Ex Parte Byrne et al

Patent Trial and Appeal Board

Jul 30, 2018

14066999 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/066,999 10/30/2013 Brian P. Byrne
52021 7590 08/01/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CAM920120094US2_8150-0473 3526
EXAMINER
HOUSTON, CLIFTON L
ART UNIT PAPER NUMBER
2453
NOTIFICATION DATE DELIVERY MODE
08/01/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN P. BYRNE, IVAN M. MILMAN,
MARTIN A. OBERHOFER, and SUSHAIN PANDIT
Appeal 2017-011170
Application 14/066,999 1
Technology Center 2400
Before SHARON PENICK, MICHAEL J. ENGLE, and
PHILLIP A. BENNETT, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-10, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to "[l]ifecycle management for blueprints of
information technology systems." Spec. Abstract. According to Appellants,
a blueprint "specifies the architecture of the IT system and the various
physical assets that are to be used in implementing the IT system," but "[f]or
a variety of reasons, there are often differences between the blueprint of the
1 Appellants state the real party in interest is IBM Corp. App. Br. 1.
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IT system and the [actual] physical assets that are ultimately used to
implement the IT system." Id. ,r 1.
Illustrative Claim
Claim 1 is illustrative and reproduced below with the limitations at
issue emphasized:
1. A method, comprising:
determining, using a processor, a component referenced
by a blueprint defining an information technology system;
determining a component tool used to manage the
component;
registering the component with a sensor within the
component tool; and
responsive to the sensor detecting a change in status of the
component within the component tool, sending a notification.
Related Appeal
The present application is a continuation of US 13/7 59, 11 7 ("the '11 7
application"), which is currently on appeal to the PTAB in Appeal No. 2017-
011130. That appeal involves substantially similar claims and arguments.
Rejections
Claims 1-10 stand rejected on the grounds of nonstatutory
obviousness-type double patenting over claims 11-32 of the co-pending
'117 application. Final Act. 5---6.
Claims 1, 3-5, and 7 stand rejected under 35 U.S.C. § I02(b) as
anticipated byNagami (US 2006/0168208 Al; July 27, 2006). Final Act. 7-
8.
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Claims 2 and 10 stand rejected under 35 U.S.C. § I03(a) as obvious
over the combination ofNagami and Arquie et al. (US 2004/0061701 Al;
Apr. 1, 2004). Final Act. 9--10.
Claim 6 stands rejected under 35 U.S.C. § I03(a) as obvious over the
combination ofNagami and Bratspiess et al. (US 2013/0262500 Al; Oct. 3,
2013). Final Act. 10-11.
Claim 8 stands rejected under 35 U.S.C. § I03(a) as obvious over the
combination ofNagami and Dominick et al. (US 2007/0153708 Al; July 5,
2007). Final Act. 11-12.
Claim 9 stands rejected under 35 U.S.C. § I03(a) as obvious over the
combination ofNagami, Dominick, and Basheer Ahamed et al. (US
2008/0162673 Al; July 3, 2008). Final Act. 12-13.
ISSUES
1. Did the Examiner err in finding Nagami discloses "a blueprint
defining an information technology system"; a "component tool"; and
"registering the component with a sensor," as recited in claim 1?
2. Did the Examiner err in finding Nagami discloses "the
component is referenced by the blueprint using a link to the component," as
recited in claim 4?
3. Did the Examiner err in finding Nagami discloses "a blueprint
lifecycle management system," as recited in claim 5?
4. Did the Examiner err in finding Nagami discloses "determining
a link to the component specified by the blueprint" and "verifying validity of
the link," as recited in claim 7?
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A) Claims 1 and 3
ANALYSIS
§ 102
a. "a blueprint defining an information technology system"
Claim 1 recites "determining ... a component referenced by a
blueprint defining an information technology system."
The Examiner finds Nagami's "network topology map" discloses the
claimed "blueprint defining an information technology system." Final
Act. 2, 7. The Examiner also cites to extrinsic evidence in construing the
term "blueprint" to include a network topology map. Final Act. 3 ( citing US
6,456,306 at 1 :64--2:8 ("Once the topology map is created, the map may be
used to ... provide a blueprint of the network")); Ans. 5 (further citing US
6,766,165 at 15:7-9 ("The network topology preferably serves as a
schematic or blueprint of the assets present on the network")).
