Ex Parte McGuire

Board of Patent Appeals and Interferences

Jul 31, 2012

09843816 (B.P.A.I. Jul. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JACOB MCGUIRE
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Appeal 2010-003971
Application 09/843,816
Technology Center 2400
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Before JOSEPH F. RUGGIERO, BRADLEY W. BAUMEISTER, and
JEREMY J. CURCURI, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection
of claims 1-8, 10-18, 20, 22, and 23. Claims 9, 19, and 21 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1-4, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as obvious
over Merchant (U.S. 2002/0128815 A1; published Sep. 12, 2002; filed Jan. 6,
2001) in view of Stewart (U.S. 6,970,927 B1; issued Nov. 29, 2005; filed Nov. 6,
2000).
Claims 5 and 8 stand rejected under 35 U.S.C. § 103(a) as obvious over
Merchant in view of Stewart and Tindal (U.S. 7,246,162 B2; issued July 17, 2007;
filed Aug. 31, 2005; Continuation of application No. 09/799,579, filed Mar. 6,
2001, now U.S. Pat. No. 6,978,301 B2 (further continuity data omitted)).
Claims 6, 7, and 23 stand rejected under 35 U.S.C. § 103(a) as obvious over
Merchant in view of Stewart and Rangachar (U.S. 6,301,252 B1; issued Oct. 9,
2001; filed Apr. 16, 1998).
Claims 12-16 stand rejected under 35 U.S.C. § 103(a) as obvious over
Merchant in view of Tindal.
Claims 17, 18, and 22 stand rejected under 35 U.S.C. § 103(a) as obvious
over Merchant in view of Tindal and Rangachar.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as obvious over Merchant
in view of Tindal and Stewart.
We affirm-in-part.

STATEMENT OF CASE
Appellant’s invention relates to “[a]n automated provisioning and
management system for network devices [that] includes a library of commands that
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are generic to all devices of interest, and device-specific plug-ins for implementing
those commands in each of the different devices.” (Abstract).
Independent claim 1 is illustrative, and is reproduced below with disputed
limitations in italics:
1. A computer-readable medium comprising a uniform interface
for configuring and managing a plurality of different types of network
devices, the uniform interface comprising:
a library containing generic commands that can be applied to
said network devices; and
a plurality of plug-in modules that can register with said library,
each of said modules operating to convert at least some of said generic
commands into device-specific commands and transmit said device-
specific commands to remote individual devices of a type that are
associated with the module;
wherein at least one of said generic commands puts a device
into its most privileged level through an established connection to the
device.

ISSUES
1. Under 35 U.S.C. § 103(a), has the Examiner erred by finding that the
combination of Merchant and Stewart teaches “at least one of said generic
commands puts a device into its most privileged level through an established
connection to the device” as recited in claim 1?
2. Under 35 U.S.C. § 103(a), has the Examiner erred by finding that
Merchant teaches “said module converting a response received from said given
device into a generic format for presentation to said library” as recited in claim 12?

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CONTENTIONS1 AND ANALYSIS
I.
Regarding claim 1, we agree with the Examiner’s finding that Stewart
teaches providing different privilege levels for users. (Ans. 4-5 (citing col. 3,
ll. 54-62)). We also agree with the Examiner’s finding that Merchant teaches
generic commands. (Ans. 15 (citing Merchant paras. 0028 and 0044)).
However, claim 1 specifically recites that it is a “generic command” that
puts a device into “its most privileged level.” (Claim 1). The Examiner’s
reasoning as to how the combined references teach this limitation is not completely
clear. The Examiner merely states that “[o]ne of ordinary skill would have been
motivated to [combine the teachings of Merchant and Stewart] wherein it is taught
by Stewart to provide different privilege levels for users within the device (col. 3,
ll. 54-62).” (Ans. 5).
In response, Appellant argues in detail that there is no reasonable basis to
make the combination proposed by the Examiner. (App. Br. 12-13; Reply Br. 1-3).
Appellant points out, for example, “the Examiner fails to explain how or why any
of Merchant's ‘generic commands’ would be used to place a device into its most
privileged level.” (App. Br. 13 (emphasis added)).
We find Appellant’s arguments on this issue persuasive for the reasons set
forth in the Appeal Brief and Reply Brief. (App. Br. 12-13; Reply Br. 1-3). We
conclude that the Examiner has not established a prima facie case of obviousness
in rejecting independent claim 1. We therefore do not sustain the Examiner’s
obviousness rejection of claim 1 or of dependent claims 2-4 and 10-11. For these

