Ex Parte Phaal

Board of Patent Appeals and Interferences

Apr 21, 2009

09850202 (B.P.A.I. Apr. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PETER PHAAL
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Appeal 2008-30841
Application 09/850,202
Technology Center 2400
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Decided:2 April 21, 2009
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Before JOHN C. MARTIN, JOSEPH L. DIXON, and
JEAN R. HOMERE, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed May 7, 2001. The real party in interest is Inmon 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, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-3084
Application 09/850,202

I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1 through 19 and 26 through 32. Claims 20 through 25 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
Brief Summary of the Invention
Figure 3 is reproduced below:
As depicted in Figure 3, Appellant invented a method and apparatus
for gathering and analyzing test results within a network (300), wherein a
server (310) communicates with a host (320) via a router (340). Particularly,
the router (340) filters data packets originating from the server (310). The
router (340) then generates and sends a flow record containing the
destination and source information of each filtered data packet to a monitor
(330) for further analysis and testing. The monitor (330) randomly selects at
least a fraction of the flow records received from the router (340) to then
extract the destination and source information. Using the source and
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destination information, the router (340) can perform active network tests to
the remote hosts (320). (Spec. 7).
Illustrative Claim
Independent Claim 1 further illustrates the invention. It reads as
follows:

1. A method for monitoring a network, comprising:

receiving data packet flow records from at least one network router;

filtering said flow records;

extracting packet information from said filtered flow records, wherein
said extracted packet information comprises information of at least one
target of interest; and

performing active measurements of said at least one target of interest
based on said extracted packet information.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Bruins US 6,308,148 Oct. 23, 2001
Merriam US 6,587,878 Jul. 1, 2003
Rejection on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1-19 and 26-32 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Bruins and Merriam.

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Examiner’s Findings and Conclusions
1. The Examiner avers that the combination of Bruins and
Merriam renders independent claim 1 unpatentable. Particularly, the
Examiner finds that Bruins’ disclosure of a router collecting and aggregating
flow information teaches the claimed receiving data packet flow records
from at least one network router. (Ans. 7). Further, the Examiner finds that
Bruins’ disclosure of aggregating information to one or more filters teaches
filtering said flow records. (Ans. 7). Additionally, the Examiner finds that
Bruins’ disclosure of each filter parsing the flow data packets and
identifying useful information, such as message flows having a selected
range of source addresses, teaches the claimed limitation of extracting
packet information from said filtered flow records, wherein said extracted
packet information comprises information of at least one target of interest.
(Ans. 7-8).
2. The Examiner readily admits that Bruins does not teach
performing active measurements of said at least one target of interest based
on said extracted packet information. (Ans. 8). However, the Examiner
finds that Merriam’s disclosure of a performance measurement program,
including a performance test at a particular remote probe, teaches
performing active measurements of said at least one target of interest based
on said extracted packet information. (Ans. 8).
3. The Examiner concludes that the combination of Bruins and
Merriam renders claim 1 unpatentable. Particularly, the Examiner concludes
that it would have been obvious to one of ordinary skill in the art at the time
the invention was made to combine Bruins’ method of extracting packet
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information from the filtered flow records with Merriam’s performance
measurement program in order to improve network performance by
measuring and using the actual performance time information to fix
unacceptable delays. (Ans. 8). The Examiner finds sufficient motivation in
both Bruins and Merriam for the proffered combination. (Ans. 9).
Specifically, The Examiner finds that Bruins explicitly discloses such a
motivation by suggesting modifying a performance parameter of the router
in order to improve performance of the router based on aggregated message
flow information. (Ans. 9). Further, Merriam discloses using actual
performance time information to provide an accurate estimate of delays a
consumer may experience, thereby allowing a merchant or others to avoid
losing customers by addressing unacceptable delays. (Ans. 9).
Appellant’s Contentions
1. Appellant contends that the Examiner erred in concluding that
the combination of Bruins and Merriam renders independent claim 1
unpatentable. Particularly, Appellant argues that the rationale for the
combination proffered by the Examiner cannot properly be relied upon to
establish the prima facie case of obviousness. (App. Br. 7-8).
II. ISSUES
1. Has Appellant shown that the Examiner erred in concluding
that Bruins and Merriam renders claim 1 unpatentable? Particularly, the
issue turns on whether the ordinarily skilled artisan would have found
sufficient motivation to combine Bruins’ method of extracting packet

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information from the filtered flow records with Merriam’s performance
measurement program in order to improve the performance of a network, as
recited in independent claim 1.
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellant’s Invention
1. Upon filtering data packets and generating respective flow
records, a network monitor can randomly select flow records containing
destination and source information, thus enabling a router to perform active
network tests to remote hosts. (Spec. 7, ll. 9-17).
2. It is an objective of the present invention to provide a network
monitoring system that both monitors the most active network paths and
automatically selects target sites for monitoring. (Spec. 5, ll. 1-7).
Bruins
3. Bruins discloses techniques for analyzing message flow
patterns by exporting and using data related to information flow within a
network. (Col. 1, ll. 16-19).
4. Bruins discloses a system for exporting data responsive to
information flow patterns whereby the stored aggregated flow information is
communicated to an application program for use in modifying a
performance parameter of the router. (Col. 8, ll. 12-15). The respective
modification of a performance parameter improves the performance of the
router. (Col. 8, ll. 16-18).
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5. Application programs that use flow data are capable of
identifying useful information in the flow data and may either (1) present the
useful information to an operator for review, or (2) use the useful
information to adjust features or parameters of the network. (Abstract).
Merriam
6. Merriam discloses a method, system, and program for
measuring client performance in network systems, specifically the Internet.
(Col. 1, ll. 7-10).
7. Merriam discloses using actual performance time information
to provide an accurate estimate of delays a consumer may experience,
thereby allowing a merchant or others to avoid losing customers by
addressing unacceptable delays. (Col. 3, ll. 1-18, and col. 5, l. 66 through
col. 6, l. 16).
IV. PRINCIPLES OF LAW
Burden on Appeal
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner's position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).

