Ex Parte Kegel

Board of Patent Appeals and Interferences

Feb 24, 2012

10795923 (B.P.A.I. Feb. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DANIEL KEGEL
____________________

Appeal 2009-010841
Application 10/795,9231
Technology Center 2400
____________________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under authority of 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-35. The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Application filed March 8, 2004. The real party in interest is Ixia. (App.
Br. 1.)
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Appellant’s Invention
The invention at issue on appeal concerns a telecommunication
network testing system, machine-readable medium, and method of creating
network traffic replicating activities. The method includes steps of receiving
a test script including a sequence of commands or instructions and invoking
a script interpreter. The commands cause network traffic to be created and
transmitted by the network testing system. The method then launches an
application thread to execute the test script. The application thread in turn
launches a protocol engine for each of the commands in the test script such
that each protocol engine has an associated command and invokes a call to
the operating system to accomplish and execute the command. (Spec. ¶¶
[0027]-[0029], [0032]-[0034]; Abstract.)2
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A method of creating network traffic replicating
activities of a large number of users comprising:
receiving a test script including a plurality of commands
invoking a script interpreter
launching an application thread to execute the test script
invoking a protocol engine for each of the commands in
the test script such that each protocol engine has an associated
command,

2 We refer to Appellant’s Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed August 6, 2008; and Reply Brief (“Reply Br.”) filed December 22,
2008. We also refer to the Examiner’s Answer (“Ans.”) mailed November
13, 2008.
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each protocol engine executing its associated command.

References
The Examiner relies on the following references as evidence in
support of the rejection:
Smith US 6,091,802 July 18, 2000

Jameson US 2003/0107596 A1 Jun. 12, 2003

Averbuj US 2005/0257109 A1 Nov. 17, 2005
(filed Jul. 29, 2003)

Rejections on Appeal
1. The Examiner rejects claims 1, 2, 5-12, 15-23, 26-28, and 31-33
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Smith and Averbuj.
2. The Examiner rejects claims 3, 4, 13, 14, 24, 25, 29, 30, 34, and
35 under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Smith, Averbuj, and Jameson.

ISSUES
Based on our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us are as follows:
1. Does the Examiner err in combining Smith and Averbuj and
concluding that the combination would have collectively taught or fairly
suggested “invoking a protocol engine for each of the commands in the test
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script such that each protocol engine has an associated command, [and] each
protocol engine execut[es] its associated command” as recited in claim 1?
2. Does the Examiner err in concluding that the combination of
Smith and Averbuj would have collectively taught or fairly suggested an
“application thread” as recited in claim 1?
3. Does the Examiner err in concluding that the combination of
Smith and Averbuj would have collectively taught or fairly suggested that
“the commands in the test script simulate actions taken by a network user”
as recited in claim 2?
4. Does the Examiner err in concluding that the combination of
Smith and Averbuj would have collectively taught or fairly suggested that
“the test script causes network traffic to be produced” as recited in claim 5?
5. Does the Examiner err in concluding that the combination of
Smith and Averbuj would have collectively taught or fairly suggested the
“user space” and “operating system space” as recited in claims 21, 26, and
31?

FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows.

