Ex Parte Chen et al

Board of Patent Appeals and Interferences

May 8, 2009

10689370 (B.P.A.I. May. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHUXIN CHEN, RALPH GNAUCK,
and GEORGE T. NOLL
____________________

Appeal 2009-1514
Application 10/689,3701
Technology Center 2800
____________________

Decided:2 May 8, 2009
____________________

Before ROBERT E. NAPPI, MARC S. HOFF, and KARL EASTHOM,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is AT&T Laboratories, Inc.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-1514
Application 10/689,370

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention relates to a system and method for monitoring
and analyzing one or more pieces of telecommunication network equipment
via a rule based system (para. 0002). The monitoring system can perform
various software routines that can produce a series of graphical output
images, to illustrate the status of a particular node in the network (para.
0018).
Claim 1 is exemplary:
1. A system for monitoring equipment in a telecommunications network,
the system comprising:
a monitor set including at least one of either a subset of the
equipment, a review period, or a configuration for the equipment;
a plurality of rules related to the monitor set, wherein the rules include
at least one rule usable to predict exhaustion of the equipment;
means for obtaining data related to the monitor set; and
a program for creating one or more analytical reports about the
monitor set based on the rules and the data, wherein the one or more
analytical reports include a prediction of exhaustion of the equipment,
wherein the program includes:
an inference engine having instructions for retrieving the data from a
data layer of an inventory retrieval system, determining if a match exists
between the data and one or more of the plurality of rules and selectively
firing the rule on the data to produce an analysis to create the one or more
analytical reports.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Husseiny US 5,210,704 May 11, 1993
Pisello US 5,678,042 Oct. 14, 1997
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Bergholm US 5,761,432 Jun. 2, 1998
Kekic US 5,999,179 Dec. 7, 1999
Jain US 6,225,999 B1 May 1, 2001
Chen US 6,668,241 B2 Dec. 23, 2003
Sampath US 6,892,317 B1 May 10, 2005

