Ex Parte DIAB

Patent Trial and Appeal Board

Sep 19, 2016

12947537 (P.T.A.B. Sep. 19, 2016)

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.
12/947,537 11/16/2010 Wael William DIAB 2875.4830000 2115
49579 7590 09/19/2016
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
PATEL, DHARMESH J
ART UNIT PAPER NUMBER
2465
MAIL DATE DELIVERY MODE
09/19/2016 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 WAEL WILLIAM DIAB
____________________

Appeal 2015-006640
Application 12/947,537
Technology Center 2400
____________________

Before CARLA M. KRIVAK, JEFFREY S. SMITH, and
HUNG H. BUI, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Office Action rejecting claims 1–36, which are all of the
claims pending on appeal. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2 Pursuant to our authority under 37 C.F.R.
§ 41.50(b), we enter a new ground of rejection for independent claims 1 and
33.

1 According to Appellant, the real party in interest is Broadcom Corporation.
App. Br. 1.
2 Our Decision refers to Appellant’s Appeal Brief filed November 24, 2014
(“App. Br.”); Reply Brief filed June 30, 2015 (“Reply Br.”); Examiner’s
Answer mailed April 30, 2015 (“Ans.”); Final Office Action mailed
November 25, 2013 (“Final Act.”); and original Specification filed
November 16, 2010 (“Spec.”).
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STATEMENT OF THE CASE
Appellant’s invention relates to a system for measuring and managing
operational characteristics (e.g., temperature, humidity, power usage) of
network components within a network, shown in Figure 2. Spec. ¶¶ 2, 25.
Appellant’s Figure 2 is reproduced below with additional markings
for illustration:

Appellant’s Figure 2 shows a system 210 including a plurality of network
components in the form of server racks 280, 290A–290B

As shown in Figure 2, measurement instruments such as a monitor
255 and an analyzer 251 are provided to monitor one or more network
components within server rack 280, collect operational characteristics of
components associated with rack 280, analyze the collected characteristics,
and then derive estimated operational characteristics of unmonitored
network components of racks 290A–290B in the network. Spec. ¶¶ 21, 41,
43.
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Claims 1 and 33 are independent. Claim 1 is illustrative of
Appellant’s invention, as reproduced below with disputed limitations
emphasized:
1. A system for measuring aspects of a network having a
plurality of network components, comprising:
a monitor configured to gather operational characteristics
of a monitored one of the plurality of network components; and
an analyzer configured to:
analyze the gathered operational characteristics
received from the monitor; and
estimate an operational characteristic of an
unmonitored one of the plurality of network components based
on the gathered operational characteristics.
App. Br. 19 (Claims App.).

Examiner’s Rejections and References
(1) Claims 1–4, 8–10, 14, 15, 17–22, 25–28, 31, and 33–36 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Rasmussen et
al., (US 2007/0038414 A1, published Feb. 15, 2007) (“Rasmussen”), Thyni
et al. (WO 2010/114439 A1, published Oct. 7, 2010), and Rotheroe (US
2005/0075839 A1, published Apr. 7, 2005). Ans. 3–30.
(2) Claims 5, 6, 29, and 30 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Rasmussen, Thyni, Rotheroe, Crabtree et al. (US
2010/0217550 A1, published Apr. 26, 2010), and Mastro et al., (IEEE
Transactions on Industrial Electronics, Vol. 57, No. 8, August 2010)
(“Mastro”). Ans. 31–35.
(3) Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rasmussen, Thyni, Rotheroe, and Crabtree. Ans. 35–36.
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(4) Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rasmussen, Thyni, Rotheroe, and Takeuchi (US
2010/0287258 A, published Nov. 11, 2010). Ans. 36–37.
(5) Claims 12, 13, 16, and 24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Rasmussen, Thyni, Rotheroe, and
Mastro. Ans. 38–44.
(6) Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rasmussen, Thyni, Rotheroe, and Kun-Szabo et al. (US
2004/015129 A1, published Aug. 5, 2004). Ans. 44–45.

