Ex Parte SheppardDownload PDFPatent Trial and Appeal BoardSep 18, 201311649481 (P.T.A.B. Sep. 18, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/649,481 01/04/2007 Scott Sheppard 9400-318 (060071) 6020 39072 7590 09/19/2013 AT&T Legal Department - MB Attn: Patent Docketing Room 2A-207 One AT&T Way Bedminster, NJ 07921 EXAMINER BIAGINI, CHRISTOPHER D ART UNIT PAPER NUMBER 2445 MAIL DATE DELIVERY MODE 09/19/2013 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 SCOTT SHEPPARD ____________ Appeal 2011-004699 Application 11/649,481 Technology Center 2400 ____________ Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT, and CATHERINE SHIANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The present invention relates to monitoring computer communication networks. See generally Spec. p. 1. Claim 1 is illustrative: 1. A method of importing data from an edge router including a plurality of interface types to a network management system, comprising: Appeal 2011-004699 Application 11/649,481 2 configuring the edge router to export a flat file containing the data at a designated time to a designated network device communicatively coupled to the edge router, wherein the flat file includes data associated with a plurality of different ones of the interface types; receiving the flat file at the designated network device; parsing the data from the received flat file to a format configured to be imported by the network management system at the designated network device; and providing the parsed data to the network management system. THE REJECTIONS Claims 1, 3-5, 14-17, and 20 are rejected under 35 U.S.C. § 102(b) as being anticipated by Beadles (US 7,130,854 B2). See Ans. 4-8. Claims 2 and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Beadles and Pham (US 2002/0188719 A1). See Ans. 8- 10. Claims 6-13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Beadles and Nakashima (“Time Scaling Property on Edge Router”). See Ans. 10-13. Claim 19 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Beadles, Pham, and Nakashima. See Ans. 13-14. ISSUE The dispositive issue argued by Appellant is:1 Under 35 U.S.C. § 102, has the Examiner erred by concluding that Beadles discloses: 1 Appellant raises additional arguments. Because the identified issue is dispositive of the appeal, we do not reach the additional arguments. Appeal 2011-004699 Application 11/649,481 3 configuring the edge router to export a flat file containing the data at a designated time to a designated network device communicatively coupled to the edge router, wherein the flat file includes data associated with a plurality of different ones of the interface types as recited in claim 1? ANALYSIS On this record, we find that the Examiner erred in rejecting claim 1. The Examiner finds that As defined by appellant on page 4 paragraph 8 an edge router may be a server, the prior art Beadles in Col. 3 lines 55-67, discusses using the GUI to configure the policies that are exported as XML file,[sic] Then in Col. 4 lines 43-50 discusses that identifying the selected policies and network devices therefore the XML file includes "data associated with a plurality of different ones of the interface types." On page 10 paragraph 33 of the specification appellant describes "interface types for export in the flat file" which the prior art Beadles teaches in Col. 4 lines 43-50 as the XML format that eliminates the need to translate. Appellant argues “Cisco router” is not configured to export a flat file of claim 1, examiner not[es] from above that the service center is used to export the file and not the Cisco router. Ans. 15 (emphasis added). We agree with Appellant that the cited Beadles passages do not disclose configuring the edge router to export a flat file for the reasons stated by Appellant. See Reply Br. 2-3. We agree with Appellant that the Examiner’s rejection is based on overly broad interpretation of the term edge router, and the Examiner’s interpretation of the term would render “edge” meaningless. Appeal 2011-004699 Application 11/649,481 4 Accordingly, we do not sustain the Examiner’s rejection of claim 1, and claims 2-20, which were rejected on the same ground. NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b) Claims 15 and 20 are rejected on a new ground of rejection under 35 U.S.C. § 101 as covering non-statutory subject matter. Independent Claim 20 recites “[a] computer program product . . . comprising: a computer-readable storage medium having computer-readable program code embodied in said medium, said computer-readable program code comprising . . . .” (Emphasis added.). Dependent claim 15 also recites a computer readable storage medium. The Specification states: “Any suitable computer readable medium may be utilized including hard disks, CD-ROMs, optical storage devices, or magnetic storage devices.” Amended Spec. [0054] (emphasis added.). The language “may be utilized including” indicates that the list is exemplary, not limiting, and not a definition. Therefore, the inventor has not assigned a special meaning to the term computer-readable storage medium. In Ex parte Mewherter, Appeal No. 2012-007692 (PTAB May 08, 2013) (precedential), the Board held that: [T]hose of ordinary skill in the art would understand the claim term “machine-readable storage medium” would include signals per se. Further, where, as here, the broadest reasonable interpretations of all the claims each covers a signal per se, the claims must be rejected under 35 U.S.C. § 101 as covering non- statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter); Subject Matter Eligibility of Computer-Readable Media, supra; U.S. Patent & Trademark Appeal 2011-004699 Application 11/649,481 5 Office, Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2, available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08- 25_interim_101_ instructions.pdf; U.S. Patent & Trademark Office, Evaluating Subject Matter Eligibility Under 35 USC § 101 (August 2012 Update); pp. 11-14, available at http://www.uspto.gov/patents/law/exam/101_training_aug2012. pdf. Id. at 13-14. The Board noted that “[t]he term ‘machine-readable medium’ is equivalent to the more commonly used term ‘computer-readable medium.’” See id. at 4 fn 2. The Board also rejected the contention that machine-readable storage medium is distinguishable from a machine- readable medium. See id. at 4, 6. Because under Mewherter, the broadest reasonable interpretation of the term computer-readable storage medium (or computer readable storage medium) encompasses signals per se, claims 15 and 20 are rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. We note that Appellant is not precluded from amending the claims to overcome the rejection. Relevant guidance is in U.S. Patent & Trademark Office, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (“A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation ‘non-transitory’ to the claim.”); U.S. Patent & Trademark Office, Evaluating Subject Matter Eligibility Under 35 USC § 101 (August 2012 Appeal 2011-004699 Application 11/649,481 6 Update) (pp. 11-14), available at http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf (noting that while “non-transitory” is a viable option for overcoming the presumption that the media encompass signals or carrier waves, merely indicating that such media are “physical” or “tangible” will not overcome such presumption). See id. at 14. DECISION The Examiner’s decision rejecting claims 1-20 is reversed. We enter a new ground of rejection for claims 15 and 20 under 35 U.S.C. § 101 as covering non-statutory subject matter. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b)(2010), which states that “[a] new ground of rejection . . . shall not be considered final for judicial review.” WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, Appellant 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) (2010). Appeal 2011-004699 Application 11/649,481 7 REVERSED 37 C.F.R. § 41.50(b)(2010) gvw Copy with citationCopy as parenthetical citation