Ex Parte Lumley

Board of Patent Appeals and Interferences

Nov 14, 2011

10115775 (B.P.A.I. Nov. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOHN WILLIAM LUMLEY
____________________

Appeal 2009-011180
Application 10/115,775
Technology Center 2400
____________________

Before ERIC S. FRAHM, GREGORY J. GONSALVES, and KALYAN K.
DESHPANDE, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-011180
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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-6, 8-13, and 15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Claims
Claims 1 and 13 are independent. Claim 1 recites a method of
creating a model of a system on a network, the system including a plurality
of system devices providing a shared resource, the method including
connecting the network to a monitoring module that monitors
communication messages, and analyzing a model of the system to advertise
the capability of the system. Claim 13 recites a network including a system
having a plurality of system devices that together provide a shared resource,
and a monitoring module for monitoring communication messages. All of
the dependent claims (claims 2-6, 8-12, and 15) ultimately depend from
claim 1.
Exemplary independent claim 1 under appeal reads as follows:
1. A method of creating a model of a system on a network,
the system comprising a plurality of system devices which
together provide a shared resource, the method including
connecting to the network a monitoring module which monitors
communication messages passing between the system and
another network component, the monitoring including
retrieving information from the communication messages
passed between the system and the another network component
to collect information about the system, the monitoring module
being configured to use the collected information to create or
update a model of the system, and the method including
analyzing the model to advertise the capability of the system as
a resource and of each of the system devices therein, wherein
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the system is connected to the network at a hub through which
communication messages between the system and the another
component of the network pass, the system devices are
connected to the hub at respective device ports, the another
network component is connected to the hub at a network port,
and the monitoring module is connected to the hub at a
monitoring port so as to receive all relevant communication
messages passing through the hub, the device ports, network
port and monitoring port being different ports.

Rejections
1. The Examiner rejected claims 1-6, 11-13, and 15 as being
unpatentable under 35 U.S.C. § 103(a) over Tan (US 5,978,560) and Cromer
(US 6,493,104 B1).
2. The Examiner rejected claims 8-10 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Tan, Cromer, and Underhill, S.,
NETWORKING COMPUTERS, PART II, March 15, 2000, located at
http://www.infinisource.com/features/networking02-pf.html (last visited
June 16, 2005) (hereinafter, “NC II”).1
Appellant’s Contentions
1. (a) Appellant contends (Br. 4-6) that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) over Tan and Cromer for
numerous reasons including: (i) Tan fails to suggest the hub of the “wherein
. . .” clause (see the clause at the end of claim 1, stating “wherein the system
is connected . . .”) (Br. 4-5); (ii) Cromer fails to suggest, even if Tan were
modified to include a hub, the configuration recited in claim 1 (Br. 5); (iii)
Tan teaches away from including a hub, because Tan (Fig. 1) discloses that

1 Ans. 7 (citing NC II as being included in the statement of the rejection);
also Office Communication, form PTO-90C, mailed December 14, 2008.
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communications between the output devices 500 and the client 200 only go
through the supervisor server 420, therefore even if Tan were to include a
hub, the hub would not be arranged to include different ports for the devices
500, server 420, and client 200 (Br. 5); and (iv) the modification of Tan with
Cromer would render Tan unfit for its intended purpose of having devices
500 communicating with the client 200 only through the server 420 (Br. 6).
(b) Appellant contends (Br. 6) that the Examiner erred in rejecting
claim 13 for the same reasons argued with respect to claim 1 discussed
supra.
(c) Appellant contends (Br. 7) that the Examiner erred in rejecting
claims 2-6, 11, 12, and 15 for the same reasons argued with respect to claims
1 and 13.
2. Appellant contends (Br. 7) that the Examiner erred in rejecting
claims 8-10 under 35 U.S.C. § 103(a) over Tan, Cromer, and NC II for the
same reasons argued with respect to claim 1 discussed supra.
Notably, Appellant has not filed a Reply Brief.
Issue on Appeal
Based on Appellant’s arguments, the following issue is presented for
appeal:
Did the Examiner err in rejecting claims 1-6, 8-13, and 15 as being
obvious because Tan and Cromer are (1) not properly combinable, and/or (2)
the combination of Tan and Cromer fails to teach or suggest the limitations
of claim 1 at issue?

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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). The
Examiner’s articulated reasoning in the rejection must possess a rational
underpinning to support the legal conclusion of obviousness. KSR Int’l Co.
v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)).

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief that the Examiner has erred.
We disagree with Appellant’s conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellant’s Appeal Brief (see Ans. 3-
5 and 9-12). We concur with the conclusions reached by the Examiner.
Claim 1
With regard to claim 1, the Examiner has provided a factual basis and
articulated reasoning with a rational underpinning to support the conclusion
of obviousness with regard to claim 1 (see Ans. 3-5). See KSR, 550 U.S. at
418. Because (i) both Tan (see Abs.; Figs. 1, 3, and 4; col. 4, ll. 23-65) and
Cromer (see Abs.; col. 3, ll. 12-42) pertain to the field of data processing
systems for establishing communication links with printer, and (ii) Tan
teaches that supervisory server 420 (Fig. 3) includes plural back end
modules 428 which each have a job submission channel 4282, job
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cancellation channel 4284, job query channel 4286, and a device query
channel 4288, we cannot agree with Appellant’s assertion (Br. 6) that the
modification of Tan with Cromer would render Tan unfit for its intended
purpose of having devices 500 communicating with the client 200 only
through the server 420.
Specifically, we agree with the Examiner (Ans. 10) that if Tan were
modified to include a hub as taught by Cromer, the hub would either have
the ports arranged as recited in claim 1, or the arrangement would have been
obvious to one of ordinary skill in the art as a mere rearrangement of parts
(Ans. 12 (e.g., rearranging the ports connected to a hub to interconnect
devices of a network)). We agree with the Examiner that the combination of
Tan and Cromer meets all of the method steps limitations set forth in claim
1, and that it would have been obvious to combine Tan and Cromer (see
Ans. 3-5 and 9-12). Notably, Appellant provides no response to the
Examiner’s reasoning (Ans. 10-12) as to how Tan modified by Cromer’s
hub would meet the limitations found in the claims on appeal.
In view of the foregoing, Appellant has not sufficiently shown that the
Examiner erred in finding that (i) it would have been obvious to modify Tan
with the teachings of Cromer, or (ii) the combination of Tan and Cromer
teaches or suggests the method recited in claim 1. Accordingly, we will
sustain the obviousness rejection of claim 1 based upon the combined
teachings and suggestions of Tan and Cromer.
Claims 2-6, 8-13, and 15
Appellant has not sufficiently shown that the Examiner erred in
rejecting claims 2-6, 11-13, and 15 under § 103(a) over Tan and Cromer,
and claims 8-10 under § 103(a) over Tan, Cromer, and NC II. Accordingly,
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we will sustain the obviousness rejections of claims 2-6, 8-13, and 15 for
similar reasons as discussed with regard to claim 1.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claim 1 as being obvious,
because (a) Tan and Cromer are properly combinable, or (b) the combination
of Tan and Cromer teaches or suggests the limitations of claim 1 at issue.
(2) The Examiner has not erred in rejecting claims 1-6, 8-13, and 15
as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1-6, 8-13, and 15 are not patentable.

DECISION
The Examiner’s rejections of claims 1-6, 8-13, and 15 are 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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