Ex Parte Raheja et al

Patent Trial and Appeal Board

Dec 12, 2013

11657884 (P.T.A.B. Dec. 12, 2013)

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.
11/657,884 01/25/2007 Raj Raheja 060174 (BLL0412US) 5607
36192 7590 12/12/2013
AT&T Legal Department - CC
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
DESROSIERS, EVANS
ART UNIT PAPER NUMBER
2491
MAIL DATE DELIVERY MODE
12/12/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAJ RAHEJA, HOMAYOUN TORAB,
and MOUNIRE EL HOUMAIDI
____________

Appeal 2011-007098
Application 11/657,884
Technology Center 2400
____________

Before MAHSHID D. SAADAT, LARRY J. HUME,
and JON B. TORNQUIST, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-21, which are all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm, and enter new grounds of rejection in accordance with
37 C.F.R. § 41.50(b).
Appeal 2011-007098
Application 11/657,884

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STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to a method for reducing down time of a
communications network while performing network modifications (see
Spec. ¶ [0005]). Claim 1, which is illustrative of the invention, reads as
follows:
1. A method for reducing down time of a communications
network while performing network modifications, the method
comprising:
determining a list of subscribers to be moved from a set
of existing equipment elements to a set of new equipment
elements;
if a network management system for managing the set of
new equipment elements is capable of supporting logical
provisioning of subscribers before the set of new equipment
elements are placed into service, then preprovisioning the set of
new equipment elements for the list of subscribers, after
preprovisioning, installing subscriber connections to the set of
new equipment elements and after installing the subscriber
connections, installing the set of new equipment elements in the
communications network;
otherwise, installing subscriber connections to the set of
new equipment elements, installing the set of new equipment
elements into the communications network, placing the set of
new equipment elements into service, and after installing the set
of new equipment elements, provisioning the set of new
equipment elements for the list of subscribers; and
removing subscriber connections to the set of existing
equipment elements.
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The Examiner’s Rejection
Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Silver (US 2007/0206735 A1) and Lechner (US 6,188,893
B1). (See Ans. 3-7).
Appellants’ Contentions
1. With respect to claims 1-7, Appellants contend that the
combination of Silver and Lechner does not teach or suggest all the recited
features of claim 1 because:
(a) Paragraphs 253 and 272 of Silver merely disclose provisioning for
a new service using a single piece of equipment, i.e., the gateway server
provisioning engine (GSPE), rather than “moving subscribers ‘from a set of
existing equipment elements to a set of new equipment elements’” (Br. 5).
(b) The cited portions of Silver in paragraphs 122 and 272 relate to
different embodiments and do not mention “whether the gateway is capable
of supporting logical provisioning of subscribers before a set of new
equipment elements are placed into service” (Br. 5).
(c) Paragraphs 122 and 272 of Silver describe different functions and
cannot meet the claimed “if-then relationship” in “‘if a network management
system . . . is capable of supporting logical provisioning of subscribers . . . ,
then preprovisioning the set of new equipment elements for the list of
subscribers’” recited in claim 1 (Br. 5-6).
(d) The cited portion of Silver in paragraph 201 discusses geographic
redundancy, but does not mention anything related to preprovisioning the
gateway server (Br. 6).
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(e) The portions of Lechner in columns 1 and 2, as relied on by the
Examiner, do not disclose the installing connections and provisioning
features of claim 1 (Br. 8).
(f) It is not clear how the gateway server of Silver may be combined
with Lechner’s method of switching wireless devices to arrive at the claimed
invention (Br. 8).
2. Appellants argue the patentability of independent claims 8 and
15 by repeating the same arguments raised for claim 1 and the patentability
of the remaining dependent claims based on the reasons asserted for their
respective base claims (Br. 8-15), allowing these claims to fall with
representative claim 1.
Issue on Appeal
Has the Examiner erred in rejecting the claims as being obvious over
Silver and Lechner because the combination of references does not teach or
suggest the disputed features recited in claim 1?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Examiner’s Answer in response to Appellants’
Appeal Brief (see Ans. 8-16). However, we highlight and address specific
findings and arguments for emphasis as follows.
Initially, we observe that claim 1 recites a conditional limitation that
requires “if a network management system for managing the set of new
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equipment elements is capable of supporting logical provisioning of
subscribers . . . , then preprovisioning the set of new equipment elements.”
Claim 1 further recites that in case this condition is not met, subscriber
connections are installed, the set of new equipment elements are placed into
the network, the set of new equipment elements are provisioned for the
subscribers, and lastly, subscriber connections to the existing equipment are
removed, for which the Examiner relies on Lechner (see Ans. 4-6).
Therefore, the claimed steps of “preprovisioning the set of new equipment
elements for the list of subscribers, after preprovisioning, installing
subscriber connections to the set of new equipment elements and after
installing the subscriber connections, installing the set of new equipment
elements in the communications network” are conditioned on only “if a
network management system for managing the set of new equipment
elements is capable of supporting logical provisioning of subscribers before
the set of new equipment elements are placed into service.”
During examination, claims are given their broadest reasonable
interpretation. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). Therefore, under the broadest reasonable interpretation,
method steps of Appellants’ claim 1, such as preprovisioning the set of new
equipment elements, installing subscriber connections to the set of new
equipment elements, and installing the set of new equipment elements are
contingent on “if a network management system for managing the set of new
equipment elements is capable of supporting logical provisioning of
subscribers before the set of new equipment elements are placed into
service.” That is, if the condition for performing a contingent step, such as
“supporting logical provisioning of subscribers,” is not satisfied, the
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performance recited by these steps need not be carried out in order for the
claimed method to be performed. Cf. In re Johnston, 435 F.3d. 1381, 1384
(Fed. Cir. 2006) (“[O]ptional elements do not narrow the claim because they
can always be omitted.”). Based on such interpretation, the Examiner is not
required to find the disclosure of that step in the prior art in order to render
the claims obvious. See Ex Parte Gary M. Katz, 2011 WL 514314, *4
(BPAI 2011).
In view of the above discussion, finding in the prior art teachings the
last two claimed steps after the “otherwise” option including “installing
subscriber connections to the set of new equipment elements, installing the
set of new equipment elements into the communications network, placing
the set of new equipment elements into service, and after installing the set of
new equipment elements, provisioning the set of new equipment elements
for the list of subscribers” and “removing subscriber connections to the set
of existing equipment elements” would be sufficient to support the
Examiner’s proposed rejection.
As acknowledged by Appellants (Br. 5), Silver discloses that the
gateway server supports routing calls and provisioning a new service among
subscribers that were previously not subscribers of that operator (see Silver
¶¶ [0122] and [272] and Table 1). Similarly, Appellants acknowledge
Lechner’s disclosure in columns 1 and 2 related to installing new equipment
in a communications network (Br. 8), which actually results in removing the
subscriber connections to the set of existing elements. As stated by the
Supreme Court, “the [obviousness] analysis 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
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ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Alternatively stated, “[i]f a person of ordinary skill
can implement a predictable variation, § 103 likely bars its patentability.”
Id. at 417. Here, as stated by the Examiner (Ans. 16), it would have been
obvious to one of ordinary skill in the art to combine Silver’s network
environment and subscribers’ provisioning with Lechner’s configuration of
subscriber connections resulting in a predictable variation that increases
efficiency of the network by saving existing connections when function units
fail (see Lechner, col. 1, ll. 61-67).

