Ex Parte Narayana et al

Patent Trial and Appeal Board

Oct 31, 2018

14341550 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/341,550 07/25/2014
31625 7590 11/02/2018
BAKER BOTTS L.L.P.
PA TENT DEPARTMENT
98 SAN JACINTO BL VD., SUITE 1500
AUSTIN, TX 78701-4039
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Srilatha Narayana
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.
016295.5047 7902
EXAMINER
HUYNH,KIMT
ART UNIT PAPER NUMBER
2185
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
tracy .engberg@bakerbotts.com
juli. tran@BakerBotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte SRILATHA NARAYANA and KARTHIK VENKATASUBBA 1
Appeal2018-004786
Application 14/341,5502
Technology Center 2100
Before MAHSHID D. SAADAT, JAMES R. HUGHES, and
JASON J. CHUNG, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-30, which constitute all the claims
1 Appellants identify the real party in interest as Dell Products L.P. Appeal
Br. 3.
2 The application on appeal has an effective filing date of July 25, 2014.
Therefore, the Leahy-Smith America Invents Act (AIA) amendments to the
U.S. Code(§§ 102, 103) are applicable. See Manual of Patent Examining
Procedure (MPEP) § 2159. 02 (The amended sections "apply to any patent
application that contains or contained at any time a claim to a claimed
invention that has an effective filing date that is on or after March 16,
2013.").
Appeal2018-004786
Application 14/341,550
pending in this application. Final Act. 1. 3 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
Appellants 'Invention
The invention at issue on appeal "relates generally to information
handling systems and more particularly to communication of device
information" (Spec. 1 :2-3), including systems and methods (see Spec. 3 :2-
4:31) for transmitting device information using an out-of-hand
communication allowing a remote administrator to monitor and/or
troubleshoot a device (see Spec. 13:4--14:5). The system includes a device
comprising a physical port and configured to create an information (data)
packet including information associated with the device formatted in a
protocol associated with the physical port. The device transmits the packet
to a controller utilizing an out-of-band connection. The controller analyzes
the packet information to identify an issue with the device. See Spec. 3 :2-
4 :31; Abstract.
Illustrative Claim
Independent claim 1, reproduced below with key disputed limitations
emphasized, further illustrates the invention:
1. A system, comprising:
a device comprising a physical port, the device configured
to:
3 We refer to Appellants' Specification ("Spec.") filed July 25, 2014; Appeal
Brief ("Appeal Br.") filed Jan. 10, 2018; and Reply Brief ("Reply Br.") filed
Apr. 3, 2018. We also refer to the Examiner's Final Office Action ("Final
Act.") mailed July 13, 2017; and Answer ("Ans.") mailed Feb. 23, 2018.
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Appeal2018-004786
Application 14/341,550
create a first packet comprzszng first information
associated with the device, the first information being formatted
in a protocol associated with the physical port; and
transmit the first packet to a controller through a
communication medium, the communication medium being an
out-of-band connection;
wherein the controller analyzes the first information to
identify an issue with the device.
Rejections on Appeal
1. The Examiner rejects claims 1-3, 5, 7-9, 11, 13-16, 18, 20-22,
24, and 26-30 under 35 U.S.C. § I02(a)(2) as being anticipated by Slaight
(US 2009/0164690 Al, published June 25, 2009).
2. The Examiner rejects claims 4, 6, 10, 12, 17, 19, 23, and 25
under 35 U.S.C. § 103 as being unpatentable over Slaight.
ISSUE
Based upon our review of the record, Appellants' contentions, and
the Examiner's findings and conclusions, the issue before us follows:
Did the Examiner err in finding Slaight discloses "creat[ing] a first
packet comprising first information associated with the device, the first
information being formatted in a protocol associated with the physical port"
and transmitting the packet to a controller, such that "the controller analyzes
the first information to identify an issue with the device" within the meaning
of Appellants' claim 1 and the commensurate limitations of claims 7, 14,
and 20?
ANALYSIS
The Examiner rejects independent claim 1 (and independent claims 7,
14, and 20) as being anticipated by Slaight. See Final Act. 2-3; Ans. 13-14.
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Appeal2018-004786
Application 14/341,550
Appellants contend that Slaight does not disclose the disputed limitations of
claim 1. See Appeal Br. 7-1 O; Reply Br. 2--4. Specifically, Appellants
contend, inter alia, that the Examiner-cited portions of Slaight do not
describe creating a packet including device information (such that the device
information can be analyzed to identify a device issue). See Appeal Br. 8-9;
Reply Br. 3--4.
We agree with Appellants that the Examiner-cited portions of Slaight
(generally Slaight ,r,r 34, 35-see Final Act. 2-3; Ans. 13-14) do not
describe the disputed limitation of creating a packet including device
information. At most, the cited portions of Slaight describe receiving and
routing a packet (by a routing module) based on the information included in
the packet. See Reply Br. 3. Even if we presume a packet must be created
by Slaight's apparatus (see Slaight ,r 34}-a finding not made by the
Examiner-we are still left to speculate whether the packet includes the
required device information (first information associated with the device,
formatted in a protocol associated with the physical port, and providing data
such that the controller can identify an issue with the device). The Examiner
points to Slaight's paragraph 34 and reiterates that a routing module
recognizes packet information for routing the packet including, e.g., port
type, but does not explain in sufficient detail how Slaight's paragraph 34
describes the disputed claim limitation.
Consequently, we are constrained by the record before us and
determine that the Examiner erred in finding that the cited portion of Slaight
anticipates Appellants' claim 1. Independent claims 7, 14, and 20 have
limitations of commensurate scope. Dependent claims 2, 3, 5, 8, 9, 11, 13,
15, 16, 18, 21, 22, 24, and 26-30 depend on and stand with claims 1, 7, 14,
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Appeal2018-004786
Application 14/341,550
and 20. Accordingly, we do not sustain the Examiner's anticipation
rejection of claims 1-3, 5, 7-9, 11, 13-16, 18, 20-22, 24, and 26-30.
The Examiner rejects dependent claims 4, 6, 10, 12, 17, 19, 23, and 25
as being obvious over Slaight. See Final Act. 15-16. The Examiner relies
on the same reasoning as claim 1 (supra) for rejecting claims 4, 6, 10, 12,
17, 19, 23, and 25. See Final Act. 15-16. The Examiner does not state, and
has not established on this record, that the cited portion of Slaight suggests
the aforementioned disclosure deficiencies. Accordingly, we do not sustain
the Examiner's obviousness rejection of claims 4, 6, 10, 12, 17, 19, 23, and
25.
CONCLUSION
Appellants have shown the Examiner erred in rejecting claims 1-3, 5,
7-9, 11, 13-16, 18, 20-22, 24, and 26-30 under 35 U.S.C. § 102(a)(2).
Appellants have shown the Examiner erred in rejecting claims 4, 6,
10, 12, 17, 19, 23, and 25 under 35 U.S.C. § 103.
DECISION
We reverse the Examiner's rejections of claims 1-30.
REVERSED
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