Ex Parte Huckins

Board of Patent Appeals and Interferences

Mar 25, 2008

09686754 (B.P.A.I. Mar. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JEFFREY L. HUCKINS
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Appeal 2007-3408
Application 09/686,754
Technology Center 2100
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Decided: March 25, 2008
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Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-30. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM IN PART.

Appeal 2007-3408
Application 09/686,754

THE INVENTION
The disclosed invention relates generally to managing remote clients.
More particularly, Appellant’s invention relates to a client-server system that
transmits messages by using identifiers and using the identifiers to perform
tasks (See Spec. 4, ll. 21-24).
Independent claim 1 is illustrative of the invention:
1. A method comprising:
receiving on a client a message from a server addressed
to said client; and

scheduling a data upload session based on said message.
THE REFERENCES
The Examiner relies upon the following references as evidence in
support of the rejections:
Reisacher US 5,978,845 Nov. 2, 1999
Lakey US 6,078,954 June 20, 2000

Hein, SNMP, Simple Network Management Protocol, Version 2, 1994, 339-
40.

THE REJECTIONS
1. Claims 1, 6, 7, 11, 15, 16, 20, 22-24, 26, and 28-30 stand rejected
under 35 U.S.C. §102(e) as being anticipated by Reisacher.

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2. Claims 4, 5, 8-10, 14, 17-19, 25, and 27 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Reisacher in view of Hein.
3. Claims 2, 3, 12, 13, and 21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Reisacher in view of Lakey.
Appellant has not directly addressed the Examiner’s final rejection of
claims 2, 3, 12, 13, and 21 in the Briefs. However, on page 5 of the principal
Brief, Appellant expressly states that “[c]laims 1-30 are rejected and are the
subject of this Appeal Brief.” Because Appellant has failed to traverse the
Examiner’s rejection of these claims in the Briefs, we pro forma sustain the
Examiner’s rejection of claims 2, 3, 12, 13, and 21 as being unpatentable
over Reisacher in view of Lakey.

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).
In rejecting claims under 35 U.S.C. § 103, “[w]hat matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1742
(2007). To be nonobvious, an improvement must be “more than the
predictable use of prior art elements according to their established
functions.” Id. at 1740.
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
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[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)). Therefore, we look to Appellant’s Briefs to show error in the
proffered prima facie case.

ANALYSIS
Anticipation under 35 U.S.C. § 102
Claims 1, 6, 7, 11, 15, 16, 20, 22-24, 26, and 28-30
We consider the Examiner’s rejection of claims 1, 6, 7, 11, 15, 16, 20,
22-24, 26, and 28-30 as being anticipated by Reisacher. We note that
Appellant’s Brief does not provide separate arguments for claims 6, 7, 11,
15, 16, 20, 22-24, 26, and 28-30. Appellant submits arguments for the first
time regarding claim 7 in the Reply Brief (Reply Br. 2, ll. 22-26). We
decline to consider this new argument as untimely. See Optivus Tech., Inc.
v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (an issue
not raised in an opening brief is waived). Since Appellant’s arguments have
otherwise treated these claims as a single group which stand or fall together,
we select independent claim 1 as the representative claim for this rejection.
See 37 C.F.R. § 41.37(c)(1)(vii).
We note that Appellant has not contested the Examiner’s finding that
Reisacher discloses the limitations of “receiving on a client a message from
a server addressed to said client,” as recited in claim 1.
Nevertheless, Appellant contends that Reisacher fails to teach a
scheduled upload session based on a received message (App. Br. 11, l. 18).
According to the Appellant, Reisacher teaches that an SNMP relay which
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waits for receipt of the outstanding responses, and upon receipt thereof,
rebuilds a full SNMP response (App. Br. 11, ll. 11-17). Thus, Appellant
asserts that Reisacher fails to teach an upload session that is “scheduled”
based on a received message as recited in claim 1. In addition, Appellant
argues that the upload session in Reisacher is random because the full
SNMP response occurs whenever the responses from the agents are received
(App. Br. 11, ll. 20-23). We note that claim 1 is silent with regards to the
source or recipient of the upload.