Claims 1-9 stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over Chen in view
of Husseiny.
Claims 1 and 13-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kekic in view of Sampath.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kekic in view of Sampath and Husseiny.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kekic in view of Sampath, Husseiny, and Pisello.
Claims 4 and 7-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kekic in view of Jain and Bergholm.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kekic in view of Jain, Bergholm, and Husseiny.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kekic in view of Jain, Bergholm, and Pisello.
Claims 10-12, 16, and 18-20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kekic in view of Sampath and Pisello.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kekic in view of Sampath, Pisello, and Husseiny.
Throughout this decision, we make reference to the Appeal Brief
(“Br.,” filed September 5, 2007), the Reply Brief (“Reply Br.,” filed January
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23, 2008) and the Examiner’s Answer (“Ans.,” mailed November 28, 2007)
for their respective details.
ISSUES
With respect to claims 1 and 10, Appellants argue that the Examiner
has not set forth a prima facie case of obviousness because Sampath is not
concerned with prediction of equipment exhaustion, but rather with
prediction of equipment failure (App. Br. 5), and because Sampath does not
teach a program for creating one or more analytical reports, those reports
including a prediction of exhaustion of the monitored network equipment
(App. Br. 5-6).
With respect to claims 4 and 10, Appellants argue that the Examiner
failed to identify a valid reason why a person of ordinary skill in the art
would have combined the references to achieve the claimed invention (App.
Br. 7, 9).
Appellants’ arguments present us with the following issues:
1. Have Appellants shown that the Examiner erred in finding that
Sampath’s teaching of prediction of equipment failure does not anticipate
the claimed prediction of equipment exhaustion?
2. Have Appellants shown that the Examiner erred in finding that
Kekic in combination teaches the creation of one or more analytical reports?
3. Have Appellants shown that the Examiner erred in combining
the various references to arrive at the claimed invention?
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FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellants, the invention concerns a system and
method for monitoring and analyzing one or more pieces of
telecommunication network equipment via a rule based system (para. 0002).
The monitoring system can perform various software routines that can
produce a series of graphical output images, to illustrate the status of a
particular node in the network (para. 0018).
2. Appellants’ Specification does not provide a definition of the
phrase “equipment exhaustion.”
Kekic
3. Kekic teaches a comprehensive open, standards-based network
management solution for computer networks having a computer network
management capability (col. 5, ll. 39-42).
4. Kekic teaches network management including a graphical user
interface (GUI) which gives a visual representation of the status of a
component by varying its color (col. 6, ll. 30-32), and flashes an alarm
button when an event associated with an alarm occurs, alerting the user that
action may be required in management of the computer network element
(col. 6, ll. 41-45). Kekic further teaches maintaining an alarm log which a
user may review (col. 6, l. 46).
Sampath
5. Sampath teaches real-time failure prediction and diagnoses of
electronic systems operating in a network environment (Abstract).
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6. Prediction/diagnostics circuit 150 makes a determination as to
whether status information indicates that an electronics system has failed, or
is predicted to fail, based on a prognostic/diagnostic analysis of the [status]
information (col. 5, l. 64 – col. 6, l. 1).
7. If a failure is detected, or is suspected, the repair planning
circuit 165 determines a corrective repair action (col. 6, ll. 5-7), which may
include an action request to the appropriate service, repair, and/or
parts/consumable supplier, or to an autonomous repair agent (col. 6, ll. 63-
65).
Jain
8. Jain teaches a graphical user interface that permits a network
manager to select a limited number of network components for display in a
topological map, along with pertinent information relating thereto, while
removing the display of undesirable or unnecessary data (col. 2, ll. 42-47).
Bergholm
9. Bergholm teaches a method and apparatus for more efficient
use of telecommunications network resources, including an attribute
designed database system which provides for inventory management, order
process management and design management (col. 1, ll. 8-13).
Pisello
10. Pisello teaches a network management system having virtual
catalog overview function for viewing of files distributively stored across a
network domain (col. 4, ll. 32-34).
Husseiny
11. Husseiny teaches a wearout monitor for failure prognostics to
predict incipient failure in rotating mechanical equipment (col. 1, ll. 9-11).
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Chen
12. Chen teaches a rule-based capacity management system for an
inter office facility (Abstract).
PRINCIPLES OF LAW
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007). 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, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550
U.S. at 407(“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 550 U.S. at 415 (citing Graham v. John
Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed
principles based on its precedent that “[t]he combination of familiar
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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 417. 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.
ANALYSIS
OBVIOUSNESS-TYPE DOUBLE PATENTING REJECTION
Appellants present no arguments directed to this rejection. Because
Appellants have not shown error in the Examiner’s rejection, then, we will
sustain the Examiner’s rejection of claims 1-9 under the judicially created
doctrine of obviousness-type double patenting.3
SECTION 103 REJECTION OF CLAIMS 1 AND 13-15
We select claim 1 as representative of this group, pursuant to our
authority under 37 C.F.R. § 41.37(c)(1)(vii).

3 See MPEP § 1205.02, Rev. 3, Aug. 2005 (“If a ground of rejection stated
by the examiner is not addressed in the appellant's brief, that ground of
rejection will be summarily sustained by the Board.”); see also 37 C.F.R.
§ 41.37(c)(1)(vii) (requiring a statement in the briefs as to each ground of
rejection presented by Appellant for review); 37 C.F.R. § 41.37(c)(1)(vii)
(stating that arguments not presented in the briefs by Appellant will be
refused consideration).

