Ex Parte Bannach

Patent Trial and Appeal Board

May 23, 2013

10923798 (P.T.A.B. May. 23, 2013)

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.
10/923,798 08/24/2004 Matthias Bannach 129250-001090/US 4846
32498 7590 05/24/2013
CAPITOL PATENT & TRADEMARK LAW FIRM, PLLC
P.O. BOX 1995
VIENNA, VA 22183
EXAMINER
WOOLCOCK, MADHU
ART UNIT PAPER NUMBER
2451
MAIL DATE DELIVERY MODE
05/24/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MATTHIAS BANNACH
____________________

Appeal 2010-009320
Application 10/923,798
Technology Center 2400
____________________

Before JOSEPH F. RUGGIERO, TREVOR M. JEFFERSON, and IRVIN E.
BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 3, 4, and 6. We have jurisdiction under 35 U.S.C. § 6(b). Claims 2 and 5
are canceled.
We affirm.
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STATEMENT OF CASE
Introduction
The claims are directed to model-based operation support systems and
related methods, which model-based operation support systems use
generalized, normalized models capable of recognizing changes to network
elements. Abs. Claim 1, reproduced below, is illustrative of the claimed
subject matter with disputed limitation(s) italicized:
1. A computer readable medium for a model-based
operation support system (OSS) comprising:
a model storage section operable to store a normalized,
OSS model;
an interface section operable to retrieve changes
associated with one or more network element models or the
addition of one or more new network element models based on
received, normalized network element metadata;
a life-cycle section operable to update the normalized
OSS model, based on changes to one or more network element
models in the received, normalized network element meta-data;
and
a management section operable to manage one or more of
the network elements using the updated normalized OSS model,
wherein it is not necessary to add a new interface section each
time a new network element model is added.

References
Bimm
An
US 6,901,440 B1
US 7,483,973 B2
May 31, 2005
Jan. 27, 2009

Rejections
The Examiner rejected claims 1, 3, 4, and 6 under 35 U.S.C §103(a)
as unpatentable over Bimm and An. Ans. 4-8.

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ISSUE
Appellant contends that An receives meta-data originating from a
“client,” rather than from a “network element” as claimed, and that An’s
client model or client meta-data would not be equated, by one skilled in the
art, to the claimed network element models or network element meta-data.
App. Br. 4. Appellant further argues that “the combination of Bimm and An
is impermissible because such a combination would render one or both
references inoperable for their intended purposes or require one or both to
change their principle of operation.” Id. at 6. These arguments present us
with the issue of whether the Examiner erred in finding the claims obvious
over Bimm and An.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in both the Appeal Brief and Reply Brief that the Examiner erred.
We disagree with Appellant’s conclusions.
Appellant’s arguments are common to all claims. App. Br. 4.
Accordingly, the claims stand or fall together.
Appellant does not argue the Examiner’s findings with respect to
Bimm, except to say that the Examiner’s proposed combination is improper.
App. Br. 2-8; Reply Br. 2-3. Accordingly, we adopt the Examiner’s findings
as to the teachings of Bimm (Ans. 4-8). The Examiner finds that Bimm
describes all claim 1 elements, except that Bimm does not explicitly disclose
that the received data is meta-data. Id. The Examiner finds that An describes,
in the context of a service-oriented network architecture, an extensible meta-
data framework into which new types of service state can be plugged. Ans. 5
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(citing An, Col. 3, ll. 6-11). The Examiner finds that one skilled in the art
would find it obvious to combine Bimm and An to make Appellant’s
invention because “meta-data is often used when documenting data about
elements, attributes or data structures.” Id. at 6. We are unpersuaded of error
in these findings in view of Appellant’s arguments relating to the definition
of “network elements.” App. Br. 4-6; Reply Br. 1; Spec. ¶ 1, 9.
Nor are we persuaded by Appellant’s argument that Bimm and An
cannot be combined. The test for obviousness is not whether the features of
one reference may be bodily incorporated into another reference. In re
Bozek, 416 F.2d 1385, 1390, 57 CCPA 713, 719, 163 USPQ 545, 549-50
(1969); In re Mapelsden, 329 F.2d 321, 322, 51 CCPA 1123, 1126, 141
USPQ 30, 32 (1964). Rather, we look to see whether combined teachings
render the claimed subject matter obvious. In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012) (citing In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985)
(en banc) (noting that the criterion for obviousness is not whether the
references can be physically combined, but whether the claimed invention is
rendered obvious by the teachings of the prior art as a whole)). Here,
Appellant’s arguments – (i) “Bimm’s principle of operation would have to
be changed in order for Bimm to make use of the meta -data generated by a
client device in An” (App. Br. 6); (ii) that Bimm’s gateway receives
messages in varying communication protocols but “not data formats, or
meta-data formats, or XML” (id. at 5-6); (iii) that “[e]ven if Bimm could
somehow be permissibly modified to receive An’s XML meta -data, once
received the meta-data could not be processed by Bimm” (id. at 6); and (iv)
that “using An’s XML-like schema in Bimm would, most likely,
significantly increase Bimm’s complexity” (id.) – do not persuade us that
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combining Bimm and An would be beyond the ability of one skilled in the
art. The Examiner has “articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness,” (In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR International
Co. v. Teleflex Inc., 550 U.S. 398 at 418 (2007)) (Ans. 6), and Appellant has
not presented evidence of error in the Examiner’s reasoning.
CONCLUSIONS
On the record before us, we conclude that the Examiner did not err in
finding the claims obvious over Bimm and An. We sustain the rejection of
claims 1, 3, 4, and 6.

DECISION1
For the above reasons, the Examiner’s rejection of claims 1, 3, 4, and
6 is affirmed.

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).

AFFIRMED

1 We have decided the appeal before us. We observe, however, that claim 1
recites a “computer readable medium” without specifying that such medium
is in a “non-transitory” state. In case of further prosecution of claims 1 and
3, the Examiner’s attention is directed to guidance related to such subject
matter from the Director and our reviewing courts. See In re Nuijten, 500
F.3d 1346 (Fed. Cir. 2007), and Subject Matter Eligibility of Computer
Readable Media, 1351 OFFICIAL GAZETTE U.S. PAT. & TRADEMARK
OFF. 212 (Feb. 23, 2010).
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ke