Ex Parte Strassner

Patent Trial and Appeal Board

Jan 7, 2014

12236605 (P.T.A.B. Jan. 7, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN STRASSNER1
____________________

Appeal 2011-007798
Application 12/236,605
Technology Center 2400
____________________

Before JEFFREY S. SMITH, JOHNNY A. KUMAR, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 2, and 4-17. Appellant has previously canceled
claim 3. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is International Business Machines Corp. App.
Br. 2.
Appeal 2011-007798
Application 12/236,605

2
STATEMENT OF THE CASE 2
The Invention
Appellant’s invention relates to network device management and, in
particular, to systems and methods for maintaining and/or generating
network device configurations. Spec. ¶ [0002].
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (paragraphing and emphases added):
1. A network data construct for use in a network
device management system, the network data construct
comprising:
a plurality of configuration knowledge instances, wherein
each configuration knowledge instance comprises logical and
physical feature information of a network device but does not
specify a particular configuration of the network device, and
wherein each configuration knowledge instance is associated
with a different network device, and
a plurality of configuration data instances, wherein each
configuration data instance for each network device is derived
from a corresponding configuration knowledge instance for the
network device, and
wherein each configuration knowledge instance
comprises a plurality of layers comprising

2 Our decision refers to Appellant’s Appeal Brief (“App. Br.,” filed
Dec. 2, 2010); Reply Brief (“Reply Br.,” filed Mar. 15, 2011); Examiner’s
Answer (“Ans.,” mailed Jan. 21, 2011); Final Office Action (“FOA,” mailed
July 22, 2010); and the original Specification (“Spec.,” filed Sep. 24, 2008).
Appeal 2011-007798
Application 12/236,605

3
a device family layer representing a family of
network devices that all share one or more common features,
a device layer representing a specific network
device within the family of network devices,
a physical layer representing a physical feature of
the specific network device, and
a logical layer representing a logical feature of the
specific network device.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Lewis US 6,243,747 B1 Jun. 5, 2001

Appeal 2011-007798
Application 12/236,605

4
Rejection on Appeal
Claims 1, 2, and 4-17 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Lewis. Ans. 3.3, 4
ISSUE
Appellant argues (App. Br. 4-7; Reply Br. 2-4) that the Examiner’s
rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated by Lewis
is in error. These contentions present us with the following dispositive
issue:

3 Although not before us on appeal or dispositive of our ultimate Decision,
if further prosecution of claim 1 should ensue, it appears claim 1 is not
directed to statutory subject matter (i.e., process, machine, manufacture, or
composition of matter) by reciting, in the preamble, “[a] network data
construct for use in a network device management system, the network data
construct comprising.” It also appears the phrase “data construct” arguably
may equate to a data structure. However, claim 1 does not appear to meet
the requirements for claiming a data structure. Data structures not claimed
as embodied in computer-readable media are descriptive material per se and
are not statutory because they are not capable of causing functional change
in the computer. See, e.g., In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir.
1994) (claim to a data structure per se held nonstatutory). Such claimed data
structures do not define any structural and functional interrelationships
between the data structure and other claimed aspects of the invention which
permit the data structure’s functionality to be realized. Cf. In re Lowry, 32
F.3d 1579 (Fed. Cir. 1994) (data structure embodied in a physical memory
found to be statutory).
4 While not before us on appeal or dispositive of our ultimate Decision, if
further prosecution of dependent claim 2 should ensue, we invite the
Examiner’s attention to claim 2 because of incorrect dependency, i.e., claim
2 recites, in pertinent part, “[t]he network data construct of claim 2,” thus
calling into question the patentability of this claim under 35 U.S.C. § 112,
second paragraph.
Appeal 2011-007798
Application 12/236,605

5
Did the Examiner err in finding that Lewis discloses the limitations of
“wherein each configuration data instance for each network device is
derived from a corresponding configuration knowledge instance for the
network device, and wherein each configuration knowledge instance
comprises a plurality of layers,” as recited in independent claim 1?
ANALYSIS
We only consider those arguments actually made by Appellant in
reaching this decision, and we do not consider arguments which Appellant
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We disagree with Appellant’s conclusions with respect to claim 1, and
we adopt as our own (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken and (2) the reasons and
rebuttals set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Arguments. However, we highlight and address specific
findings and arguments regarding claim 1 for emphasis as follows.
Appellant admits Lewis teaches template-based configuration
generation (App. Br. 5), but contends:
Lewis does not teach that the template or configuration
comprises a plurality of layers comprising a device family layer
representing a family of network devices that all share one or
more common features, a device layer representing a specific
network device within the family of network devices, a physical
layer representing a physical feature of the specific network
device, and a logical layer representing a logical feature of the
specific network device, as recited in claim 1.
Appeal 2011-007798
Application 12/236,605

