Ex Parte Tindal et al

Board of Patent Appeals and Interferences

Jun 12, 2008

09730682 (B.P.A.I. Jun. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GLEN TINDAL and JEFFERY A. SCHENK
____________

Appeal 2007-3708
Application 09/730,682
Technology Center 2100
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Decided: June 12, 2008
____________

Before JAMES D. THOMAS, LANCE LEONARD BARRY, and THU A.
DANG, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 21-29, 32, and 33. The Appellants
appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).

Appeal 2007-3708
Application 09/730,682

A. INVENTION
The invention at issue on appeal enables a network administrator to
configure a new network device or reconfigure an existing network device
by logging into a network manager unit and selecting a particular device.
The unit retrieves a configuration record for the selected device from a
common repository and provides that record to the administrator. After
receiving the record, the administrator can change fields therein. Next, the
unit verifies that the requested changes comply with the policies and rules
established for the associated network. Assuming that the changes do not
violate any of the policies or rules, the unit updates and stores the modified
record in the repository. (Spec. ¶ [012].)

B. ILLUSTRATIVE CLAIMS
Claims 21 and 27, which further illustrate the invention, follow.
21. A method for generating a configuration record for a
network device, the method comprising the steps of:
gathering information from at least one source that
uniquely and generically indicates desired capabilities of the
network device;
obtaining actual-configuration data for the network
device, wherein the actual-configuration data corresponds to
existing capabilities of the network device; and
altering the actual-configuration data in accordance with
the gathered information so as to generate a configuration
record for the network device;
wherein the configuration record represents a physical
configuration for the network device that enables the network
device to provide the desired capabilities.
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27. A method for generating a configuration record for a
network device, the method comprising the steps of:
gathering first configuration data from at least one source
that uniquely and generically indicates desired capabilities of
the network device;
retrieving second configuration data for the network
device, the-second configuration data including information
about how the network device is currently configured to
operate;
generating the configuration record by combining the
first configuration data and the second configuration data into a
configuration record for the network device,
wherein the configuration record represents a physical
configuration for the network device that enables the network
device to provide the desired capabilities; and
storing the configuration record in a repository of
configuration records.

C. REJECTIONS
Claims 21, 22, 24, 26, and 32 stand rejected under 35 U.S.C. § 102(b)
as anticipated by U.S. Patent No. 5,764,955 ("Doolan").

Claim 23 stands rejected under 35 U.S.C. § 103(a) as obvious over
Doolan and U.S. Patent No. 5,832,503 ("Malik").

Claim 25 stands rejected under § 103(a) as obvious over Doolan and
U.S. Patent No. 5,878,432 ("Misheski").

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Application 09/730,682

Claims 27, 28, and 33 stand rejected under § 102(b) as anticipated by
Malik.

Claim 29 stands rejected under § 103(a) as obvious over Malik and
Common Information Model - A Developer's Perspective ("IEEE").

II. INITIAL OBSERVATIONS
An appeal brief must include "[a] concise explanation of the subject
matter defined in each of the independent claims involved in the appeal,
which shall refer to the specification by page and line number, and to the
drawing, if any, by reference characters." 37 C.F.R. § 41.37(c)(1)(v) (2007).
Here, spanning six pages (Amended Br. 2-7), the Appellants’ Summary of
Claimed Subject Matter is far from concise. Rather than summarizing their
invention, moreover, it basically reiterates paragraphs from the
Specification. Furthermore, the Summary reads none of the appealed claims
on the Specification or any of the Appellants' drawings. Although claims
21-29, 32, and 33 recite methods, moreover, the Summary contains no
reference to Figure 7, the only drawing of that shows method steps. The
Appellants should ensure that their future summaries are more helpful.

Furthermore, the Summary contains numerous references to specific
line numbers of their Specification. (Amended Br. 3-7.) Although such
precision is welcome, the Specification itself omits line numbers. The
Appellants should number the lines of their specifications to facilitate
reference thereto.
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III. CLAIMS 21-26 AND 32
"Rather than reiterate the positions of parties in toto, we focus on the
issues therebetween." Ex parte Katsukawa, No. 2007-0732, 2007 WL
3043602 at *2 (BPAI 2007). The Examiner makes the following findings.
Doolan discloses gathering information from at least one source
that uniquely and generically indicates desired capabilities of a
network device (see column 12 lines 33-40); obtaining actual-
configuration data for the network device, wherein the actual-
configuration data corresponds to existing capabilities of the
network (see column 12 lines 40-50); and altering the actual-
configuration data in accordance with the gathered information
so as to generate a configuration record for the network device;
wherein the configuration record represents a physical
configuration for the network device that enables the network
device to provide the desired capabilities and the configuration
record generically represents the physical configuration for the
network device, and wherein the configuration record is usable
to effectuate the physical configuration for the network device
that enables the network device to provide the desired
capabilities by enabling code that is specific to the network
device to be generated and sent to the network device in
response to the alteration of the actual configuration data (see
column 11 line 65 through column 12 line 32 and column 14
lines 1-24).
(Ans. 3-4.) The Appellants argue, "Doolan simply does [sic] teach anything
that enables desired capabilities of a network device to be effectuated by
obtaining and altering actual configuration data to generate a configuration
record that enables the network device to provide the desired capabilities."
(Reply Br. 7.) Therefore, the issue is whether Doolan discloses acquiring
first data and second data and altering the second data in accordance with the
first data, thereby generating third data.

