Ex Parte Chiou et al

Patent Trial and Appeal Board

Sep 22, 2014

12266196 (P.T.A.B. Sep. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GOU-SHIOW (AMY) CHIOU,
LULIA A. BARAKAT, and BOB ARTMAN
____________________

Appeal 2012-006626
Application 12/266,196
Technology Center 2400
____________________

Before: STEFAN STAICOVICI, LYNNE H. BROWNE, and
THOMAS F. SMEGAL, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1–20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
The claims are directed to a method, apparatus, and system for
providing network analysis of a hybrid telephony network. Claims 1, 10,
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and 19 are independent. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method comprising:
polling a plurality of nodes within a network for
configuration information, wherein the nodes are configured to
establish voice sessions;
correlating the configuration information; and
presenting a view of the nodes and associated circuits to
a user for configuring one or more of the nodes based on the
correlation.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Maiocco US 7,752,301 B1 July 6, 2010
Kosanovic US 2006/0221876 A1 Oct. 5, 2006

REJECTIONS1
1. Claims 10–18 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
2. Claims 1, 3–10, and 12–19 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Kosanovic.
3. Claims 2, 11, and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kosanovic and Maiocco.

1 The rejection of claims 2, 11, and 20 under 35 U.S.C. § 112, second
paragraph, has been withdrawn by the Examiner. Ans. 4.
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OPINION
Non-Statutory Subject Matter
The Examiner determined that claim 10 is directed to non-statutory
subject matter because the subject matter of the claim is software or
functional descriptive material, per se. See Non-Final Rej. (mailed October
1, 2010), 23.
Appellants note that “claim 10 specifically recites ‘An apparatus’
including a data collection and analysis module and a presentation module.”
Appeal Br. 4. Appellants argue that “no one of ordinary skill in the art
would qualify an apparatus with a data collection and analysis module to
include software.” Id. In support of this argument, Appellants note that “the
‘data collection and analysis module 201 collects data from switching
elements ... and stores the collected information into the database 117 . . .
[and] presentation module 205 messages the collected data and associated
analysis for transmission to the user via . . . a web interface, such as a
browser.’” Appeal Br. 5.
In response to this argument, the Examiner correctly finds that the
Specification states “The processes described herein for configuring a
distributed switching system may be implemented via software, hardware
(e.g., general processor, Digital Signal Processing (DSP) chip, an
Application Specific Integrated Circuit (ASIC), Field Programmable Gate
Arrays (FPGAs), etc.), firmware or a combination thereof.” Final Rej. 3,
(quoting Spec. para. 42, ll. 14). Based on this finding, the Examiner
concludes that the apparatus “of claim 10 is intend to cover ‘software’,
functional descriptive material, per se” and thus is not directed to statutory
subject matter. Id.
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Appellants do not identify any specific structures that perform the
functions of collecting data, analyzing the data, storing the data in the
database, and messaging the data to the user. The claims do not preclude
performance of these functions by software, and the Examiner’s claim
construction is consistent with the Specification. Thus, Appellants’
argument that “no one of ordinary skill in the art would qualify an apparatus
with a data collection and analysis module to include software” (Appeal Br.
4) is not persuasive.
A computer program (software), no matter its function, is nothing
more than the representation of an algorithm or group of algorithms,
conceptually no different from a list of steps written down with pencil and
paper for execution by a human being. See Gottschalk v. Benson,
409 U.S. 63 (1972), 72. The Supreme Court has explained that “[a]bstract
software code is an idea without physical embodiment,” i.e., an abstraction.
Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). A claim that
recites no more than software, logic or a data structure (i.e., an abstract idea)
 with no structural tie or functional interrelationship to an article of
manufacture, machine, process or composition of matter does not fall within
any statutory category and is not patentable subject matter. In re
Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994); see In re Nuijten,
500 F.3d 1346, 1357 (Fed. Cir. 2007).
The Examiner correctly determines that Appellants’ claim 10 does not
recite any physical structure or machine, and is not tied to any particular
machine, thus reciting software per se.
For these reasons, we sustain the Examiner’s decision rejecting
independent claim 10 as being directed to non-statutory subject matter.
Claims 1118 depend from claim 10 and do not cure the deficiency in claim
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10. Accordingly, we also sustain the Examiner’s decision rejecting claims
1118 as being directed to non-statutory subject matter.
Anticipation
Appellants argue claims 1, 3–10, and 12–19 together. See Appeal Br.
4 and 7–10. We select independent claim 1 as the illustrative claim and
claims 3–10 and 12–19 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
The Examiner finds that Kosanovic discloses each and every
limitation of independent claim 1. In particular, the Examiner finds that
Kosanovic discloses “presenting a view of the nodes and associated circuits
to a user for configuring one or more of the nodes based on the correlation.”
Ans. 5 (citing Kosanovic, paras. 69, 24, 4, and 46).
Appellants argue that “there is simply no disclosure or suggestion
anywhere in Kosanovic et al. of presenting a view of the nodes and
associated circuits.” Appeal Br. 8. Appellant further argues that:
at best, Kosanovic et al. teaches that trends of operational
performance may be viewed, in any combination, and the legs
of the VOIP [i.e., Voice Over Internet Protocol] network may
be looked up so that errors may be analyzed. And further, that
the quality of the VOIP network can be monitored. However,
Kosanovic et al. fails to teach, disclose or suggest anything
even close to “presenting a view of the nodes and associated
circuits.”
Id.
It appears that Appellants are narrowly construing claim 1 to require
presenting a view of all of the nodes and associated circuits; however, claim
1 is not so limited. Appellants do not explain why viewing the combinations
described by Kosanovic does not meet the claim limitation of “presenting a
view of the nodes and associated circuits.” Appeal Br. 14, Clms. App.
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(emphasis added). Thus, Appellants do not apprised us of error in the
rejection of independent claim 1.
For these reasons, we sustain the Examiner’s decision rejecting claim
1, and claims 3–10 and 12–19 which fall therewith.
Obviousness
The Examiner finds that the combined teachings of Kosanovic and
Maiocco render claims 2, 11, and 20 obvious. In particular, the Examiner
finds that Maiocco teaches “receiving input from the user specifying a first
level of granularity associated with components and circuits corresponding
to the nodes.” Ans. 10 (citing Maiocco, col. 44, ll. 15–25, col. 57, ll. 35–
452, and col. 2, ll. 52–60).
Appellants note that “the granularity that this portion of Maiocco et al.
describes is associated with time, not ‘components and circuits
corresponding to the nodes.’” Reply Br. 3. Appellants argue that “[t]he
Examiner has presented no evidence on this record that an artisan would
understand that the description of level of granularity associated with time in
Maiocco et al. is the same as “level of granularity associated with
components and circuits corresponding to the nodes.” Id.
The Examiner appears to have misread the Maiocco reference. In
Maiocco the “Average, Maximum, and Minimum” and the “Accounts, Users
and Permissions” are separate sections of the reference. Maiocco, col. 47, ll.
3544. The Examiner does not explain how these sections relate to each
other and it is not readily apparent that they do in a manner that would

2 The Examiner clarifies that he “has also cited wrong column number and
instead of column 57, lines 35–45, it is column 47, lines 35–45 that teaches a
first level of granularity.” Ans. 13
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render the subject matter of claims 2, 11, and 20 obvious to one of ordinary
skill in the art. Thus, Appellants’ argument is persuasive.
For this reason, we do not sustain the Examiner’s decision rejecting
claims 2, 11, and 20.

DECISION
The Examiner’s decision rejecting claims 10–18 under 35 U.S.C.
§ 101 is AFFIRMED.
The Examiner’s decision rejecting claims 1, 3–10, and 12–19 under
35 U.S.C. § 102(b) is AFFIRMED.
The Examiner’s decision rejecting claims 2, 11, and 20 under
35 U.S.C. § 103(a) is REVERSED.

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-IN-PART
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