ANALYSIS
Appellant argues independent claims 1 and 11 together as a group
with respect to the first and second issues. (App. Br. 5, 8-9, 12-13.)
Appellant does not separately argue dependent claims 3, 4, 6-10, 13, 14, and
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16-20. (See App. Br. 5-13, generally.) Appellant argues independent claims
21, 26, and 31 together as a group with respect to the first, second, and fifth
issues. (App. Br. 13-15; see App. Br. 5, 8-9, and 12.) Appellant does not
separately argue dependent claims 22-25, 27-30, and 32-35. (See App. Br.
5-13, generally.) Appellant also argues claims 2 and 12 together as a group
with respect to the third issue (App. Br. 9-10) and argues claims 5 and 15
together with respect to the fourth issue (App. Br. 11-12). Therefore, we
select claims 1, 2, 5, and 21 as representative of Appellant’s arguments and
groupings. 37 C.F.R. § 41.37(c)(1)(vii). See In re Nielson, 816 F.2d 1567,
1572 (Fed. Cir. 1987). We have considered only those arguments that
Appellant has actually raised in the Briefs. Arguments that Appellant could
have made but chose not to make in the Briefs have not been considered and
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant has the opportunity on appeal to the BPAI to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner sets forth a detailed explanation of the obviousness rejection
in the Examiner’s Answer with respect to each of the claims (Ans. 3-18)
and, in particular, claim 1 (Ans. 3-5, 14-18), claim 2 (Ans. 5, 18), claim 5
(Ans. 5) and claim 21 (Ans. 8-9). Therefore, we look to the Appellant’s
Brief to show error in the proffered findings and conclusions. See Kahn, 441
F.3d at 985-86.
Arguments Concerning the Examiner’s Rejection
of Representative Claim 1 Under § 103
The Examiner rejects Appellant’s independent claim 1 as being
obvious over the combination of Smith and Averbuj. (Ans. 3-5, 14-18.)
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Specifically, the Examiner submits that Smith teaches a method of creating
network traffic replicating activities of telecommunications system users
(citing Smith, Abstract), including: receiving a test script including a
plurality of commands (citing Smith, col. 3, ll. 40-48, 59-67); invoking a
script interpreter (citing Smith, col. 3, ll. 25-29; col. 4, ll. 14-18; Fig 1); and
launching a thread (application thread) to execute the test script (citing
Smith, col. 4, ll. 61-65). (Ans. 3.) The Examiner also submits that Averbuj
teaches sequencers (protocol engines) that execute commands. (Ans. 4, 18
(citing Averbuj ¶¶ [0014], [0029], [0035], [0041], [0042], [0046];
Abstract).) The Examiner further explains that Smith and Averbuj are
analogous art and that one of ordinary skill in the art would have been
motivated to combine the references as proposed. (Ans. 4-5, 14-17.)
Appellant contends that the combination of Smith and Averbuj does
not teach or suggest all the features of claim 1 (App. Br. 8-9, 12-13) and the
Examiner has improperly combined the prior art references by resorting to
hindsight (App. Br. 5-7).
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellants’ claim 1 is unpatentable over the combination of Smith and
Averbuj. Accordingly, we sustain the Examiner’s rejection of claim 1 for
the reasons set forth in the Answer, which we incorporate herein by
reference. (Ans. 3-5, 14-18.)
We recognize Appellant’s contention, with respect to the first issue,
that “the sequencers and test algorithms of Averbuj fail to teach or suggest
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the protocol engine claimed” and that “[t]he term ‘protocol engine’ must be
interpreted in view of the entirety of the claim as well as the specification
. . . [and] [a]s such, the ‘protocol engine’ necessarily involves ‘network
traffic’ and ‘test scripts.’” (App. Br. 8; see App. Br. 9; Reply Br. 3-4.)
However, Appellant’s claim simply recites “invoking a protocol engine for
each of the commands in the test script,” so that “each protocol engine” is
associated with a command of the test script (“has an associated command”),
and “each protocol engine execut[es] its associated command.” (App. Br.
17, claim 1.) Appellant’s arguments are not commensurate with the scope of
Appellant’s claim. Further, the disputed claim limitations merely require
that the protocol engine has an associated test script command and executes
the command. As explained by the Examiner, Smith describes a network
test system receiving test scripts (Ans. 3) and Averbuj describes sequencers
that each have an associated command and execute the command (Ans. 4,
18).
We also recognize Appellant’s contention, with respect to the second
issue, that “Smith do[es] not teach or suggest the claimed application
threads” but instead teaches “traditional operating system threads.” (App.
Br. 12.)
Appellant asserts that the “application thread” term has a particular
meaning as set out in the Specification – “[a]s set forth in the
[S]pecification, an application thread is not a traditional operating system
thread as it is lighter weight such that it requires ‘a smaller amount of
network testing system resources to execute.’” (App. Br. 12 (see Spec.
¶ [0032]).)
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We disagree and note that Appellant provides no persuasive evidence
supporting these assertions or for the proposed particular definition.
Accordingly, we look to Appellant’s Specification to inform our
interpretation. We give claim terminology the “broadest reasonable
interpretation consistent with the [S]pecification” in accordance with our
mandate that “claim language should be read in light of the [S]pecification
as it would be interpreted by one of ordinary skill in the art.” In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations
omitted). Appellant does not explicitly define, either in the Specification or
