Ex Parte Behera et al

Board of Patent Appeals and Interferences

Jan 10, 2012

10768934 (B.P.A.I. Jan. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MANAS KUMAR BEHERA andYONG BOON HO
____________

Appeal 2009-010837
Application 10/768,934
Technology Center 2400
____________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
JAMES R. HUGHES, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-30. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

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A. INVENTION
The invention at issue on appeal relates to a method for managing a
network using a plurality of databases that includes selecting a first one of
the plurality of databases that contains a topology of the network, as an
active database that is accessible, selecting a second one of the plurality of
databases that contains a topology of the network, as a working database for
receiving topology updates, discovering a topology of the network, and
updating the second database with the discovered topology, and selecting the
second database as the active database. (Spec. 1).

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A method for managing a network using a plurality of
databases, the method comprising:
selecting a first one of the plurality of databases that
contains a topology of the network, as an active database that is
accessible for providing information related to the topology of
the network in a READ only mode;
selecting a second one of the plurality of databases that
contains a topology of the network, as a working database for
receiving topology updates;
discovering a topology of the network, and updating the
second database with the discovered topology; and
selecting the second database as the active database.
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C. REFERENCES
The Examiner relies on the following references as evidence:
Galand US 6,038,212 Mar. 14, 2000
Beaudoin U.S. PG Pub 2003/0112958 A1 Jun. 19, 2003
Gupta US 7,330,859 B2 Feb. 12, 2008

D. REJECTIONS

Claims 9-14, 16, 17, 22, and 23 are rejected under 35 U.S.C. 102(e) as
being anticipated by Beaudoin.
Claims 1-3, 5-8, 18, 19, 21, and 24-30 are rejected under 35 U.S.C.
103(a) as being unpatentable over Beaudoin and Gupta.
Claims 4 and 20 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Beaudoin and Gupta, further in view of Galand.
Claim 15 is rejected under 35 U.S.C. 103(a) as being unpatentable
over Beaudoin and Galand.

PRINCIPLES OF LAW
35 U.S.C. § 102
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
“Anticipation of a patent claim requires a finding that the claim at issue
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‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d
1342, 1346 (Fed Cir. 1999) “In other words, if granting patent protection on
the disputed claim would allow the patentee to exclude the public from
practicing the prior art, then that claim is anticipated, regardless of whether
it also covers subject matter not in the prior art.” Id. (citations omitted).
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). "[T]he PTO gives
claims their 'broadest reasonable interpretation.'" In re Bigio, 381 F.3d
1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000)). "Moreover, limitations are not to be read into the claims from
the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).

35 U.S.C. § 103 “What matters is the objective reach of the claim. If
the claim extends to what is obvious, it is invalid under § 103.” KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007). To be nonobvious, an
improvement must be “more than the predictable use of prior art elements
according to their established functions.” Id. at 417.
Invention or discovery is the requirement which
constitutes the foundation of the right to obtain a patent . . .
unless more ingenuity and skill were required in making or
applying the said improvement than are possessed by an
ordinary mechanic acquainted with the business, there is an
absence of that degree of skill and ingenuity which constitute
the essential elements of every invention.

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Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v.
Greenwood, 52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited
with approval by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).