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Appellants argue that the Examiner has failed to make out a prima
facie case of obviousness because Sampath teaches predicting equipment
failure, not predicting equipment exhaustion (App. Br. 5), and because
neither Kekic nor Sampath teach creating one or more analytical reports
(App. Br. 5-6).
Appellants’ arguments are not persuasive of Examiner error. In order
to refute the Examiner’s rejection over Kekic in view of Sampath,
Appellants have the burden of establishing why Sampath’s prediction of
equipment failure does not equate to the claimed prediction of equipment
exhaustion. We find that Appellants have not carried their burden. Contrary
to Appellants’ arguments (App. Br. 5), the Specification does not provide
any definition of “equipment exhaustion” (FF 2). Appellants refer to the
content of claims 2 and 3 as allegedly defining “equipment exhaustion”
(App. Br. 5). Claims 2 and 3, however, merely express possible rules usable
to predict exhaustion, rather than informing the person of ordinary skill in
the art what exhaustion actually means. In our view, “projected lifetime” and
“capacity” of equipment (recited in claims 2 and 3, respectively) are as
applicable to potential equipment failure as they are to potential equipment
exhaustion; as a result, the claim language provides no guidance regarding
any functional difference between the two terms.
We therefore find that Appellants have not articulated a functional
difference between equipment failure and equipment exhaustion. We concur
in the Examiner’s view that the two phrases are analogous and amount to the
end of equipment’s “useful life” (Ans. 24). As a result, we find that
Appellants have not established that the Examiner erred in reading
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Sampath’s prediction of equipment failure as meeting the claim limitations
regarding predicting equipment exhaustion.
With respect to claim 1’s recitation of “a program for creating one or
more analytical reports,” we are not persuaded by Appellants’ argument that
Sampath does not teach such analytical report creation. Sampath teaches
real-time failure prediction and diagnoses of electronic systems operating in
a networking environment (FF 5). Prediction/diagnostics circuit 150 makes a
determination as to whether status information indicates that an electronics
system has failed, or is predicted to fail, based on a prognostic/diagnostic
analysis of the [status] information (FF 6). If a failure is detected, or is
suspected, the repair planning circuit 165 determines a corrective repair
action (FF 7), which may include an action request to the appropriate
service, repair, and/or parts/consumable supplier, or to an autonomous repair
agent (FF 7). Sampath thus teaches analysis (real-time processing) as well as
reporting, meeting the limitation at issue.
We further observe that Kekic teaches network management including
a graphical user interface (GUI) which gives a visual representation of the
status of a component by varying its color (FF 4), and flashes an alarm
button when an event associated with an alarm occurs, alerting the user that
action may be required in management of the computer network element
(id.). Kekic further teaches maintaining an alarm log which a user may
review (id.). We find that Kekic thus teaches analysis of network
components, and reports to the user of component status, thus also meeting
the claim limitation of “creation of analytical reports.”
Because we find that Appellants have not carried their burden of
establishing a functional difference between “equipment exhaustion” and
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“equipment failure,” and because we find that both Kekic and Sampath teach
the creation of analytical reports about a monitor set, we concur in the
Examiner’s conclusion that it would have been obvious to combine Kekic
and Sampath to achieve the instant invention, in order to provide a better
rule-based monitoring system (Ans. 12).
We conclude that Appellants have not established error in the
Examiner’s rejection, and we will sustain the Examiner’s rejection of claims
1 and 13-15 under 35 U.S.C. § 103.
SECTION 103 REJECTION OF CLAIMS 2 AND 3
We affirm supra the rejection of parent claim 1 under U.S.C. § 103 as
unpatentable over Kekic in view of Sampath. Appellants present no separate
argument for the patentability of dependent claims 2 and 3. We will
therefore sustain the rejection of claim 2 under 35 U.S.C. § 103 as
unpatentable over Kekic in view of Sampath and Husseiny, for the same
reasons expressed with respect to claim 1. We will also sustain the rejection
of claim 3 under 35 U.S.C. § 103 as unpatentable over Kekic in view of
Sampath, Husseiny, and Pisello, for the same reasons expressed with respect
to claim 1.
SECTION 103 REJECTION OF CLAIMS 4 AND 7-9
We select claim 4 as representative of this group, pursuant to our
authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellants’ argument for the patentability of claim 4 consists of an
assertion that the Examiner has failed to identify a valid reason why a person
of ordinary skill in the art would have made the combination put forth by the
Examiner, and that none of the cited references nor the state of the art
provides any incentive or motivation to make the combination (App. Br. 7).
