Ex Parte Yang-HuffmanDownload PDFBoard of Patent Appeals and InterferencesOct 4, 200710141222 (B.P.A.I. Oct. 4, 2007) Copy Citation The opinion in support of the decision being entered today is not binding precedent of the Board.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 SIEW-HONG YANG-HUFFMAN ____________ Appeal 2007-2130 Application 10/141,222 Technology Center 2100 ____________ Decided: October 4, 2007 ____________ Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and ALLEN R. MACDONALD, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL This appeal involves claims 1 through 33. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). Appeal 2007-2130 Application 10/141,222 As best representative of the disclosed and claimed invention, independent claim 1 is reproduced below: 1. A dynamic configuration method, comprising: receiving collection criteria categorizing a relevant node on a network; receiving collection instructions indicating usage information to collect from the relevant node based on the collection criteria; and providing configuration update information for the relevant node to collect the indicated usage information based on the collection criteria and the collection instructions. The following references are relied on by the Examiner: Sugihara US 6,385,197 B1 May 7, 2002 (Filed July 9, 1999) Taghadoss US 6,944,657 B1 Sept. 13, 2005 (Filed September 22, 1997) Claims 11 through 19 and 31 through 33 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.1 Claims 1 through 7, 9 through 15, 17 through 24, and 26 through 33 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Taghadoss. Along with Sugihara, Taghadoss is utilized to reject claims 8, 16, and 25 under 35 U.S.C. § 103. Rather than repeat the positions of the Appellant and the Examiner, reference is made to the Brief and Reply Brief for Appellant’s positions, and to the Answer for the Examiner’s positions. 1 At pages 2 through 4, 8, and 9 of the Answer, the Examiner has withdrawn the rejection of claims 20 through 28 as being directed to non-statutory subject matter within 35 U.S.C. § 101. This has been confirmed at pages 3 through 5 of the Reply Brief. 2 Appeal 2007-2130 Application 10/141,222 OPINION For the reasons set forth by the Examiner in the Answer, we sustain each of the three stated rejections of the claims on appeal as expanded upon here. Turning first to the rejection of claims 11 through 19 and 31 through 33 as being directed to non-statutory subject matter, we agree with the Examiner’s views expressed in the Answer as to this issue. The Examiner has made a direct point that the claimed policy manager, logic, collection criteria and collection instructions, based on the Specification as filed as well as their own recitation in the respective claims on appeal, directly relate to software elements per se. Appellant has not indicated among the claims rejected what structural relationships are actually stated in the claims on appeal despite his general argument to that affect. Moreover, we do not agree with Appellant’s view that MPEP § 2106 clearly indicates that software is not per se non-statutory. We do not view the claims as being consistent with any permissive language contained within this section of the MPEP. Nevertheless, there is no authority that we know of which permits software per se to be considered statutory within 35 U.S.C. § 101. Appellant’s arguments in the Brief and Reply Brief do not contest the Examiner’s view that the noted features in the claims are actually software elements per se. At this point in our opinion, we observe in passing that, should there be any future prosecution of this application, it appears to us that all present pending claims on appeal may be subject to rejections under 35 U.S.C. 3 Appeal 2007-2130 Application 10/141,222 § 101. The major argued features of collection criteria, collection instructions, usage information, update information etc., relate to mere information elements per se and to no structural element for which any change in methodology is actually recited. To be sure, the mere receipt and providing features of representative independent claim 1 on appeal are not characterized as being unique methodologies per se, but only the nature of the information related to or the characterization of the information element is argued to be operatively unique. These considerations are prompted by the recent decision by our reviewing court in In re Comiskey, Slip Op. at 21 (Fed. Cir. Sep. 20, 2007). We turn next to the rejection of claims 1 through 7, 9 through 15, 17 through 24, and 26 through 33 as being anticipated by Taghadoss. These claims encompass each independent claim 1, 11, 20, 29, and 31, which have corresponding limitations and are collectively argued. No arguments are presented as to any dependent claims of any of these independent claims in this rejection. Because the Examiner has set forth a reasonable correlation of the claimed features within the argued representative independent claim 1 on appeal among all independent claims, and because the Examiner has directly addressed each argument made by Appellant in the principal Brief on appeal in the responsive arguments portion of the