Ex Parte Marce et al

Board of Patent Appeals and Interferences

Sep 21, 2010

10454496 (B.P.A.I. Sep. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte OLIVIER MARCE, CARLO DRAGO, LAURENT CLEVY,
OLIVIER LE MOIGNE, PHILLIPPE BERESKI, and
JEAN-FRANCOIS CARTIER
____________

Appeal 2009-006180
Application 10/454,496
Technology Center 2400
____________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-11. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We Affirm.
BACKGROUND
Appellants’ invention is directed to load distribution in a set of servers
implementing the same service. (Spec. 1, ll. 3-5).
Claim 1 is illustrative:
1. Network equipment for transmitting first data packets,
some of which contain service requests for a service
implemented by a plurality of servers, the network equipment
comprising:

means for receiving second data packets containing or
referring to executable code adapted to distribute said service
requests among said plurality of servers; and

means for deciding to transmit said second data packets
to another network equipment and to execute said executable
code.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Natarajan US 6,765,864 B1 Jul. 20, 2004
Duvvuru US 2003/0018766 A1 Jan. 23, 2003

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Appellants appeal the following rejections:
1. Claims 1-11 under 35 U.S.C. § 112, second paragraph, as indefinite for
failing to point out and distinctly claim the subject matter which
Appellants regard as the invention.
2. Claims 1-11 under 35 U.S.C. § 103(a) as unpatentable over Natarajan and
Duvvuru.

APPELLANTS’ CONTENTIONS
Appellants contend that one skilled in the art would understand the
scope and meaning of the claims. As such, it cannot be said the claim is
indefinite, it is merely broad. (App. Br. 15).
Appellants contend that the cited references fail to disclose “data
packets containing or referring to executable code.” (App. Br. 21).
Appellants also contend that the Examiner did not provide a proper
motivation to combine Natarajan and Duvvan because the addition of the
propagation of the QoS (Quality of Service) on the application service level
of Duvvuru would have no useful application in the TCP level system of
Natarajan. (App. Br. 25).
Appellants also contend that the cited references fail to teach or
suggest “means for deciding to transmit said second data packets to another
network equipment and to execute said executable code.”(App. Br. 26).

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ISSUES
1. Under §112, second paragraph, did the Examiner err in
concluding that the phrase “implementing a service” is indefinite?

2. Under §103, did the Examiner err by improperly combining the
Natarajan and Duvvuru references?

3. Under §103, did the Examiner err in finding that the cited
references would have taught or suggested “data packets containing or
referring to executable code?”

4. Under §103, did the Examiner err in finding that the cited
references would have taught or suggested “means for deciding to transmit
said second data packets to another network equipment and to execute said
executable code?”

FACTUAL FINDINGS
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows. We add the following factual findings:

1. Natarajan teaches the updated control information may include
any type of information, parameters and/or actions which may be used to
affect the operation of one or more network elements. (Col. 7, ll. 62-65).
2. Natarajan teaches that when event handler 272 detects newly
updated control information within data store (252) relating to network
element 204A, it notifies event server 270 which, in turn, notifies network
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element 204A of the updated control information. (Col. 11, ll. 40-44, Fig. 2).
In an alternative embodiment, Natarajan teaches that notification relating to
the availability of updated control information is passed to the network
element via event handler 274A. (Col. 11, ll. 46-48).

Additional findings of fact may appear in the Analysis that follows.

Claim Grouping
Based on Appellants’ arguments we select independent claims 1 and 6
as representative claims for the § 103 rejection. 37 C.F.R. § 41.37(c)(1)(vii).

ANALYSIS
Issue 1
We consider the question whether the claim phrase “implementing a
service” is indefinite. The Examiner contends that the claim language is
“broad and indefinite,” and that a person of ordinary skill in the networking
art would not be able to ascertain the scope of the limitation. (Ans. 4).
The breadth of a claim is not to be equated with indefiniteness. In re
Miller, 441 F.2d 689, 693 (CCPA 1971). Therefore, we agree with
Appellants’ arguments with respect to the Examiner’s rejection under §112.
(App. Br. 15). On this record, we find the Examiner erred in concluding that
the phrase “implementing a service” is indefinite. Accordingly, we reverse
the Examiner’s rejection of claims 1-11 under §112 second paragraph.

