Ex Parte Boston

Patent Trial and Appeal Board

Jun 28, 2013

10847281 (P.T.A.B. Jun. 28, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/847,281 05/17/2004 Christopher Boston 040002 (BLL0182US) 2544
36192 7590 07/01/2013
AT&T Legal Department - CC
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
BATURAY, ALICIA
ART UNIT PAPER NUMBER
2441
MAIL DATE DELIVERY MODE
07/01/2013 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 CHRISTOPHER BOSTON
____________

Appeal 2010-012244
Application 10/847,2811
Technology Center 2400
____________

Before JEAN R. HOMERE, MARC S. HOFF, and JOHN A. EVANS,
Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
methods for auditing network device configurations. The Examiner has
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed Apr. 7, 2010), the Answer (mailed Jul. 2,
2010), and the Reply Brief (filed Sep. 2, 2010). We have considered in this

1 The real party in interest is AT&T Intellectual Property I, L.P.
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decision only those arguments Appellant actually raised in the Briefs. Any
other arguments which Appellant could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).

STATEMENT OF THE CASE
Claims 1-9, 11-25 are on appeal. Claims 1, 17, and 22 are
independent. An understanding of the invention can be derived from a
reading of exemplary claim 1, which is reproduced below:
1. A method for auditing network device configurations, the
method comprising:

gathering configuration data from at least one network
device;

comparing the configuration data for the network device
to a plurality of templates including a privilege template, a
bandwidth template, a media type template and a port status
template, wherein one template is a global template that applies
to all network devices;

generating exception data in response to the comparing;
and

generating a report in response to receiving a reporting
request from a user, wherein input to the report includes the
exception data;

wherein the exception data includes an exception date
indicating when the exception was detected, an exception
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network device identifier identifying the name of the network
device that corresponds to the exception, an exception category
including an abbreviated description of the type of exception,
an exception detail describing the exception in more detail than
the exception category and an exception reason indicating a
recommended course of action to the user.

Claims 1-9 and 11-25 are rejected under 35 U.S.C. § 103(a) as
obvious over Depaolantonio,2 Touboul,3 and Burk.4 (Ans. 4-10).

Claim Groupings
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claims as set forth below. See 37 C.F.R.
§ 41.37(c)(1)(vii).

THE OBVIOUSNESS REJECTIONS
ISSUE
The issue with respect to the rejection is whether the Examiner’s
reading of the art fairly comports with the claim terms.

2 Depaolantonio, US 6,950,865 B1, issued Sept. 27, 2005, filed Mar. 26,
2001.
3 Touboul, US 6,125,390; issued Sept. 26, 2000.
4 Burk, US 2003/0074250 A1; published Apr. 17, 2003, filed Apr. 13, 2001.
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ANALYSIS
The Examiner has mapped a recitation of the cited art to each claimed
limitation and has provided a correspondence between terms provided in the
references to each claimed term. (Ans. 4-10). The Examiner finds that
“Depaolantonio teaches the invention substantially as claimed including a
method for automatically performing a network audit.” (Ans. 4). The
Examiner finds that “Depaolantonio does not explicitly teach a
recommended course of action to the user,” but that Touboul supplies this
missing limitation (Ans. 5) and that Burk teaches a privilege template not
taught by the Depaolantonio - Touboul combination. (Ans. 6).
Appellant alleges that the Examiner errs by improper construction of
the claim terms. For example, Appellant argues: “[i]f the Examiner is
suggesting that the disclosed set of rules is equivalent to the recited
templates, then this interpretation is in error.” Appellant suggests that the
interpretation advanced by the Examiner “would require an extra step in the
process recited in claim 1.” (App. Br. 6). The Examiner responds that the
claim language does not preclude an extra step. (Ans. 11).
During prosecution before the USPTO, claims are to be given their
broadest reasonable interpretation. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997). A necessary requirement of the broadest reasonable
construction rule is that the construction must be reasonable in light of the
specification. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
2010); accord In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (“[I]t
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would be unreasonable for the PTO to ignore any interpretive guidance
afforded by the applicant’s written description.”). Here, Appellant alleges
that the Examiner’s interpretation “is in error.” However, Appellant does not
point to a preferred definition in the Specification, nor does Appellant
provide a dictionary definition that precludes the Examiner’s interpretation
of the claim terms. In view of this omission, we are not persuaded that the
Examiner has erred.
The Reply Brief reiterates Appellant’s argument that the claimed
templates are not equivalent to Depaolantonio’s disclosed “set of rules.”
(Reply Br. 2-5). However, as discussed above, Appellant fails to point to a
definition in the Specification or to extrinsic evidence to show that the
person of ordinary skill in the art would not equate the claimed templates
with the disclosed set of rules.
Appellant’s Reply Brief argues that the Examiner finds that
Depaolantonio discloses a “bandwidth template” at column 9, line 45 to
column 10, line 4. Appellant contends that if the recited templates are
equivalent to a “set of rules,” then by the Examiner’s logic, the recited
bandwidth template must also be a set of rules. Appellant contends that
Figure 6C and its associated discussion, relied upon by the Examiner
describes fault analysis tables (col. 8, ll. 28-30) and that Figure 6C merely
provides information on the physical health of various devices. (Reply Br. 3-
4).
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Appellant contends that the passage cited by the Examiner (col. 9, l.
45 to col. 10, l. 4) does not correspond to a “set of rules.” The cited passage
refers Figure 6E (not 6C) which relates to “optical interface fault
management table 650, which is applicable for all optical router 170
interfaces.” (Depaolantonio, col. 9, ll. 46-47). Immediately following the
passage cited by the Examiner (col. 10, l. 4). Depaolantonio discloses
embodiments of the present invention use ‘net rules’ to analyze the
data which is returned from the optical devices (e.g., DWDMs 150,
optical concentrators 160, optical routers 170, etc.). These rules are
used to define the critical and warning conditions. FIG. 7 shows a
table 700 summarizing the various net rules that are used in the
analysis of optical routers 170.

