Ex Parte Ponomarenko

Board of Patent Appeals and Interferences

Oct 29, 2010

10066033 (B.P.A.I. Oct. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREI PONOMARENKO
____________

Appeal 2009-005734
Application 10/066,033
Technology Center 2400
____________

Before JOHN C. MARTIN, MAHSHID D. SAADAT,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
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Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 10-30, which constitute all the claims pending in this application.
Claims 1-9 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse and enter a new ground of rejection within the provisions
of 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
Appellant’s invention relates to a system for managing and updating a
configuration database for a network element. The network element
includes several managed objects. The managed objects represent logical
representations that can be configured and modified through transactions
executed by network management software. The configuration management
system includes a database manager that maintains a database file and a
transaction log file. Each managed object includes an object reference key
and a storage location pointer. Logical dependencies among objects are
maintained through the linking of storage location pointers in the objects.
Actions that modify an object are stored in the database file and the
transaction log file. The present state of an object is stored by the database
management system. In the event of an abort condition, the most recent
configuration state of the network element is restored by re-applying the
transactions stored in the transaction log file, and resolving the pointer links
contained in the affected managed objects. (Abstract.)
Claim 10, which is illustrative of the invention, reads as follows:
10. A system of managing a configuration database
within a network management program for a SONET ring
network, the system comprising:
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a plurality of managed objects representing logical
representations of network entities that can be configured and
modified through transactions executed by the network
management program, wherein one or more of the managed
objects include an object reference and a storage location
pointer to another of the managed objects, the another of the
managed objects being accessed by a combination of the object
reference and the storage location pointer associated with the
one or more of the managed objects;
an agent process that receives transaction commands
from a command handler;
a database manager that receives the transaction
commands from the agent process;
a database file that stores commands from the database
manager; and
a transaction log file that stores actions included within
transactions issued by the database manager.

The Examiner relies on the following prior art in rejecting the claims:
Axberg US 6,009,466 Dec. 28, 1999
Traversat US 6,115,715 Sep. 5, 2000
Davis US 6,260,062 B1 Jul. 10, 2001

Claims 10-12 and 21 stand rejected under 35 U.S.C. § 103(a) as
obvious over Axberg in view of Davis.
Claims 13-20 and 22-30 stand rejected under 35 U.S.C. § 103(a) as
obvious over Axberg in view of Davis, and further in view of Traversat.
Rather than repeat the arguments here, we make reference to the
Briefs (the Amended Appeal Brief (App. Br.) filed Dec. 3, 2007, replacing
Appeal Briefs filed Jan. 31, 2006, Apr. 26, 2006, and Aug. 30, 2007, and
Reply Brief (Reply Br.) filed May 5, 2008) and the Answer (mailed Mar. 13,
2008) for the respective positions of Appellant and the Examiner. Only
those arguments actually made by Appellant have been considered in this
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decision. Arguments that Appellant did not make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE
Claims 10, 16, and 23 are independent claims. Claims 11-15 and 21
depend from claim 10, claims 17-20 and 22 depend from claim 16, and
claims 24-30 depend from claim 23. With respect to claim 10, Appellant
argues, inter alia, that Axberg does not disclose a managed object wherein
one or more of the managed objects include an object reference
and a storage location pointer to another of the managed
objects, the another of the managed objects being accessed by a
combination of the object reference and the storage location
pointer associated with the one or more of the managed objects.
See App. Br. 19. With respect to claims 16 and 23, Appellant asserts, inter
alia, that Axberg does not meet the claim requirement for “managing” a
configuration database within a network management program. See App.
Br. 24, 27. Appellant further asserts that neither Davis nor Traversat cures
the deficiencies of Axberg. See App. Br. 19, 25, 28.
Therefore, Appellant’s arguments present us with the following
dispositive issue regarding claim 10: Does Axberg, in combination with
Davis and/or Traversat render the claim obvious by disclosing a managed
object wherein
one or more of the managed objects include an object reference
and a storage location pointer to another of the managed
objects, the another of the managed objects being accessed by a
combination of the object reference and the storage location
pointer associated with the one or more of the managed objects,
as recited in claim 10?
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FINDINGS OF FACT (FF)
1. Axberg discloses a storage network management program that
includes a configuration planning portion for planning the configuration of a
network of storage devices (col. 4, ll. 10-15).
2. Axberg discloses that the configuration planning portion may
plan the network before it is physically connected together or may be used
for adding to or altering an existing storage network (col. 7, ll. 15-20).
3. Axberg discloses a network management system that is usable
for storage device networks comprising a wired local area network using an
IBM Token Ring Protocol and also usable with other network devices, other
communications media, and other protocols (col. 4, ll. 28-32; col. 16, ll. 14-
17, 29-39).
4. Axberg discloses a port object which includes a reference to the
object for the physical device associated with the port and a port number
associated with the port (col. 9, ll. 12-15).

