Ex Parte Brady et al

Patent Trial and Appeal Board

May 7, 2013

11441998 (P.T.A.B. May. 7, 2013)

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.
11/441,998 05/26/2006 Bernard E. Brady JR. EMC-101.4(US)(C) 9828
7590 05/07/2013
KELLEY DRYE & WARREN LLP
400 ATLANTIC STREET
13th FLOOR
STAMFORD, CT 06901
EXAMINER
MACILWINEN, JOHN MOORE JAIN
ART UNIT PAPER NUMBER
2442
MAIL DATE DELIVERY MODE
05/07/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BERNARD E. BRADY JR., MARK JOHNSON,
MATTHEW STEVENS, and SCOTT DAVID VOLK
____________

Appeal 2011-002160
Application 11/441,998
Technology Center 2400
____________

Before ROBERT E. NAPPI, HUNG H. BUI, and LYNNE E. PETTIGREW,
Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 23-43.
1
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1
Claims 1-22 have been cancelled.
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STATEMENT OF THE CASE
Introduction
According to Appellants, their invention relates to networked
computer systems, and more particularly to methods and apparatus for
monitoring network activity. Spec. 1, ll. 10-11.
Claims 23, 33, and 40 are independent. Claim 23 is illustrative of the
invention (disputed limitation in italics):
23. A method, comprising:
collecting network activity data, comprising one or more
transmission events provided by one or more nodes of a
network, by a site of a plurality of sites of said network;
creating and storing by said site a plurality of
characterization records for said one or more transmission
network events, wherein at least one of said plurality of the
characterization records comprises one or more indicators of a
location or locations of one or more data elements comprised in
at least one of said one or more transmission events, and
wherein at least one of said plurality of the characterization
records is a site map comprising selected information about said
one or more transmission events collected by said site; and
sending said site map by said site to one or more sites of
said plurality of the sites to store,
wherein each site of said plurality of the sites is
configured to collect corresponding network activity data
comprising corresponding one or more transmission events
provided by corresponding one or more selected nodes of said
network, wherein at least one of said plurality of the sites is
configured to collect said corresponding network activity data
not collected by at least one another site of said plurality of the
sites.
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Prior Art Relied Upon
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lahr US 2002/0046273 A1 Apr. 18, 2002
Hellerstein US 6,836,894 B1 Dec. 28, 2004
Wiley US 7,017,185 B1 Mar. 21, 2006
Khanolkar US 7,127,743 B1 Oct. 24, 2006
Coates US 7,590,747 B2 Sept. 15, 2009
Rejections on Appeal
The Examiner has rejected claim 29 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Ans. 3-4.
The Examiner has rejected claims 23-25, 27, 28, 30-35, and 37-42
under 35 U.S.C. § 103(a) as being unpatentable over Khanolkar, Wiley, and
Lahr. Ans. 4-18.
The Examiner has rejected claims 26, 36, and 43 under 35 U.S.C.
§ 103(a) as being unpatentable over Khanolkar, Wiley, Lahr, and Coates.
Ans. 18-20.
The Examiner has rejected claim 29 under 35 U.S.C. § 103(a) as
being unpatentable over Khanolkar, Wiley, Lahr, and Hellerstein. Ans. 20-
21.
Issues on Appeal
Based on Appellants’ arguments, the issues on appeal are:
(1) Does Appellants’ Specification provide sufficient written
description support for “wherein said at least one of said one or more
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characterization records is an index indicating how to enter said at least one
of said one or more transmission events unabridged,” as recited in claim 29?
(2) Does Lahr teach “wherein each site of said plurality of the sites is
configured to collect corresponding network activity data comprising
corresponding one or more transmission events provided by corresponding
one or more selected nodes of said network, wherein at least one of said
plurality of the sites is configured to collect said corresponding network
activity data not collected by at least one another site of said plurality of the
sites,” as recited in independent claims 23, 33, and 40?
(3) Does Lahr teach “wherein one or more characterization records of
said plurality of the characterization records are created for corresponding
one or more predetermined periods of time for said collecting of said
network activity data,” as recited in dependent claims 24, 34, and 41?
(4) Does Wiley teach “wherein said site map comprises information
about said at least one of the one or more characterization records,” as
recited in dependent claims 25, 35, and 42?
(5) Does Lahr teach a site map that comprises “a device time record,”