Appellants argue "the network topology map ofNagami merely
describes the topology of the network" but "does not define an information
technology system." App. Br. 10, 11.
We are not persuaded by Appellants' argument. Although Appellants
argue the meaning of the word "defining" in the abstract, Appellants fail to
tie that definition to the body of the specification or identify any specific
information in a "definition" of an information technology system that is not
in Nagami's network topology map.
In the present application, the Specification explains:
A "blueprint" for an IT system is a diagram that represents and
defines an IT system such as IT system 135. The blueprint
defines the architecture of the IT system. The blueprint specifies
the particular components that, taken collectively, form the IT
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system. . . . The blueprint further can specify configuration
details, e.g., through annotation of the diagram, relating to the
components such as operating system type, version, application
software executing therein, as well as interconnectivity with
other components of the blueprint for the IT system.
Spec. ,r 23; Ans. 4 ( quoting same). Similarly, the Specification elsewhere
discloses that "[ t ]he blueprint specifies the architecture of the IT system and
the various physical assets that are to be used in implementing the IT
system." Spec ,r 1; Ans. 4 (quoting same).
On the other hand, the Specification also explains that "[f]or a variety
of reasons, there are often differences between the blueprint of the IT system
and the [actual] physical assets that are ultimately used to implement the IT
system." Spee. ,r 1 ; Ans. 4 ( quoting same).
[F]or example, the personnel responsible for implementing a
particular physical asset may choose a different implementation
than is specified in the blueprint. In other cases, the blueprint
changes, but the changes are not provided to the personnel
implementing the underlying physical assets affected by the
change. In still other cases, the personnel implementing the IT
system enhance and/ or modify the IT system during its lifecycle
without updating the blueprint. In each of the aforementioned
scenarios, the blueprint becomes inaccurate and largely obsolete.
The value and usefulness of the blueprint is significantly
diminished.
Spec. ,r 1; Ans. 4 ( quoting same). Thus, in view of the Specification, a
"blueprint" may be an abstraction of a theoretical IT system, but it does not
always accurately reflect the actual physical system. Appellants' analogies
and interpretation of the word "defining" fail to take this portion of the
Specification into account. See, e.g., Reply Br. 2-3.
Here, the Examiner finds that Nagami "discloses how initially all the
nodes, links, and LSPs [i.e., label switched path] can be discovered via the
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automatic network topology discovery and the information that is discovered
is displayed" in a "network topology map." Ans. 6 (citing Nagami ,r,r 75-
79, 82, Fig. 8); see also Final Act. 2 (citing Nagami ,r,r 35, 40, 41, 52, 63, 66,
82). The Examiner further finds that "Nagami i-f0067-i-f0070 discloses the
information collected during the automatic discovery phase" includes "node
information comprising node name, software version, type of Ethernet, etc.
is collected (i-f0067), link information comprising link name, port
information such IP addresses, interface names and types, etc. is collected
(i-f0068), and LSP (path) information comprising LSP name, tunnel ID,
bandwidth, etc. is collected (i-f0069)." Ans. 6.
Thus, just as in the present application, Nagami's network topology
map "specifies the particular components that, taken collectively, form the
IT system" and further specifies "configuration details" such as software
"version" and the "interconnectivity with other components." Spec. ,r 23;
see also Nagami ,r 5. Also like the present application (Spec. ,r 1), Nagami's
network topology map can become outdated due to "faults in a network" and
thus "requires a tool for monitoring the current state of the network and
activating an alarm" in the event the actual system diverges from the
network topology map. Nagami ,r 7; see also id. ,r,r 10, 5. Therefore,
Nagami discloses its network topology map provides the same features and
functionalities as the Specification's "blueprint." Moreover, Appellants
have not identified any specific information required to "define" an IT
system that is not already in Nagami's network topology map. Although
Nagami and the present application use different wording, it is well-settled
that an anticipating prior art reference need not use identical language as the
claim (i.e., an ipsissimis verbis or in haec verbis test is not required).
