Ex Parte Bresniker et al

Patent Trial and Appeal Board

May 20, 2013

10678464 (P.T.A.B. May. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte KIRK MICHAEL BRESNIKER, 7
RICARDO ESPINOZA-IBARRA, 8
and ANDREW HARVEY BARR 9
___________ 10
11
Appeal 2011-004423 12
Application 10/678,464 13
Technology Center 3600 14
___________ 15
16
17
Before ANTON W. FETTING, MEREDITH C. PETRAVICK, and 18
MICHAEL W. KIM, Administrative Patent Judges. 19
FETTING, Administrative Patent Judge. 20
DECISION ON APPEAL 21
Appeal 2011-004423
Application 10/678,464

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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 28, 2010) and Reply Brief (“Reply Br.,” filed November 1,
2010), and the Examiner’s Answer (“Ans.,” mailed August 30, 2010).
Kirk Michael Bresniker, Ricardo Espinoza-Ibarra, and Andrew Harvey 2
Barr (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of 3
claims 1-20, the only claims pending in the application on appeal. We have 4
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 5
The Appellants invented a form of rack equipment management 6
(Specification 1:7). 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 1, which is reproduced below [bracketed matter and some 9
paragraphing added]. 10
1. A computer-implemented rack equipment management 11
information coordination method comprising: 12
[1] formulating a rack equipment management plan 13
that includes equipment management and usage policies 14
and 15
establishes an association between 16
a rack equipment performance action 17
and 18
a trigger event, said formulating performed 19
using a computer 20
to analyze said equipment management and 21
usage policies, 22
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wherein at least a portion of said equipment 1
management and usage policies are 2
automatically received 3
by said computer 4
from a customer database, 5
and wherein said rack equipment management plan is a 6
plan 7
for managing rack equipment operating 8
characteristics 9
while said rack equipment is in operation; 10
[2] automatically detecting and retrieving, 11
with said computer, 12
rack equipment description information 13
from at least one component comprising said rack 14
equipment, 15
wherein said rack equipment description information 16
comprises 17
an identification of equipment type of said at least 18
one component; 19
and 20
[3] storing, 21
with said computer, 22
said rack equipment description information 23
and 24
said rack equipment management plan. 25
26
The Examiner relies upon the following prior art: 27
O’Kane US 6,366,919 B2 Apr. 2, 2002
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Application 10/678,464

