Ex Parte Andersen

Patent Trial and Appeal Board

Jul 19, 2018

12702641 (P.T.A.B. Jul. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/702,641 02/09/2010
69603 7590 07/23/2018
Bank of America
c/o Moore and Van Allen, PLLC
P.O. Box 13706
3015 Carrington Mill Boulevard, Suite 400
RESEARCH TRIANGLE PARK, NC 27709
FIRST NAMED INVENTOR
David M. Andersen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3230US 1.014033.598 2478
EXAMINER
JAKOVAC,RYANJ
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
07/23/2018 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):
boauspto@mvalaw.com
usptomail@mvalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID M. ANDERSEN
Appeal2018-000863
Application 12/702,641
Technology Center 2400
Before ROBERT E. NAPPI, ERIC S. FRAHM, and JOHN P. PINKERTON,
Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE 1
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 5, 11, 15, 21, and 25. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
1 According to Appellant, Bank of America Corporation is the real party in
interest. App. Br. 3.
Appeal2018-000863
Application 12/702,641
Disclosed Invention
The disclosed invention is directed to monitoring the network status of
computing devices on a network for the collection of data from those
computing devices when they are connected to the network. Abstract, Spec.
,r 2. The invention consists of a computer processor that sends a query on to
a plurality of enterprise-wide servers to determine the online or offline
network status of a plurality of computing devices that are currently being
monitored. Spec. ,r 18. The online network status of the computing devices
are indicated by the inclusion of one or more Internet Protocol (IP) addresses
associated with the computing devices being sent to the computer processor
while the offline network status is indicted by the exclusion of the respective
IP address associated with the computing devices. Spec. ,r,r 18, 22. Once
the IP addresses are received the computer process verifies that the IP
addresses received are currently assigned to each of the computing devices
by querying each computing device for its computing device identifier and
checking to ensure that the identifier matches the identifier with respect to
each IP address. Spec. ,r 22. Once the IP addresses of the computing
devices are verified, the computer processor determines the physical location
of the computing device, and communicates an alert to one or more
predetermined electronic discovery associates that the computing device is
online. Spec. ,r,r 19, 66. Once the alert is received, the computer processor
initiates the data collection. Spec. ,r,r 17, 19.
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Application 12/702,641
CLAIMED SUBJECT MATTER
Claims 1, 11, and 21 are independent. Claim 1 is representative of the
invention and is reproduced below ( with the disputed portions of the claim
emphasized):
Claim 1. A method for monitoring online and offline
network status of computing devices in an enterprise-wide
communication network for subsequent electronic discovery-
related local collection of data from the computing device, the
method comprising:
querying, by a computing processor device, on a
predetermined on-going schedule, a plurality of enterprise-wide
servers for online network status and offline network status of a
plurality of computing devices in the enterprise that are
currently being monitored by an electronic discovery system;
receiving, by a computing processor device, a plurality of
network status responses to the query from the plurality of
servers, wherein the network status responses include an
indication of the online network status or the offline network
status of each of the computing devices and wherein the
indication of online network status is defined by inclusion of
one or more Internet Protocol (IP) addresses associated with
one of the computing devices and the indication of offline
network status is defined by an exclusion of an IP address
associated with one of the computing devices;
as a result of the network status responses indicating that
one or more computing devices are associated with two or
more IP addresses, verifying, by a computing processor device,
that one of the two or more IP addresses is currently assigned
to each of the computing devices by querying each of the two or
more IP address returned in the network status response for
computing device identity and receiving a computing device
identifier response from one of the IP addresses that matches a
known identifier of a corresponding one of the one or more
computing devices;
in response to receiving and verifying the IP address of
the one or more computing devices, determining, by a
computing processor device, a physical location of the one or
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Application 12/702,641
more computing devices by applying the IP address to a
network infrastructure translation table that maps physical
location to IP addresses;
in automatic response to receiving the network status
responses and verifying that one of the IP addresses is currently
assigned to one of the one or more computing devices,
generating and initiating, by a computing processor device,
electronic communication of an alert to at least one electronic
discovery associate, wherein the alert is configured to notify the
electronic discovery associate that the computing device is
currently online and an immediate need exists to initiate
electronic discovery-related local collection of data from the
computing device; and
in response to receipt of the alert by the electronic
discovery associate, conducting, by a computing processor
device, local collection of data from the computing device by
generating a snapshot of the data residing on local storage of
the computing device, storing the snapshot in a storage area on
the computing device and transmitting, from the storage area,
copies of files included in the snapshot to an electronic
discovery collection server.
