Ex Parte Sohraby et al

Board of Patent Appeals and Interferences

Jun 14, 2011

10115519 (B.P.A.I. Jun. 14, 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.
10/115,519 04/02/2002 Kazem Anaraky Sohraby Ozugur 1-23-28 9819
7590 06/15/2011
Ryan, Mason & Lewis, LLP
Suite 205
1300 Post Road
Fairfield, CT 06430
EXAMINER
SEFCHECK, GREGORY B
ART UNIT PAPER NUMBER
2477
MAIL DATE DELIVERY MODE
06/15/2011 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 KAZEM ANARAKY SOHRABY, ON-CHING YUE and
TIMUCIN OZUGUR
____________

Appeal 2010-008329
Application 10/115,519
Technology Center 2400
____________

Before CARLA M. KRIVAK, THOMAS S. HAHN and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 of the Final Rejection of
claims 1-19.
1
See Appeal Brief 7. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002). We reverse.

1
Appellants list claims 1, 3, 6, 10, 12, 15 and 19 as appealed. See Appeal
Brief 2. The non-listed claims either depend directly upon the listed claims
or indirectly depend upon the listed claims; therefore the non-listed claims,
which also are not separately argued, stand or fall with the listed claims, as
concluded by Appellants. See Appeal Brief 8.
Appeal 2010-008329
Application 10/115,519

2
Exemplary Claim
1. A method for measuring the usage of a communications network, said
method comprising the steps of:
selecting a sampling interval, T, and a measurement window, τ;
measuring the units of information transmitted across said
communications network during said measurement window, τ, for a given
connection, wherein said units of information transmitted across said
communications network is a multiple of a byte of information; and
extrapolating said measured units of information to estimate the usage
of said communications network for said connection over said sampling
interval, T.

Rejections on Appeal
Claim 19 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the enablement requirement.
Claims 1-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over U.S. Patent 6,094,418 to Soumiya (“Soumiya”) in view of
U.S. Patent 6,327,247 B1 to Naudts (“Naudts”).

Appellants’ Contentions
1. Appellants contend that the term “computer readable code means” is
well understood in the art and that a person of ordinary skill in the art
would recognize the meaning of the term. Appeal Brief 4.
2. Appellants contend that there is no motivation for a person of ordinary
skill in the art to add any alleged teaching by Naudts to the teachings
of Soumiya. Appeal Brief 6-7.
Appeal 2010-008329
Application 10/115,519

3
PRINCIPLES OF LAW
“The test of enablement is whether one reasonably skilled in the art could
make or use the invention from the disclosures in the patent coupled with
information known in the art without undue experimentation.” United States
v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006), In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
Examiner can satisfy this test by showing some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.
KSR Int’l. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441
F.3d at 988).

ISSUES
Did the Examiner err in rejection claim 19 for failing to comply with
the enablement requirement?
Did the Examiner err in rejecting claims 1-19 over the combination of
Soumiya and Naudts?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
The Examiner contends that the terminology “computer readable code
means” is not well known to one of ordinary skill in the art. Answer 3, 8.
The Examiner further contends that applying a 35 U.S.C. § 112, 6
th

Appeal 2010-008329
Application 10/115,519

4
paragraph definition to the limitations results in “means for computer
readable coding” which clearly does not fit within the common vernacular
for one of ordinary skill in the art. Answer 8-9. Appellants argue that the
term “computer readable code means” is well understood in the art and that a
person of ordinary skill would recognize the meaning of the term. Appeal
Brief 4. Appellants further argue that a “computer readable code means” is
a code means that can be read by a computer. That is, the cited term is not a
means plus function term as defined in section 112, 6
th
paragraph, the
Examiner’s interpretation is not correct, and finally, a person of ordinary
skill in the art would understand how to execute a program using a
“computer readable code means” and there are many claims of United States
Patents that recite “computer readable code means.” Reply Brief 2-3. We
find Appellants’ arguments to be premised from ordinary and customary
term meanings and therefore persuasive. The terminology “computer
readable code means” is self-explanatory and would not cause one to employ
undue experimentation to make or use the invention as claimed. See
Telectronics, 857 F.2d at 785.
Appellants argue that there is no motivation for a person of ordinary
skill in the art to add any alleged teaching by Naudts to the teachings of
Soumiya. Appeal Brief 6-7. We find Appellants’ arguments to be
persuasive. The Examiner indicates that, “Souimiya does not explicitly
show measuring units of information where the units are a multiple of byte
of information.” Appeal Brief 5. The Examiner then relies upon Naudts to
address the deficiency of Soumiya:
Naudts discloses a method and device to characterize cell
traffic. Naudts shows that cell traffic of a particular
connection is measured during a time interval. This
Appeal 2010-008329
Application 10/115,519

5
measurement can then be transformed so that a cell traffic
curve representing cell rate through the monitored
connection can be generated (claim[s] 1,10,[and] 19 - units
are a multiple of a byte of information).

It would have been obvious to one of ordinary skill in the
art, at the time of the invention to utilize the method and
device of Soumiya to measure cell traffic on a connection,
as taught by Naudts, in addition to the number of a
connections on a given subscriber line. Measuring the
total connections as well as the individual cell traffic on
those connections would enable more accurate estimation
of the usage of the communication network, since cell
traffic can vary on the individual connections.

Answer 5-6.
We find the Appellants’ arguments to be persuasive. The Examiner
merely provided a broad summation of the Naudts reference without
specifically indicating the teachings or suggestions of Naudts that the
Examiner was relying upon to address Soumiya’s deficiencies. Therefore,
the Examiner failed to provide an articulated reasoning with some rational
underpinning as to what the teachings of Naudts and the deficiencies of
Soumiya would suggest to an ordinarily skilled artisan to support a legal
conclusion of obviousness. See KSR 550 U.S. at 418. Therefore we will not
sustain the Examiner’s rejection of claims 1-19.

CONCLUSIONS
The Examiner erred in rejecting claim 19 as not enabled.
The Examiner erred in rejecting claims 1-19 as obvious over the cited
prior art.
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Application 10/115,519

6
DECISION
The Examiner’s rejection of claims 1-19 is reversed.

REVERSED

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