Answer, we are persuaded that these claims are anticipated. We make general reference to Taghadoss’s figure 1 through 4, 8, and 9. As a general matter, the reference is consistently addressing the updating requirements of the Management Information Database (MIB) which is 4 Appeal 2007-2130 Application 10/141,222 continually updated for use by the management information system in this reference. These elements are charged with continuously updating the nature of the nodal elements (NE) shown to exist physically and initially in figure 1 and among the other figures as object oriented elements as well as physical elements. In this respect, the reference clearly relates to the corresponding aims of the disclosed and claimed invention. Moreover, figures 8 and 9 directly relate to the updating requirement of the claimed invention before us as well as the updating requirements in Taghadoss. According to figure 8, the network management system collects from each respective nodal element in a passive sense data that has been automatically sent by the node itself to the network management system and in figure 9 those demanded (for collection from the relevant node, as claimed). Thus, from the perspective of any dispute that exists between the Appellant and the Examiner concerning the updating requirements of the claims and this reference, it is clear to us that the reference teaches that the claimed configuration update information is automatically supplied by the nodal elements themselves and is demanded by the network management system from the respective nodes. Another major disputable element is the characterization of certain information as “usage information.” With respect to this argued feature at pages 5 and 6 of the Reply Brief, Appellant appears to ask us to read certain disclosed features of usages from the Specification into the use of the term usage information in the claims on appeal. We decline to read disclosed features into the claims on appeal. With respect to this feature as well as the labels attached to the collection criteria and collection instructions, the 5 Appeal 2007-2130 Application 10/141,222 Examiner’s focus in the Answer appears to be in the right place, that is, upon the teachings of Taghadoss’ concepts that are conveyed to the artisan that are claimed but that which are characterized in the form of different labels. We see a clear correspondence conceptually from the teachings of the reference to those that are broadly claimed before us. Moreover, the network management system demands both physical and logical network resources to be readily determinable, a capability that Taghadoss does clearly convey to the user within the concept of network synchronization as set forth even in the title of the patent to Taghadoss. The discussion beginning at col. 1, line 25 directly relates to the determination of usages of network elements within the network in Taghadoss. Even the broad examples of bandwidth determinations and reliability requirements directly relate to changes (added/removed structural elements of each nodal element) as well as the physical and logical relationships among them generally set forth at column 2. Based upon these introductory comments in Taghadoss, it is straight forward to us that the artisan would consider the changes in the physical consideration of any given node as a change of usage information to the extent claimed. In this regard, Appellants’ observation at the bottom of page 6 of the Reply Brief that the claimed usage information is clearly information associated with the use of network resources and not merely whether a resource has been added/deleted from the network is initially an admission (because of the use of the words “not merely”) that the added/ deleted monitoring action in Taghadoss clearly relates to usage information of the typed claimed. It does not appear that Appellants have contested the 6 Appeal 2007-2130 Application 10/141,222 Examiner’s responsive arguments beginning at page 9 of the Answer as to what comprises in Taghadoss the claimed collection criteria and collection instructions in this reference. Lastly, we turn to the rejection under 35 U.S.C. § 103 of dependent claims 8, 16, and 25 in view of the collective teachings of Taghadoss and Sugihara. Appellants’ remarks at page 14 of the principal Brief and pages 7 and 8 of the Reply Brief do not contest the proper combinability of these references within 35 U.S.C. § 103 and do not directly contest the Examiner’s additional reliance upon Sugihara as to certain claimed features in these dependent claims. Instead, Appellant’s remarks rely for patentability upon his arguments with respect to independent claims 1, 11, and 20 regarding their rejection under 35 U.S.C. § 102. Since we have sustained each of the three separately stated rejections of the claims on appeal, the decision of the Examiner rejecting the respective claims under 35 U.S.C. §§ 101, 102, and 103 is affirmed. Therefore, the decision of the Examiner is affirmed. 7 Appeal 2007-2130 Application 10/141,222 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. §1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). 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