Ex Parte Lambertz

Board of Patent Appeals and Interferences

Apr 6, 2009

10391559 (B.P.A.I. Apr. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte BERND LAMBERTZ
_____________

Appeal 2008-3107
Application 10/391,559
Technology Center 2400
______________

Decided:1 April 6, 2009
_______________

Before JOHN C. MARTIN, LANCE LEONARD BARRY, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a
civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided
date shown on this page of the decision. The time period does not run from
the Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-3107
Application 10/391,559

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-28, which are all of the currently pending claims.
Claim 29 was canceled prior to the Final Action. Claims 30 and 31, which
were also rejected in the Final Action, were canceled by a January 31, 2007,
Amendment that has been approved for entry. Advisory Action filed
February 21, 2007, at 1.2
The Final Action includes (at 4-9) the following rejections of the
currently pending claims that are not repeated in the Answer and are
therefore being treated as withdrawn: (a) a provisional obviousness-type
double patenting rejection of claims 1-28; (b) a § 112, first paragraph
rejection of claims 3, 8, and 20; and (c) a § 112, second paragraph, rejection
of claims 3, 8, and 20. See Manual of Patent Examining Procedure (MPEP)
§ 1207.02 (8th ed., rev. 7, July 2008) (“Grounds of rejection not
*>specifically withdrawn by the examiner and not set forth< in the
examiner’s answer are usually treated >by the Board< as having been
dropped, but may be considered by the Board if it desires to do so.”).
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

2 Appellant is therefore incorrect to argue (Reply Br. 2) that the
Examiner neglected to address claim 31 in the Answer.
Appeal 2008-3107
Application 10/391,559

3
A. Appellant’s invention
Appellant’s invention relates generally to computer-implemented
methods, a computer program product, and a computer system for providing
remote support for a network infrastructure. Specification 1:4-7.

B. The claims
The independent claims are claims 1, 16, and 28, of which claim 1
reads:
1. A computer implemented method of providing remote
support for an IT infrastructure by a support service provider,
comprising the steps of:

collecting within the IT infrastructure information about
the IT infrastructure so as to obtain a data representation of at
least part of the IT infrastructure;

transferring the data representation to the support service
provider; and, at the support service provider:

(a) comparing the transferred data representation
with at least one previously collected data representation;

(b) responding to the comparing step by analyzing
differences found by the comparing step between said data
representations; and

(c) providing the results of the analysis.
Claims App., Br. 21.

Appeal 2008-3107
Application 10/391,559

4
C. The references and rejections
The Examiner relies on the following references:
Hayball et al. (Hayball) US 6,308,174 B1 Oct. 23, 2001
North et al. (North) US 6,505,245 B1 Jan. 7, 2003
Staveley et al. (Staveley) US 6,973,491 B1 Dec. 6, 2005
Claims 1-10, 12-22, and 24-28 stand rejected under 35
U.S.C. § 103(a) for obviousness over Hayball in view of Staveley. Answer
3.
Claims 11 and 23 stand rejected under § 103(a) for obviousness over
Hayball in view of Staveley and North. Id. at 8.
Appellants do not separately argue the merits of the rejection of
claims 11 and 23.
As for the argued rejection, because Appellant (Br. 17, 19, 20) makes
the same arguments with respect to independent claims 16 and 28 that are
made with respect to claim 1, we will treat claims 16 and 28 as standing or
falling with claim 1. Appellant also separately argues the merits of many of
the dependent claims.

THE ISSUES
Appellant has the burden to show reversible error by the Examiner in
maintaining the rejection. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
Appeal 2008-3107
Application 10/391,559

5
prima facie case with evidence of secondary indicia of nonobviousness.”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner initially found that Hayball satisfies all of the
limitations of claim 1 including substeps (a) to (c) except for disclosing
“providing remote support for an IT infrastructure by a support service
provider” (claim 1, preamble) (emphasis added) by “transferring the data
representation to the support service provider” (Final Action 11) for the
performance of substeps (a) to (c). The Examiner relies on Staveley for a
teaching of providing remote support. Id. at 12. In the Answer, the
Examiner alternatively concluded that the term “remote” in claim 1, which
appears only in the preamble, is entitled to no weight. Answer 9. We
understand the effect of this position to be that Hayball satisfies all of the
limitations of claim 1 thus construed.
As a result, the principal issues before us are whether Appellant has
shown that the Examiner erred in: (1) concluding that “remote” in claim 1 is
entitled to no weight; (2) implicitly finding, assuming “remote” is entitled to
no weight, that Hayball satisfies all of the limitations of claim 1; and
(3) concluding, assuming “remote” is entitled to weight, that it would have
been obvious in view of Staveley to modify Hayball so as to provide remote
support.

