Ex Parte LumleyDownload PDFBoard of Patent Appeals and InterferencesNov 14, 201110115775 (B.P.A.I. Nov. 14, 2011) Copy Citation 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 Application 10/115,775 2 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 Appeal 2009-011180 Application 10/115,775 3 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. Appeal 2009-011180 Application 10/115,775 4 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? Appeal 2009-011180 Application 10/115,775 5 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 Appeal 2009-011180 Application 10/115,775 6 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, Appeal 2009-011180 Application 10/115,775 7 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 msc Copy with citationCopy as parenthetical citation