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"Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims . . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art." Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed.Cir. 2003) (internal citations omitted).

A. CLAIM CONSTRUCTION
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000)). "[O]ur reviewing court has held that
nonfunctional descriptive material cannot lend patentability to an invention
that would have otherwise been anticipated by the prior art." Ex parte
Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (citing In re Ngai, 367 F.3d
1336, 1339 (Fed. Cir. 2004)), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).
"[W]hen descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability." Mathias, 84 USPQ2d at 1279 (citing In re Gulack,
703 F.2d 1381, 1385 (Fed. Cir. 1983)).

Furthermore, "[a]n intended use or purpose usually will not limit the
scope of the claim because such statements usually do no more than define a
context in which the invention operates.'' Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed.Cir. 2003).
Although ''[s]uch statements often . . . appear in the claim's preamble,'' In re
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Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or
purpose can appear elsewhere in a claim. Id.

Here, claim 21 recites in pertinent part the following limitations:
gathering information from at least one source that
uniquely and generically indicates desired capabilities of the
network device;
obtaining actual-configuration data for the network
device, wherein the actual- configuration data corresponds to
existing capabilities of the network device; and
altering the actual-configuration data in accordance with
the gathered information so as to generate a configuration
record for the network device;
wherein the configuration record represents a physical
configuration for the network device that enables the network
device to provide the desired capabilities.
(Emphases added.) Because the italicized phrases "cannot alter how the
process steps are to be performed to achieve the utility of the invention"
Mathias, 84 USPQ2d at 1279, we view the phrases as nonfunctional
descriptive material. Therefore, the phrases are not entitled to patentable
weight.

Because the clauses "for the network device" and "that enables the
network device to provide the desired capabilities" merely state an intended
use or purpose for the method for generating a record, moreover, the clauses
also are not entitled to patentable weight. Giving the claim its broadest,
reasonable construction, therefore, the limitations merely require acquiring
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first data and second data and altering the second data in accordance with the
first data, thereby generating third data.

B. ANTICIPATION ANALYSIS
"[A]nticipation is a question of fact." In re Hyatt, 211 F.3d 1367,
1371-72 (Fed. Cir. 2000) (citing Bischoff v. Wethered, 76 U.S. (9 Wall.)
812, 814-15 (1869); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)).
"A reference anticipates a claim if it discloses the claimed invention 'such
that a skilled artisan could take its teachings in combination with his own
knowledge of the particular art and be in possession of the invention.'" In re
Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In re LeGrice, 301
F.2d 929, 936 (CCPA 1962)). Of course, anticipation "is not an 'ipsissimis
verbis' test." In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (citing Akzo
N.V. v. United States Int'l Trade Comm'n, 808 F.2d 1471, 1479 n.11 (Fed.
Cir. 1986)). "An anticipatory reference . . . need not duplicate word for
word what is in the claims." Standard Havens Prods. v. Gencor Indus., 953
F.2d 1360, 1369 (Fed. Cir. 1991).

Here, "[i]nitialization and provision module 318 is typically the first
function executed within [Doolan's] gateway." (Col. 12, ll. 59-60.) The
module "is used to acquire and manage configuration information which is
stored in CFG DATA 320, a configuration database. Configuration
information is required to initialize sessions with each legacy network
element." (Id. ll. 33-37.)

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The reference discloses a "structure definition used by the
initialization and provisioning module 318 and contained for each legacy
network element in CFG DATA 320 . . . ." (Col. 13, ll. 25-27.) "During
initialization, the proper information is filled in the above defined structure."
(Col. 14, ll. 3-5.) "If a legacy network element . . . was previously
configured, the new information would be considered current and would
override the old information. Only one set of configuration information is
kept per legacy network element." (Id. ll. 19-23.)

