Ex Parte Mc Bride

Board of Patent Appeals and Interferences

Feb 28, 2011

10349054 (B.P.A.I. Feb. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/349,054 01/22/2003 Edmund Joseph Mc Bride 2002P00987 US01 8970
7590 02/28/2011
Alexander J. Burke
Siemens Corporation
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
LEE, PHILIP C
ART UNIT PAPER NUMBER
2453
MAIL DATE DELIVERY MODE
02/28/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte EDMUND JOSEPH MCBRIDE
____________________

Appeal 2009-005912
Application No. 10/349,0541
Technology Center 2400

____________________

Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and
MARC S. HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is Siemens Medical Solutions Health Services
Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005912
Application 10/349,054

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellant’s invention concerns network capacity planning. A network
guidelines estimator estimates a network load for each software application
running in a test network to determine network load metrics for each
software application. A network load estimator estimates a network load for
one or more software applications concurrently operating in a production
network responsive to the network load metrics of each of the one or more
software applications (Spec. 2).
Claims 1 and 8 are exemplary of the claims on appeal:
1. A system enabling estimating network load impact of an executable
application, comprising:
data representing network load metrics associated with an individual
executable software application and usable in estimating a network load
representative value for said software application operating in a network,
said network load metrics being provided by a network guidelines estimator
for estimating a network load for an individual software application
operating in a test network;
an individual executable software application associated with said
data representing network load metrics; and
a network toad estimator for estimating a network load for a plurality
of software applications including said individual executable software
application concurrently operating in a non-test network responsive to the
network load metrics of individual applications of said plurality of software
applications.

8. A network guidelines estimator comprising: a processor for estimating
a network toad for an individual software application operating in a
network to determine network load metrics for an individual software
application, wherein the network load metrics are used by a network load
estimator for estimating a network load for a plurality of software
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Application 10/349,054

applications concurrently operating in a network responsive to the network
load metrics of individual software applications.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Palmer US 6,029,257 Feb. 22, 2000
Al-Hilali US 6,086,618 Jul. 11, 2000
Wolf US 2002/147937 Oct. 10, 2002
Moran US 6,801,940 B1 Oct. 5, 2004

Claims 8 and 9 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Moran.
Claims 1, 2, 6, and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wolf in view of Moran.
Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wolf in view of Moran and Palmer.
Claims 5 and 10-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wolf in view of Moran and Al-Hilali.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed November 5, 2001) and the Examiner’s Answer (“Ans.,”
mailed January 2, 2008) for their respective details.

ISSUES
Appellant argues that the Examiner erred in rejecting the claims
because Moran teaches actual measurement of network load in an
operational environment, and does not teach estimation of network load in a
testing environment (App. Br. 7, 10, 11).
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Application 10/349,054

Appellant’s contentions present us with the following issues:
1. Does Moran teach estimating a network load for an individual
software application operating in a network?
2. Does Moran teach estimating a network load for a plurality of
software applications concurrently operating in a network responsive to the
network load metrics of the individual software applications?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Moran
1. Moran teaches a “baseline mode” for collecting a set of statistics
and metrics that can be used for setting up thresholds when monitoring
against the collected baseline and observing changes in the monitored
network (col. 58, ll. 24-29).
2. Moran further teaches a “monitoring mode” for collecting a set of
statistics and metrics that can be used for generating reports, alarming when
monitoring thresholds are crossed, and observing changes in the monitored
network (col. 60, ll. 31-36).

PRINCIPLES OF LAW
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
(quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)).
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Application 10/349,054

“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 405
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18, (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)

ANALYSIS
CLAIMS 8 AND 9
Claim 8 recites, inter alia, “a processor for estimating a network load
for an individual software application” and “wherein the network load
metrics are used by a network load estimator for estimating a network load
for a plurality of software applications” (emphases added). Claim 9 recites
“a processor for estimating a network capacity for a plurality of software
applications currently operating in a network.”
The Examiner finds that Moran teaches the claimed estimating at
column 36 and other places (Ans. 4). In the Response to Argument section,
the Examiner finds that Moran teaches calculating the approximate network
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Application 10/349,054

delay for each location grouping (Ans. 14, citing Moran col. 67, ll. 54-56),
which the Examiner equates to estimating network load in the claims.
We disagree with the Examiner’s characterization of Moran.
Appellant correctly points out that Moran teaches collecting statistics and
metrics, in “baseline mode,” that can be used for setting up thresholds when
monitoring against the collected baseline (App. Br. 7; FF 1). Appellant
states, and we agree, that Moran does not teach estimating a network load
for each of a plurality of software applications operating in a network (App.
Br. 7), because Moran is only concerned with capturing actual statistics and
metrics from an operational environment. Appellant’s Specification does not
provide a definition of “estimating.” We therefore turn to the dictionary
definition of “estimate,” i.e., “to calculate approximately.”3 However,
Moran’s capture of (actual) statistics and metrics from an operational
network does not comport with the dictionary definition, because Moran is
concerned with observing and recording actual values, rather than
calculating approximate values.
Because we find that Moran does not teach estimating a network load
for an individual software application, or estimating a network load for a
plurality of software applications, we find that the Examiner erred in
rejecting claims 8 and 9 under § 102 as being anticipated by Moran. We will
not sustain the Examiner’s rejection.

CLAIMS 1-7 AND 10-13
As noted supra, we reverse the rejection of claims 8 and 9. Claims 1-7
and 10-13 stand rejected under § 103 over various combinations of

3 http://dictionary.reference.com/browse/estimate
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Application 10/349,054

references. Like independent claims 8 and 9 discussed supra, the remaining
independent claims (1 and 10) recite estimating a network load for an
individual software application and estimating a network load for a plurality
of software applications. Each of the Examiner’s rejections (Ans. 5, 9) relies
on the Examiner’s erroneous finding that Moran teaches “estimating a
network load” as claimed. Because we find that the Examiner erred in
finding that Moran teaches estimation as claimed, the Examiner has failed to
establish a prima facie case of obviousness for claims 1-17 and 10-13.
Accordingly, we will not sustain the various § 103 rejections of claims 1-7
and 10-13.

CONCLUSION
1. Moran does not teach estimating a network load for an individual
software application operating in a network.
2. Moran does not teach estimating a network load for a plurality of
software applications concurrently operating in a network responsive to the
network load metrics of the individual software applications.

ORDER
The Examiner’s rejection of claims 1-13 is reversed.

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Application 10/349,054

REVERSED

ELD
ALEXANDER J. BURKE
SIEMENS CORPORATION
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
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