Ex Parte Klos et al

Board of Patent Appeals and Interferences

Nov 12, 2009

09853722 (B.P.A.I. Nov. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIMOTHY RUSSELL KLOS, RANDALL STUART LEET,
GARY JAY MARTENS, SUSAN MARY MERZ, WILLIAM SKILES
BOWLING, and TERRENCE DAVID ALAN
____________

Appeal 2009-005964
Application 09/853,722
Technology Center 2600
____________

Decided: November 12, 2009
____________

Before JOHN C. MARTIN, JOSEPH F. RUGGIERO, and KARL D.
EASTHOM, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1-38, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
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We affirm.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Brief (filed January 17, 2008), the Answer (dated
April 23, 2008), and the Reply Brief (filed June 23, 2008) for the respective
details. Only those arguments actually made by Appellants have been
considered in this decision. Arguments which Appellants 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).

Appellants’ Invention
Appellants’ invention relates to the provisioning of digital subscriber
line service (DSL) for a subscriber in a telecommunications network. A
provisioning server identifies and assigns multiple facilities required to
implement a service order including at least a remote terminal connectable to
a terminal of the DSL subscriber. The provisioning server determines an
interface for each of the facilities which are configured, based on interface
specific instructions from the provisioning server, to implement the service
order. (See generally Spec. ¶¶ [0009]-[0012]]).

Claim 1 is illustrative of the invention and reads as follows:
1. A method for provisioning a digital subscriber line (DSL) service for
a subscriber in a telecommunications network, the method comprising:
receiving a service order at a provisioning server, the service order
requesting implementation of the DSL service and comprising provisioning
data;
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identifying a plurality of facilities assigned to implement the service
order based on the provisioning data, the plurality of facilities comprising at
least a remote terminal connectable to a terminal of the DSL subscriber;
determining an interface corresponding to each of the plurality of
assigned facilities, each interface converting at least a portion of the
provisioning data into a specific protocol corresponding to the assigned
facility; and
configuring each of the plurality of facilities, using the corresponding
interface, to implement the service order based on the provisioning data.

The Examiner’s Rejections

The Examiner’s Answer cites the following prior art references:
Byers US 5,926,472 Jul. 20, 1999
Sundaresan US 6,463,079 B2 Oct. 8, 2002
(filed Jul. 2, 1999)
Gidwani US 6,640,239 B1 Oct. 28,2003
(filed Nov. 10, 1999)

Claims 1-7, 18, 19, 22, and 23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Sundaresan in view of Gidwani.
Claims 8-17, 20, 21, and 24-38 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Sundaresan in view of Gidwani and
Byers.

ISSUES
The pivotal issues before us are whether Appellants have
demonstrated that the Examiner erred in determining:
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a) that Sundaresan discloses a provisioning server which identifies
facilities assigned to a DSL service order that includes provisioning data,
and configures the facilities to implement the service order based on the
provisioning data, and
b) if so, the obviousness to the ordinarily skilled artisan of
combining the facility interface determining teachings of Gidwani with
Sundaresan.

FINDINGS OF FACT
The record supports the following relevant findings of fact (FF) by a
preponderance of the evidence:
1. Sundaresan discloses (Figs. 1 and 11, col. 5, ll. 21-32, and col.
19, l. 7 to col. 20, l .40) a telecommunication system in which a request by a
subscriber for implementation of DSL service is received at server OSS 190.
2. Sundaresan also discloses (Fig. 11, col. 19, l. 7-col. 20, l. 67)
the identification of facilities that are assigned to implement the service
order request based on provisioning data included in the request.
3. Sundaresan further discloses (Fig. 17, col. 25, l. 42-col. 27, l.
12) that server OSS 190 operates to allocate specific ports on a digital
subscriber line access multiplexer (DSLAM) for user connection, orders
local loops from an incumbent local exchange carrier (ILEC), tests the loops,
and confirms the local loop connection to the user if the tests are successful.
4. Sundaresan also discloses the provisioning of permanent virtual
circuits (PVCs) from a user location to a corresponding target location. As
disclosed by Sundaresan (Fig. 19, col. 28, l. 56-col. 29, l. 67), the PVC
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provisioning includes determination of the switch and port to which a
determined DSLAM connects, allocation of a PVC identifier between the
target location and the switch, and issuing of commands to configure the
DSLAM in accordance with the PVC identifiers.
5. Gidwani discloses (Figs. 2 and 2a, col. 2, ll. 18-60) an
integrated telecommunication system which incorporates multi-DSL
configurational capability on a per-line basis in which a given subscriber line
interface can be configured for multiple DSL standards using software
configurational control.
6. Gidwani further discloses (col. 7, ll. 8-63) a “dynamic
provisioning” feature in which a user subscriber can configure appropriate
service facilities from the subscriber side of the system in accordance with
the type of selected DSL service.
7. Gidwani’s “dynamic provisioning” feature is described (Figs. 5,
6a, 6b, col. 29, l. 11 to col. 30, l. 38) as including an interface controller 442
which provides the requisite facility switching interfaces for the various
types of DSL services.
8. Gidwani further discloses (Fig. 5, 6a, 6b, col. 29, l. 11 to col.
30, l. 38) that multiple subscriber line interfaces are provided by the
configuration of switches for the various types of DSL services.

