Ex Parte Collins et al

Patent Trial and Appeal Board

Oct 24, 2016

12493324 (P.T.A.B. Oct. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/493,324 0612912009 Mark A. Collins
33438 7590 10/26/2016
TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP
P.O. BOX 203518
AUSTIN, TX 78720
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.
DC-16601 9165
EXAMINER
SHMATOV, ALEXEY
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
10/26/2016 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):
tmunoz@tcchlaw.com
kchambers@tcchlaw.com
heather@tcchlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK A. COLLINS, MANOJ GUJARATHI, and
RA VI D. KUMAR
Appeal2015-005592
Application 12/493,324
Technology Center 2100
Before ST. JOHN COURTENAY III, THU A DANG, and
JOHN D. HAMANN, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-3, 6-10, 13, and 14. Claims 4, 5, 11, and 12 are
cancelled. Claims 15-30 are withdrawn. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Invention
The disclosed and claimed invention on appeal "relates to information
handling systems and more particularly to surrogate management
capabilities for heterogeneous systems management support." (Spec. i-f 1 ).
Appeal2015-005592
Application 12/493,324
Representative Claim
1. A method for performing heterogeneous systems management
compnsmg:
configuring, via a surrogate systems management system,
creation of a suite of systems management functionality the surrogate
systems management system executing via a proxy environment;
hosting a vendor provided management console onsite, within a
firewall, via a services appliance, the hosting being performed
virtually, the services appliance comprising a Remote Monitoring and
Management appliance; and,
creating correlating metadata by leveraging analytics
intelligence of the services appliance, the correlating metadata tying
the vendor provided management console to a respective vendor
provided management mechanism; and wherein
an operator managing services operations can launch the
console remotely from a managed services network operations center
(NOC); the vendor provided management console being virtualized on
the services appliance;
the surrogate systems management system provides a
dynamically tiered services library, the dynamically tiered services
library comprising an inventory collection and dynamic analytics
portion, the inventory collection and dynamic analytics portion of the
surrogate systems management system creating a correlation between
a vendor system and systems management offering.
Rejection
Claims 1-3, 6-10, 13, and 14 are rejected under 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of Fitzgerald
(US 2008/0134178 Al; June 5, 2008) and Patrick (US 2002/018869 Al;
Dec. 12, 2002).
2
Appeal2015-005592
Application 12/493,324
Grouping of Claims
We decide the appeal of all claims rejected under § 103 on the basis of
representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We find Appellants' arguments unpersuasive for the reasons
discussed infra. We adopt as our own: (1) the findings and legal conclusions
set forth by the Examiner in the action from which this appeal is taken, and
(2) the findings, legal conclusions, and explanations set forth in the Answer
in response to Appellants' arguments (Ans. 2-7). We highlight and address
specific findings and arguments for emphasis in our analysis below.
Rejection of Independent Claim 1under35 U.S.C. § 103(a)
Issue: Under 35 U.S.C. § 103(a), did the Examiner err in finding the
cited combination of Fitzgerald and Patrick would have taught or suggested
the limitations recited by Appellants on pages 4 and 5 of the principal Brief?
At the outset, we find the Examiner provides sufficiently detailed
mappings of the claim terms to the corresponding features found in the cited
references to support the prima facie case of obviousness. The Federal
Circuit guides, "the prima facie case is merely a procedural device that
enables an appropriate shift of the burden of production." Hyatt v. Dudas,
492 F.3d 1365, 1369 (Fed. Cir. 2007).
[A ]ll that is required of the office to meet its prima facie
burden of production is to set forth the statutory basis of the
rejection and the reference or references relied upon in a
sufficiently articulate and informative manner as to meet the
3
Appeal2015-005592
Application 12/493,324
notice requirement of [35 U.S.C.] § 132. As the statute itself
instructs, the examiner must "notify the applicant," "stating
the reasons for such rejection," "together with such
information and references as may be useful in judging the
propriety of continuing prosecution of his application."
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
Here, the Examiner's burden of establishing a prima facie case is met
by "adequately explain[ing] the shortcomings [the USPTO] perceives so that
the applicant is properly notified and able to respond." Hyatt, 492 F.3d at
1370.
In reviewing the record, we find the Examiner has met the notice
requirement of 35 U.S.C. § 132 by providing a detailed statement of
rejection with sufficiently clear mappings and explanations. (Final Act. 3-
7).
We note it is only "when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection" that the prima facie burden has not been met and the rejection
violates the minimal requirements of 35 U.S.C. § 132. Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990). Such is not the case here.
In traversing the Examiner's rejection of representative claim 1, we
note Appellants: (1) reproduce paragraphs 30 and 43 of the Fitzgerald
reference, (2) merely assert the claim limitations are not taught or suggested
by Fitzgerald or Patrick, and (3) fail to respond to the detailed, specific
findings set forth in the rejection of claim 1 (Final Act. 3-7), wherein the
Examiner maps the claim terms to corresponding features found in the cited
references. (Id.).
In the Answer, the Examiner echoes our assessment regarding the
conclusory form of Appellants' arguments:
4
Appeal2015-005592
Application 12/493,324
The Examiner notes that Appellant's arguments fail to comply
with 3 7 CPR 1.111 (b) because they amount to a general
allegation that the claims define a patentable invention without
specifically pointing out how the language of the claims
patentably distinguishes them from the references. Instead, the
Appellant makes a general allegation that the prior art of record
doesn't teach various claim limitation that are reproduced on
pages 4 and 5 of the Appeal Brief. The Appellant does not
provide any sort of discussion or reasoning explaining how the
prior art does not allegedly teach the limitations in question.
(Ans. 2-3, "Response to Arguments").
Because Appellants fail to provide any evidentiary basis to support
their assertions, we find Appellants' arguments are merely conclusory, and
do not meet the burden of showing error in the Examiner's prima facie case
of obviousness. (App. Br. 3-5). To the extent Appellants reproduce
paragraphs 30 and 43 of Fitzgerald (App. Br. 3--4), Appellants fail to
specifically explain why the Examiner has erred. Mere conclusory
statements that are unsupported by factual evidence are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Therefore, we agree with the Examiner (Ans. 2-3) that Appellants
have failed to substantively traverse the merits of the rejection (the
Examiner's legal conclusion of obviousness, based on underlying factual
findings) by specifically explaining why the Examiner erred. Under our
PT AB procedural rule: "A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim." 37 C.F.R. § 41.37(c)(l)(iv). 1
1 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
5
Appeal2015-005592
Application 12/493,324
The Examiner additionally concludes the claim language is very
broad. (Ans. 3). 2 We agree, and note Appellants' liberal use of claim terms
such as: "surrogate systems management system ... a suite of systems
management functionality ... a vendor provided management console ... a
services appliance, ... , the services appliance comprising a Remote
Monitoring and Management appliance . .. creating correlating metadata by
leveraging analytics intelligence of the services appliance ... a
managed services network operations center (NOC) ... a dynamically tiered
services library ... comprising an inventory collection and
dynamic analytics portion, the inventory collection and dynamic analytics
portion of the surrogate systems management system creating a correlation
between a vendor system and systems management offering." (Claim 1,
emphasis added).
In the Briefs, Appellants have not pointed to definitions of these
terms, nor have Appellants substantively distinguished the recited claim
language over the specific corresponding features found by the Examiner in
the references. (Final Act. 3-7).
It is the Appellants' burden to precisely define the invention, not the
PTO's. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Although a
patent applicant is entitled to be his or her own lexicographer of patent claim
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.").
2 Because "applicants may amend claims to narrow their scope5 a broad
construction during prosecution creates no unfairness to the applicant or
patentee.'~ In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (internal citation omitted).
6
Appeal2015-005592
Application 12/493,324
terms, in ex parte prosecution it must be within limits. In re Corr, 347 F.2d
578, 580 (CCPA 1965). The applicant must do so by placing such
definitions in the specification with sufficient clarity to provide a person of
ordinary skill in the art with clear and precise notice of the meaning that is to
be construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).3
Because Appellants essentially repeat the same pattern of argument in
the Reply Brief (merely reciting the claim language and asserting it is not
taught by the cited references), we find Appellants have not met their burden
of coming forward with evidence or argument to rebut the Examiner's legal
conclusion of obviousness. We note that arguments not made are considered
waived. See 37 C.F.R. § 41.37(c)(l)(iv); see also In re Watts, 354 F.3d
1362, 1368 (Fed. Cir. 2004).
If an Appellant fails to present arguments on a particular issue - or,
more broadly, on a particular rejection - the Board will not, as a general
matter, unilaterally review those uncontested aspects of the rejection. Ex
parte Frye, No. 2009-006013, 2010 WL 889747, at *4 (BPAI Feb. 26, 2010)
(precedential) (citing, interalia,Hyattv. Dudas, 551F.3d1307, 1313-14
(Fed. Cir. 2008) (the Board may treat arguments Appellant failed to make
for a given ground of rejection as waived)).
3 Our reviewing "court has repeatedly 'cautioned against limiting the
claimed invention to preferred embodiments or specific examples in the
specification."' Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346-47
(Fed. Cir. 2015) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
1313, 1328 (Fed. Cir. 2002)).
7
Appeal2015-005592
Application 12/493,324
Therefore, after considering the totality of the record, including the
evidence relied on by the Examiner, with due consideration to the
insufficiency of the arguments presented, we find Appellants have not
shown error in the Examiner's prima facie case of obviousness. Therefore,
on this record, we find a preponderance of the evidence supports the
Examiner's underlying factual findings and ultimate legal conclusion of
obviousness regarding representative claim 1.
Accordingly, we sustain the rejection of representative claim 1, and
the rejection of the associated grouped claims, which fall with claim 1. See
Grouping of Claims, supra.
Reply Brief
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1-2) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause. See 37
C.F.R. § 41.41(b)(2).
DECISION
We affirm the Examiner's rejection of claims 1-3, 6---10, 13, and 14
under 35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
8