1 Rather than repeat the Examiner’s positions and Appellant’s arguments in their
entirety, we refer to the following documents for their respective details: the
Appeal Brief (App. Br.) filed August 7, 2009; the Examiner’s Answer (Ans.)
mailed October 1, 2009; and the Reply Brief (Reply Br.) filed November 18, 2009.
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reasons, we likewise do not sustain the Examiner’s further rejections of claims 5-8
and 23, which depend from claim 1.

II.
Claim 12 recites “said module converting a response received from said
given device into a generic format for presentation to said library.” We agree with
Appellant (App. Br. 14-15; Reply Br. 3-4), that contrary to the Examiner’s findings
(Ans. 10, 16), paragraphs 0045 and 0046 of Merchant do not disclose this
limitation. However, the shortcomings of these particular paragraphs are not
dispositive of the present issue.
The Examiner further finds “Merchant teaches the sending of configuration
signals and the querying for configuration information.” (Ans. 11-12 (citing
Merchant, paras. 0029 and 0031) (emphasis added)). The Examiner further finds
Merchant teaches “to query and receive current configurations of devices.” (Ans.
12 (citing Merchant, para. 0031)). Merchant, in paragraph 0032, elaborates on
what is taught in paragraph 0031:
Device/host-specific commands 222 can be generated (block 220) to
query such devices. The data storage devices 122, 124 respond by
issuing device/host-specific responses 228. The device/host-specific
responses 228 are translated (block 220) into device/host-independent
responses 230, and the device/host-independent commands 218 are
generated (block 216) from the device/host-independent responses
230.
(Merchant, para. 0032) (emphasis added).
Merchant’s paragraphs 0031 and 0032 clearly teach the argued claim
limitation of claim 12. Appellants have therefor failed to show the Examiner erred
in finding that Merchant teaches “said module converting a response received from
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said given device into a generic format for presentation to said library” as required
by claim 12.
Although the Examiner did not specifically point to paragraphs 0031 and
0032 when mapping the limitations of claim 12 to the prior art, the Examiner did
refer to paragraph 0031 in rejecting claims 15 and 16, which fall under the same
ground of rejection. We point to paragraph 0032 of Merchant merely to further
elaborate on the teachings of paragraph 0031.
We conclude that the Examiner did not err in rejecting independent claim
12. We therefore sustain the Examiner’s rejection of claim 12 as well as claims
13-16 which are not separately argued.
With likewise sustain the Examiner's obviousness rejection of claims 17, 18,
and 22 over Merchant in view of Tindal and Rangachar. Appellant has not
particularly pointed out errors in the Examiner’s reasoning regarding the additional
teachings of Rangachar, but merely reiterates the same arguments that are set forth
in relation to independent claim 12 regarding the alleged deficiencies of Merchant
and Tindal (App. Br. 15).
With likewise sustain the Examiner's obviousness rejection of claim 20 over
Merchant in view of Tindal and Stewart. Appellant has not particularly pointed
out errors in the Examiner’s reasoning regarding the additional teachings of
Stewart, but merely reiterates the same arguments that are set forth in relation to
independent claim 12 regarding the alleged deficiencies of Merchant and Tindal
(App. Br. 15).

DECISION
The Examiner’s decision rejecting claims 1-8, 10, 11, and 23 is reversed.
The Examiner’s decision rejecting claims 12-18, 20, and 22 is affirmed.
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

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