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
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Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C.
§ 103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). “[T]he examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). Furthermore,
‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek
out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS

Independent claims 1 and 18

With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of
appealed independent claims 1 and 18 based on the combination of
Sundaresan and Gidwani, Appellants’ arguments in response assert a failure
to set forth a prima facie case of obviousness since all of the claim
limitations are not taught or suggested by the applied prior art references.
Appellants’ arguments (App. Br. 15-17) initially focus on the alleged
deficiency of Sundaresan in disclosing the actual provisioning of digital
subscriber line (DSL) services as claimed. According to Appellants (id.),
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Sundaresan, rather than actually implementing requested services, is merely
directed to procedures involved in the pre-qualifying of service orders such
as determining user location, availability of service at a user location, etc.1
We do not find Appellants’ arguments to be persuasive of any error in
the Examiner’s stated position. While Appellants’ arguments (App. Br. 16)
direct attention to the flow chart illustration in Figure 9 of Sundaresan which
ends (step 960) with a notification to a user as to whether requested DSL
services can be provided, we agree with the Examiner (Ans. 23-24) that
ample evidence exists in Sundaresan to support the conclusion that actual
implementation, i.e., provisioning, of requested services is disclosed.
For example, Sundaresan discloses (FF 3) that server OSS 190
functions to allocate specific ports on a digital subscriber line access
multiplexer (DSLAM) for user connection, orders local loops from an
incumbent local exchange carrier (ILEC), tests the loops, and confirms the
local loop connection to the user if the tests are successful. Further,
Sundaresan discloses the provisioning of permanent virtual circuits (PVCs)
from a user location to a corresponding target location. As disclosed by

1 At pages 7-9 of the Reply Brief, Appellants argue that Sundaresan does not
disclose any provisioning of a remote terminal having an interface connected
to a DSL subscriber, i.e., there is no provisioning beyond the DSLAM
illustrated in Figure 18 of Sundaresan. This argument, however, was raised
for the first time on appeal in the Reply Brief and is therefore deemed to be
waived. See Optivus Tech., Inc. v. Ion Beam Appl’ns S.A., 469 F.3d 978,
989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its opening
brief ... is waived.”) (citations and quotation marks omitted); see also Ex
parte Scholl, No. 2007-3653, slip op. at n.13 (BPAI Mar. 13, 2008)
(informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd073653.pdf (same).

