Ex Parte Ho

Patent Trial and Appeal Board

Dec 27, 2013

12017074 (P.T.A.B. Dec. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NICHOLAS HO1
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Appeal 2011-006153
Application 12/017,074
Technology Center 2400
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Before, JASON V. MORGAN, LARRY J. HUME, and JUSTIN BUSCH,
Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 3–8, 10–15, and 17–20. Claims 2, 9, and 16 are
canceled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 International Business Machines Corporation is the Real Party in Interest.
App. Br. 1.
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Invention
Appellant invented “[m]ethods, apparatus, and products for inferred
discovery of devices of a data communications network.” Abstract. The
invention includes querying routers for connection data associating router
interfaces with devices addresses and “identifying for each router in
dependence upon the connection data an interface of the router connected to
a data communications device including identifying a device address
associated with the interface.” Id.
Exemplary Claim
Claim 15, reproduced below with disputed and key limitations
emphasized, is representative:
15. A computer program product for inferred discovery of
devices of a data communications network, the data
communications network comprising a plurality of data
communications devices connecting a plurality of routers, each
data communications device having a device address, each
router having one or more network interfaces, the computer
program product disposed in a recordable medium for
machine-readable information, the computer program product
comprising computer program instructions capable of:
querying each router for connection data, the connection
data associating a router interface with a device address and
one or more user defined attributes that describe the router
interface;
identifying for each queried router in dependence upon
the connection data a router interface connected to a data
communications device including identifying a device address
associated with the router interface, wherein the identified
device address matches a device address in a preconfigured set
of possible device addresses for devices in a particular
network; and
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creating, in dependence upon the identified device
addresses for all routers, a representation of the data
communications network in a network model.
Rejections
The Examiner rejects claims 15 and 17–20 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. Ans. 3–4.
The Examiner rejects claims 1, 3, 4, 8, 10, 11, 15, 17, and 18 under
35 U.S.C. § 103(a) as being unpatentable over Kracht (U.S. 6,516,345 B1;
Feb. 4, 2003), Goringe (U.S. 2003/0046427 A1; Mar. 6, 2003), and Fortin
(U.S. 2003/0120760 A1; June 26, 2003). Ans. 4–12.
The Examiner rejects claims 5–7, 12–14, 19, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Kracht, Goringe, Fortin, and Tatman
(U.S. 2007/0097991 A1; May 3, 2007). Ans. 12–16.
ISSUES
1. Did the Examiner err in finding that claim 15, which is directed to
a computer program product “disposed in a recordable medium for machine-
readable information,” encompasses a signal and thus encompasses non-
statutory subject matter?
2. Did the Examiner err in finding that Goringe teaches or suggests
“querying each router for connection data, the connection data associating a
router interface with a device address and one or more user defined
attributes that describe the router interface,” as recited in claim 15?
3. Did the Examiner err in finding that Fortin teaches or suggests:
identifying for each queried router in dependence upon the
connection data a router interface connected to a data
communications device including identifying a device address
associated with the router interface, wherein the identified
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device address matches a device address in a preconfigured set
of possible device addresses for devices in a particular network,
as recited in claim 15?
ANALYSIS
35 U.S.C. § 101
Claim 15 is directed to a computer program product “disposed in a
recordable medium for machine-readable information.” The Examiner finds
that claim 15 encompasses non-statutory subject matter because “[t]he term
‘recordable medium’ could include signals in transmission which have been
held to be non-statutory.” Ans. 3. Specifically, the Examiner notes that
“Appellant’s specification recites that the recordable media may include
‘other suitable media’ and that the example of recordable media includes
‘others as will occur to those of skill in the art.’” Id. at 17. The Examiner
finds that “one of ordinary skill in the art could interpret ‘other suitable
media’ or ‘others as will occur to those of skill in the art’ as transitory
media.” Id.
Appellant contends the Examiner erred because the examples
provided in the Specification of a “recordable medium” include “magnetic
media, optical media, magnetic disks in hard drives or diskettes, compact
disks for optical drives, magnetic tape, and others as will occur to those of
skill in the art.” App. Br. 6. That is, Appellant argues that the specific
examples in the Specification of a “recordable medium” are all tangible,
non-transitory media. Thus, Appellant argues that “other suitable media”
and “others as will occur to those of skill in the art,” read in context, are
directed to other forms of tangible, non-transitory media.
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We find Appellant’s arguments persuasive. The plain meaning of