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Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10, 21 (Fed. Cir.
2012).
Given the record before us, Appellants have not persuaded us that the
Examiner erred in finding Nagami's network topology map discloses "a
blueprint defining an information technology system."
b. "component tool"
Claim 1 further recites "determining a component tool used to manage
the component."
Appellants argue that "[ c ]onsistent with both use of the term
'component' within the claimed 'component tool' and [paragraph 26 of the
Specification], each component tool is specific to a component of a
particular type" whereas "the 'network management server' of [Nagami] is
not component specific." App. Br. 17; see also Reply Br. 3.
Appellants' argument, however, is not commensurate with either the
Specification or the claim language. Contrary to Appellants' argument that
paragraph 26 of the Specification "clearly defines" the claimed component
tool (Reply Br. 3), the cited paragraph instead describes a particular
embodiment. Spec. ,r,r 26 ("Each of component tools 115-130 is
implemented as ... "), 21 ("FIG. 1 is a block diagram illustrating an
example" including "one or more component tools 115-130") ( emphasis
added). Instead, we agree with the Examiner that the Specification discloses
"[t]he first class of component tool includes operational tools" and
"[ e ]xamples of operational tools include, but are not limited to, a network
tool configured to manage networking device infrastructure of an IT
system." Id. ,r,r 26-27; Ans. 8. As the Examiner correctly points out (Ans.
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8), Appellants concede that Nagami's "'network management server' could
be considered a 'network tool."' App. Br. 18-19.
Moreover, we agree with the Examiner that Appellants' argument is
not commensurate with the scope of the claim as presently written. Ans. 8.
Claim 1 recites "a component" and "a component tool used to manage the
component." Thus, it is true that the component tool is "used to manage the
component," but nothing in the claim requires more than one component or
more than one component tool. Moreover, nothing in the claim limits the
component tool to managing only one "type" of component ( as Appellants
argue). See App. Br. 17.
Here, Nagami teaches a network tool used to manage a component.
Final Act. 3 (citing Nagami ,r,r 57, 58, 66); Ans. 8-9. Therefore, given the
Specification discussed above, Nagami discloses this limitation as claimed.
c. "registering the component with a sensor"
Claim 1 further recites "registering the component with a sensor
within the component tool."
The Examiner finds "Nagami i-f0057-i-f0058, [0066] discloses that
elements are registered with the information collection section (sensor)
within the network management server (component tool)." Final Act. 3.
Appellants argue that in the present application, "the claimed 'sensor'
receives both the registration and detects changes in status" whereas in
Nagami, "the registering is performed with the information storage
section 18 while the collection of data is performed by the information
collection section 12." Reply Br. 4--5 (citing Nagami ,r 66); see also App.
Br. 18.
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The Specification gives an example of an embodiment in which "once
a sensor has been deployed to the component tool, sentry 145 instructs the
sensor to register the component referenced by the blueprint that requires
monitoring within the component tool." Spec. ,r 40; see also id. ,r 46. "For
example, the blueprint lifecycle management tool can invoke the register
additional component(s) function of the sensor by sending a message
specifying the particular component(s) referenced by the blueprint and
managed by the component tool to be registered with the sensor for
monitoring." Id. ,r 57.
Nagami similarly discloses that "[t ]he information collection section
12 receives specification of the scope of nodes to be investigated ... and
acquires node information, link information, LSP information, or the like
from the specified nodes." Nagami ,r 66; see also id. ,r 58. Consistent with
the Specification, we agree with the Examiner that instructing the
information collection section 12 on which specific nodes to investigate
discloses registering those nodes with information collection section 12. 2
Ans. 9 (citing Nagami ,r,r 58, 66).
Accordingly, we sustain the Examiner's rejection of independent
claim 1, and its dependent claim 3, which Appellants argue "stand[ s] or
fall[s] together with independent claim 1." App. Br. 9.