Claim Construction
“[T]he PTO gives claims their ‘broadest reasonable interpretation.’”
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). Here, we broadly but reasonably
construe the claim term “scheduling” to read on a series of planned events.
In the Reply Brief, Appellant has submitted a dictionary definition of
“scheduling” (Reply Br. 1). We decline to construe Appellant’s claims in
light of this untimely extrinsic evidence. See 37 C.F.R. § 41.41(a)(2) (A
reply brief shall not include any new evidence).
As noted by the Examiner, the term “schedule” is not further defined
in claim 1. The Examiner has determined that Reisacher teaches a time
ordering of events, i.e., (1) receipt of all outstanding responses, and (2),
transmitting a full SNMP response after receipt of all of the outstanding
responses (Ans. 4, para. 17). We agree with the Examiner that Reisacher
teaches that the full SNMP response is scheduled because it does not take
place until after all of the outstanding responses have been received. Thus,
we find Reisacher’s full SNMP response is a planned event, and is not
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random as asserted by Appellant. Therefore, we agree with the Examiner’s
finding that Reisacher discloses scheduling an upload session based on said
message, as recited in claim 1. We conclude that Appellant has not shown
the Examiner has erred in rejecting independent claim 1.
Accordingly, we sustain the Examiner’s rejection of claim 1 as being
anticipated by Reisacher. Pursuant to our authority under 37 C.F.R.
§ 41.37(c)(1)(vii), we have decided the appeal with respect to the remaining
claims in this group on the basis of the representative claim alone. Thus, we
sustain the Examiner’s rejection of claims 6, 7, 11, 15, 16, 20, 22-24, 26, and
28-30 as being anticipated by Reisacher.

Obviousness under 35 U.S.C. § 103
We consider next the Examiner’s rejection of claims 4, 5, 8-10, 14,
17-19, 25, and 27 as being unpatentable over Reisacher in view of Hein.

Combinability under 35 U.S.C. § 103
Appellant contends that the Examiner has not established prima facie
obviousness because the final rejection failed to set forth a rationale to
modify or combine the references (App. Br. 12, ll. 7-9).
We disagree because the Examiner has provided a rationale for
combining Reisacher and Hein. In particular, the Examiner has found that
since both Reisacher and Hein are directed to SNMP, one of ordinary skill
would have been motivated to examine all aspects of the protocol, such as
those aspects taught by Hein (Ans. 4 para. 20). Thus, Appellant has not
shown the Examiner erred in combining Reisacher and Hein.

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Claims 4 and 5
We consider the Examiner’s rejection of claims 4 and 5 as being
unpatentable over Reisacher in view of Hein. Appellant contends that the
cited references fail to teach the elements recited in claims 4 and 5 (App. Br,
12).
We disagree because the “identifier” elements of claims 4 and 5 are
non-functional descriptive material that fails to distinguish these claims over
the cited references. In a precedential decision, an expanded Board panel
recently held that elements that do not affect the claimed process are non-
functional material and are merely descriptive. See Ex parte Nehls, (BPAI
2008) (precedential) (Appeal No. 2007-1823).1
Here, claim 4 recites receiving a message including an identifier
which specifies a task to perform on a storage device. Claim 5 recites
receiving a message including an identifier indicating a change to a
partition on said storage device (emphasis added). We consider these
claims as merely being directed to a step of receiving a message that
includes an identifier coupled with a statement of intended use. The step of
receiving a message does not change according to the particular type of
identifier received. Thus, the elements recited in claims 4 and 5 do not
provide any new and unobvious functions to the steps recited in claim 1,
from which claims 4 and 5 depend. Accordingly, we sustain the Examiner’s
rejection of claims 4 and 5 as being unpatentable over Reisacher in view of
Hein.

1 See http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf
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Claims 9 and 10
We consider next the Examiner’s rejection of claims 9 and 10 as being
unpatentable over Reisacher in view of Hein. Appellant contends that there
is no discussion of any identifier used to upload and to specify the
information to upload to the server (App. Br. 12, ll. 26-31). Claim 9 further
recites uploading the specified information to said server.
The Examiner stated that this element is expressly taught by Reisacher
(Ans. 6, ll. 1-4). The Examiner points to Reisacher’s teaching of “analyzing
a request received from the network under a predetermined network
management protocol to identify each management operation to be
performed and to identify an agent for performing each identified operation
. . . .” (Reisacher, col. 3, ll. 59-63). This portion of Reisacher is apparently
interpreted by the Examiner to mean that the identified operations produce
the data, which also would identify the data to be uploaded (Ans. 6).
However, we agree with Appellant that the evidence relied on by the
Examiner falls short of fairly teaching and/or suggesting “including
extracting from said message an identifier which specifies the information to
upload to said server and uploading the specified information to said server,”
as required by the express language of dependent claim 9. Accordingly, we
reverse the Examiner’s rejection of claim 9 and also claim 10 (which
depends from claim 9) as being unpatentable over Reisacher and Hein.