Appeal 2008-3107
Application 10/391,559

6
WHETHER “REMOTE” IN THE PREAMBLE
OF CLAIM 1 IS ENTITLED TO WEIGHT
Appellant and the Examiner agree that Hayball discloses an in-house
“support system.” See Reply Br. 3 (“On page 11 of the Examiner's Answer,
the Examiner admits the Hayball discloses an in-house support system as
different from an external remote support.”).
As noted above, although the rejection was initially based only on
giving weight to the term “remote” in the preamble of claim 1 and relying on
Staveley for a teaching of remote support, the Examiner in the Answer also
stated:
It should be noted that the recitation "remote support" occurs in
the preamble. A preamble is generally not accorded any
patentable weight where it merely recites the purpose of a
process or the intended use of a structure, and where the body
of the claim does not depend on the preamble for completeness
but, instead, the process steps or structural limitations are able
to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15
(CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ
478, 481 (CCPA 1951).
Answer 9-10 (underlining omitted). Appellant has not asserted that, let
alone explained why, the Examiner erred in giving “remote” in the preamble
no weight. Instead, Appellant complains (Reply Br. 2) that this position is
contrary to the rationale of the rejection, which relies on Staveley for a
teaching of providing remote support. This argument is unpersuasive. The
fact that the Examiner has presented alternative grounds for unpatentability
does not demonstrate that either ground is erroneous.
Appeal 2008-3107
Application 10/391,559

7
Consequently, Appellant has failed to show that the processing recited
in subparagraphs (a)-(c) of claim 1 must be performed remotely rather than
in-house.

WHETHER HAYBALL DISCLOSES A “SUPPORT” SYSTEM
AND A “DATA REPRESENTATION”
As explained in more detail below, in addition to arguing the “remote”
language addressed above, Appellant argues that Hayball fails to disclose a
“support” system or a “data representation,” the latter phrase appearing in
the claim 1 phrase “collecting within the IT infrastructure information about
the IT infrastructure so as to obtain a data representation of at least part of
the IT infrastructure.”
Hayball discloses method and apparatus for managing a
communications network, such as a telecommunications network. Hayball,
col. 1, ll. 11-14.
According to Hayball, “[t]he network management system is usually
an integral part of the communications network and is used to monitor and
make changes to the network.” Id., col. 1, ll. 31-35. This indicates it was
known that a network management system need not be integral with the
managed network.
Hayball’s method involves the use of one or more MIBs (management
information bases), which can identify information about the configuration
of the network that is being managed (i.e., what components there are in the
Appeal 2008-3107
Application 10/391,559

8
network and how they are connected) and may also provide information
about the performance of the network (e.g., the number of packets that have
been transferred between two entities in the network). Id., col. 4, ll. 56-61.
Hayball’s Figure 6 is reproduced below.

Figure 6 is a general schematic diagram of the use of past, future and
current MIBs in communications network management. Id., col. 4, ll. 19-21.
“Equipment” block 602 in Figure 6 is the network. Id., col. 5, l. 41. The
communications network management system depicted in this figure
includes a “Current MIB” 601 containing information about the current state
of the network, “Past MIBs” 607 containing information about a previous
states of the network, and “Future MIBs” 603 (id., col. 5, ll. 38-45) that
contain information about a predicted or planned future state of the network.
Appeal 2008-3107
Application 10/391,559

9
Id., col. 5, ll. 64-67. The analysis tools 605 are used to analyze the current
MIB 601 and also to use information from the stored “past MIBs” 607 and
the stored “future MIBs” 603. Id., col. 6, ll. 20-23.
Although, as noted by Appellant (Reply Br. 1-2), the Examiner
describes Hayball as “comparing past and future states of the network and/or
comparing the current and future or past state of the network” (Answer 3),
the rejection requires reliance on only the current and past states. Appellant
concedes that in Hayball “[c]omparison of current and past states may be
feasible.” Reply Br. 2.
The Examiner specifically relies on Figure 8, which shows an
example of using Hayball’s invention to facilitate performance management.
Id., col. 8, ll. 66-67. Performance management data extracted from a
communications network 81 by a process or system 82 is stored to form
historical performance management data 83 or current performance
management data 84. Id., col. 8, l. 67 to col. 9, l. 4. The historical
performance management data 83 is then used by a prediction process 85
that generates predicted (i.e., future) performance management data 86
comprising information about a future state of the network 81. Id., col. 9,
ll. 4-8. The historical 83, current 84, and future 86 data are stored in a
memory which may be a management information base. Id., col. 9, ll. 7-9.
The Examiner has construed the term “support” as broad enough to
read on Hayball. See Answer 14 (“The term ‘support’ is defined as:
assistance, such as technical advice provided to customers. For example: a
Appeal 2008-3107
Application 10/391,559

