Ex Parte Hirsch

Patent Trial and Appeal Board

Sep 26, 2016

12347065 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/347,065 12/31/2008
20151 7590 09/28/2016
HENRY M FEIEREISEN, LLC
HENRY M FEIEREISEN
708 THIRD A VENUE
SUITE 1501
NEW YORK, NY 10017
FIRST NAMED INVENTOR
Lucian HIRSCH
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.
HIRSCH-3 1432
EXAMINER
MIRZA, ADNAN M
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
INFO@FEIEREISENLLC.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUCIAN HIRSCH
Appeal2015-003902
Application 12/347,065
Technology Center 2400
Before KRISTEN L. DROESCH, JOYCE CRAIG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
A. "1"1 ,1 "1 "1 ,..,,,-TT#'I~ 1\1,..,,Al/'-r'" ,"1 T"""i • ., Appeuant' appeals unaer j) u.~.L. s U4~aJ rrom me bxammer s
rejection of claims 1-15 and 17-19, which are all the claims pending in this
application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellant, the real party in interest is Siemens
Aktiengesellschaft. App. Br. 3.
2 Claim 16 has been cancelled. App. Br. 16 (Claims App'x).
Appeal2015-003902
Application 12/347,065
STATEMENT OF THE CASE
Introduction
Appellant's application relates to a method for managing a
communication network, in particular for generating tests at a higher-level
network management center, and to a communication system for carrying
out the method. Spec. ,-i 2. Claim 1 is illustrative of the subject matter on
appeal and reads as follows:
1. A method for managing a communication network
having a first device on a first management level, a second device
on a second management level, and a manufacturer-independent
interface between the first device and the second device using an
information model that is based on functional, manufacturer-
independent object classes and/or objects that model the network
resources from a functional, manufacturer-independent point of
view, compnsmg:
providing at least one manufacturer-specific, equipment-
related equipment summary management object class as a
component of the information model for integration of
manufacturer-specific equipment into the information model;
and
transmitting, via the interface, at least one message
containing at least one equipment summary management object
class and/or object instance of the at least one equipment
summary management object class as a parameter.
The Examiner's Rejection
Claims 1-15 and 17-19 stand rejected on the ground of non-statutory
obviousness-type double patenting as unpatentable over claims 1-5 of
Hirsch (US 7,747,714 Bl; June 29, 2010) ("the '714 patent"). Ans. 3.
2
Appeal2015-003902
Application 12/347,065
ANALYSIS
Appellant argues the Examiner erred in rejecting claim 1 under non-
statutory obviousness-type double patenting over claims 1-5 of the '714
patent. App. Br. 11-13; Reply Br. 4. In particular, Appellant argues the
'714 patent claims disclose a three-level information model while claim 1
recites a two-level model. App. Br. 11-12. Appellant further argues the
'714 patent claims fail to disclose a mixture of manufacturer-independent
and manufacturer-specific classes, as recited in claim 1. App. Br. 12.
The Examiner interprets "manufacturer independent object classes"
and "manufacturer specific object classes" such that "one is broader than the
other. The manufactured [sic] independent object classes system will
support the both systems [sic] (independent and specific)." Ans. 4.
As a matter of claim construction, we apply the broadest reasonable
interpretation of claim terms, consistent with the specification, as would be
understood by one of ordinary skill in the art. Jn re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). "Above all,
the broadest reasonable interpretation must be reasonable in light of the
claims and specification." PPC Broadband, Inc. v. Corning Optical
Commc'ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016) (emphasis in
original).
We disagree with the Examiner's interpretation of the limitations
"manufacturer independent object classes" and "manufacturer specific object
classes" because manufacturer specific object classes are not a narrower
subset of manufacturer independent object classes. Instead, manufacturer
independent object classes and manufacturer specific object classes are
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Appeal2015-003902
Application 12/347,065
distinct sets of object classes because if an object class is manufacturer
independent, it is not specific to any manufacturer.
The Examiner finds the '714 patent claims teach manufacturer
specific object classes and finds this teaching also satisfies the
"manufacturer independent object classes" limitation recited in claim 1. See
Ans. 4. Because we disagree with the Examiner's construction of
"manufacturer independent object classes" for the reasons set forth above,
we are persuaded the Examiner erred in finding the '714 patent claims teach
"manufacturer independent object classes." Accordingly, Appellant has
persuaded us that the Examiner has not established that claim 1 is
unpatentable under non-statutory obviousness-type double patenting.
CONCLUSIONS
On the record before us and in view of the analysis above, Appellant
has persuaded us that the Examiner erred in rejecting claim 1. Therefore, \"le
do not sustain the rejection of claim 1. We also do not sustain the rejections
of independent claims 15 and 1 7, which contain similar limitations, and
dependent claims 2-14, 18, and 19, which depend from claims 1, 15, and 17.
DECISION
We reverse the decision of the Examiner to reject claims 1-15 and
17-19.
REVERSED
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