Ex Parte Hofmann et al

Patent Trial and Appeal Board

Apr 5, 2013

11563897 (P.T.A.B. Apr. 5, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/563,897 11/28/2006 Stefan Hofmann LCNT/128349 1697
46363 7590 04/08/2013
WALL & TONG, LLP/
ALCATEL-LUCENT USA INC.
25 James Way
Eatontown, NJ 07724
EXAMINER
BIAGINI, CHRISTOPHER D
ART UNIT PAPER NUMBER
2445
MAIL DATE DELIVERY MODE
04/08/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEFAN HOFMANN, PETER RAUCH, and TOBIAS TRETTER
____________

Appeal 2010-011482
Application 11/563,897
Technology Center 2400
____________

Before DENISE M. POTHIER, BRUCE R. WINSOR, and
GREGG I. ANDERSON, Administrative Patent Judges.

ANDERSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF THE CASE
Appellants’ claimed invention relates to a communication system for
a Management Information Base (MIB) using Simple Network Management
Protocol (SNMP). Management protocols are used to manage the entities
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from which the communications system is composed. Appellants
specifically describe an apparatus and methods for facilitating
communication between a managed system and multiple management
systems. The apparatus includes at least one protocol agent and a
management layer. The apparatus facilitates downstream communications
from one or more management systems to the managed system, and
upstream communications from the managed system to one or more
management systems. See generally Spec. 2; Fig. 4. Claim 1 is illustrative:
1. A method, comprising:
receiving, at a managed system, a management request of a
management system, wherein the management request is formatted using a
protocol;
identifying, based on the protocol of the management request, a
protocol agent of the managed system, wherein the identified protocol agent
is configured for processing the management request;
identifying, based on the management request, a protocol entity of the
identified protocol agent;
identifying a logical system entity associated with the identified
protocol entity, wherein the logical system entity is identified using a
mapping between the protocol entity and the logical system entity; and
triggering the identified logical system entity to perform a
management task specified by the management request.

THE REJECTIONS
1. The Examiner rejected claims 7 and 9-11 under 35 U.S.C. § 101 as
claiming nonpatentable subject matter. Ans. 3-4.1

1 Throughout this opinion, we refer to (1) the Appeal Brief filed Mar. 19,
2010 (“App. Br.”); (2) the Examiner’s Answer mailed June 10, 2010
(“Ans.”); and (3) the Reply Brief filed Aug. 9, 2010 (“Reply Br.”).
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2. The Examiner rejected claims 1-20 under 35 U.S.C. § 102(b) as
anticipated by F. Stamatelopoulos, T. Chiotis, & B. Maglaris, A Scaleable,
Platform-Based Architecture for Multiple Domain Network Management, 3
IEEE INT’L CONF. ON COMM. 1453 (Feb. 1995) [hereinafter Maglaris2]. Ans.
4-12.

ISSUES
1. Under 35 U.S.C. § 101, has the Examiner erred in rejecting claims
7 and 9-11 as failing to claim patent eligible subject matter?
2. Under 35 U.S.C. § 102(b), has the Examiner erred in rejecting
claim 1 by finding that Maglaris shows: (a) identifying a protocol agent
based on a protocol of a management request; (b) identifying a protocol
entity of the protocol agent based on a management request; and (c)
identifying a logical system entity associated with the identified protocol
entity by mapping between the protocol entity and the logical system entity?
3. Under 35 U.S.C. § 102(b), has the Examiner erred in rejecting
claim 7 by finding that Maglaris shows updating a logical system entity of a
managed system in response to an attribute value change indication from a
physical system entity of the managed system?

