Ex Parte Link et al

Patent Trial and Appeal Board

Jun 16, 2016

12051125 (P.T.A.B. Jun. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/051,125 03/19/2008
23117 7590 06/20/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
David F. Link
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4572-7 9968
EXAMINER
FAN, HUA
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
06/20/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID F. LINK, CHRISTOPHER G. CORDRAY,
RICHARD M. CHART, and KARL GINTER1
Appeal2014-001245
Application 12/051,125
Technology Center 2400
Before KRISTEN L. DROESCH, JOHNNY A. KUMAR and
LINZY T. McCARTNEY, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of the Examiner's
final rejection of claims 1, 2, 4, 6, 11, 17, 18, 20, 21, 24, 25, 35, 36, 38, 41,
43--45, 48, and 104, which are all of the pending claims in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants indicate the real party-in-interest is ScienceLogic, LLC. App.
Br. 2.
Appeal2014-001245
Application 12/051,125
BACKGROUND
The disclosed invention relates to methods and systems for managing
devices on a network, including discovery of the devices on the network.
See Spec. i-fi-f 17-21.
Representative claim 1, reproduced from the Claims Appendix of the
Appeal Brief, reads as follows (disputed limitation in italics):
1. A method of discovering and interoperating with
devices connected to a computer network, the method
compnsmg:
discovering at least one device connected to the network;
identifying said discovered device;
in response to said discovering and identifying,
instantiating and invoking an instance of a dynamic application
on a further device also connected to the network, said dynamic
application being first instantiated and invoked on the further
device in response to discovery and identification of said
discovered device on the network;
using the dynamic application instantiated and invoked
on the further device to perform further discovery of said
discovered device over the network without requiring the
discovered device to execute a discovery software agent; and
receiving, over the network, information relating to said
further discovery from said instantiated and invoked dynamic
application.
REJECTIONS
Claims 1, 4, 6, 35, 36, 38, and 104 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Schoening et al. (US 6,226,788 Bl; May
1, 2001) ("Schoening"), and Ullmann et al. (US 2003/0005091 Al;
published Jan. 2, 2003) ("Ullmann").
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schoening, Ullmann, and Ramanathan et al. (US
6,182,136 Bl; Jan. 30, 2001) ("Ramanathan").
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Application 12/051,125
Claims 11, 41, 43, and 48 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schoening, Ullmann, and Ransom et al. (US
2004/0193329 Al; Sept. 30, 2004) ("Ransom").
Claims 17, 18, and 45 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schoening, Ullmann, and Hiew et al. (US
2005/0229154 Al; Oct. 13, 2005) ("Hiew").
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schoening, Ullmann, Hiew, and Fairchild (US 6,212,560
Bl; Apr. 3, 2001).
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schoening, Ullmann, Hiew, and Ramanathan.
Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schoening, Ullmann, Hiew, Ramanathan, and Ransom
Claim 44 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schoening, Ullmann, Ransom, and Hiew.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. We concur with Appellants' conclusion and have highlighted
our findings below. Specific findings and arguments are highlighted and
addressed below for emphasis.
The Examiner relies on Ullmann's teachings of control machines that
run Internet Protocol (IP) Drive Discovery/Monitor Scanners that poll
endpoints and gather and store status data to teach or suggest "perform[ing]
further discovery of said discovered device over the network without
requiring the discovered device to execute a discovery software agent," as
recited in independent claims 1, 35, and 104. See Final Act. 6, 10-11, 13-14
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Application 12/051,125
(citing Ullmann if 3 ). The Examiner explains that the disclosed "[p ]olling
discovered endpoints for data corresponds to performing further discovery of
said discovered device." Id. (emphasis omitted).
Appellants argue "[t]he passage of Ullmann the Examiner is relying
on merely states that the control machines collect information from the
endpoints - not how the endpoints develop the information they report to the
control machines using the Internet Protocol." App. Br. 7. Appellants
contend the Examiner's prima facie case of obviousness fails because
Ullmann on its face does not supply the missing teachings. See id. at 8.
Appellants further assert Ullmann incorporates by reference related
disclosures of two co-pending applications, and contends the Examiner has
overlooked the teachings of these incorporated disclosures. See id. (citing
Ullmann iii! 2, 3). Specifically, Appellants assert the disclosure of co-
pending application 09/738,307, now US 6,950,874 ("Chang"), makes it
clear that Ullmann's endpoints run discovery agents. See id. at 8-10
(reproducing Chang 8:12-15, 9:15-20, 10:42-50, 12:1-8, 12:50-56, and
describing the disclosures of Figs. 2b, 2c, 3). Appellants contend Chang's
teachings cannot be ignored because they are incorporated by reference. See
id. at 10. Appellants assert that to whatever extent Ullmann may be unclear,
Ullmann's incorporation by reference of Chang provides clarity that
discovery agents are required. See id. at 11.
In response, the Examiner provides the following position:
"Ullman[ n] is not utilizing any discovery software agents largely due to the
fact that the Ullman[ n reference] does not recite running any software agents
nor any protocols that inherently require the use of a discovery software
agent." Ans. 25. The Examiner further finds that Ullmann teaches that the
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Appeal2014-001245
Application 12/051,125
scope of the network is discovered by utilizing multiple instances of polling
engines at IP drivers. See id. (citing Ullmann i-fi-120-24). The Examiner
explains that Ullmann describes the process of discovering the scope of the
physical network and polling nodes for status data without describing the
execution of discovery agent, and therefore Ullmann' s described process
corresponds to the disputed limitation of claim 1. See id. at 25-26.
We agree with Appellants that the prima facie case of obviousness is
deficient. As acknowledged by the Examiner, Ullmann is silent regarding
whether discovery software agents are executed on the endpoints. It also is
not clear what mechanisms or means are utilized by Ullmann' s endpoints to
provide the requested data when polled. However, the teachings of Chang
(incorporated by reference into the teachings of Ullmann), teach or suggest
that discovery software agents are executed on the endpoints. The Examiner
does not rebut sufficiently Appellants' contentions addressing the teachings
of Chang. See Ans. 25-26. Therefore, the preponderance of the evidence
supports Appellants' position that Ullmann fails to teach or suggest
"perform[ing] further discovery of said discovered device over the network
without requiring the discovered device to execute a discovery software
agent."
Accordingly, we are constrained to reverse the rejection of
independent claims 1, 35, and 104, and claims 4, 6, 36, and 38 dependent
therefrom over Schoening and Ullmann. As applied by the Examiner, the
teachings of the additional prior art references do not remedy the
deficiencies of Ullmann. See Final Act. 7-8, 14--26. Accordingly, for the
same reasons as claims 1, 4, 6, 35, 36, 38, and 104, we are constrained to
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Application 12/051,125
reverse the rejections of claims 2, 11, 17, 18, 20, 21, 24, 25, 41, 43--45, and
48 over Schoening, Ullmann, and the additional applied prior art references.
DECISION
We REVERSE the rejections of claims 1, 2, 4, 6, 11, 17, 18, 20, 21,
24,25,35,36,38,41,43--45,48,and 104.
REVERSED
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