Ex Parte Taylor

Board of Patent Appeals and Interferences

Sep 22, 2010

10136604 (B.P.A.I. Sep. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/136,604 05/01/2002 William Scott Taylor BE1-0103US 8845
83417 7590 09/23/2010
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EXAMINER
BENGZON, GREG C
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
09/23/2010 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 WILLIAM SCOTT TAYLOR
____________

Appeal 2009-000942
Application 10/136,604
Technology Center 2100
____________

Before LANCE L. BARRY, ST. JOHN COURTENAY III, and CAROLYN
D. THOMAS, Administrative Patent Judges.

BARRY, 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.
Appeal 2009-000942
Application 10/136,604

2
STATEMENT OF THE CASE
The Patent Examiner rejected claims 22, 25-26, 29-30, 34, and 38-43.
The Appellant appeals therefrom under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).

INVENTION
The Appellant describes the invention at issue on appeal as follows.
[A] computer implemented system . . . generat[es] performance
data relating to provisioned physical interfaces in a
communication network . . . . The performance information
includes a count value, a count threshold indication value, and a
rate threshold indication value for at least one physical interface
parameter and at least one physical interface.
(Spec. 2, ll. 11-19.)
[V]arious physical interface parameters are monitored over a
plurality of different time intervals . . . . First, the number of
times the specific physical interface parameter was transmitted .
. . . during the time interval is determined. Second, a binary
value that indicates whether a threshold value was reached is
determined. Third, a rate threshold is determined. The rate
threshold is a binary value that indicates whether a physical
interface parameter occurrence rate may be of concern.
(Id. at 7, ll. 4-18).

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Application 10/136,604

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ILLUSTRATIVE CLAIM
22. A method of operation in an element
management system coupled to a communication
network having a first network element with a first
physical interface, the method comprising:
retrieving from a database physical interface
exception information having a plurality of different
types and relating to the first physical interface for a 15
minute time interval, a 1 hour time interval, and a 24
hour time interval;
parsing the physical interface exception information to
determine an exception type;
for the plurality of different exception types, determining
and storing a first count value for the 15 minute time interval, a
second count value for the 1 hour time interval and a third
count value for the 24 hour time interval by counting the
number of exceptions of the different types that relate to the
first physical interface during the time intervals;
setting a first count threshold indication value if the first
count value exceeds a predetermined first count threshold
value, a second count threshold indication value if the second
count value exceeds a predetermined second count threshold
value, and a third count threshold indication value if the third
count value exceeds a predetermined third count threshold
value; and
setting a first rate threshold indication value, a second
rate threshold indication value, or a third rate threshold
indication value wherein the first threshold indication value
indicates that the first count threshold indication value is not set
but may become set in the future, the second threshold
indication value indicates that the second count threshold
indication value is not set but may become set in the future, and
the third rate threshold indication value indicates that the third
count threshold indication value is not set but may become set
in the future;
wherein a first rate threshold indication value, a second
rate threshold indication value, or a third rate threshold
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indication value is set if, for a predetermined number of
consecutive time intervals, the first, second or third count value
is less than the corresponding predetermined first, second or
third threshold count value by no more than a predetermined
value; and
wherein the first, second, or third rate threshold
indication value may be set even if an exception information
rate is decreasing.

REJECTION
Claims 22, 25-26, 29-30, 34, and 38-43 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over U.S. Patent No. 5,331,642 ("Valley"),
U.S. Patent No. 5,848,073 ("Abdelmonem"), U.S. Patent No. 6,333,932 B1
("Kobayasi"), and U.S. Patent No. 7,050,936 B2 ("Levy").

ISSUE
The issue before us is whether claims 22, 25-26, 29-30, 34, and 38-43
are indefinite and, thus, prevent us from reaching the rejection for
obviousness.

