09928771 (B.P.A.I. Dec. 17, 2009)

Ex Parte Buckman et al

Board of Patent Appeals and InterferencesDec 17, 2009

09928771 (B.P.A.I. Dec. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte CHARLES R. BUCKMAN, DENNIS J. COX, DONOVAN M. KOLBY, CRAIG S. CANTRELL, BRIAN C. SMITH, JON H. WERNER, MARC WILLEBEEK-LEMAIR, J. WAYNE BLACKARD, and FRANCIS S. WEBSTER III __________ Appeal 2009-003646 Application 09/928,771 Technology Center 2400 __________ Decided: December 17, 2009 __________ Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and DEBRA K.STEPHENS Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 34, 47, and 60-69. Claims 1-33, 35-46, and 48-59 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2009-003646 Application 09/928,771 2 STATEMENT OF THE CASE THE INVENTION Appellants’ invention relates generally to computer networks. More particularly, Appellants’ invention relates to programming network nodes to provide services in a best effort, packet-based network architecture. (Spec. 1, ll. 2-5). Claim 34 is illustrative: 34. A system for programming a packet-based network having a plurality of nodes for providing services to network subscribers, the system comprising: a service creation tool operable to program a service definition package, said service definition package defining a plurality of packet processing behaviors; a service control center interfaced with the packet-based network and operable to accept said service definition package for deployment to at least one network node, said service control center comprising: a first logic element operable to select one or more network processors for implementing said service definition package; a second logic element operable to provide network processor- specific instructions and data to perform packet processing behaviors; a third logic element operable to load said instructions and data into said one or more network processors; a fourth logic element operable to monitor information from one or more network processors; and Appeal 2009-003646 Application 09/928,771 3 a fifth logic element operable to utilize said information from said one or more network processors to report status information about said service definition package; and at least one network node interfaced with the network, the node having a network processor, the node operable to perform the one or more packet processing behaviors. PRIOR ART The Examiner relies upon the following references as evidence: Patterson US 2002/0052941 A1 May 2, 2002 Tindal US 2002/0069274 A1 June 6, 2002 THE REJECTION The Examiner rejected claims 34, 47, and 60-69 under 35 U.S.C. § 103(a) as unpatentable over the combination of Tindal and Patterson. CLAIM GROUPING Based on Appellants’ arguments in the Appeal Brief, we will decide the appeal on the basis of representative claim 34. See 37 C.F.R. §41.37(c)(1)(vii). Appeal 2009-003646 Application 09/928,771 4 APPELLANTS’ CONTENTIONS 1. Appellants contend that Tindal is directed to configuration and not service creation as recited in the pending claims. Appellants contend that Patterson fails to cure this deficiency. (App. Br. 4-5). 2. Appellants assert that an artisan would understand that “service creation and configuration are directed to different aspects of providing network services. Service creation is the process of generating new functionality to provide a network service. Configuration, on the other hand, relates to changing the parameters for existing functionality.” (App. Br. 4, last paragraph through the first paragraph of page 5). ISSUE Based upon our review of the administrative record, we have determined that the following issue is dispositive in this appeal: Have Appellants shown the Examiner erred in finding that the cited references teach or would have suggested a “service creation tool” as claimed? (See claim 34). PRINCIPLES OF LAW CLAIM CONSTRUCTION “[T]he PTO gives claims their ‘broadest reasonable interpretation.’” In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). Appeal 2009-003646 Application 09/928,771 5 OBVIOUSNESS The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). “What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” Id. at 417. Invention or discovery is the requirement which constitutes the foundation of the right to obtain a patent . . . unless more ingenuity and skill were required in making or applying the said improvement than are possessed by an ordinary mechanic acquainted with the business, there is an absence of that degree of skill and ingenuity which constitute the essential elements of every invention. Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood, 52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited with approval by the Supreme Court in KSR, 550 U.S. at 406, 415, 427). 