Ex Parte Jäkel

Board of Patent Appeals and Interferences

May 21, 2008

09795405 (B.P.A.I. May. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TORSTEN JÄKEL
____________

Appeal 2007-4280
Application 09/795,405
Technology Center 2600
____________

Decided: May 21, 2008
____________

Before MAHSHID D. SAADAT, JOHN A. JEFFERY,
and CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF CASE
Appellant’s claimed invention is a method and apparatus for testing
telecommunications facilities independent of the protocol used by analyzing
a recorded communication to recognize recurring procedures and generate a
test case (Spec. 2:15-17; Spec. 4:11-12).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.

1. A method of testing telecommunication facilities independent of the
protocol used comprising the steps of:

a) recording a real communication between at least two
telecommunication facilities over an extended period of time;

b) analyzing the recorded real communication to recognize recurring
procedures; and

c) generating a test case based on the recurring procedures.

REFERENCES
Womble1 US 5,488,648 Jan. 30, 1996
Sasin US 6,011,830 Jan. 4, 2000
The Examiner rejected claims 1-9 under USC § 103(a) based upon the
teachings of Sasin and Womble.
Appellant contends that the combination of Sasin and Womble would
not teach that testing is done independent of the protocol used and that real

1 In the Examiner’s Answer mailed March 16, 2007, a new ground of
rejection was issued, rejecting the claims under the combination of Sasin and
the newly-cited reference to Womble.
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communications over an extended time period are recorded and analyzed to
recognize recurring procedures (Reply Br. 12).

ISSUE
Did the Examiner err in rejecting claims 1-9 under 35 USC § 103(a)
as obvious over Sasin and Womble?

FINDINGS OF FACT
1. Appellant’s invention generates test cases that are independent
of the protocol being used (cl. 1; Reply Br. 10), analyzes a recorded
communication to recognize recurring procedures, and generates a test case
based on the recurring procedures (cl. 1).
2. Appellant’s disclosure also teaches that an analysis is
performed using methods based on protocol (Spec. 5:21-24; Spec. 6:1-2),
and more specifically, that it is particularly advantageous if the tester knows
the protocol (Spec. 6:12-15).
3. Sasin teaches a test device and method for performing an
operational test for a system under test. A test state model is generated from
the test system’s generated traffic values (the possible states and transitions),
from the test commands that have to be issued to the test system to bring
about corresponding transitions, and from the system’s hardware
configuration. “[A] number of test cases with test commands is passed
through in exactly the same approach and statistical frequency as is to be
expected in a real operating environment…” (col. 11, ll. 52-61).
4. Womble teaches a test diagnostic tool for stored program
controlled telecommunications switching systems that capture the
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occurrence and timing of “‘events’ arising from subscriber actions”
(Abstract).
5. Womble further teaches that events occurring within the
telecommunication switch are recorded and analyzed by an operator to
identify and correct any faults that occurred (col. 15, ll. 31-45).
6. “In information technology, a protocol (from the Greek
protocollon, which was a leaf of paper glued to a manuscript volume,
describing its contents) is the special set of rules that end points in a
telecommunication connection use when they communicate. Protocols exist
at several levels in a telecommunication connection. For example, there are
protocols for the data interchange at the hardware device level and protocols
for data interchange at the application program level. In the standard model
known as Open Systems Interconnection (OSI), there are one or more
protocols at each layer in the telecommunication exchange that both ends of
the exchange must recognize and observe. Protocols are often described in
an industry or international standard.” SearchNetwork.com,
http://searchnetworking.techtarget.com/sDefinition/0,,sid7_gci212839,00.ht
ml (last visited May 19, 2008).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). In KSR, the Supreme Court reaffirmed that “[t]he combination
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of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” Id. at 1739.
“An obviousness determination is not the result of a rigid formula
disassociated from the consideration of the facts of a case. Indeed, the
common sense of those skilled in the art demonstrates why some
combinations would have been obvious where others would not.” Leapfrog
Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
Language in a preamble limits a claim where it breathes life and
meaning into the claim, but not where it merely recites a “purpose or
intended use of the invention.” Innova/Pure Water Inc. v. Safari Water
Filtration Systems Inc., 381 F.3d 1111 (Fed. Cir. 2004)
If the Examiner’s burden of establishing a prima facie case of
obviousness is met, the burden then shifts to the Appellant to overcome the
prima facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992).

