Ex Parte Grover et al

Board of Patent Appeals and Interferences

Sep 19, 2006

09966620 (B.P.A.I. Sep. 19, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RAJEEV GROVER, DOUGLAS W. ARENS, and KEVEN PAUL MORLANG
__________

Appeal No. 2006-2460
Application No. 09/966,620
__________

ON BRIEF
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Before HAIRSTON, JERRY SMITH, and RUGGIERO, Administrative Patent
Judges.

JERRY SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s rejection of claims 1-7, 9, 10 and 12-23.
The disclosed invention pertains to a method and apparatus for
configuring a network parameter to a device.
Appeal No. 2006-2460 Page 2
Application No. 09/966,620

Representative claim 1 is reproduced as follows:
1. A method for configuring a first parameter to a first device,
comprising the steps of:
• providing a network communication channel connected to the first
device and to a configuring machine;
• from the configuring machine, sending the first parameter and a
device’s identifier to the communication channel;
• acquiring the first parameter upon identifying the device's identifier on
the communication channel;
• configuring the first parameter to the first device; and
• turning–off a feature to configure the first device until the first device
is in an un-configured state;
• wherein the first device is embedded in a second device and provides
administrative capabilities to the second device.

The examiner relies on the following references:
Philippou et al. (Philippou) 6,385,648 May 7, 2002
(filed Nov. 2, 1998)
Ylonen 6,782,474 Aug. 24, 2004
(filed Jun. 4, 1999)

Appeal No. 2006-2460 Page 3
Application No. 09/966,620

The following rejection is on appeal before us:
1. Claims 1-7, 9, 10 and 12-23 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the teachings of
Philippou in view of Ylonen [answer, page 7].

Rather than repeat the arguments of appellants or the examiner, we
make reference to the briefs and the answer for the respective details
thereof.
We have carefully considered the subject matter on appeal, the
rejection advanced by the examiner and the evidence of obviousness relied
upon by the examiner as support for the rejection. We have, likewise,
reviewed and taken into consideration, in reaching our decision, the
appellants’ arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in rebuttal set forth in
the examiner’s answer. Only those arguments actually made by appellants
have been considered in this decision. Arguments which appellants could
have made but chose not to make in the briefs have not been considered
and are deemed to be waived. See 37 C.F.R.§ 41.37(c)(1)(vii)(2004). See
also In re Watts, 354 F.3d 1362, 1368, 69 USPQ2d 1453, 1458 (Fed. Cir.
2004).
Appeal No. 2006-2460 Page 4
Application No. 09/966,620

It is our view, after consideration of the record before us that the
evidence relied upon by the examiner does not support the examiner’s
rejection of claims 1-7, 9, 10 and 12-23. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). The examiner must articulate reasons for the
examiner’s decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430,
1434 (Fed. Cir. 2002). In particular, the examiner must show that there is a
teaching, motivation, or suggestion of a motivation to combine references
relied on as evidence of obviousness. Id. 277 F3d. at 1343, 61 USPQ2d at
1433-34. The examiner cannot simply reach conclusions based on the
examiner’s own understanding or experience - or on his or her assessment
of what would be basic knowledge or common sense. Rather, the examiner
must point to some concrete evidence in the record in support of these
findings. In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed.
Cir. 2001). Thus the examiner must not only assure that the requisite
findings are made, based on evidence of record, but must also explain the
reasoning by which the findings are deemed to support the examiner’s
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Application No. 09/966,620

conclusion. However, a suggestion, teaching, or motivation to combine the
relevant prior art teachings does not have to be found explicitly in the prior
art, as the teaching, motivation, or suggestion may be implicit from the prior
art as a whole, rather than expressly stated in the references. The test for
an implicit showing is what the combined teachings, knowledge of one of
ordinary skill in the art, and the nature of the problem to be solved as a
whole would have suggested to those of ordinary skill in the art. In re Kahn,
441 F.3d 977, 987-88, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) citing In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
See also In re Thrift, 298 F. 3d 1357, 1363, 63 USPQ2d 2002, 2008 (Fed.
Cir. 2002). These showings by the examiner are an essential part of
complying with the burden of presenting a prima facie case of obviousness.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the applicant to
overcome the prima facie case with argument and/or evidence. Obviousness
is then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See Id.; In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976).

Appeal No. 2006-2460 Page 6
Application No. 09/966,620

We consider the examiner’s rejection of claims 1, 16 and 19 as being
unpatentable over the teachings of Philippou in view of Ylonen [answer, page
4]. Since appellants’ arguments with respect to this rejection have treated
these claims as a single group which stand or fall together, we will select
independent claim 1 as the representative claim for this rejection because it
is the broadest independent claim. See 37 C.F.R. § 1.37(c)(1)(vii)(2004).
Appellants argue that the examiner has failed to provide a proper
motivation for modifying the teachings of Philippou with the teachings of
Ylonen that is found in either the references themselves or in the common
knowledge of one of ordinary skill in the art [brief, page 11]. Appellants
acknowledge that Ylonen teaches a method for loading configuration data
into a network device in a reliable manner [brief, page 11; see also Ylonen
col. 2, lines 58-63]. Appellants argue that the examiner’s proffered
motivation for modifying the teachings of Philippou with the teachings of
Ylonen is presented as a general conclusory statement without supporting
evidence [brief, page 11]. Appellants conclude that the examiner has failed
to set forth a proper prima facie case of obviousness [id.].
The examiner disagrees [answer, page 10]. The examiner points out
that Philippou and Ylonen are taken from the same field of endeavor [as the
instant invention], noting that Philippou is related to initializing devices over
Appeal No. 2006-2460 Page 7
Application No. 09/966,620

