ServiceNow, Inc.Download PDFPatent Trials and Appeals BoardOct 4, 20212020004971 (P.T.A.B. Oct. 4, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/835,076 12/07/2017 Bnayahu Makovsky SERV:0042-1 5962 145139 7590 10/04/2021 ServiceNow c/o Fletcher Yoder PC P.O. Box 692289 Houston, TX 77269 EXAMINER SHIH, HAOSHIAN ART UNIT PAPER NUMBER 2173 NOTIFICATION DATE DELIVERY MODE 10/04/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docket@fyiplaw.com hill@fyiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BNAYAHU MAKOVSKY Appeal 2020-004971 Application 15/835,076 Technology Center 2100 Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR., and MICHAEL J. STRAUSS, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2020-004971 Application 15/835,076 2 STATEMENT OF THE CASE1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–3, 6–15, and 18–21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to a system and method for generating geographical maps for initiating discovery of a computer network. Spec., Title. Claim 1, reproduced below with a disputed limitation emphasized in italics, is illustrative of the claimed subject matter: 1. A system, comprising: a processor; and a memory storing instructions that, when executed by the processor, cause the processor to generate a graphical user interface (GUI) for an information technology operations management (ITOM) tool for managing a computer network, the GUI comprising: a geographical map of a portion of Earth, the geographical map having a geo-location indicator that indicates a geographic location of a discovered component of the computer network, wherein the geo-location indicator comprises an icon positioned at the geographic location of the discovered component of the computer network, wherein the icon is selectable by a user of the 1 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed February 24, 2020); Reply Brief (“Reply Br.,” filed June 19, 2020), the Final Office Action (“Final Act.,” mailed September 24, 2019), the Examiner’s Answer (“Ans.,” mailed April 24, 2020); and the Specification (“Spec.,” filed December 7, 2017). Rather than repeat the Examiner’s findings and Appellant’s contentions in their entirety, we refer to these documents. 2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as ServiceNow Inc. Appeal Br. 2. Appeal 2020-004971 Application 15/835,076 3 GUI, and wherein selection of the icon initiates discovery of components of the computer network associated with the discovered component at the geographic location. REFERENCES AND REJECTIONS The Examiner relies upon the following references: Name3 Reference Published Filed Mandavilli US 2004/0151202 Al Aug. 5, 2004 Jan. 31, 2003 Natarajan US 2004/0196865 Al Oct. 7, 2004 Mar. 27, 2003 Mustonen US 2005/0018645 Al Jan. 27, 2005 Nov. 21, 2003 Maffezoni US 7,024,497 Bl Apr. 4, 2006 Sept. 7, 2000 Kumar US 2006/0135119 Al June 22, 2006 Dec. 22, 2004 Frei US 2008/0209333 Al Aug. 28, 2008 Feb. 23, 2007 Isaacs US 2016/0062617 Al Mar. 3, 2016 Sept. 2, 2014 The Examiner rejects:4 a. claims 1–3 and 7 under 35 U.S.C. § 103 as obvious over the combined teachings of Frei and Natarajan (Final Act. 13–16); b. claim 6 under 35 U.S.C. § 103 as obvious over the combined teachings of Frei, Natarajan, and Maffezoni (id. at 16–17); c. claims 8–10 under 35 U.S.C. § 103 as obvious over the combined teachings of Frei, Natarajan, and Kumar (id. at 17–21); 3 All reference citations are to the first named inventor only. 4 The Final Office Action includes a provisional rejection on the ground of nonstatutory double patenting over claims then pending in parent application 15/333,261 (Final Act. 2–13) which subsequently issued as US 10,509,541 on December 17, 2019. The prosecution record indicates that Appellant filed a terminal disclaimer dated November 25, 2019 that was accepted by the USPTO via another communication also dated November 25, 2019, thereby obviating this rejection. Appeal 2020-004971 Application 15/835,076 4 d. claims 11–14 under 35 U.S.C. § 103 as obvious over the combined teachings of Frei, Natarajan, and Isaacs (id. at 21–25); e. claims 15 and 18 under 35 U.S.C. § 103 as obvious over the combined teachings of Mandavilli, Mustonen, Frei, and Natarajan (id. at 25–36); f. claims 19 and 20 under 35 U.S.C. § 103 as obvious over the combined teachings of Mandavilli, Mustonen, Frei, Natarajan, and Isaacs (id. at 36–39); and g. claim 21 under 35 U.S.C. § 103 as obvious over the combined teachings of Frei, Natarajan Mandavilli, and Mustonen, (id. at 39– 42). We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the contentions and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). The Examiner and Appellant focus their findings and contentions on claims 1 and 6 (see Appeal Br. 7–20; Ans. 3–6); so do we. Arguments not made are forfeited.5 Unless otherwise indicated, we adopt the Examiner’s findings in the Final Office Action and the Answer as our own and add any additional findings of fact for emphasis. We address the rejections below. 