2 In the event of further prosecution, the Examiner may wish to consider
whether multiple components within network management server 10 ( e.g.,
information collection section 12, difference judgment section 14,
information registration section 16, information storage section 18, and
possibly monitor section 40) collectively disclose the claimed sensor. For
example, Nagami discloses information storage section 18 as merely "a
database in which information can be stored." Nagami ,r 57.
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B) Claim 4
Claim 4 recites "the component is referenced by the blueprint using a
link to the component."
Appellants argue that "a link creates a connection between ... the two
ends" and that in claim 4, "'a link to the component' implies that one end of
the link is the 'component' and ... the other end of the link is the
'blueprint,"' whereas "the links ofNagami are between [two] nodes (i.e.,
components)." Reply Br. 9, 7; see also App. Br. 19-21.
We are not persuaded by Appellants' argument. We agree with the
Examiner that "these features ... which applicant relies upon are not recited
in the rejected claims." Ans. 10. "Based on the broadest reasonable
interpretation standard, the claim interpretation of this limitation is that a
node is described by the blueprint ( topology map) using a link to [a] node."
Id. at 11.
The Specification discloses:
[A] component referenced in a blueprint can include a link or
address for the component. The link can be executed or followed
to determine whether the link, and as such, the component
associated with the link, in the blueprint is still valid and
accurate. An invalid link for a component of the blueprint
indicates that the component is no longer used in the IT system
and the blueprint is out of date.
Spec. ,r 24 ( emphasis added); see also id. ,r,r 69-70. Similarly, the
Specification discloses that "the blueprint for IT system 13 5 includes a
reference, or link, to each of the components." Id. ,r 32 (emphasis added);
see also id. ,r,r 35 ("notified of any changes to referenced, or linked, assets"),
40 ("a list of all linked, or referenced, components"), 44 ("any component no
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longer linked or referenced"), 54. Thus, the Specification uses the term
"link" in the sense of a "reference" or "address" pointing to the component.
Nagami, on the other hand, uses the term "link" in the sense of a
"network element," specifically "links that connect between nodes" (e.g.,
between routers, gateways, or other network devices). Nagami ,r,r 2, 35, 56,
63. Nevertheless, N agami discloses "link information includes a link name,
port information on respective neighboring nodes connected by the link
(including IP addresses, inteiface names, inteiface types, or the like),
miscellaneous comments, and the like." Nagami ,r 68 ( emphasis added); see
also Ans. 11 (citing Nagami ,r,r 48-50 for the "information ... collected on
links connected to the nodes" and ,r 89 for "the links contain detailed
information about the component when a link is clicked"). Thus, Nagami's
links include a "reference" or "address" to the nodes, such as "IP addresses."
Moreover, Nagami's links are included in the components specified in
Nagami's network topology map (i.e., the claimed blueprint), so the network
topology map includes references to a node using an IP address. We
therefore agree with the Examiner that N agami discloses "the component is
referenced by the blueprint using a link to the component."
Accordingly, we sustain the Examiner's rejection of claim 4.
C) Claim 5
Claim 5 recites "a blueprint lifecycle management system."
Appellants argue "at no point does Nagami describe the lifecycle
management of a network topology map (i.e., the alleged blueprints)." App.
Br. 23.
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The Examiner finds Nagami's "monitor section which is the blueprint
lifecycle management system receives notifications indicating a state of
change of elements." Ans. 12 (citing Nagami ,r,r 43, 59, 61, 62).
The Specification discloses that in one embodiment, "blueprint
management system 100" includes a variety of different tools (i-f 21) that can
be used "to create blueprints for an IT system" (i-f 22) and to "maintain[]" a
blueprint by receiving reports of changes and notifying a user (i1i120, 25).
Likewise, Nagami discloses creating a network topology map and
maintaining that map by monitoring for changes and notifying the user of
any such changes. Ans. 12 (citing Nagami ,r,r 43, 49, 61, 62). Contrary to
Appellants' argument that Nagami's monitor section 40 "does not manage
topology maps" (Reply Br. 11 ), Nagami discloses that registered elements
are monitored for events and "if the event is of a registered element, the
monitor section 40 additionally displays the notification on the information
display section 24" and "[a] map view of the network topology may be used
for the display on the information display section 24." Nagami ,r 61. Thus,
Nagami's monitor section 40 displays changes in the network topology map
to the user.
