characters (FF 5). While Appellant argues that the data in Grivna “are
disclosed to be transmitted” (Reply Br. 3), Grivna also explicitly discloses
that the data transaction is “suspended” (col. 5, l. 63) and that “stalling the
transmission” of data prevents data loss (col. 6, ll. 2-3). In view of Grivna’s
explicit disclosure of stalling the data transaction, we disagree with
Appellant’s contention that Grivna supposedly fails to disclose this feature.
Appellant argues that “Grivna describes stalling of a packet character
and not stalling of a transaction” (Reply Br. 3). In the absence of an explicit
definition of a transaction in the Specification, we construe the term broadly
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but reasonably to include any exchange or transfer of, in this case, data.
Since transmission of “packet characters” in Grivna includes the exchange
or transfer of the data, we find that transmission of the packet characters in
Grivna constitute a data transaction. Appellant has failed to demonstrate a
distinction between a data transaction and transmission of data packet
characters. Since Grivna stalls (or suspends) the transmission of data packet
characters, the transmission of data packet characters constitutes a data
transaction, and Appellant has failed to demonstrate any differences between
a data transaction and transmission of data packet characters, we find that
Grivna discloses stalling (or suspending) a data transaction.
For at least the aforementioned reasons, we conclude that Appellant
has not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claim 1, or of
claims 2-7, 9-18, and 20-24, which fall therewith with respect to issue 4.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has failed to demonstrate that the Examiner erred in:
1. finding that Grivna discloses a node counting the packet as not
part of the data transaction or inserting information that is not part of the
data transaction (issue 1),
2. finding that Grivna discloses inserting information into a data
stream without regards to a boundary of the transaction (issue 2),
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3. finding that it would have been obvious to one of ordinary skill
in the art to have combined the Grivna and Keller references (issue 3), and
4. finding that Grivna discloses stalling a transaction (issue 4).

DECISION
We affirm the Examiner’s decisions rejecting claims 1-7, 12-18, and
23 under 35 U.S.C. § 102(b) and claims 9-11, 20-22, and 24 under
35 U.S.C. § 103.
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

dal

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