ANALYSIS
Claims 7 and 9-11–35 U.S.C. § 101 Rejection
The Examiner rejected claims 7 and 9-11 under 35 U.S.C. § 101 as
not falling within one of the four statutory categories of invention, “new and

2 The Examiner and Appellants refer to the reference as “Maglaris,” and we
will continue that convention.
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useful process, machine, manufacture, or composition of matter.” Ans. 3-4.
The steps or acts to be performed, according to the Examiner, are not (1) tied
to a particular machine, or (2) transforming underlying subject matter (such
as an article or material) to a different state or thing. See id. (citing to In re
Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008)). The Examiner concludes the
issue is focused on whether or not a particular machine is present and finds
one is not. Id.
To the extent Appellants assert the “managed system” is hardware, the
Examiner finds that the “managed system” is not part of the otherwise
unpatentable method of claim 7 and is not hardware but rather the type of
data being processed. Ans. 12-13. Appellants contend claim 7 is directed to
a method for enabling a managed system, which performs some of the steps
of the method. App. Br. 12. Further, Appellants argue the managed system
acts in response to an attribute value change indication from a physical
system, and claim 7 is tied to a particular apparatus, namely, a managed
system having at least one physical system entity. Id. In the Reply Brief,
Appellants did not respond to the Examiner’s position that the method
claimed does not include the managed system having hardware.
Since the completion of the briefing on this issue, the United States
Supreme Court decided Bilski v. Kappos, 130 S.Ct. 3218 (2010). The
Supreme Court established that while a law of nature, natural phenomenon,
or abstract idea cannot be patented, “an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.” Bilski, 130 S.Ct. at 3230. As is pertinent here, the
machine-or-transformation test is a useful and important clue, as well as an
investigative tool, for determining whether some claimed inventions are
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processes under § 101. However, the machine-or-transformation test is not
the sole test for deciding whether an invention is a patent-eligible “process.”
Bilski, 130 S.Ct. at 3227. We conclude that the Examiner correctly applied
the law.
“[A]dding a ‘computer aided’ limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible” where the claims “are silent as to how a computer aids the method,
the extent to which a computer aids the method, or the significance of a
computer to the performance of the method.” DealerTrack, Inc. v. Huber,
674 F.3d 1315, 1333 (Fed. Cir. 2012); see MPEP § 2106(II)(B)(1)(a).
Integral use of a machine or apparatus to achieve performance of the method
weighs toward eligibility, as compared to where the machine or apparatus is
merely an object on which the method operates, which weighs against
eligibility. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1375 (Fed. Cir. 2011); MPEP § 2106(II)(B)(1)(b).
Appellants’ argument that a “managed system” is a particular machine
is not completely borne out in the Specification, which discloses many types
of physical networks, i.e., machines, and their components within which a
managed system would be implemented. Spec. 4:22-31. However, at least
one embodiment of “managed systems” relates to “interworking functions”
(Spec. 4:30), which is not hardware.
Indeed, the “managed system” in claim 7 is not performing any step
of the claimed method. At best, a logical system entity of the managed
system is updated or merely an object on which the method operates.
Appellants point to no other machine in claims 7 or 9-11. There is thus no
machine necessary for performance of the method. Claims 7 and 9-11 recite
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an abstract idea which is not patentable under 35 U.S.C. § 101. The
transformation prong of Bilski and its progeny, nor any other potential legal
argument under Bilski, was not argued and is not considered.
In sum, as the Examiner found, there is no machine involved in the
claimed process. Appellants make no compelling argument to the contrary
and do not rebut the Examiner’s position in the Response to Argument
section. Accordingly, the Examiner’s § 101 rejection of claims 7 and 9-11 is
affirmed.

