Ex Parte Simes

Board of Patent Appeals and Interferences

Sep 20, 2007

10284347 (B.P.A.I. Sep. 20, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte SCOTT T. SIMES
___________

Appeal 2007-1724
Application 10/284,347
Technology Center 2100
___________

Decided: September 20, 2007
___________

Before JAMES D. THOMAS, KENNETH W. HAIRSTON, and
JOSEPH L. DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's Final Rejection of claims 1-22. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2007-1724
Application 10/284,347

BACKGROUND
Appellant’s invention relates to a method and system for reporting
performance data for a network. An understanding of the invention can be
derived from a reading of exemplary claim 1, which is reproduced below.
1. A method for reporting performance data for a network,
comprising the steps of:
receiving from a user a request for performance data for one
or more devices in the network, wherein the request includes
one or more input parameters specified by the user;
determining whether the input parameters are valid by
comparing the input parameters with a list of acceptable
parameters for the network;
if the input parameters are valid, retrieving the requested
performance data for the one or more devices;
for each device:
creating a data object containing retrieved performance data
for each logical unit (Lun) corresponding to the device;
adding the data object for each Lun to a temporary Lun list,
wherein data objects corresponding to different Luns are
accumulated in the temporary Lun list;
summarizing the data objects accumulated in the temporary
Lun list into a Lun object corresponding to the device, wherein
the Lun object is assigned a Lun value; and
adding the Lun object to a reporting list;
summarizing the retrieved performance data for the one or
more devices, whereby individual summaries are created for
each of the one or more devices;
assigning a value to each individual summary, wherein the
value assigned to each individual summary represents the
retrieved performance data summarized over a user-specified
period;
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sorting the individual summaries based on the assigned
values, wherein the sorting step creates a list of sorted
summaries;
sorting Lun objects accumulated in the reporting list based
on assigned Lun values, wherein the data retrieved enables the
user to view data across Luns regardless of the device to which
each Lun corresponds; and
reporting the list of sorted summaries.

PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
MICHELMAN US 5,255,356 Oct. 19, 1993
ENGEL US 5,615,323 Mar. 25, 1997
GILLIS US 6,286,035 B1 Sep. 04, 2001
RAKOSHITZ US 6,578,077 B1 Jun. 10, 2003
(filed Dec. 29, 1997)

REJECTIONS
Claims 1-6, 8-10, and 12-22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Engel, in view of Gillis, further in view of
Rakoshitz.
Claims 7 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Engel, in view of Gillis, further in view of Rakoshitz,
further in view of Michelman.
Rather than reiterate the conflicting viewpoints advanced by the
Examiner and the Appellant regarding the above-noted rejection, we make
reference to the Examiner's Answer (mailed Nov. 2, 2006) for the reasoning
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Application 10/284,347

in support of the rejections, and to Appellant’s Brief (filed Aug. 7, 2006) and
Reply Brief (filed Dec. 21, 2006) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellant’s Specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellant and the
Examiner. As a consequence of our review, we make the determinations
that follow.
35 U.S.C. § 103
A rejection under 35 U.S.C. § 103(a) must be based on the following
factual determinations: (1) the scope and content of the prior art; (2) the
differences between the claimed invention and the prior art; (3) the level of
ordinary skill in the art; and (4) objective indicia of non-obviousness.
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1360, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006) (citing
Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966)).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161,
82 USPQ2d 1687, 1691 (Fed. Cir. 2007) (quoting KSR Int’l v. Teleflex, Inc.,
127 S. Ct. 1727, 1739, 82 USPQ2d 1385, 1395 (2007)). “One of the ways in
which a patent's subject matter can be proved obvious is by noting that there
existed at the time of invention a known problem for which there was an
obvious solution encompassed by the patent's claims.” KSR, 127 S. Ct. at
1742, 82 USPQ2d at 1397.
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Discussing the question of obviousness of a claimed combination of
elements of prior art, KSR explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273, 189 USPQ 449 (1976)] and
Anderson's-Black Rock [Inc. v. Pavement Salvage Co., 396 U.S.
57, 163 USPQ 673 (1969)] are illustrative—a court must ask
whether the improvement is more than the predictable use of
prior art elements according to their established functions.
KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396. Where, on the other hand, the
claimed subject matter involves more than the simple substitution, one
known element for another or the mere application of a known technique to
a piece of prior art ready for the improvement, a holding of obviousness
must be based on “an apparent reason to combine the known elements in the
fashion claimed.” KSR, 127 S. Ct. at 1741, 82 USPQ2d at 1396. That is,
“there must be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.” Id., 127 S. Ct. at 1741, 82
USPQ2d at 1396 (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329,
1336 (Fed. Cir. 2006)). However, it is not necessary to look only to the
problem the patentee was trying to solve; “any need or problem known in
the field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed,” KSR,
127 S. Ct. at 1742, 82 USPQ2d at 1397 (emphasis added).
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The reasoning given as support for the conclusion of obviousness can
be based on interrelated teachings of multiple patents, the effects of demands
known to the design community or present in the marketplace, and the
background knowledge possessed by a person having ordinary skill in the
art. KSR, 127 S. Ct. at 1740-41, 82 USPQ2d at 1396. See also Leapfrog,
485 F.3d at 1162, 82 USPQ2d at 1691 (holding it “obvious to combine the
Bevan device with the SSR to update it using modern electronic components
in order to gain the commonly understood benefits of such adaptation, such
as decreased size, increased reliability, simplified operation, and reduced
cost”).
With respect to the role of the Examiner as finder of fact, the Court of
Appeals for the Federal Circuit has stated: “the examiner bears the initial
burden, on review of the prior art or on any other ground, of presenting a
prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In rejecting claims under
35 U.S.C. § 103, it is incumbent upon the Examiner to establish a factual
basis to support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
Examiner must make the factual determinations set forth in Graham v. John
Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). Furthermore,
“‘there must be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness’ . . . . [H]owever, the 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 ordinary skill in the art would employ.” KSR,
127 S. Ct. at 1741, 82 USPQ2d at 1396 (quoting In re Kahn, 441 F.3d at
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Application 10/284,347