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Sundaresan (FF 4), the PVC provisioning includes determination of the
switch and port to which a determined DSLAM connects, allocation of a
PVC identifier between the target location and the switch, and issuance of
commands to configure the DSLAM in accordance with the PVC identifiers.
We further find to be unpersuasive Appellants’ contention (App. Br.
19-20) that Gidwani provides a teaching only of determining interfacing for
facilities that have already been provisioned, and not as part of the facility
provisioning process as claimed. We agree with the Examiner (Ans. 25) that
Gidwani teaches (FF 6) a “dynamic provisioning” feature in which a user
subscriber can configure appropriate service facilities from the subscriber
side of the system in accordance with the type of selected DSL service. The
“dynamic provisioning” feature of Gidwani is further illustrated in Figures 5,
6a, and 6b, along with the accompanying description at col. 29, line 11
through column 30, line 38, which describes the operation of system
interface controller 442 which provides the requisite facility switching
interfaces for the various types of DSL services.
With the above discussion in mind, we find, Appellants’ arguments
(App. Br. 20; Reply Br. 2-6) to the contrary notwithstanding, no error in the
Examiner’s finding of the obviousness to the skilled artisan of applying the
interface determining features of Gidwani to the DSL provisioning system
disclosed by Sundaresan. We are further of the view that, although we find
no error in the Examiner’s proposed combination of Sundaresan and
Gidwani, the DSL provisioning system disclosed by Sundaresan satisfies all
of the requirements of independent claims 1 and 18 since a skilled artisan
would have recognized and appreciated that the port allocation and
switching circuit determination features of Sundaresan would correspond to
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the claimed interface determining and facility configuring features.
Evidence of such recognition is provided by Gidwani’s disclosure (FF 8) of
the multiple subscriber line interfaces provided by the configuration of
switches for the various types of DSL services.
For the above reasons, since it is our opinion that the Examiner has
established a prima facie case of obviousness which has not been overcome
by any convincing arguments from Appellants, the Examiner’s 35 U.S.C.
§ 103(a) rejection of independent claims 1 and 18 is sustained.

Independent claims 8, 24, 31, and 38

We also sustain the Examiner’s obviousness rejection of independent
claims 8, 24, 31, and 38. We find no error in the Examiner’s application of
the optical concentrator device teachings of Byers to the combination of
Sundaresan and Gidwani. Appellants’ arguments (App. Br. 21, Reply Br. 4-
5) rely on those made against independent claims 1 and 18, which we have
found to be unpersuasive.

Dependent claims 2-5, 19-21, and 32-35

The Examiner’s obviousness rejection of dependent claims 2-5, 19-21,
and 32-35 is sustained as well. Appellants’ arguments (App. Br. 21-22;
Reply Br. 9-10) do not convince us of any error in the Examiner’s finding
(Ans. 6, 9, 13, 19, 20, and 26) that Sundaresan provides a disclosure (Fig.
19, col. 28, l. 56-col. 29, l. 67) of an interconnecting path between the
facilities assigned to a service order and the subscriber terminal, as well as
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disclosing (Fig. 17, col. 25, l. 52-col. 26, l. 30) the provisioning of a
particular DSL service based on requested service in a service order.

Dependent claims 6, 17, 30, and 36

Appellants’ arguments (App. Br. 24-25, Reply Br. 9-10) do not
convince us of any error in the Examiner’s finding (Ans. 7, 13, 17, 20, 29,
and 30) that Sundaresan discloses (Figs. 9 and 17, col. 15, ll. 55-65, col. 25,
ll. 59-67) the profile identification features of the rejected claims.
Accordingly, the Examiner’s obviousness rejection of dependent claims 6,
17, 30, and 36 is sustained.

Dependent claims 7, 9-11, 22, 23, 25, 26, 30, and 37

We also sustain the Examiner’s obviousness rejection of dependent
claims 7, 9-11, 22, 23, 25, 26, 30, and 37. Appellants’ arguments (App. Br.
22; Reply Br. 9-10) do not convince us of any error in the Examiner’s
finding (Ans. 7, 9, 12, 16, 17, 20, 27, and 28) that Sundaresan provides a
disclosure (Figs. 5 and 12A, col. 8, ll. 5-26 and col. 19, ll. 29-34) of error
identification and error message display features, as well as disclosing (Figs.
17-19, col. 18, 25-53,col. 25, ll. 59-66, and col. 28, l. 66 through col. 29, l.
46) the claimed service order formatting and validating features.

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Dependent claims 12-16 and 27-29

Appellants’ arguments (App. Br. 23-24, Reply Br. 9-10) do not
convince us of any error in the Examiner’s finding (Ans. 11-13, 17, 20, 28,
and 28) that Sundaresan provides a disclosure (Fig. 19, col. 28, l. 66-col. 29,
l. 60) of the virtual path connection features, as well as disclosing (col. 17, ll.
22-31) the claimed provisional step enqueuing and dequeuing features.
Accordingly, the Examiner’s obviousness rejection of dependent claims 12-
16 and 27-29 is sustained.

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CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have not shown that the Examiner erred in rejecting appealed
claims 1-38 for obviousness under 35 U.S.C. § 103.

DECISION
The Examiner’s 35 U.S.C. § 103 rejection of appealed claims 1-38 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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