Wistron AiEDGE CorporationDownload PDFPatent Trials and Appeals BoardJan 12, 20222021000145 (P.T.A.B. Jan. 12, 2022) Copy Citation 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. 15/993,575 05/30/2018 Shunge Li PWAUS-EX-0344-USXX 1431 134449 7590 01/12/2022 Grable Martin Fulton PLLC P.O. Box 2006 Azle, TX 76098 EXAMINER HAJ SAID, FADI ART UNIT PAPER NUMBER 2444 NOTIFICATION DATE DELIVERY MODE 01/12/2022 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@gchub.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SHUNGE LI _____________ Appeal 2021-000145 Application 15/993,575 Technology Center 2400 ____________ Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-17. See Final Act. 1. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We Affirm. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a) (2012). According to Appellant, the real party in interest in this appeal is “Wistron AiEDGE Corporation.” See Appeal Br. 1. Appeal 2021-000145 Application 15/993,575 2 STATEMENT OF THE CASE 2 Introduction Embodiments of Appellant’s claimed subject matter relate to an “application-level multi-path transport mechanism.” Spec. ¶ 2. Representative Independent Claim 1 1. A multi-path transport protocol (MPTP) application programming interface (API) library of functions for establishing a plurality of bi-directional communication paths between a sender device and a receiver device to transmit and receive a plurality of data packets, comprising: a send MPTP API for the sender device including: a plurality of send connectors each being a sender endpoint of a communication path established between the sender device and the receiver device; a path table configured to maintain characteristics of the plurality of communication paths; a scheduler configured to determine a suitable send connector to transmit each data packet using one of the plurality of communication paths between the sender device and the receiver device; and a send buffer configured to buffer the plurality of data packets prior to transmitting each data packet to the selected send connector; and a receive MPTP API for the receiver device including: a plurality of receive connectors each being a receiver endpoint of a communication path established between the sender device and the 2 We herein refer to the Final Office Action, mailed March 19, 2020 (“Final Act.”); Appeal Brief, filed June 24, 2020 (“Appeal Br.”); and the Examiner’s Answer, mailed July 28, 2020 (“Ans.”). Appellant has not filed a Reply Brief. Appeal 2021-000145 Application 15/993,575 3 receiver device; a path table configured to maintain characteristics of the plurality of bi-directional communication paths; a receive buffer configured to buffer the plurality of data packets received by the receive connectors; and an assembler configured to reassemble the plurality of data packets in the receive buffer. Appeal Br. 18. Claims App. Prior Art Evidence Relied Upon by the Examiner Name Reference Date Medapalli US 2015/0245409 A1 Aug. 27, 2015 Table of Rejections Rej. Claims Rejected 35 U.S.C. § Reference(s)/Basis A 1-7, 15-17 101 Eligibility B 1-17 102(a)(1) Medapalli Appeal 2021-000145 Application 15/993,575 4 ISSUES AND ANALYSIS We have considered all of Appellant’s arguments and any evidence presented. We review appealed rejections for reversible error based upon the arguments and evidence Appellant provides for each issue identified by Appellant. See 37 C.F.R. § 41.37(c)(1)(iv) (2013); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). [A]ll that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of [35 U.S.C.] § 132. Jung, 637 F.3d at 1363. To the extent Appellant has not timely advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived or forfeited.3 See, e.g., 37 C.F.R. § 41.37(c)(1)(iv) (2013). Throughout this 3 See In re Google Tech. Holdings LLC, 980 F.3d 858, 862 (Fed. Cir. 2020) (some internal citation omitted): It is well established that “[w]aiver is different from forfeiture.” United States v. Olano, 507 U.S. 725, 733 (1993). “Whereas forfeiture is the failure to make the timely assertion of a right, waiver is the ‘intentional relinquishment or abandonment of a known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464 (1938)) (additional citations omitted). The two scenarios can have different consequences for challenges raised on appeal, id. at 733-34, and for that reason, it is worth attending to which label Appeal 2021-000145 Application 15/993,575 5 opinion, we give the claim limitations the broadest reasonable interpretation (BRI) consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Rejection A under 35 U.S.C. § 101 of Claims 1-7 and 15-17 The Examiner rejects claims 1-7 and 15-17 under 35 U.S.C. § 101 as being directed towards software per se, and thus for not being within one of the four statutory subject matter categories. See Final Act. 10. Specifically, the Examiner concludes that independent claims 1 and 15 are directed to an API library of functions without having any limitations that combine it with a medium and/or hardware. Id. Appellant contends that the claimed API (Application Programming Interface) executes on a machine and has a sender device, a receiver device, includes send and receive connectors, a path table, a scheduler, send and receive buffers, and an assembler. See Appeal Br. 13. To the extent that a broad but reasonable interpretation of Appellant’s claimed invention may cover an embodiment that consists of disembodied software per se, we note that software in itself, with no structural tie to an article of manufacture (e.g., a medium), machine (e.g., a computer), process or composition of matter, is not patentable subject matter, because “[a]bstract software code is an idea without physical embodiment.” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). Thus, disembodied software per se or a computer program per se does not fall within a statutory subject matter category (i.e., a process, is the right one in a particular case. Appeal 2021-000145 Application 15/993,575 6 machine, manufacture, or composition of matter).4 “The four categories [of § 101] together describe the exclusive reach of patentable subject matter. If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007). The Manual of Patent Examining Procedure (MPEP) also guides that, as per USPTO policy, disembodied software per se is not patent eligible: Non-limiting examples of claims that are not directed to any of the statutory categories include: • Products that do not have a physical or tangible form, such as information (often referred to as “data per se”) or a computer program per se (often referred to as “software per se”) when claimed as a product without any structural recitations; MPEP § 2106.03(I) (emphasis added).5 Cf. MPEP § 2181(II)(B) (“a claim that includes a means-plus-function limitation that corresponds to software per se (and is thus indefinite for lacking structural support in the specification) is not necessarily directed as a whole to software per se unless the claim lacks other structural limitations.”) (emphasis added). 4 See 35 U.S.C. § 101 (“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”). See also AIA ¶ 33(a) (“LIMITATION.-Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.”) (Sept. 16, 2011, Public Law 112-29, sec. 33, 125 Stat. 284). 5 All references to the MPEP are to the Ninth Edition, Revision 10.2019, last revised June 2020. Appeal 2021-000145 Application 15/993,575 7 Applying this legal guidance here, we conclude that claim 1 recites essential structure within the preamble and the body of the claim, including a sender device, a receiver device, and send and receive buffers, as persuasively argued by Appellant. See Appeal Br. 13. As a further issue of claim construction, our reviewing court guides that “the preamble is regarded as limiting if it recites essential structure that is important to the invention or necessary to give meaning to the claim.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006) (emphasis added). Moreover, “[w]hen the limitations in the body of the claim ‘rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.’” Bicon, 441 F.3d at 952 (quoting Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (emphasis added). Here, because we have essential structure recited in the claim 1 preamble (i.e., “a sender device and a receiver device”) that is supported in the body of the claim, we do not conclude that independent claim 1, considered as a whole, is directed to non-statutory subject matter, or disembodied software per se. Although independent claim 15 is broader, we at least find a “buffer” recited twice in the body of independent claim 15, and we construe the recited buffer(s) under BRI as any type of volatile or non-volatile memory structure. Accordingly, because claims 1 and 15 are not directed to disembodied software per se, we are constrained on this record to reverse the Examiner’s Rejection A under 35 U.S.C. § 101 of claims 1-7 and 15-17. Appeal 2021-000145 Application 15/993,575 8 Claim Grouping for Rejection B under 35 U.S.C. § 102 Based upon Appellant’s arguments, we decide the appeal of Rejection B of grouped claims 1-7 on the basis of representative independent claim 1, grouped claims 8-14 on the basis of independent claim 8, and grouped claims 15-17 on the basis of independent claim 15. See 37 C.F.R. § 41.37(c)(1)(iv) (2013). Rejection B under 35 U.S.C. § 102 of Grouped Claims 1-7 Appellant points to paragraphs 3 and 11 of the Specification in support of representative independent claim 1. See Appeal Br. 14-15. Appellant then reproduces Figure 2B of Medapalli (Appeal Br. 15), and describes Medapalli as disclosing: the traditional MPTP using a connection manager 242 that “intercept and process packets transmitted up and down the network stack 220.” Para. [0058]. This is evident in FIG. 2B, where the connection manager must interface[] with all levels of the network stack below the application layer, including the physical layer, link layer, network layer, and transport layer. Appeal Br. 15 (emphasis added). Appellant then asserts: Medapalli does not disclose or suggest a MPTP API or a library of functions that would enable the MPTP API. Medapalli also does not disclose or suggest, for example, a