Ex Parte Rhoda et al

Board of Patent Appeals and Interferences

Dec 21, 2010

10224556 (B.P.A.I. Dec. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MERLIN A. RHODA and JOHN M. MONK
____________

Appeal 2009-005045
Application 10/224,556
Technology Center 2100
____________

Before JAMES D. THOMAS, LANCE LEONARD BARRY, JOHN A.
JEFFERY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for 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.
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STATEMENT OF THE CASE
The Patent Examiner rejected claims 14-27. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

INVENTION
The Appellants' invention "us[es] a markup language to define an
application [program] interface [("API")] to control network devices, such as
network test/monitor devices, to provide a secure remote command-driven
user interface." (Spec. ¶ 0001.)

ILLUSTRATIVE CLAIM
14. A method, comprising:
defining a versioned application programming
interface (API) for a network test device, wherein the versioned
API is based on a markup language, and wherein the versioned
API is defined by correlating i) network test commands and
responses supported by the network test device, with
ii) elements defined by the markup language;
publishing the versioned API on a network to which the
network test device is coupled; and
receiving, via the versioned API, a plurality of markup
language documents for interfacing with and controlling the
network test device, the markup language documents
corresponding to two or more versions of the versioned API;
and
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using the markup language documents corresponding to
the two or more versions of the versioned API to program a
test-unit application of the network test device to gather and
return test data pertaining to a network under test.

REJECTIONS
Claims 14, 15, 19, 20, and 22 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by U.S. Pat. No. 7,054,901 B2 ("Shafer").
Claims 16, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shafer.
Claims 17, 18, 21, 25, and 26 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Shafer and the Appellants' admitted prior
art ("AAPA").
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shafer and U.S. Pub. Pat. App. No. 2002/0143865 A1
("Tung Loo").

CLAIM GROUPING
Based on the Appellants' arguments, we will decide the appeal of
claims 14-17, 19-25, and 27 on the basis of claim 14 alone, and the rejection
of claims 18 and 26 on the basis of claim 18 alone. See 37 C.F.R.
§ 41.37(c)(1)(vii).

CLAIMS 14-17, 19-25, AND 27
The issue before us is whether the Examiner erred in finding that
Shafer discloses a versioned API as specified by representative claim 14.

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FINDINGS OF FACT
Shafer describes "an application programming interface (API)
that permits client applications to formulate configuration and operational
requests according to an extensible markup language, such as XML [i.e.,
eXtensible Markup Language]. In response to the configuration and
operational requests submitted by a client application, the router produces
XML output." (Abstract, ll. 5-11.)

ANALYSIS
"It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim, and that
anticipation is a fact question . . . ." In re King, 801 F.2d 1324, 1326 (Fed.
Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist &
Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)).
Here, the Examiner's finding that "Shafer teaches a client making an
XML API document request that can include a detail tag or a terse tag, and
an XML API (document parser) that is capable of parsing either request
version [col. 6, lines 17-22 and 32-66; col. 7, lines 4-12 and 50-60]" (Ans.
7) is uncontested. For its part, the reference supports this finding by
disclosing "the following request . . . for detailed information about a router
interface called 'ge-2/3/0':
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ge-2/3/0

(Col. 7, ll. 38-40.)
The Appellants admit that "Shafer indicates that the request may
include a tag or a tag, depending on the amount of detail
that is desired in a reply to the request." (Appeal Br. 14.) More specifically,
Shafer explains that "[t]he tag designates the amount of detail
desired in the reply. If less detail is required, a tag such as could be
used." (Col. 7, ll. 54-56.)
For our part, we find that the latter explanation teaches two versions
of an API: a detailed version and a terse version. We agree with the
Examiner's finding that either version "clearly satisf[ies] the limitation of a
'versioned API'." (Ans. 7.) Therefore, we conclude that the Examiner did
not err in finding that Shafer discloses a versioned API as specified by
representative claim 14.

CLAIMS 18 AND 26
The issue before us is whether the Examiner erred in finding that the
combined teachings of Shafer and AAPA would have suggested correlating
commands and responses of a byte-driven interface with elements defined
by a markup language as specified by representative claim 18.

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FINDINGS OF FACT
It is uncontested that "AAPA teaches controlling a network test
instrument through a first network, comprising using an application
programming interface (i.e. byte-driven) to control via the first network the
network test instrument testing, including collecting network test results
from a second network [AAPA, pg. 1, paragraphs 2-3]." (Ans. 5-6.)

ANALYSIS
"The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art." In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (citing In re Keller, 642 F.2d
413, 425 (CCPA 1981)). "Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references." In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing Keller, 642 F.2d at 425). In determining
obviousness, furthermore, a reference "must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole." Id.
Here, the Examiner rejects claim 18 based on what the combined
teachings of Shafer and AAPA would have suggested to one of ordinary
skill in the art. Regarding the former reference, we agree with the
Examiner's finding that "Shafer's teaching of the correlation of network test
commands and responses supported by the network test device with
elements defined by the markup language was nonetheless being addressed
in claim 14 of the Final Office Action dated 8/23/07, and is not being argued
in the [Appellants'] outstanding brief." (Ans. 8.) Regarding the latter
reference, we also agree with the Examiner that "the network test device
being defined by a byte-driven interface . . . was clearly addressed by
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AAPA, evidence by applicant agreeing with the Examiner's assertion [while
true, Brief pg. 15]." (Id.)
For their part, the Appellants argue that they "have not indicated that
the correlation of commands and responses of a byte-driven interface with
elements defined by a markup language is [AAPA]." (Appeal Br. 15.)
Because the rejection is based upon the combined teachings Shafer and
AAPA, however, such an argument about the latter reference individually
cannot establish non-obviousness. Therefore, we conclude that the
Examiner did not err in finding that the combined teachings of Shafer and
AAPA would have suggested correlating commands and responses of a
byte-driven interface with elements defined by a markup language as
specified by representative claim 18.

DECISION
We affirm the rejections of claims 14, 15, 19, 20, and 22 under
35 U.S.C. 102(e). We also affirm the rejections of claims 16-18, 21, and 23-
27 under 35 U.S.C. 103(a). No time for taking any action connected with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED

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