ISSUE
Based on Appellant’s arguments, the dispositive issue presented on
appeal is whether the Examiner erred in finding the combination of
Rasmussen, Thyni, and Rotheroe teaches or suggests the disputed limitation:
“an analyzer configured to . . . estimate an operational characteristic of an
unmonitored one of the plurality of network components based on the
gathered operational characteristics” [of monitored network components] as
recited in independent claim 1, and similarly recited in claim 33. App. Br.
7–17; Reply Br. 2–5.

ANALYSIS
Claim 1 recites “a monitor configured to gather operational
characteristics of a monitored one of the plurality of network components”
and “an analyzer configured to . . . estimate an operational characteristic of
an unmonitored one of the plurality of network components based on the
gathered operational characteristics.” Claim 33 recites similar steps. Thus,
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both claims 1 and 33 require: (1) both the “monitored” network component
and the “unmonitored” network component be components of the same
network; and (2) the “operational characteristic of an unmonitored one of the
plurality of network components [be] based on the gathered operational
characteristics” (i.e., previously gathered from monitored network
components in the same network).
With respect to claim 1 and similarly claim 33, the Examiner finds
Rasmussen discloses a system 500, shown in Figure 6, for measuring aspects
of a network having a plurality of network components comprising a
monitor (i.e., facility management module 208) to gather operational
characteristics (e.g., power and cooling characteristics) of a monitored one
of the plurality of network components; and an analyzer (i.e., controller 502)
configured to analyze the gathered operational characteristics received from
the monitor. Ans. 3–4 (citing Rasmussen ¶¶ 25, 28, 65, 85).
The Examiner then relies on (1) Thyni for expressly disclosing
unmonitored network components (id. at 4, 47 (citing Thyni 14:26–33, 15:1–
6)), and (2) Rotheroe for expressly disclosing monitoring “an operational
characteristic of one of the plurality of network components” in order to
support the conclusion of obviousness (id. at 4, 47 (citing Rotheroe ¶¶ 18,
23). According to the Examiner, “it would have been obvious to one of
ordinary skill in the art . . . to provide early warning that a piece of
equipment is about to fail or failed and also benefit from the ability to
remotely detect a change in an electrical parameter of a piece of electronic
equipment. Id. at 6 (citing Rotheroe ¶ 18).
Appellant contends the Examiner erred in finding the combination of
Rasmussen, Thyni, and Rotheroe teaches or suggests the disputed limitation:
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“estimate[ing] an operational characteristic of an unmonitored one of the
plurality of network components based on the gathered [monitored]
operational characteristics” as recited in independent claim 1, and similarly
recited in claim 33. App. Br. 7–17; Reply Br. 2–5 (emphasis in original). In
particular, Appellant argues neither Rasmussen, Thyni, nor Rotheroe teaches
or suggests any “estimate[ing] an operational characteristic of an
unmonitored one of the plurality of network components based on the
gathered [monitored] operational characteristics” as recited in claims 1 and
33. App. Br. 7–9; Reply Br. 2.
Appellant acknowledges Thyni teaches powering down component,
but argues Thyni does not teach that “a powered down component . . . is an
unmonitored network component in a network having both monitored
and unmonitored network components.” App. Br. 12 (citing Thyni
13:19–23, 14:4–6) (emphasis in original); Reply Br. 2. Similarly, Appellant
acknowledges Rotheroe teaches a “method of monitoring measured
parameters associated with a piece of equipment,” but argues Rotheroe does
not teach that these parameter changes are: (1) “estimated” or (2)
“operational characteristics of unmonitored network components in a
network having both monitored and unmonitored network
components.” App. Br. 13 (citing Rotheroe ¶ 18, Abstract) (emphasis in
original); Reply Br. 2. Because neither Thyni nor Rotheroe can cure the
deficiencies of Rasmussen, Appellant argues these references cannot be
combined to arrive at the subject matter of claims 1 and 33. App. Br. 14–16.
The Examiner does not address (1) the distinction between monitored
network components and unmonitored network components within a
network, and (2) how Thyni and Rotheroe can be incorporated into
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Rasmussen’s system to arrive at Appellant’s claimed “estimate[ing] an
operational characteristic of an unmonitored one of the plurality of network
components based on the gathered [monitored] operational characteristics”
as recited in claims 1 and 33. Instead, the Examiner maintains (1) Thyni
teaches “an unmonitored network component in [a] network,” and (2)
Rotheroe teaches “an operational characteristic of one of the plurality of
network components.” Ans. 47 (citing Thyni 14:26–33, 15:1–6; Rotheroe
Abstract).
We do not agree with the Examiner. Even assuming that Thyni and
Rotheroe teach what the Examiner alleges, i.e., (1) “an unmonitored network
component in [a] network” and (2) “an operational characteristic of one of
the plurality of network components,” we agree with Appellant that neither
Thyni nor Rotheroe teaches or suggests Appellant’s claimed “estimating an
operational characteristic of an unmonitored network component [based on
the gathered operational characteristics” as required by claims 1 and 33.
Reply Br. 4 (emphasis in original).
Moreover, the case law is clear that, in order to establish a prima facie
case, the Examiner must articulate some objective reason to combine the
teachings of the references, and that this reasoning must have some rational
underpinning. “[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some 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 Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The
reasoning is important “because inventions in most, if not all, instances rely
upon building blocks long since uncovered, and claimed discoveries almost
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of necessity will be combinations of what, in some sense, is already known.”
KSR, 398 U.S. at 418–19.
The Examiner’s stated rationale for combining Rasmussen, Thyni, and
Rotheroe is neither objective nor supported by a rational underpinning. As
correctly noted by Appellant, neither Rasmussen, Thyni, nor Rotheroe
teaches or suggests any “estimate[ing] an operational characteristic of an
unmonitored one of the plurality of network components based on the
gathered [monitored] operational characteristics” as recited in claims 1 and
33. App. Br. 7–9; Reply Br. 2. Incorporating the teachings of Thyni and
Rotheroe into Rasmussen’s system does not cure the deficiencies of
Rasmussen to arrive at Appellant’s invention recited in claims 1 and 33.
Likewise, the Examiner’s stated rationale (i.e., to provide early warning that
a piece of equipment is about to fail or failed) is divorced from any teaching
or suggestion that Appellant’s claimed “operational characteristic[s] of an
unmonitored one of the plurality of network components” are “based on the
gathered [monitored] operational characteristics” as recited in claims 1 and
33.
For the reasons set forth above, Appellant has demonstrated Examiner
error. As such, we do not sustain the Examiner’s obviousness rejection of
claims 1 and 33 and their respective dependent claims 2–32 and 34–36.