Claims 1 and 13–35 U.S.C. § 102 Rejection
Claims 1 and 13 are grouped together as both have similar limitations
and the arguments made by Appellants are the same. See App. Br. 12-19,
24-28. Claim 1 will be analyzed as representative of both claims.
We begin by construing the first key disputed limitation of claim 1
which recites, in pertinent part, “identifying, based on the protocol of the
management request, a protocol agent of the managed system, wherein the
identified protocol agent is configured for processing the management
request.”
The Examiner finds that a protocol agent is identified and configured
to process a management request in Maglaris. Ans. 4 (citing Maglaris 1455,
col. 1, ll. 70-75; Fig. 6; Table 1). Relying on Figure 6, the management
structure is composed of agents that interface with the Management
Platform/Server. Ans. 13-14. The protocol agent identification occurs when
the communication occurs between management elements and, for example,
SNMP agents. Id. This communication follows “Management Protocols”
(see Fig. 6) and necessarily requires some type of a “request” from the
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management system to communicate with the respective agent. Ans. 13-14.
The Examiner also found each agent is “configured to process the
management request.” Once, received, the request is passed on to the higher
layers where it processed by the Management Platform/Server which
translates the requests to the Common Application Programming Interface
(API). Ans. 13-14.
For the first time in the Reply Brief, Appellants argue Maglaris is a
“management system” and not a “managed system” as claimed. Reply Br. 2.
Appellants allow that Maglaris discloses use of SNMP, SNMPv2, and CMIP
agents. App. Br. 14. However, Appellants assert that Maglaris does not
teach or suggest a protocol agent having a protocol entity, or a logical
system entity associated with a protocol entity and that the Examiner has
failed to provide an explanation or reasoning as to how the cited portions of
Maglaris may be interpreted as including such feature. App. Br. 14-15.
Appellants contend that the portion of Maglaris cited by the Examiner
(primarily Figure 6 and associated text) merely states that the Management
Protocol and Network Interface module handles communication with other
management elements lower in the hierarchy, including the Agents
(SNMP/SNMPv2, CMIP, and other agents) of the Manager Structure of
Figure 6 of Maglaris. Id. Appellants further contend that the cited portion
of Maglaris does not teach or suggest that the Management Protocol and
Network Interface module of Maglaris identifies one of the protocol agents
of Maglaris, much less that the Management Protocol and Network Interface
module of Maglaris identifies one of the agents of Maglaris for a
management request. Thus, Appellants reason, Maglaris still would fail to
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teach or suggest identifying a protocol agent based on the protocol of a
management request. Reply Br. 3.
We disagree. Maglaris relates to a MIB which includes a database of
objects monitored by a network management system. Maglaris, Abstract.
To the extent Appellants argue there is a distinction between the
“management system” of Maglaris and the “managed system” claimed, the
Examiner found none and we agree. Maglaris contemplates multiple
managed systems within the network management system disclosed and
teaches using a SNMP for managing multiple objects (e.g., identifying a
protocol agent) or even other managers by mapping all management services
onto a “Manager MIB.” Id. Appellants make no argument that would
suggest otherwise other than stating the difference in terminology. See
Reply Br. 2.
As the Examiner found, Maglaris shows a Management Protocol and
Network Interface module for handling communication in a hierarchy,
which may include SNMP and other proprietary agents. Ans. 4 (citing
Maglaris 1455, col. 1, ll. 71-75; Fig. 6). Appellants all but concede that
Maglaris shows protocol agents. App. Br. 14.
Appellants make no compelling argument as to why Maglaris does not
identify a protocol agent based on a “management request.” A management
system for multiple objects or managed systems, as Maglaris teaches,
presupposes communication over the system in the form of “manager-to-
manager communication.” Maglaris Abstract,; p. 1456, col. 2, ll. 14-23. We
therefore find no error with the Examiner’s finding that the first feature of
claim 1 is present in Maglaris.
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We now turn to the second key disputed limitation of claim 1 which
recites, in pertinent part, “identifying, based on the management request, a
protocol entity of the identified protocol agent.”
The Examiner finds the protocol entity is present. Ans. 5 (citing
Maglaris 1455, col. 1, ll. 70-75; Fig. 6). Further, the Examiner finds the
“protocol entity” is the Management Platform/Server in Maglaris. Ans. 14.
In the Examiner’s view, Maglaris teaches the protocol agents, which are
specific to the Management Protocol. Id. (citing Maglaris Fig. 6).
Appellants contend the protocol entity is an entity of the protocol
agent and is not shown in Maglaris. Reply Br. 3-4. Appellants assert that
Maglaris is devoid of any teaching or suggestion that the Management
Platform/Server is an entity of one of the agents; rather, as depicted in
Figure 6 of Maglaris, the Management Platform/Server is at a higher layer
than the agents, and clearly does not form part of any of the agents. Id.
Claim 1 requires the protocol entity to be “of the identified protocol
agent.” “Protocol entity” is not defined, but is discussed in the
Specification. Functionally, the protocol entity is “trigger[ed]” to “send at
least one notification to a management system using a protocol associated
with the protocol agent.” Spec. 3:2-4. Further, the protocol entity “may
include one or more objects, each object having one or more attributes, each
attribute having one or more possible associated attribute values.” Spec.
11:2-4. We therefore construe “protocol entity” to include a mechanism that
communicates using a protocol obtained from the protocol agent, which also
may contain other objects, attributes or attribute values for use in the
management system.
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Given the breadth of what a “protocol entity” may be, on the record
before us we find Maglaris discloses protocol entities “of the identified
protocol agents”. As the Examiner found, the protocol agents are shown to
communicate through the Management Protocol of Figure 6 with the
Management Platform/Server, i.e., the “protocol entity.” In addition to what
the Examiner specifically noted, the Management Platform/Server includes
an Application/Manager Interface which handles all communication with the
applications and managers and “implements an agent with the proposed
Manager MIB interface for the platform service users.” Maglaris 1455, col.
2, ll. 20-22; Fig. 7. Additionally, the kernel, also a part of the Management
Platform/Server (Maglaris Fig. 6), functions to retrieve information from and
update the Manager Repository, through the Kernel-Storage System
Interface layer. Id.
The Management Platform/Server includes both the
Application/Manager Interface and the kernel. Both are in communication
with the protocol agent, i.e., “of the” protocol agent. Maglaris, Fig. 6.
Further, each functions in a way that would require receipt of the protocol
from the protocol agent and also contains objects, attributes, or attribute
values used to communicate with the applications and managers. As such,
the functionality of the Management Platform/Server falls within the scope
of the claimed protocol entity.
Finally, Appellants fail to explain how any hierarchical relationship
they point out in Maglaris distinguishes the claims at issue. App. Br. 18.
Indeed, the claims do not appear to require any such arrangement.
The Examiner’s findings regarding the protocol entity are not
persuasively rebutted by what amounts to a conclusory argument that
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Maglaris fails to teach a “protocol entity” of the protocol agent.
Accordingly, we find the Examiner’s findings are rationally based and have
not been overcome by Appellants’ arguments.
We now turn to the third key disputed limitation of claim 1 which
recites, in pertinent part, “identifying a logical system entity associated with
the identified protocol entity, wherein the logical system entity is identified
using a mapping between the protocol entity and the logical system entity.”
The Examiner finds this feature present in Maglaris. Ans. 5 (citing
Maglaris 1455, col. 2, ll. 48-55; Fig. 6; Table 1). With reference to Figure 6,
according to the Examiner, mapping occurs between the protocol entity and
the logical system entity or “Management Applications.” Ans. 13-14. The
Common API allows the messages received from the protocol agents to be
translated to the logical system entity of the Management Applications. Id.
(citing Maglaris 1456, col. 2, ll. 9-55).3 As seen in Table 1, the Kernel
Function-Module has an Associated Open Systems Interconnection (OSI)
SMPF, which is associated with the logical system entity of the Management
Applications. Ans. 14. According to the Examiner, the mapping occurs
when the Common API coverts the request from the protocol entity
(Management Platform/Server) to the logical system entity (Management
Application). Id. Appellants assert the Common API does not provide an
interface (much less a mapping function) between the agents of Maglaris and
the Management Platform/Server. Rather, the API provides an interface
between the Management Platform/Server and the Management