ANALYSIS
ANTICIPATION
Appellants argue independent claims 9, 13, and 22 together as a
group. (App. Br. 6). Therefore, we select independent method claim 9 as
the representative claim and will address Appellants’ arguments with respect
thereto. Appellants argue that Beaudoin does not anticipate independent
claim 9 related to exchanging connections of the working and active
databases. (App. Br. 6). Appellants contend that the local database 6 of
Beaudoin is a snapshot of the global database 5 and that the connections of
the global database 5 and the local database 6 are static so that there is no
teaching of exchanging connections of the global database and the local
database. (App. Br. 6-7).
Appellants contend that the "connection" in Beaudoin is the clients'
connection and that in contrast to Appellants’ exemplary embodiments are
directed to exchanging the connections of plural databases (i.e., working and
active databases) to a network. (App. Br. 7). Yet, Appellants do not identify
any express definition for "exchanging the connections [to a network]" nor
do Appellants expressly recite any details of the exchange of network
connections.
The Examiner maintains that the claim language requires only that a
"connection" is "exchanged" between a working and an active database. The
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Examiner maintains that paragraphs [0028], [0030], [0032], and [0033]
teach connectivity switching, moving a connection between a first and 2nd
database source. (Ans. 17-18). We agree with the Examiner and find that
the network management tool 10 describes presentation of altered versions
of the base model representation or topology of the network. Beaudoin
teaches that the information set 16 may be entered into the global database 5
by having the communication devices 14 and links 13contained in the
telecommunications networks layout 3 directly communicate with the global
database which is essentially a real-time update along with historical status.
[0030]. Beaudoin further describes that the local database 6 receives and
stores portions of the information set 16 which are of interest or selected by
a user. [0033].

Appellants disagree that Beaudoin anticipates claim 9 and further
contend that the changing of a client computer connection and the Beaudoin
patent does not constitute "exchanging connections of the working and
active databases" where the connections of the working database and the
active database are exchanged so that the former working database becomes
the active database, and the former active database becomes the working
database. (App. Br. 7-8). We disagree with Appellants' claim interpretation
and find no express limitations in the language of independent claim 9 to
support Appellants’ contention. Nor have Appellants identified any express
definition to support Appellants’ contention.
Furthermore, we note that the language of independent claim 9 merely
requires a single occurrence of an exchange of connections between the
databases rather than a repeated exchange of connections. Therefore, we
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agree with the Examiner that the client will connect to the first database in
order to select new and more recent topology data to work with the second
database thereby exchanging connections. (Ans. 19).

Appellants argue that the
local database 6 cannot directly receive the updates from the
data collector 4 because of the static connection of the global
database 5 and the local database 6. Therefore, Beaudoin fails
to teach or suggest any ability for exchanging connections of
the working and active database as recited in Appellants claim
9.

(App. Br. 8). Again, Appellants' argument is not commensurate in scope
with the language of independent claim 9 since independent claim 9 does not
identify the connections, does not detail the exchange, and does not
expressly recite any data collectors or outputs. Therefore, Appellants’
argument is not persuasive of error in the Examiner's showing of
anticipation of independent claim 9. Since Appellants have not set forth
separate arguments for patentability of claims 10-12, 22, and 23, we will
group those claims as falling with independent claim 9.

With respect to dependent claim 12, Appellants contend that
"Beaudoin does not teach or suggest that the local database 6 and the global
database 5 are partitioned from the same database." (App. Br. 8). The
Examiner maintains that the Beaudoin reference teaches that these databases
are created using "subsets" which are equivalent to the creation of
"partitions" where a "subsets/snapshot" of the information contained in the
global database is used for partitioning the database. (Answer 18). We
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agree with the Examiner's interpretation and find that claim 12 does not
recite when this step is performed and is broad enough to read upon the
initial formation of both the global and local databases of Beaudoin.
Therefore, we sustain the rejection of dependent claim 12.
With respect to independent claim 13, Appellants merely repeat the
language of claim 13 and set forth similar arguments advanced with respect
to independent claim 9. Thus, it is our view that Appellants have made a
general allegation in the Appeal Brief that the above-mentioned claims
define a patentable invention without specifically pointing out how the
language of the claims patentably distinguishes over the cited references. A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See 37 CFR
§ 41.37(c)(1)(vii). We find Appellants' appeal is based on a series of
conclusory arguments presented in the Brief. This form of argument is
ineffective in establishing the patentability of the claims on appeal. See Ex
parte Belinne, No. 2009-004693, slip op. at 7-8 (BPAI Aug. 10, 2009)
(informative). Since we found Appellants’ arguments unpersuasive with
respect to independent claim 9, we similarly find them unpersuasive with
respect to independent claim 13 and dependent claims 14, 16, and 17.