Appeal Br. 3, Claims App 'x.
Independent claims 1, 11, and 21 recite similar limitations as
claim 1. Supp. App. Br. 3---6, 7-8. 2
Examiner's Rejections3
(1) The Examiner rejected claims 1, 5, 11, 15, 21, and 25 under
35 U.S.C. § 112, second paragraph, as being as being indefinite for failing to
2 Appellant filed a supplemental Appeal Brief on April 6, 2016, to submit a
corrected copy of the Claims Appendix.
3 Throughout this Decision we refer to the Appeal Brief ("App. Br.") filed
Dec. 22, 2015, Final Office Action ("Final Act.") mailed March 26, 2015,
and the Examiner's Answer ("Ans.") mailed Sept. 8, 2016. In addition, we
will refer to the App Brief ("Supp. App. Br.") filed on April 6, 2016 in
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Application 12/702,641
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention. Final Act. 3--4; Ans. 3.
(2) The Examiner rejected claims 1, 11, and 21 under 35 U.S.C.
§ I03(a) as being unpatentable over McCreight et al. (WO 2006/031836 A2;
published March 23, 2006; hereinafter "McCreight") in view of Yoshida et
al. (US 5,987,524; issued Nov. 16, 1999; hereinafter "Yoshida"), Marl et al.
(US 2012/0290694 A9; correction published Nov. 15, 2012; hereinafter
"Marl"), Besehanic et al. (US 2010/0151816 Al; published June 17, 2010;
hereinafter "Besehanic"), and Wen et al. (US 2006/0041657 Al; published
Feb. 23, 2006; hereinafter "Wen"). Final Act. 5-9; Ans. 3.
(3) The Examiner rejected claims 5, 15, and 25 under 35 U.S.C.
§ 103 (a) as being unpatentable over McCreight, Yoshida, Marl, Besehanic,
and Wen in further view of Official Notice. Final Act. 10; Ans. 3.
Issues on Appeal
Appellant argues on pages 10 through 16 of the Appeal Brief that the
Examiner's indefiniteness rejection and the obviousness rejections of claims
1, 5, 11, 15, 21, and 25 are in error. 4 These arguments present us with the
following issues:
a) Did the Examiner err in rejecting representative claim 1 (i)
based on the limitation directed to "querying, by a
response to the notice of defective Appeal Brief submitting a corrected copy
of the Claims Appendix.
4 The obviousness rejection groups claims 1, 11, and 21 together. We select
claim 1 as representative and decide the appeal based upon claim 1. See 37
C.F.R. § 4I.37(c)(l)(iv).
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computing processor device, on a predetermined on-going
schedule ... " as being indefinite, and (ii) limitation directed
to the network status responses indicating that one or more
computing devices are associated with two or more IP
addresses lacking antecedent basis?
b) Did the Examiner err in finding the combination of
McCreight in view of Yoshida, Marl, Besehanic, and Wen
teaches the limitation directed to verifying that one of the IP
addresses is currently assigned to each of the computing
devices as recited in representative claim 1?
Analysis
We have reviewed the Examiner's rejections (Final Act. 3-10) in light
of Appellant's arguments in the Appeal Brief that the Examiner has erred
(App. Br. 10-16), as well as the Examiner's response to Appellant's
arguments in the Appeal Brief (Ans. 4---6). We agree with Appellant's
conclusions that the Examiner erred in rejecting claims 1, 5, 11, 15, 21, and
25 under 35 U.S.C. § 112, second paragraph (see App. Br. 10-12); however,
Appellant's arguments have not persuaded us of error in the rejections of
claims 1, 5, 11, 15, 21, and 25 under 35 U.S.C. § 103(a).
REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
recited in the MPEP § 2173 .02 as whether "those skilled in the art would
understand what is claimed when the claim is read in light of the
specification."
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Application 12/702,641
First Issue - Indefiniteness
The Examiner rejected the limitation directed to "querying, by a
computing processor device, on a predetermined on-going schedule ... "
recited above in claim 1 and similarly recited in claim 11 and 21, as being
indefinite. The Examiner states it was unclear whether the "method
requires a monitoring step as performed by an electronic discovery system or
whether the language regarding the monitoring by an electronic discovery
system is merely non-functionally descriptive with regards to the querying
step." Final Act. 3. Appellant, in the Appeal Brief at page 10, argues that
"[t]he language regarding the monitoring by an electronic discovery system
is merely a non-functional description of the computing devices, which
means that the query step only makes inquiries for the network status of the
computing devices that are targeted by the enterprise."
The Examiner has not responded to Appellant's arguments and based
upon our review of the claims, we concur with Appellant's arguments (App.
Br. 10-11 ). The Examiner erred in finding that the limitation dealing with
the monitoring step by the electronic discovery system is indefinite.
Accordingly, we do not sustain the Examiner's rejection under§ 112, second
paragraph, for indefiniteness of independent claims 1, 11, and 21 and
dependent claims 5, 15, and 25.
Second Issue - Lack of Antecedent Basis
The relevant limitation at issue is "the two or more IP address
returned in the network response" (see Final Act. 3; Ans. 4), as recited in
claim 1, and similarly recited in claims 11 and 21. In a determination that a
claim term or phrase is indefinite by an Examiner, the Examiner should
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communicate in the Office Action any findings and reasons which support
the rejection and avoid a mere conclusion that the claim term or phrase is
indefinite. See MPEP § 2173.02(III)(A). Examiner does not provide a
reasoning as to why a person of ordinary skill in the art, when looking at the
claim as a whole and in light of the Specification, would not understand the
subject matter that is claimed. Final Act. 4; Ans. 4.
In our reading of the disputed claim language in claim 1, it is clear
that "the two or more IP addresses" is referring back to the description of the
network status in responses indicating one or more computing devices are
associated with two or more IP addresses." We concur with Appellant's
arguments (App. Br. 10) that the Examiner erred in finding that the
limitation "the two or more IP addresses" lack antecedent basis.
Accordingly, we do not sustain the Examiner's rejection under§ 112, second
paragraph, for lack of antecedent basis of independent claims 1, 11, and 21
and dependent claims 5, 15, and 25.
Obviousness Rejection
With regard to the obviousness rejections of claims 1, 11, and 21 over
the combination of McCreight in view of Yoshida, Marl, Besehanic, and
Wen, we adopt as our own (1) the findings and reasons set forth by the
Examiner in the Office Action from which this appeal is taken (see Final
Act. 5-10), and (2) the reasons set forth by the Examiner in the Examiner's
Answer in response to Appellant's Appeal Brief (see Ans. 4---6).
With respect to representative claim 1 argued by Appellant, we
highlight and address specific findings and arguments for emphasis as
follows.
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Appellant's Appeal Brief at pages 13 through 15, asserts that the cited
prior art does not teach that the "IP address is currently assigned to the
computing device" as claimed. Appellant argues that McCreight fails to
teach that "one of the two or more IP addresses is currently assigned to each
of the computing devices," and asserts Yoshida, Marl, Besehanic, and Wen
fails to cure the deficiency in McCreight. App. Br. 13-15. Specifically,
Appellant argues that the process discussed in Yoshida corresponds to
matching a MAC address that was previously assigned and manually
registered for a computer. App. Br. 14. Therefore, the IP address verified
would not constitute a currently assigned address as recited in the claim.
