Ex Parte Dolan

Patent Trial and Appeal Board

Aug 26, 2014

11874367 (P.T.A.B. Aug. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WILLIAM E. DOLAN III
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Appeal 2012-006002
Application 11/874,367
Technology Center 2400
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Before JOHNNY A. KUMAR, PATRICK M. BOUCHER, and
CATHERINE SHIANG, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1–23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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Illustrative Claim
The claimed subject matter relates to network management (Spec.,
p. 1).
Claim 1 is illustrative and is reproduced below:
1. A method for processing event data provided by a managed
device, the managed device comprising a plurality of
components, the method comprising:
receiving the event data from the managed device;
obtaining a managed device identifier based on the event
data;
obtaining a managed device model corresponding to the
managed device identifier; and
identifying at least one component of the managed device
based on the event data and the managed device model, the at
least one component being a cause of the event.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lovy US 7,069,480 B1 June 27, 2006
Baldwin
Ota
US 2007/0094378 A1
US 2008/0131128 A1
Apr. 26, 2007
June 5, 2008

Rejections
The Examiner made the following rejections:1
Claims 20–23 stand rejected under 35 U.S.C. § 101 as directed to
ineligible subject matter. Ans. 3.
Claims 1–13, 15–18, and 20–22 stand rejected under 35 U.S.C.

1 The Examiner’s Answer also states rejections of claim 24 under 35 U.S.C.
§§ 101 and 103(a), but claim 24 was canceled by Appellant in the
Amendment filed November 13, 2009.
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§ 103(a) as unpatentable over Lovy and Baldwin. Ans. 3–10.
Claims 14, 19, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lovy, Baldwin, and Ota. Ans. 10–12.

ANALYSIS
§ 101 rejections of claims 20–23
Appellant’s contentions present us with the issue of whether the
Examiner erred in concluding claims 20–23 are not drawn to statutory
subject matter because the “limitations can be implemented purely in
software.” See Ans. 3.
Independent claim 20 recites “a first database,” “a second database,”
and “a computing device.”2 Although we agree that the recited first and
second databases can be implemented purely in software, we disagree that
the same is true of “a computing device.” Rather, we agree with Appellant
that a “computing device”3 is a machine, which is one of the categories of
patentable subject matter identified by 35 U.S.C. § 101. App. Br. 8. The
claim as a whole is, therefore, directed to patent-eligible subject matter.
Accordingly, we do not sustain the rejections of claims 20–23 under
35 U.S.C. § 101.

2 The Examiner’s Answer erroneously identifies a recitation of a “computer
system” rather than a “computing device.”

3 The Appeal Brief erroneously identifies a recitation of a “computer device”
rather than a “computing device.”
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§ 103(a) rejections of claims 1–13, 15–18, and 20–22
Appellant’s contentions present us with the issue of whether the
Examiner erred in finding that Lovy teaches or suggests “identifying at least
one component of the managed device based on the event data and the
managed device model, the at least one component being a cause of the
event,” as recited in independent claim 1.4 We disagree that the Examiner
erred.
We accept Appellant’s characterization of the relevant disclosure of
Lovy as “describ[ing] a network appliance for monitoring, diagnosing and
documenting problems among devices and processes caused by devices
further up a topographic hierarchy.” App. Br. 10. As Appellant
acknowledges, the “Root Cause Analysis” described by Lovy performs a
dependency check on every object associated with a monitored object in
question to isolate the “highest object in the parent/child relationship tree
that is affected by the event.” Id. at 10 (citing Lovy, col. 13, ll. 17–24).
The Examiner reasons that the networked combination of devices
described by Lovy as arranged in a topographic hierarchy is itself “a
managed device.” Ans. 14. Appellant responds that “[a] network is not a
device,” and contends that the Examiner’s broad construction of “device” is
inconsistent with the recitations in claim 1 related to a “device identifier.”
Reply Br. 2–3. Specifically, Appellant contends that “[i]f the Examiner’s
theory is taken to its logical extreme, then there would only ever be ONE

4 Appellant does not provide arguments to establish separate patentability of
claims 2–13, 15–18, and 20–22, but instead merely reference the arguments
made for claim 1. Therefore, we treat claim 1 as representative for those
claims. 37 C.F.R. § 41.37(c)(1)(iv).
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device in Baldwin and Lovy, because the references only deal with
managing single networks at a time.” Id. at 2.
During patent examination, claims must be given their broadest
reasonable interpretation consistent with the Specification. In re Amer.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The word
“device” is a broad term.5 Appellant has not provided sufficient evidence or
reasoning to support its contention that the term should be construed
sufficiently narrowly to exclude a networked combination of devices, as
taught by Lovy, from its scope. See Ans. 15. We note that the Examiner
does not rely on Lovy for the limitations related to the recited “managed
device identifier,” but instead relies on disclosures of Baldwin. Ans. 4–5.
The Examiner’s reasoning that
it would have been obvious to one of ordinary skill in the art at
the time [the] invention was made to incorporate Baldwin[’s]
teaching of obtaining a device identifier and a device model as
claimed into Lovy[’s] method because this would have provided
a way to help identify the root cause of the problem
(Ans. 5) provides sufficient rational underpinnings to support the legal
conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (cited with approval in KSR International Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007)).
Accordingly, we sustain the rejections of claim 1, as well as of claims
2–13, 15–18, and 20–22 under 35 U.S.C. § 103(a) as unpatentable over Lovy
and Baldwin.

5 For example, a general dictionary defines “device” as “an object, machine,
or piece of equipment that has been made for some special purpose.”
Merriam-Webster’s Online Dictionary, 11th ed.
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§ 103(a) rejections of claims 14, 19, and 23
Appellant’s contentions present us with the issue of whether the
Examiner erred by providing insufficient rationale to combine the teachings
of Ota with those of Lovy and Baldwin. We disagree that the Examiner
erred.
The Examiner cites Ota for its disclosure of certain optical elements
recited in claims 14, 19, and 23. Ans. 12. Appellant “questions” the
Examiner’s finding that one of ordinary skill in the art would combined the
teachings of Ota with Baldwin. App. Br. 13. Appellant specifically notes
that Ota describes an optical core transport device housed in a chassis and
that Baldwin describes storage area networks, which Appellant characterizes
as “an entirely different system.” Id.
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Rather, the test
for obviousness is what the combined teachings of the prior art would have
suggested to the hypothetical person of ordinary skill in the art. Id. The
Examiner’s reliance on Ota to suggest the optical elements recited in claims
14, 19, and 23 meets this test, and provides sufficient rational underpinnings
to support the legal conclusion of obviousness.
Accordingly, we sustain the rejection of claims 14, 19, and 23 under
35 U.S.C. § 103(a) as unpatentable over Lovy, Baldwin, and Ota.

DECISION
The Examiner’s decision rejecting claims 1–23 is affirmed.
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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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