as recited in dependent claims 26, 36, and 43?
(6) Does Coates teach a site map that comprises “a site directory
record” and “a device directory record,” as recited in dependent claims 26,
36, and 43?
(7) Does Hellerstein teach viewing “transmission events unabridged,”
as recited in dependent claim 29?
(8) Has the Examiner properly combined the references in rejecting
claims under 35 U.S.C. § 103(a)?
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We are not persuaded by
Appellants’ arguments. We concur with the Examiner’s findings and
conclusions provided in the Answer and adopt them as our own. We
highlight and address the following findings and conclusions for emphasis.
Written Description Rejection Under 35 U.S.C. § 112, First Paragraph
Claim 29
The Examiner finds that Appellants’ Specification lacks written
description support for “wherein said at least one of said one or more
characterization records is an index indicating how to enter said at least one
of said one or more transmission events unabridged,” as recited in claim 29.
Ans. 3-4, 21-23. Appellants’ arguments have not persuaded us that the
Examiner has erred. See App. Br. 9-10; Reply Br. 7-9. As found by the
Examiner, the portions of the Specification cited by Appellants show support
for an index and for storing unabridged versions of data, but they provide no
support for an index indicating how to enter transmission events unabridged.
Ans. 22-23. Accordingly, we sustain the Examiner’s written description
rejection of claim 29.
Obviousness Rejections Under 35 U.S.C. § 103(a)
Claims 23, 33, and 40
We are not persuaded by Appellants’ contention that the Examiner
erred in finding Lahr teaches:
wherein each site of said plurality of the sites is configured to
collect corresponding network activity data comprising
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corresponding one or more transmission events provided by
corresponding one or more selected nodes of said network,
wherein at least one of said plurality of the sites is configured to
collect said corresponding network activity data not collected
by at least one another site of said plurality of the sites,
as recited in claims 23, 33, and 40. See App. Br. 15-17; Reply Br. 10-21.
The Examiner has provided a comprehensive response to each of
Appellants’ arguments. See Ans. 28-42. In particular, the Examiner
explains that Appellants’ arguments related to collecting “raw information”
and “original transmission events” are unpersuasive as they do not
correspond to limitations recited in the claims. Ans. 34-35. As the
Examiner finds, both Mode 1 analyzers and Mode 2 analyzers in Lahr are
configured to collect network activity data as recited in the claims. Ans. 29-
30. We concur with the Examiner’s findings regarding the teachings of
Lahr.
We are also not persuaded by Appellants’ arguments that the
Examiner has not properly combined Khanolkar, Wiley, and Lahr in
rejecting the claims. See App. Br. 17-23; Reply Br. 21-34. The Examiner
has provided (i) articulated reasoning with rational underpinning for
combining the references, see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007), and (ii) a comprehensive response to each of Appellants’
arguments. Ans. 5-8, 23-29, 42-57. In particular, the Examiner finds that
combining the references to achieve the claimed invention involves using a
known technique to improve similar devices in the same way and applying a
known technique to a known device ready for improvement to yield
predictable results. Ans. 5-8; see KSR, 550 U.S. at 416-18. The Examiner
also supports this reasoning with ample citations to the relevant prior art
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references. Ans. 5-8. We note that Appellants’ argument that the Examiner
should have addressed the “problem to be solved” by Appellants’ invention
(e.g., App. Br. 19-21; Reply Br. 28) is misplaced because the nature of the
problem to be solved is only one of many considerations an examiner may
rely on in an obviousness analysis. See KSR, 550 U.S. at 416-21.
For these reasons, we sustain the Examiner’s rejection of claims 23,
33, and 40, as well as dependent claims 27, 28, and 37-39, not separately
argued with particularity.
Claims 24, 34, and 41
We are not persuaded by Appellants’ contention that the Examiner
erred in finding Lahr teaches “wherein one or more characterization records
of said plurality of the characterization records are created for corresponding
one or more predetermined periods of time for said collecting of said
network activity data,” as recited in claims 24, 34, and 41. See App. Br. 24-
26; Reply Br. 35-36. We concur with the Examiner’s finding that paragraph
[0046] of Lahr teaches this limitation. See Ans. 15-16, 61-62. As the
