Ex Parte Lewis

Board of Patent Appeals and Interferences

Jun 17, 2009

09577225 (B.P.A.I. Jun. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LUNDY LEWIS
____________________

Appeal 2009-000412
Application 09/577,2251
Technology Center 3600
____________________

Decided: June 18, 20092
____________________

Before LEE E. BARRETT, LANCE LEONARD BARRY,
and JEAN R. HOMERE, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on May 23, 2000. The real party in interest is Computer Associates
Think, Inc. An oral hearing was held in this appeal on June 10, 2009.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-000412
Application 09/577,225

I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3 through 6, 10 through 13, and 30 through 33. Claims
2, 7 through 9, 14 through 18, 20, 28, and 29 have been canceled. Claims 19
and 21 through 27 have been withdrawn. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

Appellant’s Invention
Appellant invented a method for providing a service level
management (SLM) for a business process of an entity (e.g. Internet/
telephone service provider) by monitoring the performance parameters of
one or more components (transmission line, router) supporting a particular
service (Internet, phone) to thereby optimize the business process. (Spec. 2-
3.) As depicted in Figure 1, for each service (12) provided by the business
entity, a service parameter (15) (e.g. availability, response time, security,
integrity) representing a measure of performance of the service, a component
parameter (19) representing a measure of performance of a network
component supporting the service, and a relationship therebetween are
identified. (Spec. 23: 11-30.) A control agent (20) monitors the values of the
component parameters, and subsequently maps them into corresponding
values of the service parameters to thereby adjust the SLM. (Spec. 23: 21-
24.)
Illustrative Claim
Independent claim 1illustrates the invention as follows:
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1. A method of providing service level management for a business
process of an entity, the business process supported by a network, the
method comprising steps of:
identifying a plurality of services that the network provides for
the entity in performance of the business process, the business process
being supported by the plurality of services, each of .the plurality of
services being supported by a plurality of network components;
identifying, for at least one of the plurality of services, a service
parameter that provides a measure of a service level of the at least one
of the plurality of services;
identifying a component parameter that measures a
performance of one of the plurality of network components;
identifying a relationship between the component parameter
and the service parameter;
monitoring a value of the component parameter via a
management protocol understood by an electronic device associated
with the network; and
taking an action in the electronic device to determine the
service level of the at least one of the plurality of services from the
value of the component parameter to provide service level
management of the business process.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Ball US 6,446,200 Sep. 3, 2003

Rejection on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 1, 3 through 6, 10 through 13, and 30 through 33 stand
rejected under 35 U.S.C. § 102(e) as being anticipated over Ball, or in the
alternative, as being unpatentable over Ball under 35 U.S.C. § 103(a).

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Appellant’s Contentions
Appellant argues that Ball does not monitor or, otherwise, identify a
component parameter that measures the performance of a network
component in order to provide a service level corresponding thereto, as
recited in independent claim 1. (App. Br. 4-8, Reply Br. 1-3.) According to
Appellant, while Ball teaches collecting and monitoring data (e.g. data
flows, network traffic or percentage of availability for a router) from each of
a plurality of specific devices in a network, the collected data is aggregated
to subsequently determine the quality of the service of the network as a
whole. Therefore, Appellant submits that the determined service level in
Ball is based upon the aggregated component parameters of the measured
devices and not the performance of a specific device itself. (Id.)

Examiner’s Findings/Conclusions
The Examiner finds that Ball’s disclosure of measuring different kinds
of metrics from a network, including monitoring packet loss in a router to
determine the level of quality service required in a network, teaches the
claimed limitations. (Ans. 8.)

II. ISSUE
Has Appellant shown that the Examiner erred in finding that Ball
teaches identifying and monitoring a component parameter that measures the
performance of a network component to determine the service level of an
identified service to provide to the SLM of a business process, as recited in
independent claim 1?
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III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.