the claim, the term “application thread” – rather, Appellant describes the
application thread in terms of its function and its effect on system resources,
explaining that:
Application threads are a lighter weight construct that require a
smaller amount of network testing system resources to execute.
That is, application threads require a smaller amount of memory
and processor power to execute when compared with traditional
threads. In addition, lighter weight threads require less
communication between the thread and the operating system.
As such, many more application threads may be executed in
parallel or concurrently than traditional threads. Application
threads may be implemented in many computer languages
using various kinds of computer programming constructs. In
one embodiment, the application threads are implemented using
co-routines using the “C” programming language.
(Spec. ¶ [0032].) The disputed claim limitation also describes the
application thread in functional terms, simply requiring that the application
thread “execute the test script.” (App. Br. 17, claim 1.) The claim does not
recite or require that the application thread have any distinct structure or
features. Thus, we simply interpret the “application thread” as executing the
test script. Further, Appellant’s proffered definition is merely an intended
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use or purpose of the thread rather than a substantive definition of the
terminology. As explained by the Examiner, Smith’s threads perform this
functionality (Ans. 3) – “each test script is preferably run on a specific
channel and assigned to a specific thread of control” (Smith, col. 4, ll. 61-
63). The claim limitation does not preclude Smith’s threads.
Also, with respect to Appellant’s combinability arguments (App. Br.
5-7), Smith and Averbuj are analogous art, in that both references teach
complementary testing systems. Smith describes a method/system/apparatus
for testing a telecommunication system. (Smith, col. 1, ll. 1-6; col. 3, ll. 10-
12; Abstract.) Averbuj describes a testing system (Built-In Self-Test (BIST)
system) for an electronic device in, for example, a communication system or
computer network. (See Ans. 15; Averbuj, ¶¶ [0002], [0032]; Abstract.) We
additionally note that the assignee in Averbuj is Qualcomm – a
communication device design company, which further buttresses the
Examiner's finding of analogous art. Further, the Examiner provides a
rationale for combining Smith and Averbuj. (Ans. 4, 14-17.) We conclude
that combining the teachings of Smith and Averbuj would have been
tantamount to the predictable use of prior art elements and techniques
according to their established functions – an obvious improvement. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We also conclude that
the Examiner’s articulated rationale:
a person of ordinary skill in the art would have readily
recognized the desirability and advantages of modifying the
system shown [in] Smith, to employ the features disclosed by
Averbuj in order to offer the flexibility of allowing a variety of
test algorithms to easily be defined and maintained centrally in
the form of generalized commands, thereby eliminating the
need to store common test algorithms in a distributed fashion
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(Ans. 4 (citing Averbuj, ¶ [0015])) – i.e., improved efficiency and
functionality – is based on “some rational underpinning to support the legal
conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting Kahn, 441 F.3d
at 988).
Accordingly, we conclude, as did the Examiner, that the combination
of Smith and Averbuj would have taught or fairly suggested the disputed
features of: (1) “invoking a protocol engine for each of the commands in the
test script such that each protocol engine has an associated command, [and]
each protocol engine execut[es] its associated command;” and (2) an
“application thread” as recited in the claim. We find Appellant’s contrary
arguments unpersuasive of error in the Examiner’s rejection for the reasons
explained above. It follows that Appellant does not persuade us of error in
the Examiner’s obviousness rejection of representative claim 1. Appellant
also does not persuade us of error in the Examiner’s obviousness rejection of
independent claim 11 and dependent claims 3, 4, 6-10, 13, 14, and 16-20 not
separately argued with particularity (supra). Accordingly, we affirm the
Examiner’s obviousness rejection of claims 1, 3, 4, 6-11, 13, 14, and 16-20.
Arguments Concerning the Examiner’s Rejection
of Representative Claim 2 Under § 103
The Examiner rejects Appellant’s dependent claim 2 as being obvious
over the combination of Smith and Averbuj. (Ans. 5, 18.) Specifically, the
Examiner submits that the commands in Smith’s test scripts simulate actions
taken by user (Ans. 5, 18 (citing Smith, col. 2, ll. 19-32; col. 3, ll. 30-38).
Appellant contends that although “Smith teaches simulating the actions of a
user[,] . . . the use of this teaching in the system constructed by the Examiner
is impossible.” (App. Br. 9.)
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Based on the record before us and Appellant’s contentions, we find
that the preponderance of evidence on this record supports the Examiner’s
conclusion that the subject matter of Appellant’s claim 2 is unpatentable
over the combination of Smith and Averbuj. Accordingly, we sustain the
Examiner’s rejection of claim 2 for the reasons set forth in the Answer (Ans.
5, 18), which we incorporate herein by reference.
Additionally, Appellant does not contest the Examiner’s finding that
Smith describes test scripts, and concedes that Smith teaches simulating user
actions. (Ans. 5, 18; App. Br. 9-10.) Rather, Appellant argues the
references separately and asserts that the sequencers and test algorithms