Examiner explains, Appellants’ argument that Lahr’s “processing of the log
data” does not correspond to “‘collecting network activity data’ (i.e., raw
data) as recited in [the] claims” (App. Br. 26, emphasis omitted), is
unpersuasive because (i) the argument is not commensurate with the scope
of the claims, which do not recite “raw data,” and (ii) Lahr teaches collecting
data in addition to processing data. Ans. 62-63.
We are also not persuaded by Appellants’ argument that the Examiner
has not provided sufficient rationale for combining references in rejecting
claims 24, 34, and 41. As explained with respect to the rejection of claims
23, 33, and 40, the Examiner has provided articulated reasoning with
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rational underpinning for combining Khanolkar, Wiley, and Lahr, supported
by ample citations to the references.
For these reasons, we sustain the Examiner’s rejection of claims 24,
34, and 41.
Claims 25, 35, and 42
We are not persuaded by Appellants’ contention that the Examiner
erred in finding Wiley teaches “wherein said site map comprises information
about said at least one of the one or more characterization records,” as
recited in claims 25, 35, and 42. See App. Br. 26-27; Reply Br. 36-37.
Appellants argue that Wiley discloses only one type of record, which cannot
be both a “site map” comprising information about a characterization record
as well as a characterization record itself. App. Br. 27. In response, the
Examiner explains how Wiley’s dataset satisfies both the “characterization
record” and “site map” limitations. Ans. 64-65. We note that, contrary to
Appellants’ argument (Reply Br. 36-37), the claim language does not
preclude a characterization record that is a site map containing information
about itself rather than information about a different characterization record.
Accordingly, we sustain the Examiner’s rejection of claims 25, 35, and 42.
Claims 26, 36, and 43
We are not persuaded by Appellants’ contention that the Examiner
erred in finding Lahr teaches a site map comprising a “device time record”
and Coates teaches a site map comprising a “site directory record” and a
“device directory record.” See App. Br. 27-29; Reply Br. 37. Appellants
argue that the references do not teach the records described in Appellants’
disclosure, which presents a specific format for each record type. App. Br.
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27-28 (citing Spec. 20, ll. 14-33). We agree with the Examiner, however,
that Appellants are improperly reading examples from the Specification into
the claims. Ans. 66-67; see Phillips v. AWH Corp., 415 F.3d 1303, 1323
(Fed. Cir. 2005) (“[A]lthough the specification often describes very specific
embodiments of the invention, we have repeatedly warned against confining
the claims to those embodiments.”). The Examiner has reasonably
interpreted the recited limitations to encompass the records described in the
portions of Lahr (“device time record”) and Coates (“site directory record”
and “device directory record”) cited by the Examiner. Ans. 66-68.
We are also not persuaded by Appellants’ argument that the Examiner
has not provided sufficient rationale for combining references in rejecting
claims 26, 26, and 43. See App. Br. 29-30; Reply Br. 38. The Examiner has
provided articulated reasoning with rational underpinning for combining
Khanolkar, Wiley, Lahr, and Coates, supported by ample citations to the
references. Ans. 18-19, 68-70.
For these reasons, we sustain the Examiner’s rejection of claims 26,
36, and 43.
Claim 29
We are not persuaded by Appellants’ contention that the Examiner
erred in finding Hellerstein teaches viewing “transmission events
unabridged,” as recited in claim 19. See App. Br. 31-32; Reply Br. 39-40.
As explained by the Examiner, Appellants’ argument that Hellerstein does
not disclose “originally captured raw unabridged data” is unpersuasive
because it is not commensurate with the scope of the claim. Ans. 70-71. In
addition, contrary to Appellants’ argument (App. Br. 31-32), the Examiner
has provided articulated reasoning with rational underpinning for combining
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Khanolkar, Wiley, Lahr, and Hellerstein, supported by ample citations to the
references. Ans. 21, 71-72. Accordingly, we sustain the Examiner’s
§ 103(a) rejection of claim 29.
CONCLUSION
On the record before us, we conclude the Examiner did not err in
rejecting (i) claim 29 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement, and (ii) claims 23-43 under
35 U.S.C. § 103(a) as being unpatentable over the various combinations of
references.
DECISION
The Examiner’s decision to reject claims 23-43 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).
AFFIRMED

ELD