10
report regarding a network.”); Advisory Action 2 (“The term ‘support’ as is
known in the networking art includes monitoring and managing the
computer network and/or devices.”). Appellant argues that Hayball does not
teach a “‘support system’ as would be understood by a person of ordinary
skill.” Br. 14.3 Instead, according to Appellant:
What is disclosed in Hayball et al. is a “management
information base (MIB).” This MIB forms part of the IT
infrastructure, compares data and, as pointed out in the abstract,
can improve accounting and performance management. Nice,
but this is not a trouble shooting arrangement as would be
understood by those skilled in this art to be a “remote support”
by a “support service provider.”
Id. To the extent Appellant is arguing that “support” in the term “remote
support” would have been understood to mean “troubleshooting,” we are
unconvinced. Although Appellant’s Specification explains (at 2:8-10) that
“[a]fter the support service provider has received the information collected,
an expert analyzes it and tries to find the cause of the problem and to remedy
it, either remotely or by sending a service engineer to the customer,” the
Specification does not offer a definition of “support” or “remote support.”
As a result, those terms must be given the broadest interpretation that is
reasonable and consistent with the Specification. In re Thrift, 298 F.3d
1357, 1364 (Fed. Cir. 2002). Appellant has not provided any evidence

3 Although this argument appears in Appellant’s discussion of the
rejection of claim 3, it appears to be applicable to claim 1.
Appeal 2008-3107
Application 10/391,559

11
showing that “support” or “remote support” as used in claim 1 requires a
troubleshooting capability. Furthermore, assuming for the sake of argument
that such a capability is required, Appellant has not explained why some of
Hayball’s disclosed functions, such as “identifying problems in
performance” (Hayball, col. 8, ll. 62-63), do not constitute troubleshooting.
Appellant additionally argues that Hayball does
not disclose the claimed data representation. At best Hayball et
al. discloses collecting and storing performance data - or storing
management information about a first state of the network. The
claimed 'data representation' is neither disclosed nor suggested.
As will be appreciated, this is something that represents data as
different from being just the data per se.
Br. 11. We do not agree. As indicated by the Examiner (Answer 19), the
phrase “data representation” is broad enough to read on data that represents
past, current, and future states of the network and thus is broad enough to
read on the data stored in Hayball’s MIBs.
We are therefore affirming the rejection of claims 1, 16, and 28 as
construed to accord no weight to “remote” in the preamble.
Interest of completeness, we will also address the Examiner’s
alternative ground for rejecting those claims, which assumes that “remote” is
to be given weight.

Appeal 2008-3107
Application 10/391,559

12
WHETHER IT WOULD HAVE BEEN OBVIOUS IN
VIEW OF STAVELEY TO MODIFY HAYBALL SO
AS TO PROVIDE REMOTE SUPPORT
A. Principles of law
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A rejection under
35 U.S.C. § 103(a) must be based on the following factual determinations:
(1) the scope and content of the prior art; (2) the level of ordinary skill in the
art; (3) the differences between the claimed invention and the prior art; and
(4) any objective indicia of non-obviousness. DyStar Textilfarben GmbH &
Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir.
2006) (citing Graham v. John Deere Co., 383 U.S. 1, 17 (1966)).
“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739 (2007)).

B. The differences between claim 1 and Hayball
As noted above, the Examiner relies on Staveley for a teaching of
providing remote support for an IT infrastructure.

C. The Staveley reference
Staveley discloses a monitoring system in which a company can
Appeal 2008-3107
Application 10/391,559

13
determine the status of its network devices using the Internet or other
suitable communication means. Id., col. 1, ll. 9-12.
Staveley’s Figure 2 is reproduced below.