5 See In re Google Tech. Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020) (“We interpret the Patent Office to be arguing that Google’s failure to raise its lexicography arguments, inadvertent or not, compels a finding of forfeiture.”); 37 C.F.R. § 41.37(c)(1)(iv) (2018) (“Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.”). Appeal 2020-004971 Application 15/835,076 5 ANALYSIS As noted above, the Examiner rejects claim 1 as obvious over the combined teachings of Frei and Natarajan. Final Act. 13–15. In particular, the Examiner finds Frei’s disclosure of a visualization tool for displaying the geographic location and connectivity of nodes within a network teaches or suggests the majority of the limitations recited in claim 1. Id. at 13–14 (citing Frei ¶¶ 7, 34–35, Figs. 1, 4–6). The Examiner finds, however, “Frei does not explicitly teach wherein the action [initiated by selection of an icon] is discovery of components of the computer network associated with the discovered component at the geographic location” as recited in claim 1 (the missing or “disputed limitation”). Id. at 14. Nevertheless, the Examiner finds Natarajan’s disclosure of discovering routing nodes which support a routing protocol for purposes of acquiring the topology of a corresponding portion of a computer network teaches or suggests this missing limitation. Id. at 14–15 (citing Natarajan ¶¶ 11–17, Fig. 1). The Examiner further finds: Natarajan teaches selecting a router, which is a network component, and initiating discovery of other components connected to the router based on the selection of the router. When combined with Frei, which teaches the ability to select icons which represent components of a network, the result would be that selection of an icon initiates discovery of components associated with the selected icon (that is, discovery of components connected to the component represented by the icon). Accordingly, it would have been obvious to one of ordinary [in the art] before the effective filing date of the claimed invention to have modified the teachings of Frei with those of Natarajan to achieve the claimed invention. One would have been motivated to make such a combination because it would be Appeal 2020-004971 Application 15/835,076 6 [a] simple substitution of one known element for another to obtain predictable results; here the action taught by Natar[a]jan of initiating discovery of network components is substituted for the actions taught by Frei that are taken in response to selection of an icon to yield predictable results. Id. at 15 (emphasis omitted). Appellant contends the Examiner errs in rejecting claim 1, arguing (1) “A person of ordinary skill in the art would not be motivated to combine or modify Frei and Natarajan as proposed by the Examiner” (Appeal Br. 7) and (2) “Frei and Natarajan are missing features recited by independent claim 1” (id. at 10) (emphasis omitted). We address Appellant’s contentions of Examiner error as follows. (1) Propriety of the Combination Appellant argues as follows: [T]he system disclosed by Frei does not appear to be equipped with the capacity to collect information from other previously unknown components attached to the network, interpret the collected data, and update the map of the network architecture based on selection of a component from the GUI. Nor does Frei appear to provide any motivation for modifying its GUI to add a discovery feature. Further, developing that capability (incorporating the discovery aspects taught by Natarajan into the GUI of Frei) would require “substantial reconstruction and redesign” to implement as proposed in claim 1 and therefore would not be obvious to a person of ordinary skill in the art. MPEP § 2143.01 (quoting In re Ratti, 270 F.2d 810, 813). The Appellant respectfully submits that such a modification would change the principle of operation of the GUI of Frei and require, at a minimum, a substantial amount of software redesign. See Frei, paragraph 35 and claim 1. The Appellant respectfully submits that this substantial software redesign would not be obvious and out be outside of the capabilities of a person of ordinary skill in the art. Accordingly, the Appellant respectfully submits that a person of ordinary skill in the art would have no Appeal 2020-004971 Application 15/835,076 7 reason to modify Frei to include the discovery