OBVIOUSNESS
With respect to independent claims 1, 18, and 24 rejection under
obviousness, Appellants repeat the language of independent claim 1 and
provide similar arguments as advanced with respect to independent claim 9
and provide arguments that neither prior art patent discloses the use of a
"working database" and an "active database" wherein either database can be
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selected as the "active database" and wherein the active database provides
information in a "READ only mode." (App. Br. 11). The Examiner
maintains that the Gupta reference is merely relied upon for the READ only
mode and the Examiner finds the teachings of Beaudoin to be suggestive of
limited functionality of the local active database which is not modified while
the needed information is retrieved from the database and manipulated by
the graphical user interface. (Ans. 19). We agree with the Examiner's
findings and conclusions and find that Appellants’ labels for the databases
does not limit the functionality in the claimed method where the preamble of
independent claim 1 recites “managing a network,” but the remainder of the
claim does not manage a network. As disclosed by Beaudoin, data and
databases may be updated, copied/read, and written to. The local and global
database of Beaudoin may be called/labeled “active” or “working” and the
labels switched with no loss of functionality since nothing in the recited
method changes or manages the network. Therefore, Appellants’ argument
is not persuasive of error in the Examiner's showing of obviousness of
independent claim 1.
Additionally, Appellants argue that
[b]ecause the Beaudoin and Gupta patents are not directed to
the problem Appellant has addressed, these patents (considered
individually or in combination) do not teach or suggest the
presently claimed feature of changing a selection among two
databases, with an "active" database being a READ only
database and the other database receiving updates.

(App. Br. 11). But, Appellants’ argument is not commensurate in
scope with the language of independent claim 1 since the claim does
not recite that “with an ‘active’ database being a READ only database
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and the other database receiving update” since the claim ends with
BOTH databases being “active” and the original active database was
not made as the “working” database. Therefore, Appellants’
argument is not persuasive of error in the Examiner's showing of
obviousness of independent claim 1.
Appellants argue that Beaudoin and Gupta patents are not
directed to the problem Appellants have addressed, and these patents
(considered individually or in combination) do not teach or suggest
the presently claimed feature of changing selection among two
databases, with an "active" database being a READ only database and
the other database "receiving updates." (App. Br. 11). We disagree
with Appellants' contention and find no support for the asserted
"problem." Therefore, Appellants’ argument is not persuasive of
error in the Examiner's showing of obviousness of independent claim
1.
Since Appellants have not set forth separate arguments for
patentability of independent claims 18, 24, or dependent claims 2, 3, 5-7, 19,
21, and 25-30, we will group those claims as falling with independent claim
1.

With respect to dependent claim 8, Appellants merely repeat the claim
language and asserts that the relied upon portions of Beaudoin does not
anticipate the subject matter of claim 8. (App. Br. 12). We note that the
rejection is based upon obviousness and not anticipation. Appellants’
conclusory statement does not identify how the relied upon portions of
Beaudoin do not render the claimed invention obvious. We further note that
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dependent claim 8 does not identify how the comparing step is implemented.
The Examiner has identified the teachings of Beaudoin found in figures 5
through 7. These figures describe the comparing of data from two databases
where this comparison may be performed visually by a user.
Appellants have not set forth separate arguments for patentability of
dependent claims 4, 15, and 20. Therefore, we grouped these claims as
falling with their respective parent claims.

CONCLUSION
For the aforementioned reasons, the Appellants have not shown that
the Examiner erred in the anticipation rejection of independent claim 9 or
the obviousness rejection of independent claim 1.

VII. ORDER

We affirm the anticipation rejection of claims 9-14, 16, 17, 22, and
23; and the obviousness rejections of claims 1-8, 15, 18-21, and 24-30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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