Ex Parte Rives et al

Patent Trial and Appeal Board

Oct 16, 2013

11238197 (P.T.A.B. Oct. 16, 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.
11/238,197 09/29/2005 David G. Rives 20103/SW1006 8294
83417 7590 10/16/2013
AT&T Legal Department - HFZ
ATTN. Patent Docketing
One AT&T Way
Room 2A-207
Bedminstor, NJ 07921
EXAMINER
TRAN, QUOC DUC
ART UNIT PAPER NUMBER
2656
MAIL DATE DELIVERY MODE
10/16/2013 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 DAVID G. RIVES and JASON BREWER
__________

Appeal 2011-009319
Application 11/238,197
Technology Center 2600
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a method
to dispatch service resources. The Examiner rejected the claims as indefinite
and as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Appellants identify the Real Party in Interest as SBC Knowledge
Ventures, L.P. (App. Br. 1) and as AT&T Intellectual Property I,
LP (Reply Br. 5).
Appeal 2011-009319
Application 11/238,197

2
Statement of the Case
Background
“A communication service provider generally employs a fleet of
service personnel or repair crews having a wide variety of skills that address
various facets of a large communication network” (Spec. 1 ¶ [0002]). The
Specification teaches that “sending an overqualified crew to address simple
network issues results in significant money losses. Similarly, dispatching a
repair crew that is under-qualified . . . results in significant money losses
when a second repair crew must be dispatched” (Spec. 2 ¶ [0004]).
The Claims
Claims 1-34 are on appeal (see App. Br. 3). Claim 1 is representative
and reads as follows:
1. A method to dispatch service resources comprising: receiving a
notice of error for a user service;
identifying, using a processor, a non-premises network element
(NE) associated with the user service based on a user service
identifier, the non-premises NE not being physically located within a
customer premises;
querying a network database to identify an equipment control
command associated with the identified non-premises NE;
sending the equipment control command to the identified non-
premises NE and receiving a response therefrom; and
automatically invoking a dispatch instruction based on the non-
premises NE response, wherein the dispatch instruction comprises a
service type.

The issues
A. The Examiner rejected claims 1-34 under 35 U.S.C. § 112, second
paragraph, as indefinite (Ans. 3).
Appeal 2011-009319
Application 11/238,197

3
B. The Examiner rejected claims 1-34 under 35 U.S.C. § 103(a) as
obvious over Doherty2 and Yi3 (Ans. 4-7).
A. 35 U.S.C. § 112, second paragraph
The Examiner finds that “[c]laims 1-34 recites the limitation ‘non-
premises network element’ in claims 1, 3, 6,-7, [sic] 14, 17-18, 20, 26 and
28-29. There is insufficient antecedent basis for this limitation in the claim”
(Ans. 3).
Appellants contend that “the phrase ‘non-premises NE’ clearly and
unambiguously indicates a network element of a network that is not located
in the residence or business of a customer. There is nothing indistinct about
this term” (App. Br. 11).
We find that Appellants have the better position. We agree with
Appellants that the phrase “‘non-premises network element’” is reasonably
interpreted as network elements not located on the premises of the customer
and we agree with the reasoning of Appellants (id.).
B. 35 U.S.C. § 103(a) over Doherty and Yi
The Examiner finds that Doherty teaches
[T]o dispatch service resources comprising: receiving a
notice of error for a user service (col. 9 lines 20-25);
identifying, using a processor, equipment associated with the
user service based on a user service identifier (col. 9 lines
34-40); and automatically executing the dispatch instruction
in response to the equipment analysis, wherein the dispatch
instruction comprises a service type

2 Doherty et al., US 6,735,293 B2, issued May 11, 2004.
3 Yi et al., US 2002/0181664 A1, published Dec. 5, 2002.
Appeal 2011-009319
Application 11/238,197

4
(Ans. 4). The Examiner finds that Doherty teaches “an element manager 56
that monitors all CPEs as well as network components (i.e., non-premises
network elements (elements that located outside of the customer premises))
and report faults that raises alarms to the service provisioning and service
assurance system (SPA) and using remote control functionality to resolve
faults” (id.). The Examiner finds that while Doherty does not teach
“querying a network database to identifying an equipment control command
associated with the identified non-premises network element; and sending
the equipment control command to the identified non-premises NE and
receiving a response therefrom. However, Yi et al suggested such” (id.).
The Examiner finds it obvious to “incorporate the teaching of Yi et al
into view of Doherty et al in order to properly perform testing and
maintaining of the network topologies” (id. at 5).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Doherty and Yi render the claims
obvious?
Findings of Fact
1. Doherty teaches
An automated system coordinates . . . installation of
customer premise equipment (CPE) for telecommunications
services and provides continuing service assurance. The
system verifies equipment availability on service request,
schedules a qualified technician to install the CPE, and
assigns distribution equipment resources to the CPE. . . .
The equipment resources are auto-assigned to the CPE to
facilitate installation procedures. The system also
autodetects installation of the CPE and auto-enables service
when the CPE is installed. Customer record creation and
maintenance is automatic, and installation or operation of
Appeal 2011-009319
Application 11/238,197

5
unauthorized equipment is inhibited. Post-installation
monitoring and automatic scheduling of repair for system or
equipment faults ensures continuing service assurance. The
advantage is reduced service delivery time, reduced
operations costs and increased customer satisfaction.