FINDINGS OF FACT (FFS)
1. Independent claim 22 recites in pertinent part the following
limitations:
setting a first rate threshold indication value, a second rate
threshold indication value, or a third rate threshold indication value
wherein the first threshold indication value indicates that the first
count threshold indication value is not set but may become set in the
future, the second threshold indication value indicates that the second
count threshold indication value is not set but may become set in the
future, and the third rate threshold indication value indicates that the
third count threshold indication value is not set but may become set in
the future;
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wherein a first rate threshold indication value, a second rate
threshold indication value, or a third rate threshold indication value
is set if, for a predetermined number of consecutive time intervals, the
first, second or third count value is less than the corresponding
predetermined first, second or third threshold count value by no more
than a predetermined value . . . .

(Emphases added.)

2. Independent claim 26 recites in pertinent part the following
limitations:
setting a first rate threshold indication value, a second rate
threshold indication value, or a third rate threshold indication value
wherein the first threshold indication value indicates that the first
count threshold indication value is not set but may become set in the
future, the second threshold indication value indicates that the second
count threshold indication value is not set but may become set in the
future, and the third threshold indication value indicates that the third
count threshold indication value is not set but may become set in the
future;

wherein setting a first rate threshold indication value, a second
rate threshold indication value, or a third rate threshold indication
value comprises . . . .

(Emphases added.)

3. Independent claims 30 and 34 recite in pertinent part the following
limitations:
operative to set a first rate threshold indication value, a second rate
threshold indication value, or a third rate threshold indication value
wherein the first threshold indication value indicates that the first
count threshold indication value is not set but may become set in the
future, the second threshold indication value indicates that the second
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count threshold indication value is not set but may become set in the
future, and the third threshold indication value indicates that the third
count threshold indication value is not set but may become set in the
future; . . . .
(Emphases added.)