aspects of Natarajan. Indeed, the Examiner’s combination of Frei and Natarajan appears to be the result of mere hindsight. Appeal Br. 9. We are not persuaded the Examiner has erred because Appellant provides no persuasive evidence of the alleged errors. Specifically, Appellant provides no persuasive evidence or argument regarding why the combination of Frei and Natarajan “would require a substantial software redesign” or “change the principle of operation of the GUI of Frei.” Rather, Appellant merely provides conclusory remarks. It is well settled that mere attorney’s arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Attorney argument is not evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can such argument take the place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977). Absent such an evidence or reasoning, we “take account of the inferences and creative steps that a person of ordinary skill in the art would employ,” and find a person of ordinary skill in the art would overcome those difficulties within their level of skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). We additionally find Appellant’s allegation of impermissible hindsight is unsupported in the record. Appeal Br. 9. Any judgment on obviousness is . . . necessarily a reconstruction based upon hindsight reasoning, but so long as it Appeal 2020-004971 Application 15/835,076 8 takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); see also Radix Corp. v. Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989) (“[A]ny obviousness inquiry necessarily involves some hindsight.”); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418 (“[R]ejections on obviousness grounds . . . must [include] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Furthermore, we are unpersuaded by Appellant’s argument that Frei does not articulate a motivation for the modification. Appeal Br. 9. “It has long been the law that the motivation to combine need not be found in prior art references, but equally can be found ‘in the knowledge generally available to one of ordinary skill in the art.’” Nat’l Steel Car, Ltd. v. Canadian Pacific Ry., Ltd., 357 F.3d 1319, 1337 (Fed. Cir. 2004) (Quoting In re Jones, 958 F.2d 347, 351 (Fed. Cir. 1992)). The Court further instructs, [w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. KSR, 550 U.S. at 421. In the present case, as explained above, the Examiner reasons the combination is a simple substitution of one known element for another, i.e., initiating discovery of network components as taught by Natarajan in Appeal 2020-004971 Application 15/835,076 9 response to selection of an icon of Frei’s GUI. Final Act. 15. Accordingly, we find the Examiner has articulated reasoning with rational underpinnings sufficient to justify the legal conclusion of obviousness. (2) Selection of an Icon Initiates Discovery of Components of a Computer Network Appellant contends the combined teachings of Frei and Natarajan fails to disclose the disputed limitation of wherein selection of the icon initiates discovery of components of the computer network associated with the discovered component at the geographic location. Appeal Br. 10. Appellant argues, according to Frei, “[r]ather than initiating some underlying action within the network, like discovery, the selection of an icon and subsequent display of additional information in a pop-up box or side box appears to be limited to mere manipulation of a GUI.” Id. at 10–11 (citing Frei ¶ 35). According to Appellant, “Natarajan fails to remedy the deficiencies of Frei” because “Natarajan is entirely silent regarding the router being represented by an icon acting as a geo-location identifier positioned at the geographic location of identified router within computer network.” Id. Appellant argues, rather than initiating network discovery using an icon, Natarajan’s discovery is launched from a router randomly selected by a user or automatically selected by the system. Id. The Examiner responds, finding Appellant’s argument is an improper attack on the references individually when the rejections are based on their combination. Ans. 4 (citing In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986)). The Examiner’s Answer repeats reasoning articulated in the Final Action explaining how the teachings of the references are combined to arrive at the disputed limitation. Appeal 2020-004971 Application 15/835,076 10 Id. at 5. That is, Frei discloses the selection of an icon representing a network component to initiate an action and Natarajan discloses selecting a router (i.e., a network component) to initiate discovery of other network components, the combination resulting in “selection of an