CONCLUSION
For the reasons stated above, we find Appellants have not shown the
Examiner erred in rejecting representative claim 1 under 35 U.S.C. § 103(a).
Therefore, we concur with the Examiner’s conclusion that the combination
of Silver and Lechner would have suggested to one of ordinary skill in the
art all the limitations of independent claim 1, and sustain the Examiner’s
rejection of claim 1 and claims 2-21 that fall therewith.
Although we agree that claims 1-21 would have been obvious over the
combination of Silver and Lechner, our reasoning differs from that of the
Examiner. We therefore designate our decision a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b) to provide Appellants a full and fair
opportunity to address this new rationale.1

1 Although not before us on appeal, in case of further prosecution, we direct
the Examiner’s attention to the recitation of a “computer program product”
to ensure compliance with the statutory subject matter requirements of
35 U.S.C. § 101. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013)
(precedential) (expanded panel) (holding recited computer-readable storage
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DECISION
The decision of the Examiner rejecting claims 1-21 is affirmed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, 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. . . .

Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the

medium ineligible under § 101 since it encompasses transitory
media). Here, the recited “computer program product” is not claimed as
non-transitory, and Appellants’ disclosure does not expressly and
unambiguously limit that medium to solely non-transitory forms via a
definition or similar limiting language. Therefore, the computer program
product appears to encompass transitory forms which would be ineligible
under §101.
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prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED
37 C.F.R. § 41.50(b)

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