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Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over 1
O’Kane. 2
Claims 8-20 stand rejected under 35 U.S.C. § 102(b) as anticipated by 3
O’Kane. 4
Claims 8-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable 5
over O’Kane and Admitted Prior Art. 6
Claim 17 stands rejected under 35 U.S.C. § 112, second paragraph, as 7
failing to particularly point out and distinctly claim the invention. 8
ISSUES 9
The issues of anticipation and obviousness turn primarily on whether 10
O’Kane shows either explicitly or implicitly, or shows it was otherwise 11
predictable, to include equipment identification in the information it 12
automatically retrieves, and if not, whether patentable weight is afforded 13
such information. The issues also turn on the construction of limitation [2]. 14
The issue of indefiniteness turns on whether the Specification provides 15
structural support in the form of algorithms to implement the claim 17 16
means for automatic retrieval and processing. 17
FACTS PERTINENT TO THE ISSUES 18
The following enumerated Findings of Fact (FF) are believed to be 19
supported by a preponderance of the evidence. 20
21
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Facts Related to the Prior Art 1
O'Kane 2
01. O’Kane is directed to management and maintenance of 3
telecommunication sites and in particular to automated systems 4
for managing remotely located sites. O'Kane 1:13-15. 5
02. O’Kane provides a remote telecommunication site management 6
system which generates a maintenance program for the site from 7
information collected about the site configuration and equipment. 8
O’Kane 1:49-52. 9
03. O’Kane updates equipment data and configuration according to 10
the completion of the work request. O’Kane 1:62-65. 11
04. FIG. 2 illustrates a process and system to handle work requests 12
required for a technician. A computer may receive from an 13
automatic schedule for maintenance tasks a work request for a 14
review of or change or update related to a remote telecom site. 15
Once a work request is generated, the computer responds with a 16
retrieval of appropriate pertinent data relevant to the work request 17
such as data relevant to the site from data base, particular skills 18
required from the technician for complex telecom equipment 19
located at the site, parts availability and their locations in case of a 20
repair requirement. O’Kane 4:66 – 5:13. 21
05. The survey data base accumulates data as to the inventory of 22
telecom equipment and racks at anyone particular site. This data 23
typically includes site identification, the particular room where the 24
telecom equipment is located, the number of cages in which the 25
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telecom racks are located and the particular telecom equipment 1
installed in the racks. Digital images of the telecom equipment 2
and racks are stored in a library and available spares and field 3
feedback data stored on a per site basis. O’Kane 7:4-12. 4
06. O’Kane’s database records the identification and location of 5
each rack and the identification and location of each piece of 6
equipment installed on each rack. O’Kane 8:66 – 9:27. 7
07. FIG. 11 shows a rack configuration process involving a 8
selection for a new rack or a change to a previously installed and 9
configured rack. The site, room, aisle and particular rack number 10
are assigned and a display presents a listing for equipment already 11
installed and a collection of different equipment to be chosen from 12
for installation on a new rack. A rack can be fully displayed by 13
using the scroll bar and has its installation positions identified by 14
so-called U numbers, with each U dimension being of a particular 15
amount as is well known in the field; preferably, however, the 16
installation positions are identified with standard dimensions 17
referenced to a particular location on the rack. O’Kane 9:11-27. 18
08. For either a new rack or modification of an existing rack the 19
telecom selection process involves the selection of telecom 20
equipment and involves selecting a desired equipment in the list, 21
dragging the selection to a location on the rack or clicking the rack 22
location on the displayed rack to insert the equipment. A similar 23
process can be used to either remove equipment or move it to a 24
new location on the rack. O’Kane 9:28-37. 25
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09. Once a rack has been provided with telecom equipment, or 1
during the rack insertion process, a validation process takes place. 2
The validation involves making sure that inserted telecom 3
equipment does not exceed the power limitations, that the 4
allocated space on the rack is suitable for the particular equipment, 5
and that the impact of the telecom equipment on the cooling 6
capabilities of the site is within acceptable limits. Other rules and 7
requirements may apply such as making sure that the form factor 8
applicable to a particular telecom equipment is not violated by the 9
available space or designated installation area on the rack. In case 10
of a valid rack design, the system produces a CAD drawing of the 11
rack. O’Kane 9:38-50. 12
ANALYSIS 13
Claims 1-7 rejected under 35 U.S.C. § 103(a) as unpatentable over O'Kane. 14
Claims 8-20 rejected under 35 U.S.C. § 102(b) as anticipated by O'Kane. 15
Claims 8-20 rejected under 35 U.S.C. § 103(a) as unpatentable over O'Kane 16
and Admitted Prior Art. 17
The independent claims are methods or systems that formulate a plan, 18
establish a relation between an action and a trigger event, detect and retrieve 19
rack equipment description information and store that information. The 20
Examiner rejected the structural claims under novelty because the particular 21
input to a structural claim cannot distinguish the claim over the art. The 22
Examiner rejected the process claims under obviousness, finding the input to 23
be predictable to one of ordinary skill. 24
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We are not persuaded by the Appellants’ argument that 1
O’Kane does not teach or suggest "automatically detecting and 2
retrieving, with said computer, rack equipment description 3
information from at least one component comprising said rack 4
equipment, wherein said rack equipment description 5
information comprises an identification of equipment type of 6
said at least one component," as is recited in Claim 1. 7
Appellants understand that O'Kane may describe automatically 8