plurality of send and receive connectors, a path table, a scheduler, and an assembler as set forth in claim 1. Id. We are not persuaded by Appellant’s arguments because Appellant is merely reciting the claim limitations without addressing the Examiner’s Appeal 2021-000145 Application 15/993,575 9 specific findings.6 See Final Act. 11-13. It is well settled that mere attorney arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence). Thus, counsel’s arguments cannot take the place of factually supported objective evidence. See In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996).7 Moreover, Appellant has not persuasively explained how claim 1 is limited to one or more layers of the Open Systems Interconnection (OSI) model that would negate the Examiner’s finding of anticipation, given that claim 1 is silent regarding any specific mention of the argued seven-layer OSI model. See Appeal Br. 15. We additionally note that Appellant has not filed a Reply Brief to rebut the Examiner’s responsive explanations in the Answer. See Ans. 5-8. Therefore, on this record, Appellant has not persuaded us of error regarding the Examiner’s finding of anticipation for Rejection B of representative claim 1 over Medapalli, and Rejection B of associated grouped dependent claims 2-7 (not argued separately), which fall with claim 1. See 37 C.F.R. 6 See 37 C.F.R. § 41.37(c)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). 7 See MPEP § 2145(I) (“Attorney argument is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection.”). Appeal 2021-000145 Application 15/993,575 10 § 41.37(c)(1)(iv) (2013). Rejection B under 35 U.S.C. § 102 of Grouped Claims 8-14 Similarly, Appellant follows the same general pattern of argument for Rejection B of independent representative claim 8. In particular, Appellant contends: As Medapalli does not disclose or suggest all of these limitations, claim 8 is patentable. Further, as Medapalli’s connection manager requires it to interface with [and] process the data packets in the network layers below the application/presentation layer, including the physical layer, link layer, network layer, and transport layer, it fails to teach or suggest an API functionality as recited in the claim. Appeal Br. 16 (emphasis added). For the same reasons as explained above for Rejection B of claim 1, we are not persuaded of error regarding the Examiner’s finding of anticipation over Medapalli. Appellant merely advances a conclusory argument without presenting substantive, persuasive arguments traversing the Examiner’s specific factual findings. See Final Act. 16-19. As noted above, the claims are silent regarding any specific mention of the argued seven-layer OSI model. Because Appellant has not persuasively argued that the Examiner erred, we sustain the Examiner’s anticipation Rejection B of representative independent claim 8 over Medapalli, and Rejection B of grouped dependent claims 9-14, (not argued separately), which fall with claim 8. See 37 C.F.R. § 41.37(c)(1)(iv) (2013). Appeal 2021-000145 Application 15/993,575 11 Rejection B under 35 U.S.C. § 102 of Grouped Claims 15-17 Similarly, Appellant follows the same general pattern of argument for Rejection B of independent claim 15. In particular, Appellant contends: Further, as Medapalli’s connection manager requires it to interface with process the data packets in the network layers below the application/presentation layer, including the physical layer, link layer, network layer, and transport layer, it fails to teach or suggest an API functionality as recited in the claim. Medapalli does not disclose or suggest all of the limitations recited in claim 15. Appeal Br. 17. For the same reasons as explained above for Rejection B of independent claims 1 and 8, we are not persuaded of error regarding the Examiner’s finding of anticipation over Medapalli. Appellant merely advances a conclusory argument without presenting substantive, persuasive arguments showing how the Examiner’s specific factual findings are in error. See Final Act. 21-23. As noted above, the claims are silent regarding any specific mention of the argued seven-layer OSI model. Accordingly, we sustain the Examiner’s Rejection B of representative independent claim 15, and Rejection B of grouped dependent claims 16 and 17 (not argued separately), which fall with claim 15. See 37 C.F.R. § 41.37(c)(1)(iv) (2013). CONCLUSIONS Appellant has shown the Examiner erred regarding Rejection A under 35 U.S.C. § 101 of claims 1-7 and 15-17. Appeal 2021-000145 Application 15/993,575 12 Appellant has not shown the Examiner erred regarding Rejection B under 35 U.S.C. § 102(a)(1) of claims 1-17. Because we have sustained at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner’s decision to reject all claims on appeal. See 37 C.F.R. § 41.50(a)(1) (2011). DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-7, 15-17 101 Eligibility 1-7, 15-17 1-17 102(a)(1) Medapalli 1-17 Overall Outcome 1-17 TIME PERIOD FOR RESPONSE 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) (2013). See 37 C.F.R. § 41.50(f) (2011). AFFIRMED Copy with citationCopy as parenthetical citation