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We are not persuaded by Appellants’ argument. The Examiner has, in
fact, identified reasons that would have prompted a person of ordinary skill
in the relevant field to combine the elements in the way the claimed new
invention does. KSR, 550 U.S. at 416. The Examiner stated that it would
have been obvious to modify Kekic in view of Jain, in order to provide a
better rule-based monitoring expert system that permits the network manager
to customize the reviewed information in a manner which limits it to that
which is particularly useful to the manager and provides the flexibility to
navigate to any given area of the network to obtain all information necessary
to properly carry out management duties (Ans. 15, citing Jain col. 2, ll. 31-
38). The Examiner stated that it would have been obvious to modify Kekic
in view of Bergholm in order to monitor the network equipments (sic)
located in various control pointes (sic) more efficiently (Ans. 15-16, citing
Bergholm col. 1, ll. 15-27).
Appellants have provided no reasons why the Examiner’s stated
rationale for combining Kekic, Jain, and Bergholm to achieve the invention
of claim 4 is erroneous. Appellants’ unsupported assertion in the Reply Brief
that the cited text of Bergholm clearly fails to provide a motivation for
combining such teaching with the system of Kekic (Reply Br. 5) is likewise
unpersuasive to establish error in the Examiner’s rejection.
Because Appellants have not established error in the Examiner’s
rejection, we will sustain the Examiner’s rejection of claims 4 and 7-9 under
35 U.S.C. § 103.
SECTION 103 REJECTION OF CLAIMS 5 AND 6
We affirm supra the rejection of parent claim 4 under U.S.C. § 103 as
unpatentable over Kekic in view of Jain and Bergholm. Appellants present
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no separate argument for the patentability of dependent claims 5 and 6. We
will therefore sustain the rejection of claim 5 under 35 U.S.C. § 103 as
unpatentable over Kekic in view of Jain, Bergholm, and Pisello, for the same
reasons expressed with respect to claim 4. We will also sustain the rejection
of claim 6 under 35 U.S.C. § 103 as unpatentable over Kekic in view of Jain,
Bergholm, and Husseiny, for the same reasons expressed with respect to
claim 4.
CLAIMS 10-12, 16, AND 18-20
We select claim 10 as representative of this group, pursuant to our
authority under 37 C.F.R. § 41.37(c)(1)(vii).
As with claim 1, supra, Appellants argue that the Examiner has failed
to make out a prima facie case of obviousness because Sampath teaches
predicting equipment failure, not predicting equipment exhaustion (App. Br.
8), and because neither Kekic nor Sampath teach creating one or more
analytical reports (App. Br. 8). Further, as with claim 4 supra, Appellants
assert that the Examiner has failed to identify a valid reason why a person of
ordinary skill in the art would have made the combination put forth by the
Examiner, and that none of the cited references nor the state of the art
provides any incentive or motivation to make the combination (App. Br. 8-
9).
As noted supra with respect to claim 1, Appellants have not satisfied
their burden of establishing why Sampath’s prediction of equipment failure
does not equate to the claimed prediction of equipment exhaustion. As
further noted supra with respect to claim 1, we further find that Kekic and
Sampath both teach creating analytical reports, within the meaning of claim
10.
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As noted supra with respect to claim 4, Appellants’ argument that the
combination of Kekic, Sampath, and Pisello is likewise unconvincing.
Appellants provide no reasons, beyond mere assertion, why the Examiner’s
asserted combination is improper to achieve the instant invention.
Appellants’ unsupported contention in the Reply Brief that Pisello “clearly
fails to provide a motivation” for making the proposed combination (Reply
Br. 6) is also wholly insufficient to establish Examiner error.
Because Appellants have failed to establish error in the Examiner’s
rejection, we will sustain the § 103 rejection of claims 10-12, 16, and 18-20.
CLAIM 17
We affirm supra the rejection of parent claim 10 under U.S.C. § 103
as unpatentable over Kekic in view of Sampath and Pisello. Appellants
present no separate argument for the patentability of dependent claim 17.
We will therefore sustain the rejection of claim 17 under 35 U.S.C. § 103 as
unpatentable over Kekic in view of Sampath, Pisello, and Husseiny, for the
same reasons expressed with respect to claim 10.
CONCLUSIONS OF LAW
1. Appellants have not shown that the Examiner erred in finding
that Sampath’s teaching of prediction of equipment failure does not
anticipate the claimed prediction of equipment exhaustion.
2. Appellants have not shown that the Examiner erred in finding
that Kekic in combination with Sampath teaches the creation of one or more
analytical reports.
3. Appellants have not shown that the Examiner erred in
combining the various references to arrive at the claimed invention.
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ORDER
The Examiner’s rejection of claims 1-20 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

ELD

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