determining and monitoring a power load on a rack (see col. 6, 9
lines 40-53 of o 'Kane). However, Appellants submit that the 10
automatic monitoring of O’'Kane only automatically monitors 11
operating information (such as a temperature or DC power 12
load). Appellants submit this is very different than, and does 13
not teach or suggest, "automatically detecting and retrieving, 14
with said computer, rack equipment description information 15
from at least one component comprising said rack equipment, 16
wherein said rack equipment description information comprises 17
an identification of equipment type of said at least one 18
component," (emphasis added) as is recited in Claim 1. 19
Furthermore, to any extent that O’Kane discusses population or 20
retrieval of equipment operating information, such as 21
equipment type, O’Kane indicates that such processes involve a 22
survey request for manual collection and input of information. 23
Appeal Br. 12. Similar arguments are at Appeal Br. 18-28. Appellants’ 24
argument appears to have two underlying contentions: (1) O’Kane does not 25
automatically detect equipment identification, and (2) any equipment 26
identification information O’Kane might be shown to detect was manually 27
entered. 28
As to the first contention, O’Kane does not explicitly recite reading an 29
equipment identifier, but O’Kane does explicitly recite storing such 30
identification information in its databases and automatically retrieving the 31
required equipment information in response to a triggered work order. 32
Further, as the Examiner found, the independent claims do not recite any 33
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functional application of whatever information is retrieved. As all such 1
information is in reality no more than binary data, absent any functional 2
usage of such data, the data is non-functional descriptive material, deserving 3
of no patentable weight. 4
Appellants take issue with this finding of non-functionality, and this is 5
tied to the second contention. Appellants contend that the identification 6
“first has to be automatically detected and retrieved from the at least one 7
component.” Appeal Br. 16. This is a misreading of the claim limitation 8
[2]. The phrase “from at least one component comprising said rack 9
equipment” modifies the phrase “rack equipment description information,” 10
not “automatically detecting and retrieving.” 11
O’Kane’s descriptive information is clearly from the equipment so 12
described, as limitation [2] recites. Appellants’ Specification supports this 13
construction, and we are unable to find how the Specification would support 14
Appellants’ alternate proposed construction. Specification 9:1-16 cited by 15
Appellants as support for this limitation only recites storing on a computer 16
readable medium without indicating where that medium is located or how it 17
is read. 18
Appellants contend that O’Kane’s description of manually entering data 19
shows the data is entered into a database, implying O’Kane reads data from 20
a database rather than the equipment itself. Appellants’ own Specification at 21
13 similarly describes such manual entry. Thus both the plain reading of the 22
claim and the Appellants’ Specification support construing limitation [2] as 23
simply reciting that the description information be information found from 24
the equipment, however entered, and wherever that information resides. 25
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Claim 17 rejected under 35 U.S.C. § 112, second paragraph, as failing to 1
particularly point out and distinctly claim the invention. 2
Claim 17 recites a means for controlling automatic retrieval of rack 3
equipment related information; a means for communicating said rack 4
equipment related information; a means for storing said rack equipment 5
related information; and a means for processing information and 6
instructions. The Examiner found that “the specification does not provide 7
the algorithm for the claimed means for controlling, processing as such 8
appellants have failed to adequately describe sufficient structure for 9
performing the functions claimed.” Ans. 5. 10
With regard to the means for communicating and storing, these functions 11
are sufficiently low level operations performed by computers that the mere 12
disclosure of a computer system is sufficient. Katz v Am. Airlines, 639 F. 3d 13
1303, 1316 (Fed. Cir. 2011). 14
With regard to the means for automatic retrieval and processing, these 15
operations are at a level that requires an algorithm to implement. Appellants 16
content that 17
the structure and function of "a means for processing 18
information and instructions ... " is described at a number of 19
locations in the specification and figures, including system 300 20
and repository management component 320 of Figure 3; page 21
10, line 23-page 11, line 2; and page 12, lines 16-25. Appellants 22
additionally submit that further description of this feature can 23
be found at least at: Page 12, line 25 - page 13, line 25; page 15, 24
line 1 - page 16, line 7; and Figure 4 (e.g., processor 451, 25
memory 452, input component 453, and communications port 26
459) 27
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Reply Br. 3. Specification 10:23 – 11:2 and 12:16-25 describe system 1
connections and repetition of the same high level function in the means plus 2
function elements. Specification 12:25 – 13:25; 15:1 – 16:7 describe system 3
components. None of the cited Specification passages or Figures show 4
algorithms for performing the recited means for automatic retrieval and 5
processing. Thus, there is no description of the underlying structure in the 6
Specification to support the recited means. 7
CONCLUSIONS OF LAW 8
The rejection of claims 1-7 under 35 U.S.C. § 103(a) as unpatentable 9
over O’Kane is proper. 10
The rejection of claims 8-20 under 35 U.S.C. § 102(b) as anticipated by 11
O’Kane is proper. 12
The rejection of claims 8-20 under 35 U.S.C. § 103(a) as unpatentable 13
over O’Kane and Admitted Prior Art is proper. 14
The rejection of claim 17 under 35 U.S.C. § 112, second paragraph, as 15
failing to particularly point out and distinctly claim the invention is proper. 16
DECISION 17
The rejection of claims 1-20 is affirmed. No time period for taking any 18
subsequent action in connection with this appeal may be extended under 37 19
C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2011). 20
AFFIRMED 21
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JRG 24