6
Id. Appellant further contends Lewis’ template and configuration merely
provide a list of attributes with no mention of any layers, and particularly
does not mention layers of the recited configuration knowledge instance, i.e.,
“a device family layer . . . a device layer . . . a physical layer . . . and a
logical layer,” as required by claim 1. Id.
First, we construe the word “layer,” as recited in the claims.
Appellant’s Specification indicates the recited “configuration knowledge” is
an abstraction which is further defined by various abstraction layers. Spec.
¶ [0016]. We find these various abstraction layers merely provide data or
information that relates to a software abstractions of specific device types, a
specific device, or physical/logical capabilities according to a device’s
features, for example. Spec. ¶ [0016]-[0018].
Therefore, in construing claim 1, we find Appellant’s recitation of “a
plurality of layers comprising . . . ,” merely describes data or information,
i.e., each of the claimed layers corresponds to different data. However, we
need not give patentable weight to descriptive material absent a new and
unobvious functional relationship between the descriptive material and the
substrate. See In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); In re
Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994); See also Ex parte Mathias,
84 USPQ2d 1276, 1279 (BPAI 2005) (informative) (“[N]onfunctional
descriptive material cannot lend patentability to an invention that would
have otherwise been anticipated by the prior art.”), aff’d, 191 Fed. Appx.
959 (Fed. Cir. 2006) (Rule 36); Ex parte Curry, 84 USPQ2d 1272, 1274
(BPAI 2005) (informative) (“Nonfunctional descriptive material cannot
render nonobvious an invention that would have otherwise been obvious.”),
Appeal 2011-007798
Application 12/236,605

7
aff’d, No. 06-1003 (Fed. Cir. 2006) (Rule 36). Thus, non-functional
descriptive material does not confer patentability to inventions that are
otherwise either anticipated or obvious over the prior art.
We find claim 1 does not recite any use of the various layers to
achieve a particular outcome or output, or any intermediate processing. We
further find claim 1 provides no output or further manipulation of the data in
the variously recited layers, except to provide, in the preamble, a statement
of intended use, i.e., “[a] network data construct for use in a network device
management system.” Our reviewing court has said “[p]reamble language
that merely states the purpose or intended use of an invention is generally
not treated as limiting the scope of the claim.” Bicon, Inc. v. Straumann Co.,
441 F.3d 945, 952 (Fed. Cir. 2006).
The Examiner finds, and we agree, Lewis discloses a configuration
management system that discloses use of a variety of layers, both logical and
physical, which allow the user to configure the network, either manually or
automatically with templates. Ans. 9 (citing Lewis, col. 7:42-45; col. 8:26-
33; col. 15:28-39 and 48-53; and Fig. 5).
Therefore, given Appellant’s misplaced reliance upon non-functional
descriptive material recited in each of the variously recited layers in an
attempt to distinguish over the prior art, we agree with the Examiner’s
finding that Lewis anticipates Appellant’s claimed data construct.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s reading of
the claim limitations onto the cited prior art. Therefore, we sustain the
Appeal 2011-007798
Application 12/236,605

8
Examiner’s anticipation rejection of independent claim 1 under 35 U.S.C.
§ 102(b). We also sustain the Examiner’s anticipation rejection of
dependent claims 5, 15, and 17, not separately argued.
Further, while Appellant raised additional arguments for patentability
of dependent claims 2, 4, 6-14, and 16, rejected on the same basis as claim 1,
(App. Br. 7-15), we find that the Examiner has rebutted each of those
arguments in the Answer by a preponderance of the evidence. Ans. 4-8
and 10-13. Therefore, we adopt the Examiner’s findings and underlying
reasoning, which we incorporate herein by reference. We further find
dependent claims 2 and 4-17 inherit the deficiencies of claim 1 with respect
to the recitation of non-functional descriptive material, discussed supra.
Consequently, we also find no reversible error in the Examiner’s rejection of
claims 2, 4, 6-14, and 16.
Finally, we have reviewed Appellant’s Reply Brief, which provides
similar arguments to those presented in the Appeal Brief concerning the
rejection of claim 1. Reply Br. 2-4. Given our claim construction analysis,
supra, of Appellant’s recitation of non-functional descriptive material, we
remain unpersuaded of any error in the Examiner’s anticipation rejection of
the claims on appeal.
CONCLUSION
The Examiner did not err with respect to the anticipation rejection of
claims 1, 2, and 4-17 under 35 U.S.C. § 102(b) over Lewis, and we sustain
the rejection.
Appeal 2011-007798
Application 12/236,605

9
DECISION
We affirm the decision of the Examiner to reject claims 1, 2, and 4-17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).
AFFIRMED

msc