Ex Parte Whitmore et al

Board of Patent Appeals and Interferences

Jan 15, 2009

10294363 (B.P.A.I. Jan. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRENT S. WHITMORE, WILLIAM J. LA CHOLTER,
and GEOFF LAWLER
____________________

Appeal 2008-2168
Application 10/294,3631
Technology Center 2400
____________________

Decided: January 15, 2009
____________________

Before: ALLEN R. MACDONALD, JAY P. LUCAS and
CAROLYN D. THOMAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed November 13, 2002. The real party in interest is
McAfee, Inc.

Appeal 2008-2168
Application 10/294,363

STATEMENT OF CASE
Appellants appeal from a final rejection of claims 1 to 12 and 15 to 31
under authority of 35 U.S.C. § 134. The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). Claims 13 and
14 are cancelled.
Appellants’ invention relates to a method and computer program to
analyze network traffic and also higher level web services. In the words of
the Appellants:
With respect to a summary of Claim 1, as shown in figure 4, a method
is provided for analyzing network traffic associated with network
services. In use, network traffic is collected from a network (e.g. see
item 402 of Figure 4, etc.). In addition, metadata associated with the
network traffic is collected from network (e.g. see item 404 of Figure
4, etc.). Further, the network traffic is analyzed utilizing the metadata
(e.g. see item 410 of Figure 4, etc.), where the analyzing includes
generating a plurality of parsers based on the metadata. Still yet, the
metadata is correlated with the network traffic (e.g. see time 406 of
Figure 4, etc.), and the correlated metadata is stored (e.g. see item 408
of Figure 4, etc.). See, for example, page 4, lines 3-6, 11-12, 17-18
and 25-26 et. al.
(Brief, p. 7, l. 1)
Also for background consider pages 11 and 12 of the Specification.

Claim 1 is exemplary:
1. A method for analyzing network traffic associated with network
services, comprising:

collecting network traffic from a network;

collecting metadata associated with the network traffic from the
network; and

2
Appeal 2008-2168
Application 10/294,363

analyzing the network traffic utilizing the metadata, the analyzing
including generating a plurality of parsers based on the metadata;

wherein the metadata is correlated with the network traffic, and the
correlated metadata is stored.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Misra US 5,999,711 Dec. 7, 1999
Aucsmith US 5,878,144 Mar. 2, 1999
Wolf US 6,278,694 B1 Aug. 21, 2001
Sim US 2002/0133491 A1 Sep. 19, 2002
Stawikowski US 7,159,007 B2 Jan. 2, 2007
Liu US 7,188,114 B2 Mar. 6, 2007
Public Key Certificate, Computer Encyclopedia Answer.com,
pages 1-4.

Web Service Definition Language (WSDL), Computer Encyclopedia.

REJECTIONS
Claims 1 to 12 and 15 to 31 stand rejected under 35 U.S.C. 103(a) for
being obvious over Wolf in view of Sim.
See 37 CFR § 1.41.37 (c) (vii). See also In re McDaniel, 293 F.3d
1379, 1383 (Fed. Cir. 2002) (“If the brief fails to meet either requirement [of
37 CFR § 1.192(c)(7)], the Board is free to select a single claim from each
group of claims subject to a common ground of rejection as representative of
all claims in that group and to decide the appeal of that rejection based
solely on the selected representative claim.”).

3
Appeal 2008-2168
Application 10/294,363

Appellants contend that the claimed subject matter is not rendered
obvious by Wolf in combination with Sim, for failure of the references to be
properly combined and for failure of the combination to teach claimed
limitations. The Examiner contends that each of the claims is properly
rejected.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this opinion. Arguments which Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.
We affirm the rejections.

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a). The issue turns on whether
there is a legally sufficient justification for combining the disclosures of
Wolf and Sim, and whether the combination teaches generating a plurality of
parsers based on metadata as claimed.

FINDINGS OF FACTS
Due to the nature of the arguments, the Findings of Facts are recited in
the relevant arguments of the Analysis section below.

4
Appeal 2008-2168
Application 10/294,363

PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1742 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 1740.
“A court must ask whether the improvement is more than the
predictable use of prior-art elements according to their established
functions.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1731 (2007).