terms such as “computer readable medium” and “machine readable storage
medium” typically encompass non-statutory signals, particularly when the
Specification is silent as to the meaning of such terms. See U.S. Patent &
Trademark Office, Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010); Ex parte Mewherter, 107
USPQ2d 1857, 1859 (PTAB 2013) (precedential-in-part). Here, the
Specification is not silent, but ascribes sufficiently particular meaning to the
term “recordable medium” to show that it encompasses tangible, non-
transitory media, but excludes non-statutory signals. See Amend. to the
Spec. 2 (Feb. 19, 2010). Therefore, we agree with Appellant that the
Examiner erred in finding claim 15 encompasses a signal and thus
encompasses non-statutory subject matter.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 101
rejection of independent claim 15 and claims 17–20 which depend thereon.
35 U.S.C. § 103(a)
The Examiner finds that the interface table 340 output of Goringe’s
network topology discovery system 300 teaches or suggests “querying each
router for connection data, the connection data associating a router interface
with a device address and one or more user defined attributes that describe
the router interface,” as recited in claim 15. Ans. 5 (citing Goringe,
¶¶ [0042] and [0044]); see also Goringe, Fig. 9. Appellant contends the
Examiner erred because the attributes stored in Goringe’s interface table
340—interface type, status, etc.—“are not user defined attributes that
describe the router interface, as is claimed, but instead are merely general
attributes of the router that describe the router interface.” App. Br. 8.
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Appellant does not provide persuasive arguments or evidence to
support this contention. Moreover, Appellant does not rebut the Examiner’s
specific findings and conclusions that Goringe
teaches . . . querying attributes that describe the router interface
such as whether the interface was contactable and interface
type. A router is able to provide the attributes since a user such
as an administrator, programmer, or perhaps even a
manufacturer configured the router to do so. The router is
configured by a user to generate and provide the specific
attributes as described by Goringe.
Ans. 18 (citing, e.g., Goringe ¶ [0044]).
In other words, the Examiner finds a reasonably broad interpretation
of “user defined attributes” encompasses descriptive information that a user
defines and enables to be provided. The Examiner also finds, in light of the
Specification, a reasonably broad interpretation of a “user” includes
administrators, programmers, and manufacturers. We do not find any error
in the Examiner’s interpretation of “user defined attributes,” especially since
the Specification provides little disclosure related to this recitation. See
Spec., p. 6, ll. 19–24 and p. 12, ll. 20–24. Therefore, we agree with the
Examiner that Goringe teaches or suggests “querying each router for
connection data, the connection data associating a router interface with a
device address and one or more user defined attributes that describe the
router interface,” as recited in claim 15. Ans. 5.
The Examiner also finds that Fortin’s matching of configuration data
between newly found and old network elements—where configuration data
includes network addresses, hardware identifiers, and system name—teaches
or suggests the second limitation in dispute, i.e.:
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identifying for each queried router in dependence upon the
connection data a router interface connected to a data
communications device including identifying a device address
associated with the router interface, wherein the identified
device address matches a device address in a preconfigured set
of possible device addresses for devices in a particular network,
as recited in claim 15. Id.
Appellant contends the Examiner erred because Fortin “describes
compiling a list of old network elements and new networks elements –
without ever comparing addresses of devices connected to a router interface
to a preconfigured set of possible device addresses for devices in a particular
network.” App. Br. 10. Appellant’s arguments, however, are not
commensurate in scope with the claimed invention. Claim 15 does not have
any recitations directed to comparing addresses. Furthermore, while claim
15 includes the identification of a router interface for a queried router “in
dependence upon the connection data,” the connection data itself can include
information other than addresses—information such as user defined
attributes. See Claim 15; Spec., p. 6, ll. 19–24 and p. 12, ll. 20–24. Thus,
Appellant’s arguments, being incommensurate with the scope of the claimed
invention, do not show error in the Examiner’s rejection. Therefore, we
agree with the Examiner that Fortin teaches or suggests the second limitation
in dispute.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 15, and claims 1, 3–8, 10–14, and 17–20, which are not argued
separately with sufficient specificity. App. Br. 10–12.
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DECISION
We affirm the Examiner’s decision to reject claims 1, 3–8, 10–15, and
17–20 under § 103(a), and we reverse the Examiner’s rejection of claims 15
and 17–20 under § 101.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision to reject
claims 1, 3–8, 10–15, and 17–20. See 37 C.F.R. § 41.50(a)(1).
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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