Ex Parte Gourlay et al

Patent Trials and Appeals Board

Jun 26, 2019

14457585 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/457,585 08/12/2014
148194 7590 06/28/2019
Arista/CHWW A
1200 Smith St., 14th Floor
Houston, TX 77002
FIRST NAMED INVENTOR
Douglas Alan Gourlay
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
170383-001 lOOUS 5187
EXAMINER
CHU, GABRIELL
ART UNIT PAPER NUMBER
2114
NOTIFICATION DATE DELIVERY MODE
06/28/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Patents@chamberlainlaw.com
Dossa.IP@chamberlainlaw.com
J eff.Guinn@chamberlainlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS ALAN GOURLAY, KENNETH JAMES DUDA,
and ANDRE HENRI JOSEPH PECH 1
Appeal2017-010360
Application 14/457 ,585
Technology Center 2100
Before HUNG H. BUI, MICHAEL M. BARRY, and
DAVID J. CUTITTA II, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
all the pending claims (1-28). See Final Act. l; App. Br. 16-19 (Claims
App'x). We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was
held on June 10, 2019.
We reverse.
1 The Appeal Brief at page 5 identifies the Applicant, Arista Networks, Inc.,
as the real party of interest, i.e., the Appellant.
Appeal2017-010360
Application 14/457 ,585
Introduction
Appellant's disclosed and claimed invention "relates to a method for
determining that a defect applies to a network device." Spec. ,r 2. To make
the determination, network device information is received from the network
device, which information is analyzed along with defect information that
includes network device criteria that specify what state information is
required for a network device to be affected by the defect. Id. Appellant's
originally filed dependent claim 3 is directed to embodiments in which "the
network device information further comprises operational information that
specifies commands executed on the network device." Id. Appellant's
Figures 3A-B and 4, discussed in paragraphs 36-50 of the Specification,
illustrate embodiments of the network device information, defect
information, and method of claim 1. Claim 1 reads as follows:
1. A method for determining that a defect applies to a
network device, comprising:
receiving, at a monitoring module comprising a
computing device and before the defect occurs on the network
device, network device information from the network device,
wherein the network device information comprises
state information and operational information for the
network device,
wherein the state information does not comprise
hardware and software version information, and
wherein the operational information comprises
information about how the network device has operated;
storing, in a network device database, the network device
information from the network device;
receiving, at the monitoring module, defect information
about the defect,
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Application 14/457 ,585
wherein the defect information comprises network
device criteria specifying what state information and
operational information are required for the network
device to be potentially affected by the defect, and
wherein the defect comprises a condition that, if
occurring, prevents normal operation of the network
device;
storing the defect information in a defect database;
making a determination that the defect potentially applies
to the network device by:
analyzing the network device information to obtain
the state information and the operational information;
analyzing the defect information to determine that
the defect has previously occurred on a plurality of other
network devices;
comparing the network device criteria to the state
information to diagnose that the state of the network
device is similar to the states of each of the plurality of
other network devices at the time the defect occurred on
each of the plurality of other network devices; and
comparing the network device criteria to the
operational information to diagnose that the network
device has been operated similarly to each of the plurality
of other network devices before the defect occurred on
each of the plurality of other network devices; and
based on the determination, informing a defect alert
recipient that the defect potentially applies to the network
device.
App. Br. 22-23 (Claims App'x) (formatting slightly modified).
Rejections
The Examiner rejected claims 1-28 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Final Act. 2-3.
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Appeal2017-010360
Application 14/457 ,585
The Examiner rejected claims 1-28 under 35 U.S.C. § 112(a) as
failing to comply with the enablement requirement. Final Act. 3--4.
ANALYSIS
Written Description
The Examiner determined claim 1 requires comparing operational and
state information "to somehow diagnose that the network device has been
operated similarly to EACH of the plurality of other network devices
BEFORE the defect occurred on each of the plurality of other network
devices," and that this requirement (hereafter "the disputed requirement")
lacks written description support in Appellant's Specification. Final Act. 3;
Ans. 4--7 ( quoting id. at 5).
Appellant argues paragraphs 23, 36, 38, 44, and 53 of the
Specification provide adequate written description support for the disputed
requirement. App. Br. 12-16. Appellant's argument is persuasive because
the Specification discloses embodiments that include the "operated similarly
to EACH" and "BEFORE the defect occurred" requirements.
Regarding "diagnos[ing] that the network device has been operated
similarly to EACH of the plurality of other network devices" (Ans. 5)
portion of the disputed requirement, the Specification discloses a method