ANALYSIS
From our review of the administrative record, we find that the
Examiner has presented a prima facie case for the rejections of Appellants’
claims under 35 U.S.C. § 103. The prima facie case is presented on pages 3
to 9 of the Examiner’s Answer. In opposition, Appellants present a number
5
Appeal 2008-2168
Application 10/294,363

of arguments that the Examiner has erred. Appellants argue the claims in
eleven groupings (Br. pp. 11-21). We address those arguments below.
Arguments with respect to the rejection under 35 U.S.C. § 103

Appellants first contend that the Wolf and the Sim references are not
properly combined. We find that the Wolf patent is directed to a method and
system for monitoring and collecting network information to improve
network traffic. (Col. 1, ll. 34 to 45). We find that the Sim reference
contains teachings directed to managing and controlling files distributed
across a network. (Abstract, ¶ 62, 69). Appellants argue that there is no
logical reason to combine the references, as they are addressing different
problems. (Br., p. 12, top and middle).
There is no requirement that the problem solved by the secondary
reference be discussed by the primary reference to apply the teachings of the
secondary reference in a rejection under 35 U.S.C. § 103. The Supreme
Court has held that in analyzing the obviousness of combining elements, a
court need not find specific teachings, but rather may consider “the
background knowledge possessed by a person having ordinary skill in the
art” and “the inferences and creative steps that a person of ordinary skill in
the art would employ.” See KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1740-41 (2007). To be nonobvious, an improvement must be “more than the
predictable use of prior art elements according to their established
functions,” and the basis for an obviousness rejection must include an
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” Id.
6
Appeal 2008-2168
Application 10/294,363

“It is common sense that familiar items may have obvious uses
beyond their primary purposes, and a person of ordinary skill often will be
able to fit the teachings of multiple patents together like pieces of a puzzle.”
KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1732 (2007). The Supreme
Court has answered this issue in KSR, and as the two references are
addressed to the same field of endeavor, network management and control,
we find the teachings are properly combinable.
Appellants next argue that:
“On the other hand, appellant claims ‘…generating a plurality of parsers
based on the metadata’ (emphasis added), as claimed. Clearly, applying a
parsing process to generate object metadata, as in Sim, fails to teach or
suggest, and even teaches away from ‘…generating a plurality of parsers
based on the metadata (emphasis added), as claimed by appellant.”
(Br., p. 13, middle).
The Appellants thus contend that the parser in Sim is not based on the
metadata, as claimed, but rather the metadata generate it. However, in Sim,
¶ 0113, Sim teaches “In step 770, if the file system object is a volume or a
directory, control proceeds to step 780.” “In step 780, VFCS 470 invokes a
parsing process to create volume or directory metadata…”. We find that the
labeling of the file system objects as being a volume or a directory is itself
metadata of the file system. Thus, the sending of program control to step
780 (to be parsed) is based on the file’s metadata. And thus ¶ 0113 teaches
the claimed limitation. The fact that the parsing operation generates more
metadata is not relevant to Sim teaching the claim. Thus, we find no error in
the Examiner’s rejection on this issue.

7
Appeal 2008-2168
Application 10/294,363

Appellants next argue that Wolf “fails to disclose that ‘the commands
include calls to other services’…” based on network traffic. (Br., p. 14, top).
As the Examiner found (Ans., p. 12, bottom), the Wolf patent discloses
differentiating between different quality levels of traffic data, which we
conclude satisfies the limitation “as a function of the network traffic” as
recited in claim 6. We find that Wolf’s technology is based on various
probes calling other probes with superior traffic data, for optimizing
accuracy. (Col. 7, ll. 33 to 63). We find that these probes provide the
service of monitoring the network traffic. (Id.). Thus, we find no error in
the Examiner’s analysis, and rejection.
Appellants’ other arguments are variations of the ones discussed
above, and are answered by the Examiner (Ans., p. 9-18). These other
arguments do not convince us that the Examiner erred.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 12 and 15 to 31 under
35 U.S.C. § 103.

DECISION
The Examiner's rejection of claims 1 to 12 and 15 to 31 under
35 U.S.C. § 103 is Affirmed.

8
Appeal 2008-2168
Application 10/294,363

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).

AFFIRMED

pgc

Zilka-Kotab, PC
P.O. BOX 721120
SAN JOSE CA 95172-1120
9