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Issue 2
We decide the question of whether the Examiner erred by improperly
combining the Natarajan and Duvvuru references.
Appellants contend that the addition of the propagation of the QoS
(Quality of Service) on the application service level of Duvvuru would have
no useful application in the TCP level system of Natarajan. (App. Br. 25).
At the outset, we observe that the Examiner merely looks to the
secondary Duvvuru reference as evidence that requests for a service
implemented by a plurality of servers and network equipment adapted to
distribute service requests among a plurality of servers, were features
known to artisans at the time of Appellants’ invention. (Ans. 5-6). Given
this context, we find the thrust of Appellants’ arguments attacking the
proffered combination of Natarajan and Duvvuru is grounded on an
erroneous premise, i.e., the premise that the Examiner’s rejection is based
upon a physical or bodily incorporation of Duvvuru into the invention of
Natarajan.
Appellants’ arguments do not take into account what the collective
teachings of the prior art would have suggested to one of ordinary skill in the
art and is therefore ineffective to rebut the Examiner’s prima facie case of
obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
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references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”) (citations
omitted, emphasis added). This reasoning is applicable here.
Moreover, we are of the view that Appellants’ purported improvement
over the prior art represents no more than the predictable use of prior art
elements (i.e., network elements for transmitting and receiving data packets,
executable code) according to their established functions, and thus would
have been obvious to one of ordinary skill in the art. See KSR Int’l Co. v.
Teleflex Inc. 550 U.S. 398, 417(2007) (“when a patent ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.”) (citing Sakraida v. AG Pro, Inc.,
425 U.S. 273, 282 (1976).
Thus, when we take account of the inferences and creative steps that a
person of ordinary skill in the art would have employed, we find the
Examiner has articulated an adequate reasoning with a rational underpinning
that reasonably supports the legal conclusion of obviousness.
Therefore, we find Appellants’ arguments unavailing regarding the
combinability of the cited references for essentially the same reasons
proffered by the Examiner in the Answer, and as further discussed above.
Accordingly, we find the Examiner did not err by improperly combining the
Natarajan and Duvvuru references under § 103.

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Issue 3
We decide the question whether the Examiner erred in finding that the
cited references teach or suggest “data packets containing or referring to
executable code.”
Based upon our review of the record, we find Appellants' argument
unconvincing that the cited references do not teach or suggest “data packets
containing or referring to executable code,” as claimed. We agree with the
Examiner’s findings with respect to this claim limitation. (Ans. 10). In
particular, Natarajan teaches that the updated control information may
include any type of information, parameters and/or actions which may be
used to affect the operation of one or more network elements. (FF 1).
Therefore, we find that the updated control information “actions” as
described by Natarajan at least strongly suggest use of “executable code.”
Moreover, we conclude that it would have been obvious that any
configuration action performed by a computer is implemented by executable
code. This view is further evidenced by the event handler 274A, which is
part of network element 204A. (Col. 10, ll. 40-43; Fig. 2). See also
“associated event notification agent.” (Col. 10, l. 43).
Based on the record before us, we find the Examiner did not err in
finding that the cited combination of references would have taught or
suggested “data packets containing or referring to executable code.”

Issue 4
Appellants also contend that the cited references fail to teach or
suggest “means for deciding to transmit said second data packets to another
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network equipment and to execute said executable code.” (App. Br. 26;
Claim 1).
We find, as noted by the Examiner, that Natarajan teaches when event
handler 272 detects newly updated control information (i.e., deciding to
transmit) within data store (252) relating to network element 204A, it
notifies event server 270 which, in turn, notifies network element 204A of
the updated control information. (FF 2). In an alternative embodiment,
Natarajan teaches that a notification relating to the availability of updated
control information is passed to the network element via event handler
274A. (Id.; see also Ans. 12).
Thus, the actual control information is passed to the network element,
based on the determination that updated control information is detected. (FF
2). As noted above, updated control information may include any type of
information, parameters and/or actions which may be used to affect the
operation of one or more network elements. (FF 1). We find these
teachings at least strongly suggest that the updated control information that
is retrieved by the network element may also encompass executable code.
Thus, we find that the cited combination of references would have taught or
at least suggested both deciding to transmit the second data packets and
executing the data packets within the meaning of representative claim 1.
Based on the above, we find the Examiner did not err in determining
that the cited references would have taught or suggested “means for deciding
to transmit said second data packets to another network equipment and to
execute said executable code.” (Claim 1).

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Appellants additionally contend that “claim 6 is even more clearly
distinguishable from Natarajan because claim 6 does not include the
recitation of ‘references to said executable code,’” (App. Br. 28). However,
we do not find this argument persuasive, given our finding supra that the
updated control information “actions” as described by Natarajan strongly
suggest the use of “executable code.” (See FF 1).

CONCLUSION
Based on the record before us, we find the Examiner did not err in
rejecting representative claims 1 and 6 under § 103. Accordingly, we
sustain the Examiner’s § 103 rejection of claims 1 and 6 and claims 2-5 and
7-11 which fall therewith.

DECISION
We reverse the Examiner’s rejection of claims 1-11 under 35 U.S.C.
§ 112, second paragraph.
We affirm the Examiner’s rejection of claims 1-11 under 35 U.S.C.
§ 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).

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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). See 37 C.F.R.
§ 1.136(a)(1) (2009).

ORDER
AFFIRMED

pgc

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