3 The Examiner’s Response to Argument cites Maglaris “col. 4.” Based on
the Grounds of Rejection, it is believed the Examiner intended to cite to
Maglaris, page 4, column 2.
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Applications and Other Managers, as depicted in Figure 6. Thus, the API of
Maglaris cannot be interpreted as disclosing the “mapping” limitation of
Appellants’ claim 1. Reply Br. 5.
We have already affirmed the Examiner’s finding that the
Management Platform/Server is the protocol entity. Appellants do not argue
persuasively, if at all, that the Management Applications of Maglaris are not
“logical entities” within the meaning of the claims. We therefore focus our
inquiry on the mapping function between the protocol entity and the logical
system.
Mapping is not defined in the Specification, although it is described
functionally as mappings between the protocol entity and logical system
entity in support of “both downstream and upstream communications
between the managed system and one or more management systems.” Spec.
4:11-12. Additionally,
the mappings between entities may be mappings between
various different combinations of objects, attributes, and
attribute values (i.e., one or more entities, objects, attributes,
and attribute values of a protocol agent may map to one or more
entities, objects, attributes, and attribute values of the unified
information model by which system hardware 210 is
represented).
Spec. 11:18-23. We therefore construe “mapping” to mean correlating the
protocol entity to a logical system entity.
Given the breadth of “mapping,” we cannot say that Maglaris does not
show mapping between the protocol entity and the logical entity on the
record before us. The Examiner finds that the protocol entity feature is met
by the Management Platform/Server, then Maglaris shows, as the Examiner
further found, identifying Management Applications from the Management
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Platform/Server. The Examiner’s specific finding that the Common API of
Maglaris shows an interface between the Management Platform/Server and
the Management Applications and Other Managers, as depicted in Figure 6,
is reasonable and not persuasively rebutted by Appellants. The identified
interface between the Management Platform/Server (protocol entity) and
Management Applications (logical system entities) falls within the scope of
mapping (e.g., correlated the application to components of the
platform/server) as claimed. Additionally, we note the upper layer of the
Application/Manager Interface of the Management Platform/Server
(SNMPv2/CMIP Agent) offers a MIB interface (SNMPv2 or CMIP) to the
applications and other managers. Maglaris 1455, col. 2, ll. 28-48; Fig. 7.

