Ex Parte Minhazuddin

Board of Patent Appeals and Interferences

Mar 27, 2012

10232453 (B.P.A.I. Mar. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/232,453 08/30/2002 Muneyb Minhazuddin 401063-A-01-US
(Minhazudd
6088
47523 7590 03/27/2012
JOHN C. MORAN, ATTORNEY, P.C.
4120 EAST 115 PLACE
THORNTON, CO 80233-2623
EXAMINER
HIGA, BRENDAN Y
ART UNIT PAPER NUMBER
2441
MAIL DATE DELIVERY MODE
03/27/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MUNEYB MINHAZUDDIN
____________________

Appeal 2010-001508
Application 10/232,453
Technology Center 2400
____________________

Before: ST. JOHN COURTENAY III, CAROLYN D. THOMAS, and
JAMES R. HUGHES, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001508
Application 10/232,453

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-32. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
The invention on appeal is directed to an apparatus and method for
monitoring network elements utilized for the transmission of voice
information. (Spec. 1). Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method for monitoring a switching network having a
plurality of network elements, comprising the steps of:

interrogating the plurality of network elements to
determine a subset of the plurality of network elements
transporting voice information;

creating a network topology illustrating all of the
plurality of network elements; and

removing all of the plurality of network elements except
for the subset of the plurality of network elements from the
network topology.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jacoby
Sajina
US 5,768,552
US 6,604,139
Jun. 16, 1998
Aug. 5, 2003
Appeal 2010-001508
Application 10/232,453

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REJECTIONS
Claims 1, 2, 7-9, 14, 15, 18-20, 25-27, and 32 stand rejected under 35
U.S.C. §103(a) as being unpatentable over the combination of Jacoby and
Sajina.
Claims 3-6, 10-13, 16, 17, 21-24, and 28-31 stand rejected under 35
U.S.C. §103(a) as being unpatentable over the combination of Sajina,
Jacoby, and Applicant's admitted prior art (AAPA).

GROUPING OF CLAIMS
Based on Appellant’s arguments in the Briefs, we decide the appeal
for representative claims 1, 8, 15, 19, and 26. See 37 C.F.R.
§ 41.37(c)(1)(vii).
ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal regarding the
obviousness rejection of representative claim 1:
Under §103, did the Examiner err in finding that
the combination of Jacoby and Sajina would have
taught or suggested “removing all of the plurality
of network elements except for the subset of the
plurality of network elements from the network
topology,” within the meaning of claim 1?

Appeal 2010-001508
Application 10/232,453

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ANALYSIS

Regarding representative claim 1, Appellant restates the Examiner’s
response in the Advisory Action of Dec. 4, 2006, and further contends:
What the Examiner proposes is a manual method of utilizing
the system of Jacoby to identify networks transporting voice
information and to delete these identif[ied] networks as whole
networks not to delete network elements within a switching
network as is recited in claim 1. As the Advisory Action states,
the "delete networks" option of Jacoby allows for the deletion
of entire networks not network elements within a single
switching network.
(App. Br. 6, emphasis added).

At the outset, we observe that representative claim 1 does not recite
“to delete network elements within a switching network.” Instead, claim 1
recites “removing all of the plurality of network elements except for the
subset of the plurality of network elements from the network topology”, in
the context of “[a] method for monitoring a switching network having a
plurality of network elements.” (emphasis added). Thus, Appellant is
arguing limitations that are not claimed. (App. Br. 6). Moreover, Appellant
does not advance an affirmative statement that clearly indicates what
specific claim language of claim 1 is not taught or suggested by the
Examiner’s proffered combination of Jacoby and Sajina. (Id.).
Regarding the primary Jacoby reference, the Examiner finds:
The control window including 1) "a protocol function", which
manipulates the viewing window to display only the traffic
associated with a particular type of network protocol (see col.
11, lines 34-44), thus if the viewing window is only displaying
the traffic associated with a particular type of network protocol,
then implicitly all other network elements have to be removed
from the viewing window.
(Ans. 7-8, emphasis added).
Appeal 2010-001508
Application 10/232,453