(protocol engines) of Averbuj cannot be combined with the tests scripts of
Smith. (App. Br. 9-10.) We find Appellant’s contrary arguments
unpersuasive of error in the Examiner’s rejection for the reasons explained
with respect to claim 1 (supra). Specifically, we find Appellant’s
combinability argument unavailing for the reasons set forth with respect to
claim 1 (supra). Further, as explained with respect to claim 1, we note that
Smith describes executing commands in test scripts and Averbuj describes
sequencers executing commands/instructions. The combination of these
features, contrary to Appellant’s assertions, does “make logical sense” (App.
Br. 10). Additionally, we also note that one cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
It follows that Appellant does not persuade us of error in the
Examiner’s obviousness rejection of representative claim 2 or claim 12, not
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separately argued with particularity (supra). Accordingly, we affirm the
Examiner’s obviousness rejection of claims 2 and 12.
Arguments Concerning the Examiner’s Rejection
of Representative Claim 5 Under § 103
The Examiner rejects Appellant’s dependent claim 5 as being obvious
over the combination of Smith and Averbuj and submits that Smith’s test
scripts cause network traffic to be produced. (Ans. 5 (citing Smith, col. 4, ll.
58-64; Abstract).) Appellant merely reiterates the arguments made with
respect to claim 2 (supra) asserting that Smith’s scripts cannot be invoked
by Averbuj’s sequencers (protocol engines) to produce network traffic.
(App. Br. 11-12.)
We disagree for the reasons set out with respect to claim 2 (supra),
and find Appellant’s contrary arguments unpersuasive of error in the
Examiner’s rejection. It follows that Appellant does not persuade us of error
in the Examiner’s obviousness rejection of representative claim 5 or claim
15, not separately argued with particularity (supra). Accordingly, we affirm
the Examiner’s obviousness rejection of claims 5 and 15.
Arguments Concerning the Examiner’s Rejection
of Representative Claim 21 Under § 103
The Examiner rejects Appellant’s independent claim 21 as being
obvious over the combination of Smith and Averbuj and submits that Smith
describes script interpreter units in a user space, an application thread
operating in a user space, and an operating system in an operating system
space. (Ans. 8-9 (citing Smith, col. 3, ll. 49-67; col. 4, ll. 44-65).) The
Examiner also submits that Averbuj describes protocol engines in a user
space. (Ans. 8-9 (citing Averbuj, ¶¶ [0035], [0041], [0042]).) Appellant
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contends that none of the references (Smith or Averbuj) describe a “user
space” or an “operating system space,” much less individual elements in
these spaces – e.g., protocol engines in user space – as recited in the claim.
(App. Br. 13-15.)
Based on the record before us and Appellant’s contentions, we find
that the preponderance of evidence on this record supports the Examiner’s
conclusion that the subject matter of Appellant’s claim 21 is unpatentable
over the combination of Smith and Averbuj. Accordingly, we sustain the
Examiner’s rejection of claim 21 for the reasons set forth in the Answer
(Ans. 8-9), which we incorporate herein by reference.
We provide the following for emphasis only. Appellant’s claim does
not distinguish between “user space” and “operating system space.” In
particular, the claim does not recite or require that these “spaces” be separate
from one another. Indeed, the claim does not recite utilizing these spaces in
any manner to do anything. As such, the “user space” and “operating system
space” constitute non-functional descriptive material, which merely
correspond to names or labels for the “space” (i.e., the portion or partition of
system memory). How the spaces may be named or labeled does not
functionally change the elements (e.g., the script interpreter units,
application threads, protocol engines, and operating system) or the
interaction among the elements, which is actually not recited in the claim.
Merely labeling a portion of memory as a “user space” or a “operating
system space,” as opposed to some other unique identifier, does not further
limit the claimed invention either functionally or structurally. Thus, the
label of the “spaces” represents
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non-functional descriptive material, which “does not lend patentability to an
otherwise unpatentable computer-implemented product or process.” Ex
parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential). See Ex
parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative) (Fed. Cir.
Appeal No. 2006-1003), aff’d, (Rule 36) (June 12, 2006) (“wellness-related”
data in databases and communicated on distributed network did not
functionally change either the data storage system or the communication
system used in the claimed method). See also In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004); Nehls, 88 USPQ2d at 1887-90 (discussing
non-functional descriptive material).
We also note that our discussion of claim 1 (supra) is equally
applicable to claims 21-35.
It follows that Appellant does not persuade us of error in the
Examiner’s obviousness rejection of representative claim 21 or independent
claims 26 and 31 or dependent claims 22-25, 27-30, and 32-35 not
separately argued with particularity (supra). Accordingly, we affirm the
Examiner’s obviousness rejection of claims 21-35.

CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in rejecting claims
1-35 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1-35 under 35 U.S.C.
§ 103(a).
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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

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