(Depaolantonio, col. 10, ll. 5-11). Thus, starting immediately following the
passage cited by the Examiner, Depaolantonio discloses that the data are
analyzed by “net rules,” i.e., a “set of rules.”
We are not persuaded that the passage cited by the Examiner does not
correspond to a “set of rules.”
Attorney argument is not evidence. In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974). Nor can it take the place of evidence lacking in the
record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977). Lawyer’s
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). We find that Appellant has failed to present
substantive arguments and supporting evidence persuasive of Examiner error
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regarding the aforementioned disputed limitation. See In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011)(“we 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.”).
Appellant further alleges that the Examiner has not properly provided
motivation to combine the references:
[A]n Examiner cannot establish obviousness by locating
references that describe various aspects of a patent applicant's
invention without also providing evidence of the motivating
force which would have impelled one skilled in the art to do
what the patent applicant has done. Ex parte Levengood, 28
U.S.P.Q.2d 1300 (Bd. Pat. App. Int. 1993). The references,
when viewed by themselves and not in retrospect, must suggest
the invention. In Re Skoll, 187 U.S.P.Q. 481 (C.C.P.A. 1975).

(App. Br. 8).
In citing authority from our predecessor Board of Patent Appeals and
Interferences and the prior Court of Customs and Patent Appeals, Appellant
fails to cite the Supreme Court’s 2007 holding that in analyzing an
obviousness rationale, a court need not find specific teachings, but rather
may consider “the background knowledge possessed by a person having
ordinary skill in the art” and “the inferences and creative steps that a person
of ordinary skill in the art would employ.” See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)). Appellant declines to argue that the Examiner’s proffered
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motivation to combine (see Ans. 6) is in error. Instead, Appellant proffers
outdated and no-longer-persuasive authority which this Board cannot accept.
In his Reply Brief, Appellant cites generally to KSR. (Reply Br. 6).
However, Appellant does not cite to a specific proposition to suggest the
Examiner’s findings regarding motivation are in error.
Appellant advances essentially identical contentions for the
patentability of independent claims 1 (App. Br. 5-10), 17 (App. Br. 10-15),
and 22 (App. Br. 15-20). Appellant does not separately argue the
patentability of dependent claims 2-9, 11-16, 18-21, and 23-25. (App. Br.
20).

SUMMARY
We affirm the rejection of claims 1-9, 11-25 under 35 U.S.C. § 103.5
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

rwk

5 Should prosecution continue in this case, we suggest the claims be
reviewed for compliance with 35 U.S.C. § 101.