PRINCIPLES OF LAW
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, 406 (2007).
“The specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the applicant
regards as his invention.” 35 U.S.C. § 112, ¶ 2.
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“We do not think a rejection under 35 U.S.C. § 103 should be based
on . . . speculations and assumptions. . . . [I]t is essential to know what the
claims do in fact cover.” In re Steele, 305 F.2d 859, 862 (CCPA 1962).
The failure to provide explicit antecedent basis for terms does not
always render a claim indefinite. If the scope of a claim would be
reasonably ascertainable by those skilled in the art, then the claim is not
indefinite. MPEP § 2173.05(e); Energizer Holdings, Inc. v. Int’l Trade
Comm’n, 435 F.3d 1366 (Fed. Cir. 2006) (holding that “anode gel” provided
by implication the antecedent basis for “zinc anode”).
“The reviewing tribunal must determine whether a person experienced
in the field of the invention would understand the scope of the claim when
read in light of the specification.” Energizer, 435 F.3d at 1369.

ANALYSIS
Claims 10-15 and 21
The Examiner has not responded to Appellant’s contention regarding
the recited managed objects in the Answer (Ans. 7-8) other than to repeat the
grounds for rejection (Ans. 3). In an Advisory Action dated October 4,
2005, and referenced by Appellant (App. Br. 19) the Examiner recognized
that a “pointer” is a memory location where an object is stored and relies on
the port objects disclosed by Axberg, which include a reference to an
associated physical device object, to assert that that reference to a physical
device is the functional equivalent of a “pointer.”
We note that claim 10 recites “a storage location pointer,” which
unambiguously requires that the pointer identify storage, i.e., memory,
location. This reading of “pointer” is further supported by an express
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definition of “pointer” in Appellant’s Specification (Spec. 11:17-18). In that
regard, Axberg’s port object identifies the physical device with which the
port is associated (FF 4), but Axberg does not disclose identifying the device
by a pointer to its memory location. We agree with Appellant’s implicit
argument that a corresponding physical device identification and a memory
location pointer are not the same thing. Therefore, we conclude that Axberg
does not disclose that
one or more of the managed objects include an object reference
and a storage location pointer to another of the managed
objects, the another of the managed objects being accessed by a
combination of the object reference and the storage location
pointer associated with the one or more of the managed objects
because Axberg does not disclose a “storage location pointer.” We further
find no disclosure in Davis or Traversat, or any findings by the Examiner
that would cure this deficiency in Axberg. Accordingly, we find that claims
10-15 and 21 are improperly rejected as obvious under 35 U.S.C. § 103(a)
because the Examiner has failed to present a prima facie case for the
obviousness of base claim 10.

Claims 16-20 and 22-30
Reviewing the arguments made for the patentability of claims 16 and
23 (App. Br. 24-25, 27-28; Reply Br. 4-5), we note that both claims recite
the term “managed transactions” with no clear antecedent basis in the
claims. Although a lack of antecedent basis for a term in a claim does not
render the claim per se indefinite under 35 U.S.C. § 112, second paragraph,
see Energizer, 435 F.3d 1366, such a lack of antecedent basis may render a
claim so ambiguous as to be impossible to construe, and therefore indefinite
under 35 U.S.C. § 112, second paragraph.
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Appellant has cited to the Specification at page 11, lines 9-20, and to
Figures 2A and 2B, as providing support for the limitations containing this
phrase in claim 16 (App. Br. 9) and claim 23 (App. Br. 11-12). We are
unable to locate any disclosure in that portion of the Specification for
defining “managed transactions.” The Specification contains references to
“transactions” and to “managed objects” which are accessed by “object
reference information and pointer information” in other “managed objects.”
See, e.g., Spec. 11: 9-20. However, we find no reference to “managed
transactions” which are accessed by “object reference information and
pointer information” in “managed objects” anywhere in the Specification or
the originally filed claims. We note that the phrase “the managed
transactions” first appears in the prosecution history in an Amendment filed
April 7, 2005, by way of amendment to claim 16 and the introduction of new
claim 23. That Amendment does not provide any additional clarification as
to the meaning of “managed transactions.”
In the absence of any antecedent basis in the claims or guidance from
the Specification as to the meaning of “the managed transactions” which are
accessed by “object reference information and pointer information” in
“managed objects,” we find that the scope of meaning to be attributed to
claims 16 and 23 is not reasonably determinable.
Accordingly, for independent claims 16 and 23 and dependent claims
17-20, 22, and 24-30, the existing prior art rejections must be reversed pro
forma because they are necessarily based on speculative assumptions and
inferences as to the meaning of the claims. See Steele, 305 F.2d at 862-63.
Furthermore, we enter a new ground of rejection for claims 16-20 and 22-30
under the second paragraph of 35 U.S.C. § 112 as being indefinite, pursuant
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to our authority under 37 C.F.R. § 41.50(b). It should be understood,
however, that our decision in this regard is based solely on the indefiniteness
of the claimed subject matter and does not reflect the adequacy or the
inadequacy of the prior art evidence applied in support of the rejection
before us. Once definite claims are presented, the Examiner is free to apply
the same, different, or additional prior art if the Examiner so chooses.

CONCLUSION AND ORDER
On the record before us, we reverse the rejection of claims 10-15 and
21 under 35 U.S.C. § 103(a). We pro forma reverse the outstanding
rejections of claims 16-20 and 22-30 under 35 U.S.C. § 103(a) and enter a
new ground of rejection of claims 16-20 and 22-30 under 35 U.S.C. § 112,
second paragraph.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
37 C.F.R. § 41.50(b).
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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).

REVERSED
37 C.F.R. § 41.50(b)

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