App. Br. 13. Examiner found that Yoshida renders the limitation obvious
because the IP addresses are verified in order to determine that they are
active members of the local area network, and the IP addresses are actively
used as a destination address for transmitting data to the terminal associated
therewith. Ans. 4--5.
Our reading of Yoshida (specifically col. 6, 11. 6-26; col. 7, 11. 12-38;
and col. 8, 11. 14--55) is that it describes a means to verify a MAC address/IP
address combination associated with a computer terminal. Specifically,
Yoshida teaches that terminal A transmits request to a router to get the MAC
address of terminal B, when the address of terminal B is supplied terminal A
then supplies its own MAC/IP addresses and the MAC/IP addresses of
terminal B along with a data transmission to the router. Yoshida, col. 6, 11.
9-26; and Fig. 6. The router then checks the second address table to verify
terminal B's MAC/IP address combination if it is not found it searches the
first address table. Yoshida, col. 7, 11. 16-30; col. 8, 11. 20-45; and Fig. 6. If
the address combination is found in the first table, the router then attempts to
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verify the address by making a request to the second terminal B with the
noted IP address to get the MAC address associated with terminal B.
Yoshida, col. 68, 11. 20-32; and Fig. 6. If terminal B's return address is not
in the first table, it is invalid, but if the IP/MAC combination is in the first
table, then data from terminal A is transmitted to terminal Band the
combination is registered to second table. Yoshida, col. 68, 11. 32--49; and
Fig. 6.
In light of the teachings of Yoshida discussed above, Appellant has
not persuaded us that Yoshida fails to teach the limitation directed to the IP
address being currently associated with the computing device.
Appellant also contends that Marl, does not teach sending an alert
when a computing device is online, or identifying an IP address that is
currently assigned to the computing device. App. Br. 14. We agree with
Examiner that the Marl reference does not need to demonstrate identifying
an IP address that is currently assigned to a computing device since Marl is
not relied upon for disclosing this limitation. Ans. 5---6. Examiner found
that Marl's alerts are based on the online status of a device, for example, a
device monitoring agent is used to see if devices are connected to the
network so that alerts can be sent to the devices running on the network that
need to upgrade or install a product. Ans. 6, citing Marl ,i,i 222-249.
Accordingly, Appellant has not persuaded us that Marl fails to teach the
limitation directed to sending an alert when a computing device is online.
Appellant also contends that Besehanic and Wen fail to remedy the
deficiencies of McCreight in view of Yoshida and Marl since neither shows
an IP address that is currently associated with a computing device. App. Br.
14--15. However, neither Besehanic nor Wen is relied upon to disclose this
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limitation. Final Act. 8-9. Instead, Examiner relies upon Yoshida (see Final
Act. 6-7) for the teaching of the current IP address. As noted above, we
have found that Yoshida teaches this limitation. As such Appellant's
argument has not persuaded us that the Examiner erred in finding that the
combination of McCreight in view of Yoshida, Marl, Besehanic, and Wen
teaches the limitations as recited in claim 1.
For the reasons set forth above, we sustain the Examiner's
obviousness rejection of independent claim 1, and claims 11 and 15 grouped
with claim 1.
Appellant argues that the rejection of claims 5, 15, and 25 is in error
for the same reasons as claim 1 (see App. Br. 13-16). As Appellant has not
persuaded us of error in the Examiner's rejection of claim 1, we similarly
sustain the Examiner's rejection of claims 5, 15, and 25.
DECISION
(1) The Examiner's rejection of claims 1, 5, 11, 15, 21, and 25 under
35 U.S.C. § 112, second paragraph, as being as being indefinite for failing to
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention is reversed.
(2) The Examiner's rejection of claims 1, 5, 11, 15, 21, and 25 under
35 U.S.C. § 103(a) as being anticipated by McCreight in view of Yoshida,
Marl, Besehanic, and Wen is affirmed.
No time period for taking any subsequent action in connection with
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this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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