Ex Parte Jai et al

Board of Patent Appeals and Interferences

Jul 23, 2012

10600995 (B.P.A.I. Jul. 23, 2012)

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.
10/600,995 06/20/2003 Ben Jai 5-4-52 5758
7590 07/24/2012
Ryan, Mason & Lewis, LLP
Suite 205
1300 Post Road
Fairfield, CT 06824
EXAMINER
BRUCKART, BENJAMIN R
ART UNIT PAPER NUMBER
2478
MAIL DATE DELIVERY MODE
07/24/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BEN JAI, GOKUL CHANDER PRABHAKAR,
and RAJEEV RASTOGI
____________

Appeal 2010-004055
Application 10/600,995
Technology Center 2400
____________

Before LANCE LEONARD BARRY, CARL W. WHITEHEAD, JR. and
GREGORY J. GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004055
Application 10/600,995

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-21. (App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The Invention
Exemplary independent claim 1 follows:
1. In a system having a plurality of devices, wherein
a plurality of configuration elements are associated with the
plurality of devices, a method for automated generation of
executable modules associated with the devices, the method
comprising the steps of:

accessing information about one or more input
configuration elements of the plurality of configuration
elements, wherein the one or more input configuration elements
are associated with one or more input rules;

determining which of the plurality of configuration
elements could be accessed based on the one or more input
rules;

generating one or more output rules using at least the
accessed information, the accessed configuration element, and
the input rules, wherein an output rule corresponds to one or
more input configuration elements and wherein said one or
more input rules comprises one or more executable statements;
and

generating at least one executable module adapted to
access at least a given one of the input configuration elements
and to trigger one or more of the output rules corresponding to
the given input configuration element.

Appeal 2010-004055
Application 10/600,995

3
Claims 1-9, 14-16, 20 and 21 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Moir (U.S. 2002/0120720 A1) (Ans. 3-8).
Claims 10-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Moir in view of Tuatini (U.S. 2001/0047385 A1) (Ans.
8-9).
Claims 17-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Moir in view of Presley (U.S. 2003/0105838 A1) (Ans.
9-10).

ISSUE
Appellants’ responses to the Examiner’s positions present the
following issue:
Did the Examiner establish that Moir discloses generating output rules
from input rules that “comprise one or more executable statements,” as
recited in independent claims 1, 20 and 21?

ANALYSIS
Appellants argue that independent claims 1, 20, and 21 are not
anticipated by Moir because Moir does not disclose the claim limitation of
generating output rules from input rules that “comprise one or more
executable statements” (App. Br. 8 (emphasis omitted)). The Examiner
concluded that Moir does disclose this claim limitation on the ground that
the claim term “executable statements is broad and is not limited to code or a
certain type of statement” (Ans. 13). But an executable statement, according
to its plain and ordinary meaning, is a statement that can be executed.
Appeal 2010-004055
Application 10/600,995

4
Moreover, the Specification does not clearly assign a special, different
meaning to the term “executable statement.” Rather, the Specification
explains that the statements in the claimed rule are considered to be
executable because they execute “from an appropriately generated context as
part of an executable module . . .” (Spec. 2:ll. 28-30). Appellants argue that
there is no indication in Moir that the statements in its rule file execute (App.
Br. 8). We agree with Appellants. Moir’s rule file merely “specifies
behavioral requirements of a specific network device” (Moir, ¶ [0057]).
Accordingly, we find that the Examiner erred in finding that Moir discloses
rules that include executable statements, as that term is understood according
to its plain and ordinary meaning.
For these reasons, we find that the Examiner erred in concluding that
Moir anticipates independent claims 1, 20, and 21 and will not sustain the
Examiner’s anticipation rejections of those claims. We will also not sustain
the Examiner’s obviousness rejections of the claims dependent from claims
1, 20, and 21 because the Examiner did not allege that any of the secondary
references teach the claim limitation that is missing from Moir (See Ans. 4-
19).

DECISION
We reverse the Examiner’s decision rejecting claims 1-21.

REVERSED

pgc