Ex Parte Roelens et al

Patent Trial and Appeal Board

Mar 20, 2014

11225053 (P.T.A.B. Mar. 20, 2014)

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.
11/225,053 09/14/2005 Wim Gabriel Andy Roelens LUTZ 200770US01 2140
48116 7590 03/20/2014
FAY SHARPE/LUCENT
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
EXAMINER
HWANG, JOON H
ART UNIT PAPER NUMBER
2447
MAIL DATE DELIVERY MODE
03/20/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WIM GABRIEL ANDY ROELENS and
SYLVIE ADRIANA LOUISA MARIA BRACKE
____________

Appeal 2011-008711
Application 11/225,053
Technology Center 2400
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008711
Application 11/225,053

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STATEMENT OF THE CASE
Wim Gabriel Andy Roelens, et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 11-18. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 11, reproduced below, is illustrative of the subject matter on
appeal.
11. A customer device for exchanging messages with a server at
several layers comprising a first layer and a second layer, the
customer device comprising:
a customer device transmitter operative to, at the first layer,
transmit a request message to the server and, at the second layer,
transmit a request message to the server; and
a customer device receiver operative to, at the first layer,
receive a response message from the server and, at the second layer,
receive a response message from the server, wherein the second layer
is higher than the first layer and the customer device transmitter is
operative to:
transmit a first message signal comprising a request message at
the first layer and a request message for requesting from said server a
task the customer device needs to perform, at the second layer;

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jan. 10, 2011) and Reply Brief (“Reply Br.,” filed May 2, 2011),
and the Examiner’s Answer (“Answer,” mailed Mar. 1, 2011).
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receive a second message signal comprising a response message
at the first layer and a response message including said task said
customer device needs to perform, at the second layer;
transmit a third message signal comprising a request message at
the first layer and a request message for asking said server for a
plurality of argument values said customer device needs to perform
said task, at the second layer;
receive a fourth message signal comprising a response message
at the first layer and a response message including said plurality of
argument values said customer device needs to perform said task, at
the second layer; and
transmit a fifth message signal comprising a request message at
the first layer and a request message for setting the result of execution
of said task on the server, at the second layer.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Harvey
Okmianski

US 7,054,924 B1
US 7,600,003 B1
May 30, 2006
Oct. 6, 2009
Bernstein et al, “Technical Report DSL Forum TR-069 CPE WAN
Management Protocol,” May 2004. [Bernstein]
The following rejections are before us for review:
1. Claim 18 is rejected under 35 U.S.C. §101 as being directed to non-
statutory subject matter.
2. Claims 11-18 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Bernstein, Harvey, and Okmianski.

Appeal 2011-008711
Application 11/225,053

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ISSUES
Did the Examiner err in rejecting claim 18 under 35 U.S.C. §101 as
being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 11-18 under 35 U.S.C.
§103(a) as being unpatentable over Bernstein, Harvey, and Okmianski?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claim 18 under 35 U.S.C. §101 as being directed to non-
statutory subject matter.
Claim 18 is drawn to a “computer program product comprising a
computer readable medium storing instructions.”
The Examiner found that the subject matter recited in claim 18 covers
transmission type media. Ans. 4. Because transmission media does not fit
within at least one of the four statutory subject matter categories under
35 U.S.C. § 101, the Examiner found that the claims are directed to
nonpatentable subject matter. See In re Nuijten, 500 F.3d 1346, 1357 (Fed.
Cir. 2007).
The Appellants argue that “[c]laim 18 relates to a computer program
product that manipulates various devices, such as a system (1), a customer
device (2), and a server (3). Support for this claim may be found, for
example, at page 5, lines 11-29, of the specification. And in this case, the
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invention is limited to non-transitory media.” App. Br. 10 (similar argument
is made in the Reply Brief).
Neither page 5, lines 11-29 nor page 7, lines 10-14 (cited in the Reply
Brief) define the claim phrase “computer program product comprising a
computer readable medium storing instructions” as being limited to the
exclusion of transmission media. In light of the Specification, the claim
phrase “computer program product comprising a computer readable medium
storing instructions” is not reasonably broadly construed to exclude
transmission media from its scope.
Thus, in light of the Specification, we agree with the Examiner that
the claimed computer readable storage medium is reasonably broadly
construed as covering a signal. Cf. Ex parte Mewherther (PTAB
2013)(precedential),
http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd2012_007692_preced
ential.pdf .
For the foregoing reasons, we are not persuaded by the Appellants’
argument as to error of the rejection of claims 18 as directed to
nonpatentable subject matter under 35 U.S.C. § 101.