988, 78 USPQ2d at 1336). Further, as pointed out by our reviewing court,
we must first determine the scope of the claim. “[T]he name of the game is
the claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529
(Fed. Cir. 1998). Therefore, we look to the limitations as recited and
disputed in independent claim 1.
At the outset, we note that Appellant’s main contention in the
principal Brief is that with respect to Engel, Appellant disputes the
Examiner's reliance upon network wires to constitute a “device” as recited in
independent claim 1. Appellant’s further argue that the described collecting
performance statistics relating to network segments in Engel is not to
“device” performance (for a network) (Br 12-13).
Appellant maintains that the Specification contains a definition of the
term "device" (Br. 14). Appellant contends that the Specification
specifically distinguishes between “devices” such as workstations, servers,
disk arrays, tape back-ups, systems, and “connectors,” such as, fiber-optic
channels, copper land lines, or wireless communication links. Appellant
contends that the interpretation of "device" asserted by the Examiner is not
consistent with the interpretation offered in the Specification. Appellant
further contends that the Examiner's interpretation of the term "device" is
inconsistent with the term as understood by one skilled in the art. (Br. 14-
15).
The Examiner maintains that the interpretation of the claim language
"one or more devices in the network," as applied by the Examiner, is
reasonable in light of the lack of an explicit definition of the term in
Appellant’s Specification. The Examiner identifies that Appellant’s
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Specification merely provides “examples” of devices and that the broadest
reasonable interpretation of “device” is sufficient. Here, the Examiner finds
the “segments” of a system, as taught by Engel, would have read on the term
“device” as recited in independent claim 1 (Answer 11).
We agree with the Examiner that Appellant has not set forth an
explicit definition in the Specification and that Appellant’s Specification
merely sets forth exemplary embodiments to a wide range of system
elements. Therefore, we do not find that the Examiner has erred in the
interpretation of the instant claim language.
Additionally, Appellant maintains that Engel fails to disclose
"receiving from a user a request for performance data for one or more
devices in the network" and furthermore that the "request includes one or
more input parameters specified by a user." Appellant maintains that there
is no evidence in the record that Engel, Gillis, or Rakoshitz discloses the
recited limitation. The Examiner maintains that Engel discloses the request
including input parameters and that the limitation would be “inherent” for
the computer to be able to understand the user’s request and provide
appropriate data (Answer 12-13). We agree with the Examiner that Engel
teaches the use or input request includes one or more input parameters
specified by the user since the performance statistics for the network and its
components and segments would have been variable depending upon the
system in which it is implemented. Therefore, those skilled in the art would
have realized or appreciated that there would have been a need for an input
or selection (Engel, column 3-4).
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Additionally, Engel teaches that it is "important to select a baseline
period that is sufficiently long to assure that the prediction that will be
performed is meaningful” (Engel, column 9, ll. 23-25). Here, we find this
need to select a baseline would have suggested to those skilled in the art
some input from the user, whether it be a user at (1) the time of
implementation of the performance monitoring system or (2) in the design of
the performance monitoring.
Additionally, we find that the teachings of Rakoshitz with respect to
GUI’s (Graphical User Interfaces) shown in figures 9, 10, 11, and 12 clearly
teach and suggest use of user interaction, input and selectivity of
performance data where the Refresh button is clearly a request, by the user,
for an update of the desired performance information. Therefore,
Appellant's argument is not persuasive.
Additionally, Appellant’s contend that the summarizing of the
retrieved performance data for the one or more devices is not taught by
Engel since Engel does not teach or suggest collecting performance statistics
on “devices” (Br. 15). We disagree with Appellant’s since we find that
Engel does teach performance monitoring of “devices,” as discussed above.
Additionally, we find that Rakoshitz teaches performance monitoring of
devices and summarizing the retrieved data relating to those devices to
provide statistics regarding those devices to monitor bandwith consumption
(Rakoshitz, column 17-21). Therefore, we do not find Appellant’s argument
to be persuasive.
Appellant’s further contends that Engel does not teach assigning a
value to each individual summary (Br. 15-16). Here, the Examiner relies
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upon the “days to threshold” value as the claimed value assigned to each
individual summary (Answer 14). We agree with the Examiner that the days
to threshold value is an assigned value by the system of Engel. Therefore,
we find that the Examiner has identified a teaching and Appellant has not
identified that the Examiner erred in the initial showing. Therefore, we will
sustain the rejection of independent claim 1 and independent claims 10 and
19, which Appellant has elected to group with independent claim 1.

CONCLUSION
To summarize, we have sustained the rejection of claims 1-22 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

rwk

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