Ex Parte Ford et al

Patent Trials and Appeals Board

Jan 29, 2013

11485795 - (D) (P.T.A.B. Jan. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL E. FORD and SCOTT A. GULLAND
____________

Appeal 2010-009792
Application 11/485,795
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, DENISE M. POTHIER, and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20. App. Br. 5.1 We have jurisdiction under 35 U.S.C.
§ 6(b)(1). We affirm.

1 Throughout this opinion, we refer to: (1) the Appeal Brief (“App. Br.”)
filed January 27, 2010; (2) the Examiner’s Answer (“Ans.”) mailed March
29, 2010; and (3) the Reply Brief (“Reply Br.”) filed May 13, 2010.
Appeal 2010-009792
Application 11/485,795

2
Invention
Appellants’ invention relates to methods and structures for creating a
customized device configuration file. The invention creates a device
configuration file from a device configuration template having a tag that
identifies a pool of Internet Protocol (IP) addresses by a pool name. The
invention substitutes an IP address from the pool of IP addresses for the tag
in the device configuration template to create a customized device
configuration file incorporating an IP address in place of the tag in the
template. See generally Abstract.
Claim 1 is reproduced below and is representative of the claims at
issue on this appeal:
1. A method comprising:
a computing device defining a pool of Internet Protocol (IP)
addresses having a pool name;
defining a device configuration template having a tag that
identifies the pool name; and
substituting an IP address from the pool of IP addresses for the tag
in the device configuration template to create a device configuration
file.

The Examiner relies on the following as evidence of unpatentability:
Vasisht US 2004/0133689 A1 July 8, 2004
Anderson US 6,938,079 B1 Aug. 30, 2005
Sheth US 6,988,148 B1 Jan. 17, 2006

The Rejections
The Examiner rejected claims 1-6, 8-11, and 18-20 under 35 U.S.C.
§ 103(a) as unpatentable over Sheth and Anderson. Ans. 3. Claim 1 is
representative of these rejected claims.
Appeal 2010-009792
Application 11/485,795

3
The Examiner rejected claims 7 and 12-17 under 35 U.S.C. § 103(a)
as unpatentable over Sheth, Anderson, and Vasisht. Ans. 11. Claim 7 is
representative of these rejected claims.

The Contentions
Regarding representative claim 1, the Examiner finds that Sheth
teaches the first recited element, namely, a computing device defining a pool
of IP addresses having a pool name. Ans. 3-4 (citing Sheth, col. 5, ll. 5-8;
col. 8, ll. 38-40; Figs. 5-9). The Examiner notes that Sheth fails to show the
second and third recited elements of claim 1 (i.e., defining a template and
substituting an IP address in the template to create a configuration file).
However, the Examiner finds Anderson, when combined with Sheth, teaches
these limitations. Ans. 4. Specifically, the Examiner points to Anderson
column 27, lines 27-35, and Figure 12 as showing the step of substituting an
IP address from the pool for the tag in the template. Ans. 4. Further, the
Examiner points to Anderson column 25, lines 61-65; column 15, lines 29-
31; column 20, lines 10-28; column 2, lines 47-55; column 4, lines 44-45;
and Figure 15 as showing the step of defining a device configuration
template having a tag that identifies the IP address pool. Ans. 4.
With respect to claim 1, Appellants argue that Anderson does not
teach substituting an IP address for a tag in a template because an IP address
is a number and Anderson teaches only substitution of text or a Uniform
Resource Locator (URL) for a tag in a template. App. Br. 9. Appellants
conclude this argument stating: “Anderson therefore fails to teach or suggest
a pool of IP addresses having a pool name, as recited in claim 1.” Id.
Appeal 2010-009792
Application 11/485,795

4
Appellants further argue with respect to claim 1 that there is no
motivation to combine the teachings of Sheth and Anderson because Sheth
does not teach or show a configuration template having a tag. Thus,
Appellants argue Anderson would not work with Sheth because there would
be no tag in a template to use for substitution of data from Anderson’s
database into Anderson’s template. App. Br. 9-10.
Regarding representative claim 7, the Examiner incorporates the
combination of Sheth and Anderson as applied to claim 1 and adds Vasisht
to the combination for teaching that a pool of IP addresses includes a
number of sequential IP addresses. Ans. 12. Specifically, the Examiner
points to Vasisht ¶ 0092 as showing a sequential numbering scheme for IP
addresses.
With respect to the rejection of claim 7, Appellants argue:
the Examiner has not and cannot reasonably assert that the
disclosure contained in Vasisht makes up for any of the
deficiencies discussed above with respect to the proposed
combination. Accordingly, even assuming for the sake of
argument that one of ordinary skill in the art were somehow
motivated to modify the proposed combination of Sheth in view
of Anderson with the disclosure contained in Vasisht, the
proposed modification would still fail to yield all of the features
of independent claims 1 and 9.
App. Br. 11.

ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 1 over
Sheth in view of Anderson? More specifically, are the references properly
combinable to form a basis for a § 103 rejection and, if so, does the
Appeal 2010-009792
Application 11/485,795

5
combination teach substituting an IP address for a tag in a template as
recited in claim 1?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ANALYSIS
Rejection of Representative Claim 1
Based on the record before us, we find no error in the Examiner’s
rejection of claim 1. The Examiner finds that Sheth teaches defining of a
pool of IP addresses having a name, and we agree. Appellants do not dispute
this finding of the Examiner. The Examiner further finds that Anderson
teaches the defining of a device configuration template having a tag
identifying the pool and substituting an IP address from the pool to create a
device configuration file. Appellants dispute this finding of the Examiner
and suggest that Anderson does not teach substituting an IP address for a tag
because IP addresses are numbers and Anderson teaches only the
substitution of textual data from an XML database into an SHTML template.
We agree with the Examiner. First, we note that claim 1 does not
recite that the IP address to be substituted for the tag must be a number as
Appellants argue. While it is true that an IP address is a series of numerals,
those of ordinary skill in the art will recognize that such numerals may be
encoded in a binary form (i.e., a “number” as presumably suggested by
Appellants), encoded in a textual form (i.e., as a text string describing a
series of numerals), or encoded as in variety of other encoding styles (e.g.,
Appeal 2010-009792
Application 11/485,795

6
base64, a CDATA HTML field, etc.). Thus, Anderson’s substitution of
textual values for tags in a template may include not only URLs (as
acknowledged by Appellants (App. Br. 9) but could also include IP
addresses encoded as textual numeric characters (e.g., an IP address encoded
as a character string such as “192.168.0.1”). It would be readily apparent to
those of ordinary skill in the art that a textual encoding of an IP address may
be converted to a binary encoding thereof, and vice versa as required for a
particular utilization of the IP address. Appellants acknowledge such an
observation in stating: “Computers can convert URLs into IP addresses to
route the messages.” App. Br. 9. Thus, Appellants’ argument that IP
addresses are “numbers” such that they could not be used in the teachings of
Anderson is unpersuasive.
Appellants further argue that there is no motivation for combining
Sheth and Anderson to show all elements of claim 1. App. Br. 9.
Specifically, Appellants argue: “In Sheth, there is no device configuration
template having a tag. Thus, incorporating the teaching of Anderson into
Sheth would not work because there would be no tag in any template to
insert the data from the XML database 564.” App. Br. 9-10. We disagree.
Appellants’ argument regarding lack of motivation to combine relies too
heavily on the explicit words of each individual reference (in isolation from
the other) rather than the collective teachings perceived by one of ordinary
skill in the art presented with the combination of references.
Appellants further argue that the teachings of Anderson would not
work in the context of Sheth because “in Sheth, there is no device
configuration template with a tag to insert an IP address to create a device
configuration file.” Reply Br. 5. We find this argument unpersuasive in that
Appeal 2010-009792
Application 11/485,795

7
it requires the precise language in Sheth to permit integration of the features
recited in Anderson. We disagree. “The diversity of inventive pursuits and of
modern technology counsels against [confining the obviousness analysis by
a formalistic conception of the words teaching, suggestion, and motivation,
or by overemphasizing the importance of published articles and the explicit
content of issued patents].” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
419 (2007).
Rather, as expressed by the Examiner, Sheth shows that a named pool
of IP addresses is a known concept and Anderson shows that definition of a
template having a tag used for substitution of a corresponding value is a
known concept. Thus, one of ordinary skill in the art, confronted with such
collective knowledge of Sheth and Anderson would see the utility of using
Anderson’s template to substitute an IP address as a variable identified by a
tag in the template. Moreover, the Examiner articulates some reason with a
rational underpinning to combine these references to arrive at the recited
substituting step and to support the obviousness conclusion. See Ans. 4.
The Examiner expressed this rejection as based on Sheth in view of
Anderson. We view this rejection more clearly as indicating that Anderson
teaches the structures and methods for generating output from a template by
replacing a tag in the template with a variable value and that Sheth, when
combined with Anderson, teaches that such a tag may reference a pool of IP
addresses. However, the ordering of references in the rejection is
insignificant in the Examiner’s obviousness determination. See In re Bush,
296 F.2d 491, 496 (CCPA 1961) (“[W]e deem it to be of no significance,
but merely a matter of exposition, that the rejection is stated to be on A in
Appeal 2010-009792
Application 11/485,795

8
view of B instead of on B in view of A, or to term one reference primary
and the other secondary.”).
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and claims 2-6, 8-11, and 18-20 not
separately argued with particularity. App. Br. 10.
Rejection of Representative Claim 7
As regards the rejection of claims 7 and 12-17 and specifically
representative claim 7, the Examiner finds that Sheth, Anderson, and
Vasisht teach all the limitations in claim 7 (Ans. 7). With regard to this
rejection, Appellants refer only to the previous arguments of claim 1. App.
Br. 11; Reply Br. 5. In sum, Appellants merely suggest that Vasisht fails to
alleviate the alleged deficiencies Appellants suggest regarding claim 1. This
issue before us, then, is the same as the issue above in connection with
claim 1, and we refer to our previous discussion. Based on the previous
explanation, we also need not address whether Vasisht cures any purported
deficiencies of the combination of Sheth and Anderson. Appellants have not
persuaded us of error in the rejections of claim 7 and claims 12-17 not
separately argued with particularity. App. Br. 11.

CONCLUSION
The Examiner did not err in rejecting claims 1-20 under § 103.

DECISION
The Examiner’s decision rejecting claims 1-20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
Appeal 2010-009792
Application 11/485,795

9

AFFIRMED

babc