Ex Parte Ballard

Board of Patent Appeals and Interferences

Mar 31, 2008

10007116 (B.P.A.I. Mar. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CURTIS C. BALLARD
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Appeal 2007-3064
Application 10/007,1161
Technology Center 2100
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Decided: March 31, 2008
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Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, C., Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection
of claims 2-12, 14-20, and 22 entered August 11, 2005. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Application filed November 7, 2001. The real party in interest is Hewlett-
Packard Development, L.P.
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A. INVENTION
Appellant invented a system and method directed to a data collection
and transmittal system for a networked device where the networked device
performs a stand alone dedicated function and comprises data collection
logic, message generation logic, and a communication system. (Spec., ¶ 6.)

B. ILLUSTRATIVE CLAIM
The appeal contains claims 2-12, 14-20, and 22. Claims 12 and 22 are
independent claims. Claims 1, 13, and 21 are canceled and claims 23-25 are
withdrawn from consideration. Claim 22 is illustrative:
22. A data collection and transmittal system, the system
comprising:
a networked device, connected to a digital network, performing
a dedicated standalone function;
data collection logic configured to collect information
pertaining to said networked device’s ability to perform said
standalone function;
message generation logic configured to recognize a trigger
event, associated with networked device’s ability to perform said
standalone function, and configured to generate an electronic message
containing at least a portion of said collected information; and
a remote server configured to receive said electronic message
over said digital networked and to determine an action to be taken
with respect to said networked device.

C. REFERENCES
The references relied upon by the Examiner in rejecting the claims on
appeal are as follows:
Oskay US 5,642,337 Jun. 24, 1997
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Reichman US 6,738,813 B1 May 18, 2004
(Filed Sep. 11, 2000)
Moberg US 6,738,826 B1 May 18, 2004
(Filed Feb. 24, 2000)
Conrad US 6,892,236 B1 May 10, 2005
(Filed Mar. 16, 2000)

D. REJECTIONS
The following five (5) rejections are before us for review:
1) Claims 2, 3, 5, 6, and 22 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Conrad;
2) Claims 4, 7, and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Conrad and Reichman;
3) Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Conrad, Reichman, and Oskay;
4) Claims 11 and 16-19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Conrad, Reichman, and Moberg; and
5) Claims 12, 14, 15, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Conrad and Moberg.

II. PROSECUTION HISTORY
Appellant appeals from the Final Rejection and filed an Appeal Brief
(App. Br.) on February 23, 2006. The Examiner mailed a corrected
Examiner’s Answer (Ans.) on February 8, 2007. Appellant filed a Reply
Brief (Reply Br.) on January 19, 2007.

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III. ISSUE(S)
Whether Appellant has shown that the Examiner erred in rejecting the
claims as being anticipated by Conrad and/or obvious over the combination
of cited references.

IV. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Claim Construction
1. The ordinary and usual meaning of “stand-alone” is a device that is
self-contained and that does not require any other devices to function.
http://www.webopedia.com/TERM/S/stand_alone.html12
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Conrad
2. Conrad discloses “reporting of operation characteristics of
components of a computer system.” (Col. 1, ll. 9-10.)
3. Conrad discloses a “performance reporting framework that
includes a plurality of reporting clients that concentrate on tracking and
reporting performance data for various system components and one or more
reporting servers for receiving the collected data from the reporting clients
and generating performance reports from the received data. Each reporting
client tracks component-specific metrics of interest for monitoring one or
more system components.” (Col. 2, ll. 26-34.)
4. Conrad discloses that a “component may be considered as a binary
image or a set of binary images that work together to provide a service. . . .
Examples of . . . services include audio and video recording/playback, USB
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device support, windowing services, file system management, and memory
management.” (Col. 5, ll. 26-34.)
5. Conrad discloses that “a plurality of reporting clients 83-89 that are
responsible for collecting statistical data relating to network performance of
different system components.” (Col. 5, ll. 55-58.)
6. Conrad discloses that the “reporting system may optionally have
higher levels of reporting servers that receive data from reporting servers on
a lower layer and generating a report of a higher level of abstraction than
those of the lower level servers, . . . suitable for reviewing the health or
status of multiple sets of system components.” (Col. 6, ll. 4-14.)
7. Conrad discloses that “[t]he division of the reporting system into
reporting clients for collecting data and reporting servers for generating
reports also makes it easier to modify the reporting system to accommodate
changing reporting requirements.” (Col. 6, ll. 49-52.)
8. Conrad discloses that “the invention will be described in the
general context of computer-executable instructions, such as program
modules, being executed by a personal computer.” (Col. 3, ll. 34-36.)