Appeal 2008-3107
Application 10/391,559

14
Figure 2 is a detailed diagram of Staveley’s data collection system.
Staveley, col. 2, ll. 29-30.
Located at client site 12 is a master machine 20 that communicates
with target machines/devices 18 via a network connection 19. Id., col. 3, ll.
39-46. Individual data collectors in machines 18 (id.) retrieve configuration
information about machines 18 and forward that information to master
machine 20 via network connection 19. Id., col. 3, ll. 47-49. In turn, master
machine 20 uploads the configuration information to a central site 14 via a
communication connection, such as Internet 16. Id., col. 3, ll. 49-52.
Specifically, the uploaded information is stored in database 24 at the central
site. Id., col. 4, ll. 45-47.
After the data is populated into a suitable database or other data access
mechanism, users at the central site or other authorized users (e.g., clients)
can access the data via a suitable communication connection with database
24, such as by using a web browser 46 via the Internet 16. Id., col. 4, ll. 56-
61. Based on an end user's request, a report generator module 48 extracts
data from database 24 and formats the requested reports, which are then sent
to web browser 46 for viewing and printing by the end user. Id., col. 5, ll. 5,
ll. 3-9. In addition to client reports, reports may be generated for personnel
at the central site. Id., col. 11, ll. 58-59. For example, central site sales
and/or management people may have access to customer/client information
as needed. Id., col. 11, ll. 59-61.

Appeal 2008-3107
Application 10/391,559

15
In addition to using a web browser to access the data, users can start a
GUI Java interface tool 50 to examine the system information. Id., col. 5, ll.
11-13. Interface tool 50 can be configured to access system data 36 stored at
the client site, or interface tool 50 can access data stored in database 24, for
example via web server 22. Id., col. 5, ll. 13-16. Interface tool 50 can
provide information about the system as well as diagnostic results. Id.,
col. 5, ll. 16-17.
As illustrated in Figures 8 and 9, reports can be generated to show
whether systems are configured properly to receive certain operating system
or software updates, or whether a system's applications meet certain
compliance requirements. Id., col. 12, ll. 39-43. We note that the Figure 8
report (250) shows whether the systems at client Sun Engineering 204 are
configured properly to receive the Sun Solaris 8 operating system upgrade.
Id., col. 12, ll. 43-46. As shown in Figure 8, this report includes an
indication of whether the client system passes or fails certain tests, which
would seem to indicate that the analysis is performed at the central site.

D. The merits of the rejection of claim 1
The Examiner, after noting, inter alia, that Staveley’s report generator
at the central site extracts data from the database and formats reports for the
clients and also for personnel at the central site (Answer 13), characterized
Staveley as “disclos[ing] ‘remote support’ for an IT infrastructure” (id.) and
concluded that “it would be obvious to a person of ordinary skilled in the art
Appeal 2008-3107
Application 10/391,559

16
at the time the invention was made to modify Hayball in view of Staveley in
order to provide remote support for the IT/network infrastructure from a
remote location (i.e. external remote location).” Id. at 13-14. In view of the
Examiner’s finding that Hayball fails to disclose “providing a remote
support for an IT infrastructure by a support service provider at the support
service provider and transferring the data representation to the support
service provider” (id. at 4), our understanding of the Examiner’s position is
that it would have been obvious in view of Staveley to send Hayball’s
network state data to a remote location (e.g., over the Internet) for storage
and performance of the types of analysis disclosed in Hayball.
Appellant argues that Staveley fails to provide motivation for
modifying Hayball to provide remote support because Staveley “does not
disclose a remote ‘support’ of any shape fashion or form, and certainly does
not contain any teachings that would lead the hypothetical person of
ordinary skill to the conclusion that a remote support service provider would
evolve from the concept on which Staveley et al. is based.” Br. 7. More
particularly, Appellant challenges the Examiner’s reliance on the report
generator at the central site by arguing that “it clearly teaches away from a
separate entity (remote service provider) performing the analysis and the like
for the IT infrastructure and strongly suggests that it should be done in-
house (c.f. outsourced).” Reply Br. 4. We do not agree. Staveley’s reports
can indicate whether systems are configured properly to receive certain
operating system or software updates or whether a system's applications
Appeal 2008-3107
Application 10/391,559

17
meet certain compliance requirements (Staveley, col. 12, ll. 39-43). These
reports appear to represent analyses performed at the central site rather than
at the client site. Appellant has failed to demonstrate that such analysis
would not have been considered to be a type of “remote support.” The
argument that “support” and “remote support” would have been understood
to mean “troubleshooting” (Br. 14) is unconvincing because it is
unsupported by the citation of any authority. In any event, Staveley’s GUI
Java Interface tool 50 can provide “diagnostic” (i.e., troubleshooting) results
(id., col. 5, ll. 16-17).
As further support for the argument that Staveley does not relate to
“remote support,” Appellant argues that “as [is] clear from at least the
[Staveley] abstract, the data is collected at a central site and placed in a data
base to that it can be accessed at th[e] central location and not moved
therefrom.” Br. 7. However, Appellant has not demonstrated that “remote
support” requires such movement.
For the foregoing reasons, Appellant has failed to show that the
Examiner erred in rejecting claims 1, 16, and 28 for obviousness over
Hayball in view of Staveley when the term “remote” in the preamble is
given weight.