ANALYSIS
"The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter which the
applicant regards as his invention." 35 U.S.C. § 112, ¶ 2. "The legal
standard for definiteness is whether a claim reasonably apprises those of
skill in the art of its scope." In re Warmerdam, 33 F.3d 1354, 1361 (Fed.
Cir. 1994) (citing Amgen Inc. v. Chugai Pharmaceutical Co. Ltd., 927 F.2d
1200, 1217 (Fed. Cir. 1991)). For example, a claim is indefinite "where the
language 'said lever' appears in a dependent claim where no such 'lever' has
been previously recited . . . ." Ex parte Moelands, 3 USPQ2d 1474, 1476
(BPAI 1987).
Here, claim 22 (FF 1) recites "the first threshold indication value" and
"the second threshold indication value". This claim fails, however, to
previously recite "a first threshold indication value" or "a second threshold
indication value." The foregoing omissions constitute a lack of antecedent
basis, thus rendering claim 22 indefinite.
Moreover, claim 22 fails to reasonably apprise those of skill in the art
as to which, if any, of the previously recited instances of "threshold
indication" the qualifier "the" in "the first threshold indication value" refers.
It is unclear as to whether "the first threshold indication value" refers to "the
first rate threshold indication value", or "the first count threshold indication
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value," or perhaps another type of threshold indication value altogether.
Likewise, it is unclear as to whether "the second threshold indication value"
refers to "the second rate threshold indication value", or "the second count
threshold indication value," or perhaps another type of threshold indication
value altogether.
Similarly, claim 26 (FF 2), claim 30 (FF 3), and claim 34 (FF 3) recite
"the first threshold indication value", "the second threshold indication
value”, and "the third threshold indication value". However, these claims
fail to previously recite "a first threshold indication value," "a second
threshold indication value," or "a third threshold indication value." The
foregoing omissions constitute a lack of antecedent basis, thus rendering
claims 26, 30, and 34 indefinite.
Moreover, claims 26, 30, and 34 fail to reasonably apprise those of
skill in the art as to which, if any, of the previously recited instances of
"threshold indication" the qualifier "the" in "the first threshold indication
value” refers. It is unclear as to whether "the first threshold indication
value" refers to "the first rate threshold indication value", or "the first count
threshold indication value," or perhaps another type of threshold indication
value altogether. Likewise, it is unclear as to whether "the second threshold
indication value" refers to “the second rate threshold indication value", or
"the second count threshold indication value," or perhaps another type of
threshold indication value altogether. It is also unclear as to whether "the
third threshold indication value" refers to "the third rate threshold indication
value", or "the third count threshold indication value," or perhaps another
type of threshold indication value altogether.
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Claim 22 (FF 1) and claim 26 (FF 2) also twice recite "a first rate
threshold indication value, a second rate threshold indication value, or a
third rate threshold indication value". The two claims fail, however, to
reasonably apprise those of skill in the art of the relation between the two
recitations. Within each of these claims, it is uncertain as to whether the
foregoing recitations refer to the same set of rate threshold indication values
or different sets of rate threshold indication values. If these recitations refer
to the same set of rate threshold indication values, the relation could be
clarified by adding the qualifier "said" to the second recitation.
Based on the aforementioned facts and analysis, we conclude that
claims 22, 26, 30, and 34 are indefinite. Claims 25 and 38-40 depend from
claim 22. Claims 29 and 41-43 depend from claim 26. As such, claims 25,
29, and 38-43 are also indefinite. Therefore, we reject claims 22, 25-26, 29-
30, 34, and 38-43 under 35 U.S.C. § 112, ¶ 2 as indefinite for failing to
particularly point out and distinctly claim the Appellant’s invention.
A rejection should not be based on "speculations and assumptions."
In re Steele, 305 F.2d 859, 862 (CCPA 1962). "All words in a claim must be
considered in judging the patentability of that claim against the prior art. If
no reasonably definite meaning can be ascribed to certain terms in the claim,
the subject matter does not become obvious—the claim becomes indefinite."
In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
Here, the indefiniteness of claims 22, 25-26, 29-30, 34, and 38-43
leaves us in a quandary as to what they specify. Speculations and
assumptions would be required to decide the meaning of the terms employed
therein and the scope of the claims. Therefore, we reverse pro forma the
Examiner's rejection of these claims.
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We emphasize that our reversal is based on procedure rather than on
the merits of the obviousness rejections. The reversal does not mean that we
consider the claims to be patentable under 35 U.S.C. § 103(a) as presently
drawn.2

DECISION
We reverse the rejection of claims 22, 25-26, 29-30, 34, and 38-43
and enter a new rejection against the same claims.

37 C.F.R. § 41.50(b) provides that "[a] new grounds of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides that, within two months from the date of the

2 In a precedential decision, an expanded Board panel held that elements
that do not affect the claimed process are non-functional material and are
merely descriptive. See Ex parte Nehls, 88 USPQ2d 1883, 1887 (BPAI
2008) (precedential). The Examiner need not give patentable weight to
descriptive material absent a new and unobvious functional relationship
between the descriptive material and the substrate. See In re Lowry, 32 F.3d
1579, 1582-1583 (Fed. Cir. 1994). "Nonfunctional descriptive material
cannot render nonobvious an invention that would have otherwise been
obvious." Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (citing In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)), aff’d, Appeal No. 2006-1003
(Fed. Cir. 2006). "[W]hen descriptive material is not functionally related to
the substrate, the descriptive material will not distinguish the invention from
the prior art in terms of patentability[.]" Curry, 84 USPQ2d at 1274 (citing
In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)).
Here, the claimed rate threshold indication values constitute non-
functional descriptive material because these values are not positively
recited in the claims as performing any computer-implemented function.
Thus, the Appellant’s arguments are based on non-functional descriptive
material which cannot impart patentability to the claims.

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decision, the appellant must exercise one of the following options to avoid
termination of proceedings of the rejected claims:
(1) 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 that the proceeding be reheard under 37 C.F.R. § 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). See
37 C.F.R. § 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

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