Ex parte Sestak

Board of Patent Appeals and Interferences

May 25, 1999

08119980 (B.P.A.I. May. 25, 1999)

Application for patent filed September 10, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MARK R. SESTAK

_____________
Appeal No. 96-2854
Application 08/119,9801
______________
ON BRIEF
_______________
Before THOMAS, JERRY SMITH, and HECKER, Administrative Patent
Judges.
HECKER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final
rejection of claims 1 through 3, all of the claims pending in
Appeal No. 96-2854
Application No. 08/119,980
Our understanding of this reference is based on a2
translation obtained by the USPTO, copy enclosed.
2
the application.
The invention relates to a method of reporting
faults in communication switching system networks.
The only independent claim, claim 1, is reproduced
as follows:
1. A method of reporting an event to a monitoring
station in a network of communication switching exchanges
comprising:
(a) monitoring in each exchange for events to be
reported,
(b) upon detection of the event, the exchange in
which the event occurred automatically dialing a gateway
network node to which a network monitoring station is
connected,
(c) upon the network node responding to the
automatic dialing, sending at least one DTMF signal containing
a report of the nature of the event and an identification of
the exchange in which the event occurred to the network node
for provision to the network monitoring station with an
identification of the network node.

The references relied on by the Examiner are as
follows:
Okanda 63-189040 Aug. 4,
19882
Okurano 2-13054 Jan. 17, 19902
Appeal No. 96-2854
Application No. 08/119,980
3
Butler et al. (Butler) 4,837,811 Jun. 6,
1989
Claims 1 through 3 stand rejected under 35 U.S.C. §
103 as being unpatentable over Okurano in view of Okanda and
Butler.
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the brief and the answer for
the details thereof.
OPINION
After a careful review of the evidence before us, we
agree with the Examiner that claim 1 is properly rejected
under 35 U.S.C. § 103. Thus, we will sustain the rejection of
this claim but we will reverse the rejection of claims 2 and 3
on appeal for the reasons set forth infra.
Appellant argues at page 14 of the Brief:
Appellant respectfully submits that the
modification proposed by the Examiner of the system
of Okurano is contrary to the very purpose of the
Okanda system, of providing the operator with
immediate display of maintenance information of all
of the exchanges.
Where one document, here the reference to
Okurano, states that its objective and configuration
is to provide with continuous information, the fact
that another reference [Okanda] describes providing
Appeal No. 96-2854
Application No. 08/119,980
4
fault information from a remote device to a
maintenance device only when the fault occurs is not
a teaching to modify the first reference, since to
do so would prevent the objective of the first
device from being accomplished.
We note that Appellant ascribes “immediate display”
and “continuous information” to Okurano. Neither phrase is
found in
the reference, instead “immediately detect” (page 3),
“immediately countermeasured” (page 3), “immediately
recognizes” (page 7), and “immediately countermeasure” (page
7) are the closest phrases found. We therefore discern that
Okurano wants the quickest possible response to a remote fault
(in a communication network), and accomplishes this with a
dedicated fault monitoring line. Okanda on the other hand
wishes to save the overhead cost of a dedicated line in
monitoring remote faults (in a non designated system), and
uses an automatic dialing system to report faults, precisely
Appeal No. 96-2854
Application No. 08/119,980
5
as disclosed and claimed by Appellant. Note Appellant’s
specification at page 3, lines
16-18, where it recites “Dedicated trunks are not required,
and excessive trunk resource is not consumed.”
The Examiner’s combination of Okanda with Okurano
saves resources at the expense of some delay. How much delay
is tolerable in Okurano is not addressed by the references,
Appellant or the Examiner, and would be a necessary
consideration in deciding to implement the Okanda teaching.
The Federal Circuit reasons in Para-Ordnance Mfg. Inc. v. SGS
Inporters Int’l., 73 F.3d 1085, 1088-89, 37 USPQ2d 1237, 1239-
40 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996), that
for the determination of obviousness, the court must answer
whether one of ordinary skill in the art who sets out to solve
the problem and who had before him in his workshop the prior
art, would have been reasonably expected to use the solution
that is claimed by the Appellants. We find the cost savings
advantage of Okanda to be an obvious improvement to Okurano
since both systems achieve a relatively quick recognition and
response to remote faults. Also, since Okurano is monitoring
faults on its own (internal) communication system, automatic
Appeal No. 96-2854
Application No. 08/119,980
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dialing would be expected to be quicker than in Okanda, which
uses a public (external) communication system to transmit
fault information.
As to Appellant’s remarks that there is no teaching
or suggestion to combine Okurano and Okanda, we agree with the
Examiner that there is no requirement that a motivation to
make the modification be expressly articulated. As the Court
has stated, “It should be too well settled now to require
citation or discussion that the test for combining references
in not what the individual references themselves suggest but
rather what the combination of disclosures taken as a whole
would suggest to one of ordinary skill in the art.” In re
McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Appellant has not contested the combination of
Butler as teaching the use of DTMF for reporting fault
information over communication lines. Appellant only protests
that Butler does not supply the perceived deficiencies of the
Okurano/Okanda combination. For the above reasons, we will
sustain the Examiner’s rejection of claim 1.
With regard to dependent claims 2 and 3, it is the
Appeal No. 96-2854
Application No. 08/119,980
7
burden of the Examiner to establish why one having ordinary
skill in the art would have been led to the claimed invention
by the reasonable teachings or suggestions found in the prior
art, or by a reasonable inference to the artisan contained in
such teachings or suggestions. In re Sernaker, 702 F.2d 989,
995, 217 USPQ 1,
6 (Fed. Cir. 1983). In addition, the Federal Circuit states
that "[t]he mere fact that the prior art may be modified in
the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification." In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984).