Accordingly, we sustain the Examiner's rejection of claim 5.
D) Claim 7
Claim 7 recites "determining a link to the component specified by the
blueprint" and "verifying validity of the link."
The Examiner finds N agami' s "fault state monitoring of the links,
rewriting the information acquired by monitoring, and recording the
information on the fault state[] thus provides verifying validity of the link."
Ans. 13. Specifically, Nagami discloses:
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The monitor section 40 selectively monitors the current state
( e.g. presence or absence of fault, degree of the fault, ... or the
like) of nodes, links, LSPs, and other network elements
registered in the information storage section 18 ....
Alternatively or additionally, when informed of a change in state
that occurred in a certain element, the monitor section 40
displays the notification if the change occurred on one of the
elements registered in the information storage section 18.
Nagami ,r 59. For example, Nagami discloses "lists of classified links are
displayed" along with "information on the link," and "[t]he user can
therefore decide whether a link is to be registered ... as an object to be
monitored or not." Id. ,r 89.
In addition to the "link" argument, discussed above, Appellants argue
Nagami is "completely silent as to the validity of a link being verified."
App. Br. 24. According to Appellants, in the present application, "the
validity of a link is a proxy for the validity of the component," whereas "in
Nagami, whether the link is connected to the registered node says nothing
about the validity of the registered node." Reply Br. 13.
We are not persuaded by Appellants' argument. We agree with the
Examiner that
Nagami ,r 0049 discloses displaying errors/faults on links of
components/elements of the discovered topology if the link is not
connected to the registered node/ element/ component and the
user had indicated that the link is to be monitored. Thus, the
monitoring verifies the validity (faulty/broken/error) of the link
by collecting information/status/errors on or of the link.
Ans. 13. As to Appellants' argument that "whether [Nagami's] link is
connected to the registered node says nothing about the validity of the
registered node" (Reply Br. 13), we note that Appellants' Specification
discloses "[a]n invalid link for a component of the blueprint indicates that
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the component is no longer used in the IT system and the blueprint is out of
date." Spec. ,r 24; see also id. ,r 69. "Components that are no longer valid
can be displayed with an 'X' or colored red, for example." Id. ,r 73. Thus,
in the present application, invalid components can still be displayed in the
blueprint, and a link to an invalid component would be an "invalid link."
This is no different than the "faults" in Nagami when a link references, for
example, either (A) a previously registered node that is no longer in the
system or (B) a new node that has never been registered. See, e.g., Ans. 13;
Nagami ,r,r 59, 49. As discussed above, a prior art reference need not use
identical verbiage for there to be an anticipating disclosure. Whitserve, 694
F.3d at 21.
Accordingly, we sustain the Examiner's rejection of claim 7.
§ 103
Appellants state that claims 2, 6, and 8-10 "stand or fall together with
independent claim 1" and that the additional references "do[] not cure the
argued deficiencies ofNagami." App. Br. 26, 27, 28. As discussed above,
however, we are not persuaded that Nagami is deficient.
Accordingly, we sustain the Examiner's rejections of claims 2, 6, and
8-10.
Provisional Double Patenting
Appellants state that the ''provisional obviousness-type double
patenting rejection based upon related Patent Application No. 13/759, 117" is
"not the subject of the present appeal" and "Appellants will make a
determination as to the filing of a Terminal Disclaimer upon indication of
allowable subject matter." App. Br. 3 n.1.
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"Panels have the flexibility to reach or not reach provisional
obviousness-type double-patenting rejections." Ex parte Jerg, No. 2011-
000044, 2012 WL 1375142, at *3 (BPAI Apr. 13, 2012) (informative); see
also Ex parte Moncla, 95 USPQ2d 1884 (BP AI 2010) (precedential).
Because we affirm the rejections of all claims under either§§ 102 or 103, we
need not reach the provisional double patenting rejection.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-10.
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.
§ 41.50(±).
AFFIRMED
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