Ex Parte Shafer et al

Patent Trial and Appeal Board

Mar 11, 2014

11326128 (P.T.A.B. Mar. 11, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PHILIP A. SHAFER, ROBERT P. ENNS,
PAULO LIMA, GREG SIDEBOTTOM,
WILLIAM P. WELCH, MICHAEL S. JACOBSEN, and
CRAIG A. BARDENHEUER
____________________

Appeal 2011-008750
Application 11/326,128
Technology Center 2400
____________________

Before MICHAEL J. STRAUSS, JOHN A. EVANS, and
DANIEL N. FISHMAN, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/326,128
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-28. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse the Examiner’s rejection of these claims and enter a new
ground of rejection.

THE INVENTION
The claims are directed to enforcement of network device
configuration policies within a computing environment. Spec. 1. Claim 24,
reproduced below, is illustrative of the claimed subject matter:
24. A system comprising:
a network management system comprising:
(i) a set of business rules to contain a business rule
that describes a business policy regarding a computer
network,
(ii) a set of network design rules to contain a
network design rule that describes a relationship between
the business policy and a device-specific configuration
policy,
(iii) a rules engine to determines whether a business
policy is currently in force by evaluating the business
rule and determines whether to deploy a device-specific
configuration policy by evaluating the network design
rule, and
(iv) a deployment engine to deploy the device-
specific configuration policy; and
a network device comprising:
(i) a configuration database to store a configuration
profile for the network device;
(ii) an interface to receive configuration change
requests that request modifications to the configuration
profile; and
(iii) a configuration policy enforcement module
that manages the configuration profile and applies the
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device-specific configuration policy to control
application of the received configuration change requests
to the configuration profile of the network devices to
ensure the configuration profile conforms to the device-
specific configuration policy when the device-specific
configuration policy is deployed by the network
management system.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Strassner
Deshpande
US 2004/0230681 A1
US 2007/0094199 A1
Nov. 18, 2004
Apr. 26, 2007

REJECTIONS
The Examiner made the following rejections:
Claims 1-4, 10, 12-18, 21, 22 and 24-28 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Strassner. Ans. 3-11.
Claims 5-9, 11, 19, 20 and 23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Strassner and Deshpande. Ans. 11-16.

APPELLANTS’ CONTENTION
“Strassner refers entirely to a central provisioning system that
manages other network devices and does not contemplate any component
within the managed devices themselves that ensures compliance.” App. Br.
12.

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ISSUE ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 10-20)
and Reply Brief (Reply Br. 5-12) the issue presented on appeal is whether
the Examiner erred in finding Strassner discloses a deployment engine to
deploy a device-specific configuration policy that is applied by a
configuration policy enforcement module of a network device as recited by
independent claim 24.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred in rejecting independent claims 1, 16,
24, and 26-28 under 35 U.S.C. § 102(b) as being anticipated by Strassner.
We agree with Appellants’ conclusions as to this rejection of the claims.
Appellants contend Strassner fails to disclose a “network device being
managed (i.e., the device to which the device-specific configuration policy is
deployed from the network management system) includes a configuration
policy enforcement module.” App. Br. 11. Appellants argue:
[t]he Strassner teachings relied upon by the Examiner in the
Final Office Action (i.e., various portions of Strassner
describing configuration data 228, provisioning model 230,
configuration data 228) are all components of a service
provisioning apparatus 210 (shown at the bottom of FIG. 2), not
components of any managed network device (e.g., network
resource 204).
App. Br. 12 (footnote omitted). The Examiner responds, finding:
Strassner is relied upon for determining that the managed
network device has a configuration policy enforcement module,
see Paragraph 34, Lines 1-20. Strassner is also relied upon to
show that the deployment of the configuration policy is mapped
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to a specific device. This clearly shows that the configuration
policy is deployed to a specific device, see Paragraph 60, Lines
7-17.
Ans. 17.
We find no explicit disclosure in the cited portions of Strassner of
deploying the configuration policy to a network device or a network device
including a configuration policy enforcement module. Neither has the
Examiner explained why such deployment or module is inherent or is
otherwise disclosed. Therefore, we agree with Appellants Strassner fails to
disclose “a configuration policy enforcement module of a network device
applying a device-specific configuration policy (deployed by a network
management system) to control application of the received configuration
change requests that are received through the network device's own
interface, as required by claim 24.” See App. Br. 15.
Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments.
Therefore, for the reasons supra, we do not sustain the rejection of
independent claim 24 under 35 U.S.C. § 102(b) and, for the same reason, we
do not sustain the rejection of independent claims 1, 16, and 26-28 which
include substantially the same limitation, or the rejection of dependent
claims 2-4, 10, 12-15, 17, 18, 21, 22, 24 and 25. Furthermore, we do not
sustain the rejection of claims 5-9, 11, 19, 20 and 23 under 35 U.S.C.
§ 103(a) over Strassner and Deshpande, as the Examiner’s applications of
the Deshpande reference fails to cure the deficiency in the base rejection
addressed supra.

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NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claim 26 is rejected under 35 U.S.C. § 101 as being
directed toward non-statutory subject matter.
Claim 26 recites a computer-readable medium. However, Appellants’
Specification provides no specific definition of what is meant by computer
readable medium. Absent any such definition we find Appellants’ invention
encompasses transitory propagating signals which are unpatentable under 35
U.S.C.§ 101. See In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007)
(transitory embodiments are not directed to statutory subject matter) and
Interim Examination Instructions for Evaluating Subject Matter Eligibility
Under 35 U.S.C. § 101, p. 2 (Aug. 24, 2009), available at
http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-25_interim_101_
instractions.pdf (emphasis in original) (“Interim Instructions”). Also see
David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).

CONCLUSIONS
1. The Examiner erred in finding Strassner discloses a deployment
engine to deploy a device-specific configuration policy that is applied
by a configuration policy enforcement module of a network device as
recited by independent claims 24.
2. The Examiner erred in rejecting claims 1-4, 10, 12-18, 21, 22 and 24-
28 under 35 U.S.C. § 102(b) as being anticipated by Strassner.
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3. The Examiner erred in rejecting claims 5-9, 11, 19, 20 and 23 under
35 U.S.C. § 103(a) as being unpatentable over Strassner and
Deshpande.
4. A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b)
and claim 26 is rejected under 35 U.S.C. § 101 as being directed
toward non-statutory subject matter.

DECISION
The decision of the Examiner rejecting claims 1-28 is reversed. We
enter a new ground of rejection of claim 26.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50 (b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner ….
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ….
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).

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REVERSED
37 CFR § 41.50(b)

ELD