that generates defect alerts for multiple devices, as illustrated in the
flowchart of Figure 4. At step 406 of the illustrated method, information
about multiple network devices is sent to a monitoring module. Figure 4.
The monitoring module, such as those illustrated in Figures 1 and 2,
"determine[ s] if any of the defects corresponding to the defect information in
the defect database (104) potentially affect any of the switches (114A-114N)
corresponding to the switch information in the network device database
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Application 14/457 ,585
(106)" (Spec. ,r 23). The "potentially affect any" analysis taught in
Appellant's Specification, which includes comparing data across "any" of
the network devices, demonstrates that Appellant was "in possession of' the
claim requirement "to diagnose that the network device has been operated
similarly to EACH of the plurality of other network devices" (Ans. 5) as the
disputed requirement requires.
Regarding diagnosing "BEFORE the defect occurred on each of the
plurality of other network devices" (Ans. 5), Appellant's Specification
explains that network device criteria include operational information about
various ( or, each of) network devices. See, e.g., Spec. ,r 36. Paragraph 44
clarifies that operational information may include information about
"operation of the network device that is a prerequisite for being affected by
the defect" ( emphasis added to show it discloses diagnosing before the
defect occurs). Appellant clarifies the disclosed "method [is] for alerting an
end-user that an existing defect in a defect database potentially affects one
or more of their switches." Spec. ,r 50 ( emphasis added to show the alerting
is for multiple ( each of) network devices that are similarly diagnosed).
Thus, the as-filed Specification shows Appellant contemplated evaluating
operational information of each of multiple devices including to identify
operational information that is a prelude to (i.e., before) being affected by a
defect. Therefore, we agree with Appellant that the Examiner erred in
rejecting claim 1 for lack of written description support "for comparing the
network device criteria to the operational information to diagnose that the
network device has been operated similarly to each of the plurality of other
network devices before the defect occurred on each of the plurality of other
network devices." Final Act. 3.
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Accordingly, we do not sustain the§ 112(a) written description
rejection of claim 1, or of analogous independent claims 9, 18, and 26, or of
dependent claims 2-8, 10-17, 19-25, and 28, which stand rejected on this
ground based solely on their dependencies.
The Examiner separately rejected claim 27 under§ 112(a) as lacking
written description support for the recitation of "a comparison of commands
executed." Final Act. 3. Claim 3 as filed, however, recites that the network
device information that is analyzed (e.g., compared) "further comprises
operational information that specifies commands executed on the network
device." Spec. 22 (Claims (as-filed)). This demonstrates Appellant was in
possession of the "comparison of commands executed" requirement of claim
27 and, accordingly, we do not sustain the§ 112(a) written description
rejection of claim 27.
Enablement
For the § 112(a) enablement rejection, the Examiner determined that it
would have been unclear to an ordinarily skilled artisan what would qualify
as "similarity" for using operational information and state information to
diagnose that a network device's operations are similar to those of other
network devices "before the defect occurred on each of the plurality of other
network devices." Final Act. 4 ("[I]t is further unclear what 'operational
information' ( e.g., which commands, what period, what relevancy) is
considered pertinent for comparison.").
Appellant contends the Examiner errs because "[a] patent need not
teach, and preferably omits, what is well known in the art," and that
ordinarily skilled artisans, given the Specification, "would not need to
perform 'undue experimentation' to practice the invention as claimed."
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App. Br. 19 (citing In re Buchner, 929 F. 2d 660, 661 (Fed. Cir. 1991)), 20
(citing Spec. ,r,r 38, 44, and 53).
Appellant's argument is persuasive. In implementing claim 1, artisans
of ordinary skill would have been familiar with the various network software
implementation issues activities such as design, coding, etc. Appellant's
Specification describes an example of diagnosing defects prior to their
occurrence on other network devices by evaluating the size of routing tables,
using the advance knowledge that defects may occur when tables reach a
particular size. Spec. ,r,r 69-73. Artisans of ordinary skill would have
understood routing tables as well as myriad other technological details for
network software, and they would have understood that routing table
overflow is just one example of a network device defect. We agree with
Appellant that the network software art is highly predictable, and that no
undue experimentation would have been needed for ordinarily skilled
artisans to have implemented claims 1 or 27. See App. Br. 19-20.
Accordingly, we do not sustain the § 112(a) enablement rejection of claims
1-28.
DECISION
We reverse the Examiner's rejections of claims 1-28 under 35 U.S.C.
§ 112(a) (1) as lacking written description support and (2) for failing to
comply with the enablement requirement.
REVERSED
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