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ANALYSIS
Claims 1 and 9
The Examiner finds that Sasin teaches all the features of
representative claim 12 except for recognizing recurring procedures (Ans. 3),
and that Womble teaches recognizing a pattern successively repeated in
addition to monitoring and analyzing events recorded in a memory. The
Examiner then concludes that the claimed invention would have been
obvious to a skilled artisan at the time of the invention in view of Sasin and
Womble (Ans. 4).
Appellant asserts that the Examiner did not point out that “the testing
mechanism of Sasin is ‘independent of the protocol used’ as is recited in
claim 1” (App. Br. 5) and further, that Sasin has to have the protocol
identified (Reply Br. 10).3) Appellant further asserts that Womble does not
teach an “analysis of sequences within the communication for recurring
procedures” (Reply Br. 12). Thus, Appellant contends that the combination
of these references does not teach testing performed independent of the
protocol used or that real communications over an extended period of time
are recorded and analyzed to recognize recurring procedures to generate a
test case (Reply Br. 12).
The term “independent of the protocol” is found only in the preamble
of claim 1; however, the body of the claim is not limited by this term. The

2 Appellant argues claims 1 and 9 together and therefore stand or fall
together. Accordingly, we select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).

3 We refer to the Substitute Appeal Brief filed June 30, 2006, and the Reply
Brief filed May 15, 2007.
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term “protocol” as used in telecommunications refers to special set of rules
that end points in a telecommunication connection use when they
communicate (FF 6). Protocols exist at several levels in a
telecommunication connection including at the hardware level and at the
application program level (FF 6). Appellant’s claims and Specification are
not specific as to what protocol the testing is independent. Further,
Appellant’s own Specification acknowledges that it is advantageous to know
the protocol during analysis (FF 2) particularly, “[t]he analysis involves
using a target description of a state machine to analyze the communication
sequence, i.e., the course of the protocol.” (Spec. 5:24-6:2). Therefore, we
disagree with Appellant’s argument because claim 1 is given its broadest
reasonable interpretation in light of the specification, and none of the steps,
particularly the step of analyzing the recorded real communication to
recognize recurring procedures, is limited by the term “independent of the
protocol.”
Appellant also argues that Womble does not record over an extended
period or recognize recurring procedures, but rather, does so on a call-by-
call sequence of events (Reply Br. 12). Appellant asserts a “test case in
Womble is not based on the recurring procedures that result from analyzing
the data, but rather is based on an anomaly occurring within a sequence of
known events.” (Reply Br. 12). In Womble, an operator analyzes recorded
events to determine if a fault has occurred (FF 5) within the sequence of
recorded events (col. 15, ll. 25-28). A fault or failure in this case, is a
breaking from a sequence/pattern. Appellant’s own Specification only
generally describes that there is a repetition of some procedures, such as
during connection build-up and connection tear-down. These repetitions
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make it possible to recognize recurring procedures. (Spec. 3:23-24; Spec.
4:1-9). Additionally, the analysis of the test includes understanding “errors
resulting from active operation…” (Spec. 4:15-16). Thus, Appellant’s
“recognize recurring procedures” language in claims 1 and 9, refers to
analyzing data, including errors/faults occurring within a sequence of events
(see also Spec. 2:1-4) as does Womble (col. 15, ll. 23-46). Giving the claims
their broadest reasonable interpretation, analyzing the record for a fault
(breaking from a sequence/pattern) is reasonably considered as analyzing the
record for recurring procedures.
Appellant has not defined what the term “extended period” refers to or
means. Giving this term its broadest reasonable interpretation in light of the
specification, an extended period can reasonably include a single (long)
phone call or many phone calls over a long time period.
We therefore find that Appellant has not persuasively rebutted the
Examiner’s prima facie case of obviousness and that all the limitations of
independent claims 1 are taught or suggested by the collective teachings of
the cited prior art. Because claim 9 was not argued separately and therefore
stands or falls with claim 1, we find that claim 9 is likewise obvious over the
collective teachings of the cited prior art.

Claims 2, 3, and 5-8
Appellant provided no arguments for claims 2, 3, and 5-8. Thus, these
claims stand or fall with claim 1 from which they depend. For the reasons
provided above, Appellant has not persuaded us of error in the Examiner’s
rejection of claims 2, 3, and 5-8 over the collective teachings of Sasin and
Womble.
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Claim 4
Appellant provided arguments for dependent claim 4, which depends
from independent claim 1, with respect to Sasin and Mumford (App. Br. 10).
However, Appellant provided no rebuttal arguments with respect to the
Examiner’s rejection of claim 4 based on the collective teachings of Sasin
and Womble. Thus, for the reasons provided above with respect to claims 1
and 9, Appellant has not persuaded us of error in the Examiner’s rejection of
claim 4 over Sasin and Womble.

CONCLUSION
We therefore conclude that the Examiner did not err in rejecting
claims 1-9 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner rejecting claims 1-9 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

KIS

MATTHEW D. RABDAU
TEKTRONIX, INC.
14150 S.W. KARL BRAUN DRIVE
P.O. BOX 500 (50-LAW)
BEAVERTON, OR 97077-0001