a network and Ylonen is related to installing network devices [answer, page
10].
At the outset, we note that to reach a proper conclusion under § 103,
the examiner, as finder of fact, must step backward in time and into the
mind of a person of ordinary skill in the art at a time when the invention was
unknown, and just before it was made. In light of all the evidence, we
review the specific factual determinations of the examiner to ascertain
whether the examiner has convincingly established that the claimed
invention as a whole would have been obvious at the time of the invention to
a person of ordinary skill in the art. When claim elements are found in more
than one prior art reference, the fact finder must determine “whether a
person of ordinary skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the general problem
facing the inventor, would have been led to make the combination recited in
the claims.” In re Kahn 441 F.3d at 988, 78 USPQ2d at 1337. With respect
to the role of the examiner as finder of fact, the Court of Appeals for the
Federal Circuit has stated: “the examiner bears the initial burden, on review
of the prior art or on any other ground, of presenting a prima facie case of
unpatentability.” In re Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444.
In the instant case, we note that the examiner acknowledges that
Philippou fails to teach “turning-off a feature to configure the first device
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Application No. 09/966,620

until the first device is in an un-configured state,” as claimed [answer, page
5; claim 1]. We note that in the rejection the examiner proffers that an
artisan would have been motivated to modify the teachings of Philippou with
Ylonen’s teaching of disabling listening for configuration packets after
configuration because “configuration data can be loaded in a reliable
manner” [answer, page 5; see also Ylonen, col. 8, lines 66 and 67, cont’d
col. 9, lines 1-9]. After careful consideration of all the evidence before us,
we acknowledge that both Philippou and Ylonen are analogous art taken
from the same field of endeavor as the instant invention (i.e., configuring
network devices). We further note that the examiner has taken the
proffered motivation to modify Philippou directly from the Ylonen reference,
at col. 2, lines 58-63:
It is therefore desirable to provide a method and apparatus for loading
configuration data into the network device in a reliable, easy-to-use manner
from a network management station controlled by an employee skilled in
configuration of new network devices [emphasis added].

Nevertheless, we agree with appellants that the examiner has failed to
present a convincing line of reasoning as to why the artisan having
knowledge of Philippou would have found the claimed invention to have been
obvious in light of the teachings of Ylonen. In particular, we note that the
examiner’s proffered motivation of loading configuration data in a reliable
manner has a weak nexus with the teaching for which Ylonen is being
Appeal No. 2006-2460 Page 9
Application No. 09/966,620

applied, namely, disabling listening for configuration packets after
configuration [answer, page 5; see also Ylonen, col. 8, lines 66 and 67,
cont’d col. 9, lines 1-9]. Significantly, we note that there is no explicit or
implicit deficiency found within Philippou’s disclosure that would suggest to
an artisan that a more reliable manner of loading configuration data was
required. Indeed, we note that Philippou is silent with respect to any
mention of configuration reliability problems. Therefore, we do not see how
an artisan having knowledge of Philippou would have been reasonably
motivated to look to Ylonen to disable listening for configuration packets
after configuration to achieve the purpose of loading configuration data in a
reliable manner. We note that our reviewing court has clearly stated:
“[d]etermination of obviousness cannot be based on the hindsight
combination of components selectively culled from the prior art to fit the
parameters of the patented invention. There must be a teaching or
suggestion within the prior art, or within the general knowledge of a person
of ordinary skill in the field of the invention, to look to particular sources of
information, to select particular elements, and to combine them in the way
they were combined by the inventor.” ATD Corp. v. Lydall, Inc., 159 F.3d
534, 546, 48 USPQ2d 1321, 1329 (Fed. Cir. 1998).
In the instant case, we find that the examiner has impermissibly used
the claimed invention as a template or guide in order to piece together the
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Application No. 09/966,620

teachings of Philippo and Ylonen in an effort to create a mosaic of such prior
art to argue obviousness. Therefore, we agree with appellants that the
examiner has failed to meet his/her burden of presenting a prima facie case
of obviousness. Accordingly, we will reverse the examiner’s rejection of
representative claim 1. Because independent claims 15, 16 and 19 contain
limitations similar to claim 1, we will also reverse the examiner’s rejection of
these claims for the same reasons discussed supra with respect to
representative claim 1. Because we have reversed the examiner’s rejection
of each independent claim, we will not sustain the examiner’s rejection of
any dependent claims under appeal.
Appeal No. 2006-2460 Page 11
Application No. 09/966,620

In summary, we have not sustained the examiner’s rejection of any
claims under appeal. Therefore, the decision of the examiner rejecting
claims 1-7, 9, 10 and 12-23 is reversed.
REVERSED.

)
Kenneth W. Hairston )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Jerry Smith )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Joseph F. Ruggiero )
Administrative Patent Judge )
)

JS/sjc/eld
Appeal No. 2006-2460 Page 12
Application No. 09/966,620

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