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Obviousness
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007); Graham v. John Deere Co., 383 U.S. 1, 3 (1996).
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, 127 S. Ct. at 1734.
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, 383 U.S. at 17-18. See also KSR, 127 S. Ct. at 1734
(“While the sequence of these questions might be reordered in any particular
case, the [Graham] factors continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and discussed circumstances in which a patent might be determined to
be obvious without an explicit application of the teaching, suggestion,
motivation test. KSR, 127 S. Ct. at 1739.
In particular, the Supreme Court emphasized that “the principles laid
down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How.
248” ( Id. (citing Graham, 383 U.S. at 12)); and reaffirmed principles based
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on its precedent that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” Id. The Court explained:
When a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same
field or a different one. If a person of ordinary skill can implement a
predictable variation, §103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.

Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
If the claimed subject matter cannot be fairly characterized as
involving a simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for
improvement, a holding of obviousness can be based on a showing that
“there was an apparent reason to combine the known elements in the fashion
claimed.” Id. at 1740-41. Such a showing requires the Examiner provide
“some articulated reasoning” in the rejection, which possesses a “rational
underpinning to support the legal conclusion of obviousness.” Id. at 1741
(quoting In re Kahn, 441 F.3d at 988). The Supreme Court, citing Kahn, 441
F.3d at 988, stated that “rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR, 127 S. Ct. at 1741. However, “the analysis
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need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id.
It is a basic principle that the question under 35 U.S.C. § 103 is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made. See Merck & Co. Inc., v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989).
Nor is it necessary that the suggestion or motivation be found within
the four corners of the references themselves. “The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference …. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981). “The obviousness analysis cannot be confined by the formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of … the explicit content of issued patents.”
KSR, 127 S. Ct. at 1741.
Consistent with KSR, the Federal Circuit recently recognized that
“[a]n obviousness determination is not the result of a rigid formula
disassociated from the consideration of the facts of a case. Indeed, the
common sense of those skilled in the art demonstrates why some
combinations would have been obvious where others would not.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007). The
Federal Circuit relied in part on the fact that Leapfrog had presented no
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evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Id. at 1162.
V. ANALYSIS
Appellant presents a single argument for all the claims pending in this
appeal. Specifically, Appellant argues that the combination of Bruins and
Merriam does not render claims 1-19 and 26-32 unpatentable. In accordance
with 37 C.F.R. § 41.37 (c)(1)(viii), claims 2-19 and 26-32 stand and fall with
claim 1.
Independent claim 1 recites in relevant part performing active
measurements of one target of interest based on packet information extracted
therefrom. As set forth in the Findings of Fact section, Bruins discloses a
method and apparatus for receiving, filtering, and analyzing message flow
patterns by exporting and using data related to information flow within a
network. (FF. 3, 4). Further, Merriam complements Bruins by disclosing a
method for measuring client performance in network systems. (FF. 5). We
find that Bruins and Merriam disclose prior art elements that perform their
ordinary functions to predictably result in a system that actively monitors
components in a network to thereby enhance its respective performance. See
KSR, 127 S. Ct. at 1740.
Assuming that the Examiner must articulate some additional
reasoning for combining the references, we find that the Examiner has
provided ample reasoning to justify the proffered combination. Particularly,
the Examiner explained that it would have been obvious to one of skill in the
art at the time of the invention to incorporate Bruins’ method of extracting
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packet information from the filtered flow records with Merriam’s
performance measurement program in order to improve network
performance. (FF. 4, 5). The Examiner also explained that it would have
been obvious to incorporate Bruins’ method of extracting packet information
from the filtered flow records with Merriam’s performance measurement
program in order to use actual measured performance time information to fix
unacceptable delays. (FF 7). We therefore agree that the Examiner has
provided a sufficient motivation to warrant the proffered combination. It
follows that Appellant has not shown that the Examiner erred in concluding
that the ordinarily skilled artisan would have found sufficient motivation to
combine Bruins’ method of extracting packet information from filtered flow
records with Merriam’s performance measurement program in order to
improve the performance of a network, as recited in independent claim 1.

VI. CONCLUSION OF LAW
Appellant did not demonstrate that the Examiner erred in concluding
that an ordinary skilled artisan at the time of the invention would have found
sufficient motivation to combine Bruins’ method of extracting packet
information from the filtered flow records with Merriam’s performance
measurement program in order to improve performance of a network.

VII. DECISION
We affirm the Examiner’s decision to reject claims 1-19 and 26-32.

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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)(iv).
AFFIRMED

pgc

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