Appellant argues that the Examiner has supplied no
teaching or suggestion of the comparing step of claim 2 nor
the monitoring data processed by a processor of claim 3. The
Appeal No. 96-2854
Application No. 08/119,980
8
Examiner responds, at page 6 of the Answer:
With respect to claim 2 applicants argue
that examiner speculates, with no evidence, that
Okanda’s system would generate fault by comparing
the previous condition and the present condition of
an exchange office. Though Okanda’s system or
Okurano’s system lacks an explicit showing of such a
fault generating step, generation of a fault alarm
based on the comparison of a previous condition,
which must have been normal prior to the occurrence
of fault, with a current status is a well known
method not just gleaned from the disclosure of the
appellants and thus is considered to have been one
of obvious ways to generate a fault alarm to be used
in Okurano’s system. Further with respect to claim
3, again it is well known that a fault of a system
can be detected by monitoring data to see whether it
is normal or abnormal and thus would have been
obvious if not used by Okanda or Okurano. [emphasis
added]
We are not inclined to dispense with proof by
evidence when the proposition at issue is not supported by a
teaching in a prior art reference, common knowledge or
unquestionable demonstration. Our reviewing court requires
this evidence in order to establish a prima facie case. In re
Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA
1961); In re Cofer,
354 F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA 1966). We will
therefore not sustain the rejection of claims 2 and 3.
Appeal No. 96-2854
Application No. 08/119,980
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In view of the foregoing, the decision of the
Examiner rejecting claim 1 under 35 U.S.C. § 103 is affirmed;
however, the decision of the Examiner rejecting claims 2 and 3
under 35 U.S.C. § 103 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
James D. Thomas
Administrative Patent Judge )
)
)
) BOARD OF
PATENT )
Jerry Smith ) APPEALS
AND Administrative Patent Judge )
)
INTERFERENCES
)

)
Stuart N. Hecker )
Administrative Patent Judge )
dm
Appeal No. 96-2854
Application No. 08/119,980
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Charles E. Wands
5240 Babcock Street, N.E., Ste. 306
Palm Bay, FL 32905