Ex parte Sharma

Board of Patent Appeals and Interferences

Oct 3, 2000

08085505 (B.P.A.I. Oct. 3, 2000)

Appellant’s attendance at the oral hearing set for March 6, 2000, was1
waived in the communication received on March 3, 2000.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DUSHYANT SHARMA
_____________
Appeal No. 1997-0629
Application No. 08/085,505
______________
ON BRIEF1
_______________
Before THOMAS, RUGGIERO, and BARRY, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 2-8, all of the claims pending in the present
application. Claims 1 and 9 have been canceled. An amendment
Appeal No. 1997-0629
Application No. 08/085,505
2
after final rejection filed December 13, 1995 was approved for
entry by the Examiner.
The claimed invention relates to a method for permitting
application programs running on a computer to obtain transport
services from a set of transport providers that enable the
programs to communicate on a network coupled to the computer.
More particularly, Appellant indicates at page 4 of the
specification that an application program can dynamically
cause the inclusion of a new transport service provider in the
set of transport providers by registering vectors representing
jump addresses of the function entry points to the transport
service provider.
Claim 2 is illustrative of the invention and reads as
follows:
2. A computer-based method for permitting
application programs running on a computer to obtain
transport services from a set of transport service
providers also running on the computer, enabling the
application programs to communicate on a network to
which the computer is coupled, each transport
service provider being configured to respond to
transport service requests which conform to a
prespecified format associated with the transport
service provider, comprising
receiving service requests from an application
program, and
Appeal No. 1997-0629
Application No. 08/085,505
The Appeal Brief (revised) was filed July 29, 1996. In response to2
the Examiner’s Answer dated August 27, 1996, a Reply Brief was filed October
28, 1996, which was acknowledged and entered by the Examiner without further
comment on December 27, 1996.
3
for each received service request, delivering to
a selected one of the transport service providers a
corresponding transport service request conforming
to the prespecified format appropriate to the
transport service provider and
enabling an application program to dynamically
cause inclusion of a selected one of a plurality of
different transport service providers in the set of
transport service providers running on the computer.
The Examiner relies on the following prior art:
Britton et al. (Britton) 5,425,028 Jun. 13,
1995
(Filed Jul. 16, 1992)
Claims 2-8 stand finally rejected under 35 U.S.C. §
102(e) as being anticipated by Britton.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs and Answer for the2
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the Examiner, the arguments
Appeal No. 1997-0629
Application No. 08/085,505
4
in support of the rejection and the evidence of anticipation
relied upon by the Examiner as support for the prior art
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellant’s arguments
set forth in the Briefs along with the Examiner’s rationale in
support of the rejections and arguments in rebuttal set forth
in the Examiner’s Answer.
It is our view, after consideration of the record before
us, that the disclosure of Britton fully meets the invention
as recited in claims 2-8. Accordingly, we affirm.
Appellant has indicated (Brief, page 4) that, for
purposes of this appeal, claims 2-6 are grouped separately,
and separate arguments for patentability have been provided
for each of claims 2-6. The limitations of dependent claims 7
and 8 have not been argued separately despite Appellant’s
listing of these claims in a separate group. According,
claims 7 and 8 will stand or fall with their base claim 2.
Note In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed.
Cir. 1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3
(Fed. Cir. 1983).
At the outset, we note that anticipation is established
Appeal No. 1997-0629
Application No. 08/085,505
5
only when a single prior art reference discloses, expressly or
under the principles of inherency, each and every element of a
claimed invention as well as disclosing structure which is
capable of performing the recited functional limitations. RCA
Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444,
221 USPQ 385, 388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228
(1984); W.L.
Gore and Assoc, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554,
220
USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
With respect to independent claim 2, the Examiner has
indicated (Answer, pages 3 and 4) how the various limitations