icon initiat[ing] discovery of components associated with the selected icon (that is, discovery of components connected to the component represented by the icon)).” Id. Appellant’s contention is unpersuasive of reversible Examiner error because it is fails to address the Examiner’s findings. Appellant argues selection of Frei’s icons manipulates a GUI rather than initiating some underling action with the network. However, the Examiner relies on Natarajan, not Frei, for initiating network discovery. Final Act. 14. Conversely, Appellant argues Natarajan discloses launching network discovery from a router selected by a user or the system, not using an icon acting as a geo-location identifier. Appeal Br. 11. However, the Examiner relies on Frei, not Natarajan for the disputed action initiated by icon selection. Id. Thus, as found by the Examiner, Appellant’s argument is an improper attack on the references individually when the rejection is based on the teaching of their combination. For the reasons discussed above, Appellant’s arguments are unpersuasive of reversible Examiner error. Accordingly, we sustain the Examiner’s rejection of independent claim 1. Because Appellant’s argument in connection with independent claims 15 and 18 is substantially the same as presented in connection with independent claim 1,6 we further sustain the 6 Merely restating with respect to a second claim an argument, previously presented with respect to a first claim, is not an argument for separate patentability of the two claims. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-004971 Application 15/835,076 11 rejection of those claims. We further sustain the rejections of dependent claims 2, 3, 7–14, and 19–21 which are not argued separately with particularity. Claim 6 Claim 6 reads as follows: 6. The system, as set forth in claim 1, wherein the icon is selectable by a user of the GUI, and wherein selection of the icon initiates a test of credentials for the discovered component of the computer network. Appeal Br. 23 (Claims App.) The Examiner finds Maffezoni’s disclosure of a user clicking a remote computer’s icon and inputting a remote client identification and a password to provide user access to the remote computer teaches or suggests the limitations of claim 6. Final Act. 17; Ans. 6. Appellant contends Maffezoni’s disclosure “is not the same as ‘wherein selection of the icon initiates a test of credentials for the discovered component of the computer network’, as recited in dependent claim 6.” Appeal Br. 13. Appellant’s contention is unpersuasive of reversible Examiner error because it is a general denial asserting that the corresponding elements were not found in the prior art but otherwise fails to address the Examiner’s findings. Such naked assertions are facially insufficient. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement [that] merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and Appeal 2020-004971 Application 15/835,076 12 a naked assertion that the corresponding elements were not found in the prior art.”). Accordingly, we sustain the Examiner’s rejection of claim 6. DECISION 1. The Examiner does not err in rejecting: a. claims 1–3 and 7 under 35 U.S.C. § 103 as obvious over the combined teachings of Frei and Natarajan; b. claim 6 under 35 U.S.C. § 103 as obvious over the combined teachings of Frei, Natarajan, and Maffezoni; c. claims 8–10 under 35 U.S.C. § 103 as obvious over the combined teachings of Frei, Natarajan, and Kumar; d. claims 11–14 under 35 U.S.C. § 103 as obvious over the combined teachings of Frei, Natarajan, and Isaacs; e. claims 15 and 18 under 35 U.S.C. § 103 as obvious over the combined teachings of Mandavilli, Mustonen, Frei, and Natarajan; f. claims 19 and 20 under 35 U.S.C. § 103 as obvious over the combined teachings of Mandavilli, Mustonen, Frei, Natarajan, and Isaacs; and g. claim 21 under 35 U.S.C. § 103 as obvious over the combined teachings of Frei, Natarajan Mandavilli, and Mustonen. 2. Thus, on this record, claims 1–3, 6–15, and 18–21 are not patentable. CONCLUSION We affirm the Examiner’s rejections of claims 1–3, 6–15, and 18–21. Appeal 2020-004971 Application 15/835,076 13 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 7 103 Frei, Natarajan 1–3, 7 6 103 Frei, Natarajan, Maffezoni 6 8–10 103 Frei, Natarajan, Kumar 8–10 11–14 103 Frei, Natarajan, Isaacs 11–14 15, 18 103 Mandavilli, Mustonen, Frei, Natarajan 15, 18 19, 20 103 Mandavilli, Mustonen, Frei, Natarajan, Isaacs 19, 20 21 103 Frei, Natarajan Mandavilli, Mustonen 21 Overall Outcome 1–3, 6–15, 18–21 TIME PERIOD FOR RESPONSE 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 Copy with citationCopy as parenthetical citation