Ex Parte Chaturvedi

Patent Trial and Appeal Board

May 23, 2014

11899843 (P.T.A.B. May. 23, 2014)

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.
11/899,843 09/07/2007 Animesh Chaturvedi FDRY-0133-US 9481
86221 7590 05/23/2014
BROCADE COMMUNICATIONS SYSTEMS, INC.
c/o MURABITO, HAO & BARNES LLP
Two North Market Street
Third Floor
San Jose, CA 95113
EXAMINER
RASHID, HARUNUR
ART UNIT PAPER NUMBER
2497
MAIL DATE DELIVERY MODE
05/23/2014 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 ANIMESH CHATURVEDI
____________

Appeal 2011-005763
Application 11/899,843
Technology Center 2400
____________

Before CARLA M. KRIVAK, JOHNNY A. KUMAR, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-38. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
In reaching the decision, we have considered only the arguments
Appellant actually raised. Arguments Appellant did not make are deemed to
be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2010).

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STATEMENT OF THE CASE
The present invention relates to network management software. See
generally Spec. 1. Claim 1 is exemplary:
1. A method of managing network devices coupled to a
network comprising:
displaying items corresponding to the network devices;
accepting a search term;
searching the items to find matches between the search
term and the items;
visually indicating items that match the search term;
automatically selecting the items that match the search
term, wherein a network operation can be performed on all of
the items that match the search term, without having to re-select
the items.
THE REJECTIONS
Claims 1-3, 6, 7, 12, 16-20 and 23-25 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Runov (US 2006/0101347 A1) and
Kumar (US 2007/0294409 A1).
Claims 4, 14, 15 and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Runov, Kumar, and Komamura (US 2004/0249790
A1).
Claims 5, 13 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Runov, Kumar, and Tan (US 2006/0036567 A1).
Claims 8, 10, 26 and 28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Runov, Kumar, and Ward (US 2006/0026674 A1).
Claims 9 and 27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Runov, Kumar, and Hawthorne (US 2003/0152075 A1).
Claims 11 and 29 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Runov, Kumar, and Ablan (US 2007/0214075 A1).
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Claims 30, 33 and 34 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Runov and Harsham (US 6,041,347).
Claims 31 and 32 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Runov, Harsham, and Marmaros (US 2005/0149500 A1).
Claims 35 and 38 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Runov, Harsham, and Wilson (US 2006/0200455 A1).
Claim 36 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Runov, Harsham, Wilson, and Komamura.
Claim 37 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Runov, Harsham, Wilson, and Tan.

ISSUE
Under 35 U.S.C. § 103, has the Examiner erred by finding Runov and
Kumar collectively teach “wherein a network operation can be performed on
all of the items that match the search term, without having to re-select the
items” as recited in claim 1?1

PRINCIPLES OF LAW
“[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(citation omitted).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from

1 Additional issues are discussed in the Analysis section.
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the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006) (citation omitted).
“[The] mere disclosure of alternative designs does not teach away”
and “just because better alternatives exist in the prior art does not mean that
an inferior combination is inapt for obviousness purposes.” In re Mouttet,
686 F.3d 1322, 1334 (Fed.Cir.2002) (citations omitted).
“Although a reference that teaches away is a significant factor to be
considered in determining unobviousness, the nature of the teaching is
highly relevant, and must be weighed in substance. A known or obvious
composition does not become patentable simply because it has been
described as somewhat inferior to some other product for the same use.” In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