NEW GROUND OF REJECTION:
35 U.S.C. § 103(a) – CLAIMS 1 and 33
We do, however, in a new ground of rejection, find an ordinarily
skilled artisan would have sufficient technical knowledge, based on the
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teachings of Rasmussen3 alone, and found it obvious to incorporate basic
prediction theory (1) to determine operational characteristics of monitored
components within a network, and then (2) to estimate or predict an
operational characteristic of one or more remaining components (i.e.,
unmonitored component) within the same network based on the operational
characteristics of the previously monitored components, in the manner
recited in Appellant’s claims 1 and 33.
For example, as correctly found by the Examiner, Rasmussen teaches
a system 500, shown in Figure 6, including a monitor (i.e., facility
management module 208) for monitoring operational characteristics of
network components (e.g., power and cooling characteristics of servers
arranged in different racks, shown in Figures 5, 5A, and 5B) within a
network (i.e., data center). Rasmussen also teaches an analyzer (i.e.,
controller 502) configured to analyze the gathered operational characteristics
received from the monitor (i.e., facility management module 208). Ans. 3–4
(citing Rasmussen ¶¶ 25, 28, 65, 85).
In addition to the Examiner’s findings, Rasmussen also teaches the
use of operational characteristics of monitored components to predict or
estimate several additional operational characteristics of the network,
including, for example:
(1) “calculating a predicted cooling capacity based on
the floor plan model,” “comparing predicted cooling capacity
with measured cooling capacity to obtain a comparison result”