Moberg
9. Moberg discloses “receiving a failover message at a currently
active packet switching device (A), . . . de-activating a current packet
switching device (A) and activating a standby packet switching device (B) to
handle packet flow previously handled by the packet switching device (A),
thereafter reprogramming the packet switching device (A), and thereafter
deactivating the packet switching device (B) and re-activating the packet
switching device (A).” (Col. 1, l. 55 – col. 2, l. 3.)
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V. PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

VI. ANALYSIS
Grouping of Claims
In the Brief, Appellant argues claims 2-11 and 22 as a group (App. Br.
5-7 & 9-10). In other words, for claims 2-11, Appellant merely repeats the
same argument made for claim 22. Thus, the Board selects representative
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claim 22 to decide the appeal for this group. Accordingly, the remaining
claims in this group stand or fall with claim 22.
Appellant argues claims 12 and 14-20 as a group (App. Br. 8-10). For
claims 14-20, Appellant merely repeats the same argument made for claim
12. We will, therefore, treat claims 14-20 as standing or falling with claim
12. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588,
590 (Fed. Cir. 1991).

The Board's Claim Construction
"Our analysis begins with construing the claim limitations at issue."
Ex Parte Filatov, No. 2006-1160, 2007 WL 1317144, at *2 (BPAI 2007).
Claims are given their broadest reasonable construction “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
To determine whether Conrad anticipates representative claim 22, we
must first determine the scope of the claim. Our reviewing court stated in
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005), cert. denied,
sub nom. AWH Corp. v Phillips, 546 U.S. 1170 (2006):
The claims, of course, do not stand alone. Rather, they
are part of “a fully integrated written instrument,” Markman, 52
F.3d [967] at 978 [Fed. Cir. 1995], consisting principally of a
specification that concludes with the claims. For that reason,
claims “must be read in view of the specification, of which they
are a part.” Id. at 979. As we stated in Vitronics, the
specification “is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single
best guide to the meaning of a disputed term.” 90 F.3d at 1582.

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We note that Appellant has not identified any specific definition for
the term “stand-alone,” nor has Appellant identified any special definition in
the art for this term. From our review of the original Specification,
Appellant has not shown, and we do not readily find an express definition of
the aforementioned term in the Specification. Therefore, we give this term
its ordinary and customary definition and find that “stand-alone” designates
a device that is self-contained and that does not require any other devices to
function (FF 1).

The Anticipation Rejection
We first consider the Examiner’s rejection of claims 2, 3, 5, 6, and 22
under 35 U.S.C. § 102(e) as being anticipated by Conrad.
"Having construed the claim limitations at issue, we now compare the
claims to the prior art to determine if the prior art anticipates those claims."
In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002).
Appellant contends that “neither the ‘computer system components’
nor the ‘reporting devices’ described by Conrad meet the limitations claim
22 places on ‘network device[s].’” (App. Br. 6.) Appellant further contends
that “computer-system components do not perform dedicated, stand-alone
functions. . . . Conrad cannot have ‘data collection logic configured to
collect information pertaining to said networked device’s ability to perform
said standalone function,’ as no aspect of Conrad reports on the performance
of the ‘reporting clients.’” (App. Br. 6-7 and 9.) Further, Appellant
contends that the “’computer system components’ of Conrad do not perform
a ‘dedicated stand-alone function.’” (Reply Br. 3.) We disagree.
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The Examiner found that “the statistical data that is collected [in
Conrad] is in direct connection to a function that is repeatedly done by the
hosts or computer system components in the network” (Ans. 14).
Further, Conrad discloses a system and method for reporting
performance of computer system components (FF 2). In Conrad, reporting
clients, e.g., personal computers, track and report on performance data for
various system components (FF 3 & 8), whereby the components may be
considered as a binary image that provides a service including memory
management (FF 4). We find that a personal computer is a stand-alone
device, when performing file/memory management for example. Conrad
further discloses that the reporting clients are responsible for collecting data
relating to network performance of different system components (FF 5).
In other words, Conrad discloses a networked device, i.e., a reporting
client, which performs a stand-alone function, i.e., memory management,
whereby the reporting client collects data relating to the performance of the
components. Thus, we find that Conrad’s reporting client can act as a stand-
alone device and can perform a stand-alone function and collect data
pertaining to the performance thereto.
Based on our findings and those of the Examiner, we do not find that
Appellant has shown error in the Examiner’s rejection of exemplary claim
22. Instead, we find the Examiner has set forth a sufficient initial showing
of anticipation, and Appellant has not shown that Conrad lacks the above-
noted disputed features of claim 22. Therefore, we affirm the rejection of
independent claim 22 and of claims 2, 3, 5, and 6, which fall therewith.