are read on the disclosure of Britton. In response,
Appellant’s arguments center on the alleged deficiency of
Britton in disclosing the requirements of subparagraph c) of
appealed
claim 2. We note that the relevant portion of claim 2
Appeal No. 1997-0629
Application No. 08/085,505
6
recites:
enabling an application program to dynamically
cause inclusion of a selected one of a plurality
of different transport service providers in the
set of transport service providers running on
the computer.
Appellant contends that Britton, contrary to the present
invention, does not provide for the inclusion of transport
service providers which are not already running on the
computer (Reply Brief, page 3). In Appellant’s analysis, the
MPTN manager utilized by Britton’s system has made available
any transport service provider needed by any running
application at the access node and such provider is already up
and running (Brief, page 7).
After careful review of Appellant’s arguments, however,
it is initially our view that such arguments are not
commensurate with the scope of independent claim 2. It is
axiomatic that, in proceedings before the PTO, claims in an
application are to be given their broadest reasonable
interpretation consistent with the specification, and that
claim language should be read in light of the specification as
Appeal No. 1997-0629
Application No. 08/085,505
7
it would be interpreted by one of ordinary skill in the art.
In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
1983). Moreover, limitations are not to be read into the
claims from the specification. In re Van Geuns, 988 F.2d
1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993) (citing In
re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989)).
We do not interpret the language of independent claim 2
as requiring that any transport service provider dynamically
included in the service provider set be previously “not
running” on the computer. Conversely, regardless of the
correctness of Appellant’s analysis of the operation of
Britton’s system, we find nothing in the language of claim 2
which would preclude the inclusion of presently “up and
running” transport service providers in the claimed set of
service providers.
Further, even allowing for possible differing interpre-
tations of the language of subparagraph c) of claim 2, it is
our view that the system of Britton explicitly meets the claim
requirements. The flow chart illustration in Britton’s Figure
Appeal No. 1997-0629
Application No. 08/085,505
8
5F and accompanying description at column 11, lines 9-22
disclose the address registration process for adding new
transport providers to the system.
For all of the reasons discussed supra, we agree with the
Examiner’s analysis that each of the claimed method steps are
shown to exist in Britton and, accordingly, the Examiner’s
rejection of claim 2 as anticipated by Britton is sustained.
Turning to a consideration of dependent claims 2-6,
grouped and argued separately by Appellant, we sustain the
Examiner’s 35 U.S.C. § 102(e) rejection of these claims as
well. With respect to dependent claims 3 and 4, we agree with
the Examiner (Answer, pages 7 and 8) that, although Britton
does not use the terminology “vector” or “jump addresses”, the
address registration mechanisms discussed by Britton are the
clear equivalents of Appellant’s claimed functions since they
enable
communication between the application programs and the
transport
Appeal No. 1997-0629
Application No. 08/085,505
9
service providers. Further, Appellant’s argument that Britton
has no need to provide jump addresses since all of the
transport stack drivers are already “up and running” is
directly contrary to Britton’s disclosure in Figure 5F which
explicitly provides for the address registration of new
service providers.
We further agree with the Examiner that the common data
structure of appealed claim 5 is suggested by the data
structure format illustrated, for example, in Figures 9 and 10
of Britton. Similarly, we agree that the global memory
recited in dependent claim 6 is met by the address registry 17
in Britton which triggers access by the transport providers.
Further, as mentioned previously, the limitations of dependent
claims 7 and 8 have not been separately argued by Appellants
and, accordingly, claims 7 and 8 fall with their base claim 2.
In conclusion, we have sustained the Examiner’s 35 U.S.C.
§ 102(e) rejection of all of the claims on appeal.
Accordingly, the decision of the Examiner rejecting claims 2-8
is affirmed.
Appeal No. 1997-0629
Application No. 08/085,505
10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
jfr/vsh
Appeal No. 1997-0629
Application No. 08/085,505
11
A. Sidney Johnston
CESARI and McKENNA, LLP
30 Rowes Wharf
Boston, MA 02110