Ex Parte Waltermann et alDownload PDFPatent Trial and Appeal BoardDec 15, 201412059968 (P.T.A.B. Dec. 15, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROD D. WALTERMANN, HOWARD LOCKER, JOSEPH MICHAEL PENNISI, and MARK CHARLES DAVIS ____________ Appeal 2012-005826 Application 12/059,968 Technology Center 2400 ____________ Before CAROLYN D. THOMAS, DANIEL N. FISHMAN, and BETH Z. SHAW, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner twice rejecting claims 1, 2, 5–10, 12–15, and 21–26. Claims 16–20 are cancelled (App. Br. 4). Claims 3 and 11 are indicated as being allowable (Ans. 10). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. The present invention relates generally to network bandwidth allocation to storage access requests as a function of a client’s system activities. See Abstract. Appeal 2012-005826 Application 12/059,968 2 Claim 1 is illustrative: 1. A machine implemented method comprising: allocating network bandwidth to storage access requests as a function of a network bandwidth allocation; monitoring client system activities that produce network access requests and remote storage access requests; and modifying the network bandwidth allocation between network access requests and storage access requests as a function of monitored client system activities. Appellants appeal the following rejections: R1. Claims 1, 4, 5, 7–9, 12, 14, 15, 21, 23, 24, and 26 are rejected under 35 U.S.C. § 102(e) as being anticipated by DeMoney (US 2004/0205166 A1, Oct. 14, 2004); R2. Claims 2, 10, and 22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over DeMoney and Ernst et al. (US 7,119,811 B2, Oct. 10, 2006); and R3. Claims 6, 13, and 25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over DeMoney and Schonfeld et al. (US 7,095,786 B1, Aug. 22, 2006). Claim Groupings Based on Appellants’ arguments in the Appeal Brief, we will decide the appeal on the basis of claims 1, 2, and 6, as set forth below. See 37 C.F.R. 41.37(c)(1)(vii). Appeal 2012-005826 Application 12/059,968 3 ANALYSIS Rejection under 35 U.S.C. § 102(e) of Claims 1, 4, 5, 7–9, 12, 14, 15, 21, 23, 24, and 26 Issue 1: Did the Examiner err in finding that DeMoney discloses “modifying the network bandwidth allocation . . . as a function of monitored client system activities,” as set forth in claim 1? Appellants contend that “modifying bandwidth allocation based on non-use of bandwidth is not reallocating bandwidth as a function of monitoring client system activities that produce network access requests” (App. Br. 12). Appellants further contend that “DeMoney is only monitoring whether or not there is bandwidth that is unused without regard to specific activities that may have given rise to the bandwidth that is actually being used. . . . [U]nused bandwidth simply does not result in network access requests and remote storage access requests” (id.). The Examiner finds that for modifying bandwidth allocation “the claim does not limit the ‘function’ to include only network access requests and storage access requests” (Ans. 11). We agree with the Examiner. Although claim 1 recites modifying the network bandwidth allocation . . . as a function of monitored client system activities (see claim 1), the recited “as a function of monitored client system activities” does not refer back to the claimed monitoring step, which recites activities that produce network access requests and remote storage access requests. Stated differently, claim 1, as drafted, fails to limit the “function” to network access requests and remote storage access requests. The claims measure the invention. See SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). During prosecution before the USPTO, claims are to be given their broadest reasonable Appeal 2012-005826 Application 12/059,968 4 interpretation, and the scope of a claim cannot be narrowed by reading disclosed limitations into the claim. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969). “Giving claims their broadest reasonable construction ‘serves the public interest by reducing the possibility that claims, finally allowed, will be given broader scope than is justified.’” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). “An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.” Zletz, 893 F.2d at 322. “Construing claims broadly during prosecution is not unfair to the applicant . . . because the applicant has the opportunity to amend the claims to obtain more precise claim coverage.” Am. Acad., 367 F.3d at 1364. Here, we find that the claimed modifying step does not precisely refer back to any particular activities, i.e., does not limit the activities to only access requests. As a result, as claimed, any monitored client system activities could lead to modification of the network bandwidth allocation. DeMoney discloses that “[u]nused bandwidth for guaranteed rate request may be dynamically reallocated to non-rate-guaranteed requests and vice versa” (¶ 40). In other words, DeMoney modifies the network bandwidth allocation between requests as a function of monitoring bandwidth usage/non-usage during multimedia streaming. This activity is consistent with the network intensive activities disclosed in Appellants’ Appeal 2012-005826 Application 12/059,968 5 Specification (see Spec. ¶ 10). Similarly, independent claims 9 and 21 do not limit the claimed function to any access requests. Thus, based on the record before us, we find no error in the Examiner’s anticipation rejection of representative claim 1, essentially for the reasons indicated by the Examiner. Therefore, the rejection of claim 1 is sustained. Additionally, we sustain the rejection of claims 4, 5, 7, 8, 9, 12, 14, 15, 21, 23, 24, and 26 under 35 U.S.C. § 102(e) for the same reasons discussed with respect to independent claim 1. Rejection under 35 U.S.C. § 103(a) of Claims 2, 10, and 22 Issue 2: Did the Examiner err in finding that Ernst teaches or suggests “a network bandwidth allocated . . . is increased while a client system boot is occurring,” as set forth in claim 2? Appellants contend “that suspending operating system execution during a system boot, as in Ernst, is not a disclosure of increasing the bandwidth allocated to storage access request during a system boot, as is recited in claim 2” (App. Br. 14). We agree with Appellants. Although the Examiner finds that “Ernst teaches in an embodiment a system where the bandwidth of a bus is maximized at all times to save boot time” (Ans. 12), the Examiner fails to demonstrate how this relates to increasing allocation while the client system boot is occurring, as required by claim 2. Ernst merely discloses that “operating system usage is omitted to maximize bandwidth availability and save boot time. . . . [I]t is essential that the bandwidth of the bus be maximized at all times” (col. 2, ll. 30–34). Since Ernst discloses the bandwidth is maximized at all times, there is no specific disclosure on what happens while a client system boot is occurring, Appeal 2012-005826 Application 12/059,968 6 only that boot time is saved. Specifically, there is no teaching that “network bandwidth allocated to storage access requests is increased while a client system boot is occurring” as required by claim 2. Thus, we disagree with the Examiner’s finding that Ernst teaches increasing allocation while the client system boot is occurring, as recited in claims, 2, 10, and 22. The Examiner has not found any of the other references of record teach this feature. Accordingly, we will not sustain the Examiner’s obviousness rejection of claims 2, 10, and 22. Rejection under 35 U.S.C. § 103(a) of Claims 6, 13, and 25 Issue 3: Did the Examiner err in finding that Schonfeld teaches or suggests allocation is increased in response to a user interface window being placed in the background, as set forth in claim 6? Appellants contend that “Schonfeld states that bandwidth is reduced for background data. The claimed subject matter recites just the opposite, that network bandwidth is increased when a user interface window is placed in the background” (App. Br. 14–15). The Examiner finds that Schonfeld teaches that “when the window is in the background the unused bandwidth allocation is increased” (Ans. 13). We disagree with the Examiner’s finding. We start by noting that contrary to the Examiner’s finding, we fail to find in the cited portion of Schonfeld anything about increasing the unused bandwidth allocation when a user interface window is in the background. Instead, Schonfeld merely discloses “reducing bandwidth allocated to transmit the background” in reference to transmission of foreground object of an image versus background objects of an image (col. 1, ll. 24–35). Appeal 2012-005826 Application 12/059,968 7 Claim 6 requires an increase in bandwidth when a user interface window is placed in the background (see claim 6). Thus, we disagree with the Examiner’s finding that Schonfeld teaches increasing allocation “in response to a user interface window . . . placed in the background,” as recited in each of claims, 6, 13, and 25. The Examiner has not found any of the other references of record teach this feature. Accordingly, we will not sustain the Examiner’s obviousness rejection of claims 6, 13, and 25. DECISION We affirm the Examiner’s § 102(e) rejection. We reverse the Examiner’s § 103(a) rejections. 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). 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