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The Obviousness Rejection
We now consider the Examiner’s rejection of claims 4, 7-12 and 14-
20 under 35 U.S.C. § 103(a) as being obvious over the combination of cited
references.
Claims 4 and 7-11
For claims 4 and 7-11, Appellant merely repeats the same argument
made for claim 22. Therefore, for the reasons noted supra regarding claim
22, we affirm the rejection of claims 4 and 7-11.

Claims 12 and 14-20
Appellant contends that “[n]either Moberg nor Conrad, however,
analyze messages to determine an appropriate modification.” (App. Br. 9.)
The Examiner found that Conrad teaches “automatically analyzing
said message . . ., but does not specifically teach to determine an appropriate
modification of said network device” (Ans. 12). We disagree.
Not only does Conrad disclose generating a report of higher level of
abstraction that is suitable for reviewing the health or status of multiple sets
of system components (FF 6), but Conrad also discloses that the division of
the reporting system into reporting clients for collecting data and reporting
servers for generating reports also makes it easier to modify the reporting
system to accommodate changing reporting requirements (FF 7). Thus, we
find that Conrad discloses that modification of the reporting system is made
easier by analyzing the reports. Therefore, we find that not only does
Conrad disclose automatically analyzing the message, but Conrad also
discloses determining an appropriate modification for the reporting system
based on the analysis.
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Cumulative to Conrad, the Examiner further found that “Moberg
teaches automatically analyzing said message to determine an appropriate
modification of said network device” (Ans. 12). We agree.
Moberg discloses receiving a failover message and thereafter
replacing software controlling active routers (FF 9). Thus, we find that
Moberg discloses analyzing a message to determine an appropriate
modification of a networked device.
Appellant further contends that the “Examiner has failed to provide
any motivation for combining features of Conrad and Moberg for the
purposes of rejecting cla[i]m 12. Instead, the Examiner merely refers to the
motivation provided for claim 11.” (App. Br. 8.) Appellant further contends
that “Conrad and Moberg describe completely different systems, and one
would need to substantially modify Conrad in order to perform any function
from Moberg.” Id.
The Examiner concluded that “Conrad and Moberg are not so far
apart in technologies that it would take substantial unspecified alterations to
add the inventions together” (Ans. 16). We agree.
In KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739 (2007), the
Supreme Court emphasized “the need for caution in granting a patent based
on the combination of elements found in the prior art,” and discussed
circumstances in which a patent might be determined to be obvious without
an explicit application of the teaching, suggestion, motivation test.
In particular, the Supreme Court emphasized that “the principles laid down
in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.”
KSR, 127 S.Ct. at 1739 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966) (emphasis added)), and reaffirmed principles based on its precedent
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that “[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” Id.
The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
We have considered all of Appellant’s arguments in the Briefs, but we
are not persuaded of error in the rejection of claim 12. We find that
replacing software in the Moberg system, in an active component, for the
reasons identified by the Examiner, represents no more than the predictable
use of prior art elements according to their established functions, yielding
predictable results.
Therefore, we do not find that Appellant has shown error in the
Examiner’s rejection of exemplary claim 12. Instead, we find the Examiner
has set forth a sufficient initial showing of obviousness, and Appellant has
not shown that the combination of Conrad and Moberg lacks the above-
noted disputed features of claim 12. Therefore, we affirm the rejection of
independent claim 12 and of claims 14-20, which fall therewith.
As for the Reichman and Oskay references, Appellant merely argues
that neither reference teaches or suggests the above-noted limitations
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without providing any meaningful analysis that explains why the Examiner
erred. (App. Br. 9.) A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim. See 37 C.F.R. § 41.37(c)(1)(vii). We note that arguments which
Appellant could have made but chose not to make in the Briefs have not
been considered and are deemed to be waived.

VII. CONCLUSIONS
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 2-12, 14-20, and 22.

VIII. DECISION
In view of the foregoing discussion, we affirm the Examiner’s
rejections of claims 2-12, 14-20, and 22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).

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AFFIRMED

clj

HEWLETT-PACKARD COMPANY
Intellectual Property Administration
P.B. Box 272400
Fort Collins, CO 80527-2400

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