Ball
1. As depicted in Figure 1, Ball discloses various network devices
(12) coupled to an accounting process (14) that collects data of various types
and formats from the devices via flow data collectors (18), and transforms
the collected data into consistent accounting records. (Col. 3, ll. 9-35.)
2. As shown in Figure 3, Ball discloses an Internet service
provider arrangement (100) including an accounting server (13) that runs
the accounting process to collect flow data, user’s type connection data, and
actual network usage data. The collected data is analyzed to enable the
Internet service provider to develop new service models that can take into
consideration bandwidth usage, as well as the time of day. (Col. 5, ll. 45-67.)
3. As shown in Figure 29, the network (700) includes a plurality
of network monitors (702) for detecting packet loss in each network device
(e.g. router, switch, access concentrator) through which a packet passes.
Upon collecting such data from the devices, the accounting process (14)
provides a summary of the number of successfully transmitted packets
versus lost packets . (Col. 29, ll. 7-15; col. 30, l. 51- col. 31, l. 10.)
4. Ball also discloses a quality of service process (730) that allows
an administrator to observe the actual quality of service that the network
delivers to a customer by using the collected data in the accounting process
to thereby determine whether the observed quality of service (e.g.
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availability) matches the level of service specified in a policy enforcement
agreement. In other words, the metrics collected in the accounting process
are mapped to the defined policy. (Col. 31, ll. 11-38; col. 33, l. 57-col. 34, l.
6.)
5. Ball further discloses a one-to-one relationship between the
performance data measured for a particular device and the service level
provided under a policy. (Col. 33, ll. 22-44.)

IV. PRINCIPLES OF LAW
Claim Construction
"[T]he words of a claim 'are generally given their ordinary and
customary meaning.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (internal citations omitted). "[T]he ordinary and
customary meaning of a claim term is the meaning that the term would have
to a person of ordinary skill in the art in question at the time of the invention,
i.e., as of the effective filing date of the patent application." Id. at 1313
(citations omitted).
"[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)). Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d at 1323.
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Anticipation
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) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. 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.

Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999)
(internal citations omitted).

Obviousness
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
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obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art" and discussed circumstances in which a patent might be determined to
be obvious. Id. at 401 (citing Graham v. John Deere Co., 383 U.S. 1, 13-14
(1966)) (citation omitted). The Court reaffirmed principles based on its
precedent that "[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." Id. at 416. The operative question in this "functional approach" is
thus "whether the improvement is more than the predictable use of prior art
elements according to their established functions." Id. at 415, 417.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 416).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art." Id. at 1162 (citing KSR, 550 U.S. at 417-
418).

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V. CLAIM GROUPING
Appellants argue the patentability of the claims as a single group on
appeal. In accordance with 37 C.F.R. § 41.37(c)(1)(vii), we will consider
these claims as standing and falling with independent claim 1.

VI. ANALYSIS
Claim 1
Independent claim 1 recites, in relevant part, identifying and
monitoring a component parameter that measures the performance of a
network component in order to determine the service level of an identified
service to provide to the SLM of a business process.
As set forth in the Findings of Fact section, Ball discloses an
accounting process for monitoring devices on a network and for collecting
performance data for the same. (FF. 1-3.) Further, Ball discloses matching
the collected device performance data with policy data to determine whether
the quality of service provided by the network matches the level of service
specified in a service agreement. (FF. 4.) Additionally, Ball discloses a
one-to-one relationship between the performance parameters measured for a
particular device and the service level resulting therefrom. (FF. 5.) We
agree with the Examiner that the device data collected in the disclosed
accounting process relates to the performance of the devices associated
therewith. For example, the packet loss recorded or collected at each of the
devices scattered across the network indicates a lack of fidelity in each of
such devices. We find that such collected data in the accounting process to
be indicative of the performance of the devices in the network.
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Further, while Ball discloses aggregating the performance data for the
devices to determine the quality of a service in the network, we find that the
resulting level of service is a by-product of the performance data for each of
the specific devices. We find nothing in the claim language that precludes
the performance data for other devices from being used in conjunction with
an identified device to determine the quality or the level of an identified
service in the network. Nevertheless, we find that Ball’s disclosure of
establishing a one-to-one relationship between the service level and the
performance data of a specific device expressly teaches the claimed
limitations. We are, therefore, satisfied that Ball’s disclosure of matching of
such device performance data with policy data to determine the quality of
service being delivered fairly and reasonably teaches, or at least suggests,
that the performance data for a specific device is being used to determine the
level of service to provide to the SLM in a business process. It follows that
Appellants have not shown that the Examiner erred in finding that Ball
anticipates or renders unpatentable independent claim 1.

VII. CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in finding that
Ball anticipates or, in the alternative, renders unpatentable claims 1, 3
through 6, 10 through 13, and 30 through 33.

VIII. DECISION
We affirm the Examiner’s decision to reject claims 1, 3 through 6, 10
through 13, and 30 through 33.
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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

PEB

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