ANALYSIS
Claims 1-17
On this record, we find the Examiner did not err in rejecting claim 1.
First, Appellant asserts Runov’s paragraph 18 does not teach “without
having to re-select the items” as recited in claim 1, because Runov does not
specify the selected items are reselected for another search as required by
claim 1. See App. Br. 14-16. Appellant contends the term “without having
to re-select the items” points to an avoidance of a second and subsequent
search. See App. Br. 15-16.
Second, Appellant argues “the network operations performed in
Kumar are restricted to discovery of network devices only,” and there is no
support in Kumar to launch a network operation on all of the items that
match the search term, without having to re-select the items. See App. Br.
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16-17.2 Appellant contends the Examiner lacks a reference teaching “a
network operation can be performed on all of the items that match the search
term, without having to re-select the items.” See App. Br. 18. Appellant
asserts because Kumar does not teach all of the limitations of claim 1, there
should not be an obviousness finding based on the combination of Runov
and Kumar. See App. Br. 18-19. Appellant argues because neither Runov
nor Kumar teaches the disputed claim limitation, one skilled in the art would
not have combined the references for the disputed claim limitation. See
App. Br. 19.
We disagree with Appellant’s arguments and contentions (App. Br.
12-19), and agree with and adopt the Examiner’s findings and conclusions
on pages 5 and 24-29 of the Answer as our own. Therefore, we limit our
discussion to the following points for emphasis.
First, the disputed claim limitation merely states “wherein a network
operation can be performed on all of the items that match the search term,
without having to re-select the items.” Therefore, the Examiner reasonably
interprets the disputed claim limitation to encompass Runov’s and Kumar’s
collective teachings. See Ans. 5; 24-29. The Examiner correctly finds
Runov teaches “[] all of the items that match the search term, without having
to re-select the items.” See Ans. Ans. 5; 24-29; Runov; [0015] (“as the user
enters the search term . . . certain icons within a preferences window or other

2 Appellant contends “Runov has no mention of network devices, as
conceded by the Examiner” (App. Br. 5), but does not cite any support for
the assertion. We note Runov teaches a network, locating devices, and
changing a network password by a user on a computer. See, e.g., Runov ¶
[0030], Fig. 1, ¶¶ [0002]-[0004]. Therefore, network devices are taught by
or at least obvious in light of Runov.
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set of container items are highlighted automatically”); Runov ¶ [0018]
(“highlights appear and disappear, automatically as the user types in the
search field. Thus, the user need not hit Enter, or any other key, to activate
the search and highlight functionality of the present invention”); see also
Runov ¶ [0047]. The Examiner also finds Kumar teaches “a network
operation can be performed on [items].” See Ans. 24; Kumar ¶ [0004] (“The
data can be formatted into a table or a network “tree” which can then be
displayed or manipulated for network management purposes.”); Kumar ¶
[0047] (“the network map in the Console will be updated to reflect that a
system is manageable and contains the information necessary to manage the
system.”). Therefore, the Examiner correctly finds Runov and Kumar
collectively teach “wherein a network operation can be performed on all of
the items that match the search term, without having to re-select the items.”
Second, because the Examiner relies on Runov and Kumar
collectively to teach the disputed claim limitation, the Examiner does not
need to find a single reference to teach the entire claim limitation. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (Appellant cannot
establish nonobviousness by attacking references individually) (see also
Ans. 25). Further, it is well settled “a determination of obviousness based
on teachings from multiple references does not require an actual, physical
substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir.
2012) (citations omitted). Nor is the test for obviousness whether a
secondary reference’s features can be bodily incorporated into the structure
of the primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellant’s assertion “the network operations performed in Kumar are
restricted to discovery of network devices only” is unpersuasive because
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Appellant does not cite any credible support for the attorney argument.3 In
any event, the disputed claim limitation merely recites “a network operation
can be performed,” but does not specify a particular type of network
operation.
Finally, contrary to Appellant’s argument, “[i]n determining whether
the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls.” KSR Int’l Co.
v. Teleflex, Inc., 550 U.S. 398, 419 (2007). The Examiner has provided
articulated reasoning with a rational underpinning as to why one skilled in
the art would have found it obvious to combine the teachings of Runov and
Kumar (Ans. 5, 24-29). Combining the teachings of Runov and Kumar
would have predictably used prior art elements according to their established
functions—an obvious improvement. See KSR, 550 U.S. at 417.
Because Appellant has not persuaded us of error, we sustain the
Examiner’s rejection of claim 1.
Appellant argues the associated dependent claims should be allowed
for the same reason and the additionally cited prior art does not cure
Runov’s and Kumar’s alleged deficiencies. Therefore, for similar reasons,
we sustain the rejection of claims 2-17.

