Ex Parte Yang-Huffman

Board of Patent Appeals and Interferences

Oct 4, 2007

10141222 (B.P.A.I. Oct. 4, 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not binding precedent of the Board.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 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1 At pages 2 through 4, 8, and 9 of the Answer, the Examiner has withdrawn the rejection of claims 20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.
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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.
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§ 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
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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
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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
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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.

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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).

AFFIRMED

pgc

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