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). Therefore, we look to Appellants’ Brief to show error in the proffered prima facie case. Appeal 2009-003646 Application 09/928,771 6 FINDINGS OF FACT In our analysis infra, we rely on the following findings of fact (FF): THE TINDAL REFERENCE 1. Tindal discloses a network manager unit that allows the administrator to holistically view, configure and manage an entire network without regard to device type and/or manufacturer. (Abst., ll. 6-8). THE PATTERSON REFERENCE 2. Patterson discloses “a firewall configuration dialog that may be used to create or modify one or more parameter values pertaining to a firewall.” (Para. [0248], emphasis added). ANALYSIS We decide the question of whether Appellants have shown the Examiner erred in finding that the cited combination of Tindal and Patterson teaches or would have suggested a “service creation tool” as claimed. (Representative claim 34). As noted above, Appellants contend that “[s]ervice creation is the process of generating new functionality to provide a network service.” (App. Br. 4-5). Appellants further contend this limitation is not taught by Tindal, and Patterson fails to cure this deficiency. (App. Br. 4-5). Appeal 2009-003646 Application 09/928,771 7 While Appellants’ arguments focus on the function of “service creation” as that term would have been known to those of ordinary skill in the art (Id.), we note that claim 34 actually recites a service creation tool that performs a specific claimed function. 1 (See claim 34). Therefore, we begin our analysis by construing the claimed “service creation tool” in accordance with the express language of claim 34, as any tool that performs the function of programming a service definition package that defines a plurality of packet processing behaviors.2 We conclude that the claimed functional language (“defining a plurality of packet processing behaviors”) broadly encompasses any packet- based network configuration. Therefore, we conclude that the scope of the claimed “service creation tool” broadly but reasonably encompasses any tool that performs network configuration, such as the network configuration performed by the “network manager unit” of Tindal. (FF 1). Regarding the secondary Patterson reference, Appellants merely assert that “Patterson is devoid of any discussion of a service creation or a service definition package. Therefore, it fails to supply the teachings that are missing from Tindal.” (App. Br. 5). We find Appellants have failed to rebut the Examiner’s findings regarding Patterson with any meaningful analysis. (See Ans. 5 and 7-8). Instead of argument, Appellants merely present a conclusory assertion in the 1 The claims measure the invention. See SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). 2 See Claim 34: “a service creation tool operable to program a service definition package, said service definition package defining a plurality of packet processing behaviors;” Appeal 2009-003646 Application 09/928,771 8 Brief. (Id.) This form of argument, however, is wholly ineffective in demonstrating error in the Examiner’s prima facie case to establish the patentability of the claims on appeal. See Ex parte Belinne, No. 2009- 004693, slip op. at 7-8 (BPAI Aug. 10, 2009) (informative), available at http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf Moreover, by Appellants’ own proffered definition of “service creation”3 we find that Patterson teaches a “tool” (firewall configuration dialog) that programs “a service definition package” (by creating or modifying parameter values) “defining a plurality of packet processing behaviors” (i.e., packet processing by a firewall). (See Claim 34 and FF 2). Lastly, we note that Appellants have not rebutted the Examiner’s responsive arguments in the Answer by availing themselves of the opportunity to file a Reply Brief. “Silence implies assent.” Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 572 (1985). For at least the aforementioned reasons, we do not find Appellants’ single attack on the Tindal reference to be persuasive. We find Appellants have not sustained the requisite burden on appeal of providing arguments or evidence persuasive of error in the Examiner’s obviousness rejection of representative claim 34 and claims 47, and 60-69 that fall therewith. 3 “Service creation is the process of generating new functionality to provide a network service.” (App. Br. 4-5). Appeal 2009-003646 Application 09/928,771 9 CONCLUSION Based on the findings of facts and analysis above, Appellants have not shown the Examiner erred in finding that the cited combination of Tindal and Patterson teaches or would have suggested a “service creation tool” as claimed. DECISION We affirm the Examiner’s decision rejecting claims 34, 47, and 60-69 under 35 U.S.C. § 103(a). 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 pgc 3COM CORPORATION 350 CAMPUS DRIVE MARLBOROUGH MA 01752-3064