Claims 18-29

3 Contrary to Appellant’s assertion (App. Br. 16), Kumar’s title does not
state the network operations performed in Kumar are restricted to discovery
of network devices only.
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We disagree with Appellant’s arguments (App. Br. 20-23), and agree
with and adopt the Examiner’s findings and conclusions on pages 5 and 30
of the Answer as our own. Therefore, we limit our discussion to the
following points for emphasis.
Contrary to Appellant’s argument, Kumar teaches “an operation
specified by a user.” See Ans. 30; Kumar ¶ [0022].
Therefore, and for this reason and reasons similar to those discussed
above with respect to claim 1, we sustain the Examiner’s rejection of claim
18.
Appellant argues the remaining dependent claims should be allowed
for the same reasons and additionally cited prior art does not cure Runov’s
and Kumar’s alleged deficiencies. Therefore, we sustain the rejection of
claims 19-29.

Claims 30-34
We disagree with Appellant’s arguments (App. Br. 30-35), and agree
with and adopt the Examiner’s findings and conclusions on pages 33-35 of
the Answer as our own. Therefore, we limit our discussion to the following
points for emphasis.
Because the Examiner relies on Runov and Harsham collectively to
teach the claimed limitations, Appellant’s argument against Harsham alone
is unpersuasive of error. See Merck, 800 F.2d at 1097 (Appellant cannot
establish nonobviousness by attacking references individually). In fact,
Appellant does not rebut the Examiner’s finding that “Runov disclose[s]
user searching or locating items of any type (including the devices) in a
network environment ([0030])[.]” Ans. 33. See In re Baxter Travenol
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Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this
court [or this board] to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”).
Because it is undisputed Runov teaches “a search term” (Ans. 16) and
Harsham teaches network devices (Ans. 16), Runov and Harsham
collectively teach “determining which, if any, of the network devices
correspond to the search term.” Combining the teachings of Runov and
Harsham would have predictably used prior art elements according to their
established functions—an obvious improvement. See KSR, 550 U.S. at 417.
Further, Appellant has not provided sufficient analysis (App. Br. 33-
34) to persuade us Harsham teaches away from claim 30. See Kahn, 441
F.3d at 990; Mouttet, 686 F.3d at 1334; Gurley, 27 F.3d at 553. Further,
Appellant’s argument that Harsham teaches away because it states “[a]ll
machines in the computer network also can be configured or monitored
simultaneously” (App. Br. 34) is unpersuasive. Claim 30 merely recites
“wherein a network operation can simultaneously be performed on each
network device,” and does not preclude the network operation from being
performed on all network devices.
Finally, contrary to Appellant’s argument, claim 30 merely recites
“wherein a network operation can . . . ,” but does not specify or require a
particular type of network operation.
Therefore, for these reasons and similar reasons discussed above with
respect to claim 1, we sustain the Examiner’s rejection of claim 30.
Appellant argues the associated dependent claims should be allowed
for the same reasons and the additionally cited prior art does not cure
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Runov’s and Harsham’s alleged deficiencies. Therefore, we sustain the
rejection of claims 31-34.

Claims 35-38
We disagree with Appellant’s arguments (App. Br. 37-39), and agree
with and adopt the Examiner’s findings and conclusions on pages 36-37 of
the Answer as our own.
For similar reasons discussed above with respect to claim 35, we
sustain the Examiner’s rejection of claim 35.
Appellant argues the associated dependent claims should be allowed
for the same reasons and the additionally cited prior art does not cure
Runov’s and Kumar’s alleged deficiencies. Therefore, we sustain the
rejection of claims 36-38.

DECISION
The Examiner’s decision rejecting claims 1-38 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

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