Claim 7–35 U.S.C. § 102 Rejection
We have already found independent claim 7 recites unpatentable
subject matter under 35 U.S.C. § 101. Claim 7 includes the protocol agent,
protocol entity, logical entity, and mapping features already analyzed.
Nothing in the claim language is pointed out by Appellants as distinguishing
claim 7 over claim 1, and our analysis regarding claim 1 is incorporated
herein as to those features. Further, Appellants do not persuasively argue
claim 7 is patentably different from claim 1 as to any of the foregoing. App.
Br. 20-23.
There is one distinction claim 7 has over claim 1. The additional
disputed limitation of claim 7 recites, in pertinent part, “updating a logical
system entity of the managed system in response to an attribute value change
indication from a physical system entity of the managed system.”
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The Examiner finds this feature is present in Maglaris. Ans. 15 (citing
Maglaris 1456, col. 1, ll. 38-52). The Management Applications are updated
and configuration changes made. Id. (citing Maglaris Table 1; 1456, col. 1,
ll. 61-74).
Appellants disagree and say the cited portion of Maglaris could
merely be interpreted as disclosing updating information at a management
system in response to configuration changes from the network (i.e., from a
managed element). App. Br. 21. This is different, so Appellants say, from a
manager-platform that is operating as a management system for managing a
network. Id. Thus, the cited portion of Maglaris simply cannot teach or
suggest updating a logical system entity of a managed system in response to
an attribute value change indication from a physical system entity of the
managed system. Id.
We agree with the Examiner. Appellants’ effort to distinguish the
claimed invention on Maglaris being a management system versus the
claimed managed system has already been discussed and is unavailing.
Further, claim 7 contains no limitation that would support such an argument.
We have also agreed that the logical system entity is broad enough to
encompass the management applications of Maglaris. The Examiner found
the Management Application/logical system entity was updated in Maglaris
and Appellants do not persuasively argue to the contrary.

Claims 2-6, 8-12, and 14-20–35 U.S.C. § 102 Rejection
Claims 2-6, 8-12, and 14-20 all depend directly or indirectly on claims
discussed supra. None are separately argued as patentable over Maglaris.
Rather, each of these claims relies on the arguments made for the
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independent claims from which they respectively depend. App. Br. 19, 24,
28. For reasons already stated, we find no basis to overturn the Examiner’s
rejection of claims 2-6, 8-12, and 14-20.

ORDER
The Examiner’s decision rejecting claims 7 and 9-11 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s decision rejecting claims 1-20 under 35 U.S.C. § 102
is affirmed.
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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