The rejection of claims 11-18 under 35 U.S.C. §103(a) as being
unpatentable over Bernstein, Harvey, and Okmianski.
The Appellants present arguments challenging the rejection of the
three independent claims: device claim 11 (App. Br. 11), method claim 17
(App. Br. 13) and product claim 18 (App. Br. 16). The dependent claims are
not treated. In each case, the arguments are the same. In all cases the dispute
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is over a request from a server a task a customer device needs to perform. In
claim 11, this is a function an element is operative to perform; in claim 17, it
is a step; and in claim 18, it is an instruction. We will focus on claim 11 but
our analysis is equally applicable to the other claims.
The Examiner takes the position that Bernstein discloses all the claim
limitations but “does not explicitly disclose a task; said task said customer
device needs to perform; values for said task needed; and transmit a message
for setting results of said task on the server” (Ans. 8) for which Harvey is
relied upon. The Examiner also found that “Bernstein and Harvey do not
explicitly disclose transmitting a message for asking a server for values said
customer device needs to perform; receiving a message with said values said
customer device needs to perform” (Ans. 9) and to meet those claim
limitations the Examiner relied on Okmianski. According to the Examiner,
based on Bernstein in view of Harvey, it would have been obvious to
one of ordinary skill in the art at the time the invention was made to
utilize the teachings of Harvey to the system of Bernstein in order to
automatically provision a device on a customer's premises by utilizing
XML and HTTP for applying configuration information based on a
customer's equipment request.
Ans. 8-9. And
based on Bernstein in view of Harvey, and further in view of
Okmianski, it would have been obvious to one of ordinary skill in the
art at the time the invention was made to utilize the teachings of
Okmianski to the system of Bernstein and Harvey in order to
configure devices that connect to a network by remotely configuring
devices connecting to a network via determined parameter values.
Ans. 9.
The claim limitation at issue is
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transmit a first message signal comprising a request message at the
first layer and a request message for requesting from said server a task
the customer device needs to perform.
Claim 11. Emphasis added.
The Appellants disagree with the legal conclusion of obviousness,
arguing that
[a]s applicants read Harvey, the device 114 already knows that task
that is to be performed, i.e., configuration loading. The device 114,
however, simply needs configuration information to proceed with the
process. In the present invention, however, the customer device does
not even know the task it must perform. Thus, Harvey does not
provide a disclosure that remedies the aforementioned, conceded
deficiencies in the primary citation to Bernstein.
App. Br. 12-13.
In response the Examiner maintains that Harvey discloses a “task”
needed to be performed as claimed. Ans. 27. According to the Examiner,
“task” is defined as an operation that can be performed by a computer
system and, given that meaning,
Harvey teaches the client requesting (i.e., a request is sent from the
network device to the configuration service to configure a device with
configuration information, wherein the configuration information may
include commands, thus a task, Abstract, column 6, lines 21-26,
column 8, lines 23-45) and receiving information (i.e., the completed
template with embedded commands is sent to the device, column 9,
lines 10-12) regarding a specific task (i.e., the information in the
received file includes the commands to perform configuring, column
8, lines 38-44) needing to be performed by the customer device (i.e.,
the configuration is performed by utilizing the embedded commands,
thus task, in the files, thus needing to be performed in order to
configure the device, column 9, lines 54- column 10, line 4).
Thus, Harvey teaches a task (i.e., the customer device requests a
configuration file with commands, teaching task, to be executed for
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configuring the device, column 16, line 2-7); values for said task
needed (i.e., values for the execution of the commands are provided,
column 14, line 55-57, column 16, line 2-7, and figure 3, item 114);
said task said customer device needs to perform (i.e., the customer
device, to be configured performs the received commands in the
configuration file, teaching said task, column 14, line 55-57, column
16, line 2-7, and figure 3, item 114).
Ans. 28-29.
The “task” in Harvey to which the Examiner directs our attention is a
command resulting in reconfiguring a device. In that regard, Harvey
provides more specific discussion by way of an embodiment: “Configuration
Server 116 provides configuration information to Configuration Agent 200
of device 114” (col. 16, ll. 18-20). The Appellants argue that
the network device 114 is not asking for the task that must be
performed, even assuming, for the sake of argument, that a task may
be initiating configuration loading. In this case, the network device
114 is simply asking for configuration information. Thus, the network
device 114 is not asking the server to identify which task it needs to
perform, but rather, it is asking for the data that it needs to perform the
already known task, namely, configuration loading.
Reply Br. 5, emphasis added.
Accordingly, the question that the Appellants invite us to decide is
whether “requesting a configuration file (data) [ ] [as Harvey discloses] [is]
equivalent to requesting what task needs to be performed [as claimed]”
(Reply Br. 4, emphasis added)?
We have reviewed the record. We find that the Examiner has the
better position.
We reach this conclusion because of our reading of the claim. The
limitation at issues is “requesting from said server a task the customer device
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needs to perform” (claim 1). There is no dispute that Harvey discloses
providing configuration information. We agree with the Examiner that, in
light of the Specification, the claim term “task” is reasonably broadly
construed as covering a request for information. In requesting that
configuration information be provided Harvey is requesting a “task” as that
term is reasonably broadly construed. Furthermore, that task” of providing
configuration information is something that needs to be performed,
otherwise the configuration cannot be loaded. Accordingly, we do find that
“requesting a configuration file (data) [ ] [as Harvey discloses] [is]
equivalent to requesting what task needs to be performed [as claimed]”
(Reply Br. 4).
The difficulty with the Appellants’ argument is illustrated in the
statement “the [Harvey] network device 114 is not asking the server to
identify which task it needs to perform, but rather, it is asking for the data
that it needs to perform the already known task, namely, configuration
loading” (Reply Br. 5; emphasis added). Claim 11 is not limited so as to
include a task-selection step. It is not implicit in a request for a task that
needs to be performed that there be a prior step of determining what task
needs to be performed in order to satisfy the request. Performing a necessary
task is enough. While it is true that requesting a configuration file per se is
not equivalent to requesting a configuration file that has been determined to
satisfy the request, it is sufficient to meet what is claimed – that is, “transmit
a first message signal comprising a request message at the first layer and a
request message for requesting from said server a task the customer device
needs to perform” (claim 11, emphasis added).
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We have reviewed all of the Appellants’ arguments challenging the
rejection of claims 11-18 but do not find them persuasive as to error in the
rejection.
CONCLUSIONS
The rejection of claim 18 under 35 U.S.C. §101 as being directed to
non-statutory subject matter is affirmed.
The rejection of claims 11-18 under 35 U.S.C. §103(a) as being
unpatentable over Bernstein, Harvey, and Okmianski is affirmed.

DECISION
The decision of the Examiner to reject claims 11-18 is affirmed.
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

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