We find that Doolan's acquiring of new information and old
information teaches the claim's acquiring of first data and second data,
respectively. We also find that the reference's overwriting the old
information with the new information, thereby generating the current
configuration information, teaches the claim's altering the second data in
accordance with the first data thereby generating third data. Therefore, we
affirm the rejection of claim 21.

The Appellants' treatment of claims 22, 24, 26, and 32 is based on
their aforementioned argument (Amended App. Br.1 13-16) or on
nonfunctional descriptive material. (Id. 16.) Unpersuaded by this argument
and unpersuaded that the material is entitled to patentable weight, we also
affirm the rejections of these claims.

1 We rely on and refer to the Amended Appeal Brief, in lieu of the original
Appeal Brief, because the latter was defective. We have not considered the
original in deciding this appeal.

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The Appellants do not challenge the rejection of claims 23 or 25
individually (id. 8), thereby relying on their aforementioned argument.
Unpersuaded by this argument, we also affirm the rejections of these claims.

IV. CLAIMS 27-29 AND 33
The Examiner finds that "in column 2 lines 21-24 and column 3
lines 16-20, Malik discloses obtaining values of certain attributes by
interrogating the model and captures values for the attributes defined in the
template." (Ans. 14.) The Appellants argue that their "first configuration
data and second configuration data are clearly distinct: the former 'indicates
desired capabilities' and the latter 'including information about how the
network device is currently configured to operate' . . . ." (Amended App. Br.
19.) Therefore, the issue is whether Malik discloses acquiring first data and
second data and combining the first data and second data, thereby generating
third data.

A. CLAIM CONSTRUCTION
Claim 27 recites in pertinent part the following limitations:
gathering first configuration data from at least one source
that uniquely and generically indicates desired capabilities of
the network device;
retrieving second configuration data for the network
device, the-second configuration data including information
about how the network device is currently configured to
operate;
generating the configuration record by combining the
first configuration data and the second configuration data into a
configuration record for the network device . . . .
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Because the italicized phrases "cannot alter how the process steps are to be
performed to achieve the utility of the invention," Mathias, 84 USPQ2d at
1279, we view the phrases as nonfunctional descriptive material. Therefore,
the phrases are not entitled to patentable weight.

Because the clause "for the network device" merely states an intended
use or purpose for the method for generating a record, moreover, the clause
also is not entitled to patentable weight. Giving the claim its broadest,
reasonable construction, therefore, the limitations merely require acquiring
first data and second data and combining the first data and second data,
thereby generating third data.

B. ANTICIPATION ANALYSIS
Malik's "configuration manager enables a user to create
configurations with a template. A template is a list of attributes for a
device . . . ." (Col. 3, ll. 26-28.) "The user . . . selects the attributes needed
for the template, which depending on the purpose of the template, might
include . . . dozens of attributes." (Id. ll. 32-35.) "The configuration
manager then captures the values of the attributes listed in the template, by
retrieving the values from the SPECTRUM model." (Id. ll. 36-38.) We find
that the reference's capturing of some of the values of the attributes
listed in the template teaches the claim's acquiring of first data, and the
reference's capturing of some of the other values of the attributes
listed in the template teaches the claim's acquiring of second data.

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Malik discloses that "[t]he resulting configuration created with the
template contains the attributes from the template and the values collected
from the model. The configuration may be stored in the configuration
manager, in another storage device, or the SPECTRUM database." (Id. 42-
46.) We find that the reference's combining captured values in a
"configuration" teaches the claims' combining the first data and second data,
thereby generating third data. Therefore, we affirm the rejection of
claim 27.

The Appellants do not challenge the rejection of claim 29 individually
(id. 8), thereby relying on their aforementioned argument. Unpersuaded by
this argument, we also affirm the rejections of this claim.

The Appellants' treatment of claims 28 and 33 is based on their
aforementioned argument (id. 20-22) or on nonfunctional descriptive
material. (Id. 22.) Unpersuaded by this argument and unpersuaded that the
material is entitled to patentable weight, we also affirm the rejections of
these claims.

V. ORDER
In summary, the rejections of claims 21-29, 32, and 33 are affirmed.

"Any arguments or authorities not included in the brief or a reply brief
filed pursuant to [37 C.F.R.] § 41.41 will be refused consideration by the
Board, unless good cause is shown." 37 C.F.R. § 41.37(c)(1)(vii).
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Accordingly, our affirmance is based only on the arguments made in the
Amended Appeal Brief and Reply Brief. Any arguments or authorities
omitted therefrom are neither before us nor at issue but are considered
waived. Cf. In re Watts, 354 F.3d 1362, 1367 (Fed. Cir. 2004) ("[I]t is
important that the applicant challenging a decision not be permitted to raise
arguments on appeal that were not presented to the Board.")

No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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