(Doherty, abstract.)
2. Doherty teaches error detection where “the element manager 56
. . . monitors the status of the service distribution equipment 28, the CPEs
40, the broadband optical switch 18, and other system components used to
deliver telecommunications services to the customer 12. The element
manager 56 routinely detects faults and generates alarms” (Doherty, col. 9,
ll. 20-26).
3. Doherty teaches that an “element manager 56 monitors all
CPEs 40 and other network components to detect and report hardware and
software faults and raise alarms” (Doherty, col. 5, ll. 13-16).
4. Doherty teaches “the SPA 50 also monitors alarms respecting
service distribution equipment 28 . . . as well as other system components,
and follows similar procedures to correct faults using remote control
functionality as described above, and schedules and dispatches technicians
for repair, if necessary” (Doherty, col. 10, ll. 13-18).
5. Doherty teaches that it “should be further noted that with
respect to network components used for delivery of services, the scheduling
of repairs is based on an urgency level determined by the type and level or
[sic, of?] alarm” (Doherty, col. 10, ll. 18-21).
Appeal 2011-009319
Application 11/238,197

6
6. Doherty teaches that if “a component failure occurs that affects
service to a plurality of customers, standby technicians may be scheduled to
perform repairs on an immediate basis” (Doherty, col. 10, ll. 21-24).
7. Doherty teaches that if “the alarm exceeds the predetermined
threshold and it is determined that the alarm relates to a CPE 40 (FIG. 1), the
terminal address card and port number of the CPE are used to retrieve the
customer record” (Doherty, col. 9, ll. 33-36).
8. Yi teaches that:
A test set for testing an IDSL communications line is
also disclosed and includes an interface circuit for
interfacing with an IDSL communications line. A processor
is connected to the interface circuit and transmits a query
command along the IDSL communications line and queries
transmission elements sequentially along the
communications line and identifies the configuration of the
IDSL communications line based on the received responses.

(Yi 1 ¶ 0011.)
9. Yi teaches that the “method can be embodied in a software
algorithm as part of a testing device. . . . Any changes in the current
configuration of the IDSL circuit from the initial reading is dynamically
updated in real time” (Yi 3 ¶ 0028).
Principles of Law
“‘[R]ejections 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 Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Appeal 2011-009319
Application 11/238,197

7
Analysis
Doherty reasonably teaches a method to dispatch resource services
where a notice of an error is received (FF 2), a non-premises network
element is identified (FF 4) and suggests using service identifiers to
determine the component (FF 7). Doherty further teaches dispatching a
service provider based on the specific component problem (FF 1, 5, 6). Yi
teaches sending a query command to a network element and receiving a
response to determine the operational status of the network element (FF 8).
All of the independent claims also include a step of “querying a network
database.”
However, regarding the claim step of “querying a network database to
identify an equipment control command associated with the identified non-
premises NE [network element],” the Examiner finds that “Yi et al
inherently must perform some form of querying to obtain the proper
commands in order to queries [sic] transmission elements (i.e., sending
request or command to transmission elements) to elicit a response within a
period time” (Ans. 10).
Appellants contend that
Rather than query a network database to identify an
equipment control command associated with the identified
non-premises NE, Yi appears to assume that any attempts to
query the transmission elements will include the proper
command(s). Yi makes no reference to a database, or one
that identifies an equipment control command

(Reply Br. 8).
Appeal 2011-009319
Application 11/238,197

8
We find that Appellants have the better position. The Examiner
acknowledges that Doherty “did not clearly suggest of [sic] querying a
network database” (Ans. 4). The Examiner provides no evidence that Yi
performs this step, and provides no evidence or argument that the step of
“querying a network database to identify an equipment control command”
would have been obvious to the person of ordinary skill.
Instead, the Examiner relies upon Yi to inherently perform the
querying step (see Ans. 10). However, as Appellants point out, “Yi appears
to presuppose that the proper equipment control command is known during
sequential queries of the IDSL circuit. In fact, Yi makes no reference to a
database, or one that identifies an equipment control command” (App. Br.
16). While we do not dispute that querying a database might be one mode
by which an ordinary artisan might obtain the equipment control command
for testing the functionality of a network element, there are multiple
different ways by which the equipment control command might be presented
to the processor, including as a dedicated file, a library of documents, as data
in a memory storage device, without the use of a database.
Thus, the Examiner has not satisfied the burden of providing evidence
that the prior art taught or suggested the step of “querying a network
database,” nor has the Examiner satisfied the burden of providing evidence
that the prior art necessarily inherently relied upon a database. See
MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
1999) (“Inherency ... may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.”)
Appeal 2011-009319
Application 11/238,197

9
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Doherty and Yi render the claims obvious.
SUMMARY
In summary, we reverse the rejection of claims 1-34 under 35 U.S.C.
§ 112, second paragraph, as indefinite.
We reverse the rejection of claims 1-34 under 35 U.S.C. § 103(a) as
obvious over Doherty and Yi.

REVERSED

cdc