5
The Examiner looks to the secondary Sajina reference for
teach[ing] monitoring Voice over Internet Protocol (VOIP)
calls (col. 1, lines 5-8) operating on a network topology, using a
graphical user interface (see Fig. 4-7) that provides a voice
protocol filtering mechanism (col. 3, line 69-col. 4, line 3),
which allows an operator to view Quality of Service parameters
associated with VOIP calls (col. 7, lines 26-36).
(Ans. 4).
We note that the Examiner’s rejection is based on the combined
teachings and suggestions of Jacoby and Sajina. However, Appellant only
mentions Jacoby in the single paragraph traversing the Examiner’s rejection
of claim 1 on page 6 of the principal Brief (i.e., the portion of the argument
presented for claim 1 that does not merely restate the Examiner’s response).
To the extent that Appellant may be disputing a claim limitation, one cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
Moreover, we find Appellant’s general form of argument fails to
traverse the specific underlying factual findings the Examiner has set forth in
reaching the ultimate legal conclusion of obviousness regarding
representative claim 1. (See Ans. 4-5). As pointed out by the Examiner
(Ans. 4, 7-8), Jacoby expressly discloses that by “[u]sing the ‘protocol’
function 524, traffic associated only with the protocols selected will be
displayed in viewing window 410.” (Col. 11, ll. 37-40, emphasis added).
As also pointed out by the Examiner (Ans. 4), the secondary Sajina
reference teaches monitoring VOIP calls operating on a network topology
(col. 1, ll. 5-8) using a graphical interface (Figs. 4-7) that provides a voice
protocol filtering mechanism. (Col. 3, l. 69 – col. 4, l. 3).
Appeal 2010-001508
Application 10/232,453

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On this record, we find Appellant has failed to present substantive
arguments and supporting evidence persuasive of Examiner error regarding
the aforementioned disputed limitation. See In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011)(“we hold that the Board reasonably interpreted Rule
41.37 to require more substantive 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.”).
We decline to examine the claims sua sponte, looking for distinctions
over the prior art. Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed.
Cir. 1991) (“It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”). See also Ex parte Belinne, No. 2009-
004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009) (informative).
Although Appellant presents additional arguments in the Reply Brief
(2-4), “[t]he failure to raise all issues and arguments diligently, in a timely
fashion, has consequences.” Ex parte Borden, 93 USPQ2d 1473, 1475
(BPAI 2010) (informative decision). See Hyatt v. Dudas, 551 F.3d 1307,
1314 (Fed. Cir 2008) (Arguments not made are considered waived).
For these reasons, we sustain the Examiner’s § 103 rejection of
representative claim 1, and claims 2-7 (not argued separately) which fall
therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Claims 8-14

Appellant contends that “Jacoby simply does not disclose that such
operations be performed automatically by processor-executable instructions”
(App. Br. 7, emphasis added).
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However, we note that a claimed invention is not patentable if it
merely automates a prior art process. Broadly providing an automatic way
to replace a manual activity accomplishing the same result is not sufficient
to distinguish an automated process over the prior art. In re Venner, 262
F.2d 91, 95 (CCPA 1958). An improved product in the art is obvious if that
“product [is] not [one] of innovation but of ordinary skill and common
sense.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007).
Similarly, it is obvious for one of ordinary skill in the art to combine
an old electromechanical device with modern electronic circuitry in order to
“update it using modern electronic components in order to gain the
commonly understood benefits of such adaptation, such as decreased size,
increased reliability, simplified operation, and reduced cost.” Such a
“combination is thus the adaptation of an old idea or invention [ ] using
newer technology that is commonly available and understood in the art . . . .”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007).
This reasoning is applicable here. We observe that independent claim
8 recites the identical limitation as claim 1: “removing all of the plurality of
network elements except for the subset of the plurality of network elements
from the network topology.” Therefore, we sustain the Examiner’s § 103
rejection of representative claim 8 for the same reasons discussed above
regarding independent claim 1, and in light of the controlling case law cited
above regarding the automation of a prior art manual activity. Dependent
claims 9-14 (not argued separately) fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).

Appeal 2010-001508
Application 10/232,453

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Claims 15-18, 19-25, and 26-32
Regarding claims 15-32, Appellant essentially restates the same
general form and points of argument that we have fully addressed above
regarding independent claims 1 and 8. (App. Br. 7). Therefore, we sustain
the Examiner’s § 103 rejection of representative claims 15, 19, and 26 for
the same reasons discussed above regarding independent claims 1 and 8, and
in light of the controlling case law cited above regarding the automation of a
prior art manual activity. Dependent claims 16-18, 20-25, and 27-32 (not
argued separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

DECISION
We affirm the Examiner’s § 103 rejections of claims 1-32.
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(f).
ORDER
AFFIRMED

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