Appeal 2008-3107
Application 10/391,559

18
E. Summary regarding rejection of claims 1, 16, and 28
The rejection of claims 1, 16, and 28 for obviousness over Hayball in
view of Staveley is affirmed whether or not the term “remote” in the
preamble is given weight.
THE DEPENDENT CLAIMS
Claim 2 reads:
2. The method of claim 1, wherein the method is
automatically initiated.
The Examiner found that Hayball describes automatic initiation in
column 7, lines 6-13. Final Action 12; Answer 4. As Appellants have not
addressed the Examiner’s reliance on this subject matter in Hayball, we are
affirming the rejection of this claim.
Claim 3 reads:
3. The method of claim 1, wherein the comparing step
comprises automatically detecting appearance, the
disappearance changes, and lack of changes between the
transferred and previously collected data representations of IT
infrastructure elements.
Regarding the rejection of this claim, Appellant makes only the above-
discussed, unconvincing argument that Hayball fails to disclose a “support”
system. Br. 14. The rejection of claim 3 is therefore affirmed.
Claim 4 depends on claim 1 and specifies that “the data representation
of at least part of the IT infrastructure is based on a relational data model.”
The Examiner (Final Action 12) relies on Hayball’s column 4, line 40 to
column 5, line 61, which discusses, inter alia, MIBs 601, 603, 607 (e.g.,
Appeal 2008-3107
Application 10/391,559

19
col. 5, l. 43). Appellant argues that “[w]hat is relied upon for rejection is
merely disclosure of what is used in the IT infrastructure. That is to say, if
the Examiner's position was correct, the Hayball et al. arrangement would
already be remote from some IT infrastructure and the need to cite Staveley
[sic] would not exist.” Br. 15. The assertion that the Examiner is relying on
what is used in Hayball’s IT structure is not understood. Figure 6 shows that
the “equipment” (i.e., network) 602 is separate from the network
management system (601-08). The rejection of claim 4 is therefore
affirmed. Claim 5 reads:
5. The method of claim 4, wherein IT infrastructure
elements are contained in the data representation and references
are included in the data representation which are assigned to at
least some of these IT infrastructure elements and reference
files which include IT-infrastructure-element-related
information.
The Examiner relies on Hayball’s column 10, lines 11-64 and
column 4, ll. 40-67. Final Action 13. Appellant, after quoting the claim
language, argues that “[t]his is at least true in that the data representation
cannot be the data the representation represents and must be a different
entity.” Br. 15. This “data representation” argument is unconvincing for the
reasons given above in the discussion of claims 1 and 3. The rejection of
claim 5 is therefore affirmed, as is the rejection of claims 6 and 8, as to
which Appellant repeats the “data representation” argument.

Appeal 2008-3107
Application 10/391,559

20
Claim 7 reads:
7. The method of claim 1, wherein the IT infrastructure
is located at an IT infrastructure site and the support service
provider is located at a support service provider's site and
wherein the data is transferred from the IT infrastructure site to
the support service provider's site via a network connection.
As to this claim, Appellant repeats the arguments made with respect to
claim 1. The rejection of claim 7 is therefore affirmed.
The rejection of claims 9-15 and 17-27 is affirmed because their
patentability is not separately argued. In re Nielson, 816 F.2d 1567, 1572
(Fed. Cir. 1987). Instead, Appellant merely asserts that those claims are
patentable over the cited prior art because they recite certain features. Br.
17-19. See 37 C.F.R. § 41.37(c)(1)(vii) (2006) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”).

DECISION
The Examiner’s rejection of claims 1-10, 12-22, and 24-28 under
35 U.S.C. § 103(a) for obviousness over Hayball in view of Staveley is
affirmed, as is the rejection of claims 11 and 23 under § 103(a) for
obviousness over Hayball in view of Staveley and North.
The Examiner decision that claims 1-28 are unpatentable over the
cited prior art is therefore affirmed.

Appeal 2008-3107
Application 10/391,559

21
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) (2008).

AFFIRMED

rwk

HEWLETT PACKARD COMPANY
P O BOX 272400, 3404 E. HARMONY ROAD
INTELLECTUAL PROPERTY ADMINISTRATION
FORT COLLINS, CO 80527-2400