3 Appellant’s invention can be obvious in light of a single prior art reference
if it would have been obvious to modify that reference to arrive at the
invention. See, e.g., Takeda Chem. Indus., Ltd. v. Alphapharm Pty, Ltd., 492
F.3d 1350, 1357 (Fed. Cir. 2007); SIBIA Neurosciences, Inc. v. Cadus
Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000).
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and “adjusting the predicted cooling capacity based on
measured airflow.” Rasmussen ¶ 15;

(2) “determining available airflow of at least one of
the plurality of airflow devices . . . determining available
airflow of at least a second one of the plurality of airflow
devices based on the measured data for the at least one of the
plurality of airflow devices.” Rasmussen ¶ 15;

(3) “controller may be configured to compare a
predicted cooling capacity with a measured cooling capacity to
obtain a comparison result and . . . to alter at least one
characteristic of power in the data center.” Rasmussen ¶ 17;
and

(4) “means for estimating available cooling air of at
least one of the equipment enclosures using a weighted
summation of available airflows from a plurality of airflow
sources.” Rasmussen ¶ 19.

In addition, Rasmussen also teaches a service option that allows a user
to select a level of service, including to “provide an estimate on the number
of racks that can be supported based on the power components and in-row
cooling units contained in the row.” Rasmussen ¶ 98.
Obviousness is a question of law based on underlying factual findings
including the scope and content of the prior art, the differences between the
claimed invention and the prior art, and the level of ordinary skill in the
pertinent art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007);
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In an obviousness
analysis, precise teachings directed to the specific subject matter claimed
need not be identified because the inferences and creative steps that a person
of ordinary skill in the art would employ can be taken into account. See
KSR, 550 U.S. at 418; see also In re Preda, 401 F.2d 825, 826 (CCPA 1968)
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(“[I]n considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.”). In this regard, "[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton." Id. at 421.
Common sense, common wisdom, and common knowledge have
“long been recognized to inform the analysis of obviousness if explained
with sufficient reasoning.” See Perfect Web Techs., Inc. v. InfoUSA, Inc.,
587 F.3d 1324, 1329 (Fed. Cir. 2009). In particular, common sense or
common knowledge can be invoked to provide a suggestion or motivation to
combine or modify a prior art reference. See DyStar Textilfarben GmbH &
Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir.
2006). The “use of common sense does not require a ‘specific hint or
suggestion in a particular reference,’ only a reasoned explanation that avoids
conclusory generalizations.” Perfect Web, 587 F.3d at 1329 (quoting DyStar,
464 F.3d at 1366); see also Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343,
1354 (Fed. Cir. 2013) (“the mere recitation of the words ‘common sense’
without any support adds nothing to the obviousness equation.”); Ball
Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993
(Fed. Cir. 2009) (“the analysis that ‘should be made explicit’ refers not to
the teachings in the prior art of a motivation to combine, but to the court’s
analysis.”).
Based on the additional teachings of Rasmussen regarding the use of
operational characteristics of monitored components to predict or estimate
operational characteristics of the network, we conclude an ordinarily skilled
artisan would have found it obvious to predict or estimate an operational
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characteristic of one or more remaining components (i.e., unmonitored
components) within the same network based on the operational
characteristics of the previously monitored components, in the manner
recited in Appellant’s claims 1 and 33.
Accordingly, using our authority under 37 C.F.R. § 41.50(b), we enter
a new ground of rejection for claims 1 and 3 as being obvious over
Rasmussen alone. With respect to remaining dependent claims 2–32 and
34–36, we leave these claims to the Examiner to evaluate whether they are
independently and patentably distinct from Appellant’s independent claims 1
and 33.

DECISION
We REVERSE the Examiner’s final rejection of claims 1–36 under
35 U.S.C. § 103(a) based on Rasmussen, Thyni, and Rotheroe. However,
we enter a NEW GROUND of rejection for claims 1 and 33 as being
unpatentable under 35 U.S.C. § 103(a) over Rasmussen alone.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2010). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
Rule 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
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and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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).

REVERSED
37 C.F.R. § 41.50(b)