Claim 14
We consider next the Examiner’s rejection of claim 14 as being
unpatentable over Reisacher in view of Hein. Appellant contends that the
Examiner has not indicated any instructions that decode a command within a
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message to modify the storage of information on a storage device (App. Br.
13, ll. 1-4).
We disagree because claim 14 is directed to non-functional
descriptive material. We consider claim 14 as merely being directed toward
a step of storing instructions coupled with a statement of intended use. We
note that the recited function of storing instructions does not change
according to the particular type of instructions. Thus, the instructions of
claim 14 do not provide any new and unobvious functions to the functional
language recited in claim 11, from which claim 14 depends. Because the
non-functional descriptive material of claim 14 fails to distinguish the claim
over the cited references, we sustain the Examiner’s rejection of claim 14 as
being unpatentable over Reisacher in view of Hein.

Claims 18 and 19
We consider next the Examiner’s rejection of claims 18 and 19 as
being unpatentable over Reisacher in view of Hein. Appellant contends the
cited references fail to disclose or suggest extracting from said message an
identifier which specifies the information to upload to said server and upload
the specified information to said server, as recited in claim 18. The
Examiner contends that Reisacher discloses this feature (Ans. 3, para. 10).
The Examiner further refers to the arguments presented regarding claim 4
(Id. at para. 23). The Examiner points to Reisacher’s description of
“analyzing a request received from the network under a predetermined
network management protocol to identify each management operation to be
performed and to identify an agent for performing each identified operation
. . . .” (Reisacher, col. 3, ll. 59-63).
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While we agree with the Examiner that the cited references, most
notably Reisacher, teach and/or suggest the use of an identifier to perform a
specified task, we nevertheless disagree with the Examiner’s determination
that the cited references teach or suggest extracting an identifier which
specifies information to be uploaded, and uploading the specified
information, as required by the language of claim 18 (emphasis added).
Accordingly, we reverse the Examiner’s rejection of claim 18 and also claim
19 (which depends from claim 18) as being unpatentable over Reisacher and
Hein.
Claims 8, 17, 25, and 27
We consider next the Examiner’s rejection of claims 8, 17, 25, and 27
as being unpatentable over Reisacher in view of Hein. Since Appellant’s
arguments have treated these claims as a single group which stand or fall
together, we select claim 8 as the representative claim for this group. See
37 C.F.R. § 41.37(c)(1)(vii).
Regarding claim 8, Appellant notes that Hein is relied upon to teach
extracting a specified time from a message and uploading the data at the
specified time (App. Br. 13, ll. 11-13). Appellant contends that “[n]othing in
Hein seems to enable extracting a time and uploading information at a
specified time” (Id. ll. 13-15) (emphasis added).
While a reference must enable someone to practice the invention in
order to anticipate under § 102, a non-enabling reference may qualify as
prior art for the purpose of determining obviousness under § 103. Symbol
Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991).
Moreover, U.S. Patents are presumed to be enabled and otherwise fully
comply with the requirements of 35 U.S.C. § 112, first paragraph.
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Therefore, we find unpersuasive Appellant’s argument directed to the
question of whether Hein is an enabling reference. We decline to consider
Appellant’s additional arguments presented for the first time in the Reply
Brief as untimely (see Reply Br. 3). See Optivus Tech., Inc. v. Ion Beam
Applications S.A., 469 F.3d at 989. Because Appellant has not shown error
in the Examiner’s prima facie case, we sustain the Examiner’s rejection of
representative claim 8 and also claims 17, 25, and 27 (which fall therewith)
as being unpatentable over Reisacher and Hein.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown the Examiner erred in rejecting claims 1, 6, 7, 11,
15, 16, 20, 22-24, 26, and 28-30 under 35 U.S.C. § 102(e) for anticipation,
and claims 2-5, 8, 12-14, 17, 21, 25, and 27 under 35 U.S.C. § 103(a) for
obviousness. However, we conclude that Appellant has shown the Examiner
erred in rejecting dependent claims 9, 10, 18, and 19 under 35 U.S.C.
§ 103(a) for obviousness.
DECISION
The decision of the Examiner rejecting claims 1-8, 11-17, and 20-30
is affirmed.
The decision of the Examiner rejecting claims 9, 10, 18, and 19 is
reversed.

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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-IN-PART

rwk

TROP PRUNER & HU, PC
1616 S. VOSS ROAD, SUITE 750
HOUSTON TX 77057-2631

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