Ex Parte Gorthy et al

Board of Patent Appeals and Interferences

Feb 23, 2012

09942834 (B.P.A.I. Feb. 23, 2012)

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.
09/942,834 08/29/2001 Scott B. Gorthy AUS920105004US1 9237
50170 7590 02/23/2012
IBM CORP. (WIP)
c/o WALDER INTELLECTUAL PROPERTY LAW, P.C.
17330 PRESTON ROAD
SUITE 100B
DALLAS, TX 75252
EXAMINER
COONEY, ADAM A
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
02/23/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SCOTT B. GORTHY, BRENDAN KELLY,
DEREK S. HEARNE, DAVID B. HEISER, and
BRET C. TAYLOR
____________________

Appeal 2009-012299
Application 09/942,834
Technology Center 2400
____________________

Before LANCE LEONARD BARRY, JEAN R. HOMERE, and
THU A. DANG, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012299
Application 09/942,834

2
STATEMENT OF CASE
The Patent Examiner rejected claims 6-12, 16, 24, 25, and 27. The
Appellants appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b).
INVENTION
Claim 6, which follows, is illustrative of the claimed subject matter.
6. An electronic method comprising:
accessing a network component;
retrieving a command set from the network component
the command set including commands that the network
component is capable of responding to;
determining a characteristic of the network component,
wherein the determined characteristic is indicative of at least
one of: device type, manufacturer, model, and operating system
version;
generating a configuration schema using the retrieved
command set, wherein the generated configuration schema
corresponds to the network component; and
storing the generated configuration schema in accordance
with the determined characteristic so as to enable the
configuration schema to be identified from among a collection
of configuration schemas that includes configuration schemas
that are associated with other network components.

REFERENCES AND REJECTIONS
Little
McGuire
Zavalkovsky
US 2003/0048287 A1
US 6,816,897 B2
US 6,959,332 B1
Mar. 13, 2003
Nov. 9, 2004
Oct. 25, 2005

Claims 6-9, 11, 12, 16, 24, 25, and 27 stand rejected under 35 U.S.C
§103(a) as being unpatentable over Zavalkovsky and McGuire.
Claim 10 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Zavalkovsky, McGuire, and Little.
Appeal 2009-012299
Application 09/942,834

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DISCUSSION
Based on the dependencies of the claims, we will decide the appeal of
claims 6-12, 16, 24, 25, and 27 on the basis of independent claims 6 and 24.
Therefore, the issue before us follows.
Did the Examiner err in finding that the combined teachings of
Zavalkovsky and McGuire would have suggested a collection of
configuration schemas associated with different network components, as
required by independent claims 6 and 24?
At the outset, we find that Zavalkovsky describes its invention as "a
method of converting an abstract quality of service policy into a new
configuration for one or more network devices of a managed network, such
as routers." (Zavalkovsky, col. 3, ll. 58-60.) We also find that McGuire
describes its invention as "[a]n automated provisioning and management
system for network devices includes a library of commands that are generic
to all devices of interest, and device-specific plugins for implementing those
commands in each of the different devices." (McGuire, Abstract.)
"Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art." Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted).
Regarding the first step, "[c]laims must be read in view of the
specification, of which they are a part." Markman v. Westview Instruments,
Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc) (citations omitted).
Appeal 2009-012299
Application 09/942,834

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Here, we agree with the Appellants that their "[S]pecification teaches,
the claimed configuration schema is, in essence, a modeling of a network
component's command structure (See Applicants' Specification, Para.
[0022])." (App. Br. 19.) Reading the independent claims in view of the
Specification, the limitations require a collection of configuration schemas,
i.e., models of a network component's command structure, associated with
different network components.
For some reason, the Examiner proffers his own definition of the
claimed "configuration schema." Specifically, the Examiner makes the
following finding:"a]s was known in the art at the time of the present
invention, a schema is a diagram or representation showing the basic outline
of something. Thus, examiner maintains the interpretation given to
appellant's claimed invention was proper since the final list of basic
commands at least represented 'a new configuration for the device'." (Ans.
11.) The Examiner fails, however, to address the definition in the
Specification, let alone to explain whether his definition is consistent with
that in the Specification.
Regarding the second step, "[i]n rejecting claims under 35 U.S.C.
§ 103, the examiner bears the initial burden of presenting a prima facie case
of obviousness." In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). "The test for
obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art." In re Young, 927 F.2d 588, 591
(Fed. Cir. 1991) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Here, the Examiner finds that his definition of configuration schema is
taught by Zavalkovsky at least in column 8, lines 13-21. (Ans. 11.)
Appeal 2009-012299
Application 09/942,834

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This part of the reference describes a "final list of basic commands [that]
represents a new configuration for the device." (Zavalkovshy, col. 8, ll. 18-
20.) The Examiner fails, to show how Zavalkovsky's final list of basic
commands teaches models of a network component's command structure,
associated with different network components as claimed. Absent such an
explanation, we must agree with the Appellants that " Zavalkovsky simply
does not teach generating a configuration schema" (App. Br. 20), as that
term is defined by them.
The "examiner also interpreted appellant's claimed 'configuration
schema' as the 'commands specific to the device(s) to which they correspond'
as taught by McGuire, (col. 6, lines 16-35)." (Ans. 13.) "A rejection based
on section 103 clearly must rest on a factual basis. . . ." In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). "The Patent Office has the initial duty
of supplying the factual basis for its rejection. It may not . . . resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis." Id.
Here, the Examiner has again failed to explain how his interpretation
is consistent with that in the Specification. Speculation or unfounded
assumptions would be required to accept such an interpretation.
The Examiner does not allege, let alone show, that the addition of
Little cures the aforementioned deficiency of Zavalkovsky and McGuire.
Therefore, we conclude that the Examiner erred in finding that the combined
teachings of Zavalkovsky and McGuire would have suggested a collection of
configuration schemas associated with different network components, as
required by independent claims 6 and 24.
Appeal 2009-012299
Application 09/942,834

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DECISION
We reverse the rejection of claims 6 and 24 and those of claims 7-12,
16, 25, and 27, which depend therefrom.

REVERSED

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