Ex Parte Enns

Patent Trial and Appeal Board

May 28, 2014

11581305 (P.T.A.B. May. 28, 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.
11/581,305 10/16/2006 Robert P. Enns Juniper-8CON 8334
109043 7590 05/29/2014
Straub & Pokotylo
788 Shrewsbury Ave.
Tinton Falls, NJ 07724
EXAMINER
HU, JENSEN
ART UNIT PAPER NUMBER
2169
MAIL DATE DELIVERY MODE
05/29/2014 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 ROBERT P. ENNS
__________

Appeal 2011-011645
Application 11/581,305
Technology Center 2100
____________

Before Before HUBERT C. LORIN, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011645
Application 11/581,305

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STATEMENT OF THE CASE
Robert P. Enns (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1-24, 26, 32 and 33. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.

1. A method for inputting a control instruction for a data forwarding
device, the method comprising:
a) accepting from a user input device of the data forwarding
device, user input;
b) determining, with the data forwarding device, whether a
reverse-search is requested based on the user input accepted; and
c) responsive to a determination that a reverse-search is
requested, then
i) accepting from the user input device of the data
forwarding device, further user input as a search string;
ii) searching, with the data forwarding device, back
through previously entered and stored data forwarding device control

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Dec. 20, 2011) and Reply Brief (“Reply Br.,” filed May 16,
2011), and the Examiner’s Answer (“Answer,” mailed Mar. 16, 2011).
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instructions for a data forwarding device control instruction, at least a
part of which matches the search string input by the user,
iii) retrieving, with the data forwarding device, the first
matching data forwarding device control instruction, and
iv) rendering the first matching data forwarding device
control instruction,
wherein the data forwarding device is one of (A) a network
switch and (B) a network router.

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

US 5,926,463 Jul. 20, 1999
“man Pages(1): User Commands”, Sun Microsystems, Oct. 1998.
(Sun).

“Routers & Wireless,” MikroTik, May 2000. (MikroTik).

“UNIX System Administrator’s Edition,” Burk et al., 1997. (Burk).

The following rejections are before us for review:
1. Claims 1-6, 8-18, and 32 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Sun and MikroTik.
2. Claims 7, 19-24, and 26 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Sun, MikroTik, and Burk.
3. Claim 33 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Sun, MikroTik, and Ahearn.

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Application 11/581,305

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ISSUES
Did the Examiner err in rejecting the claims under 35 U.S.C. §103(a)
as being unpatentable over the cited prior art combinations.

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 claims 1-6, 8-18, and 32 under 35 U.S.C. §103(a) as being
unpatentable over Sun and MikroTik.

Claims 1-6 and 8-18
The Appellant argued claims 1-6 and 8-18 as a group (App. Br. 12).
We select claim 1 as the representative claim for this group, and the
remaining claims 2-6 and 8-18 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
The Examiner takes the position that Sun discloses all the claim
limitations but for “‘inputting control instructions for a data forwarding
device,’ ‘accepting from a user input device of the data forwarding device,’
and ‘wherein the data forwarding device is one of (A) a network switch and
(8) a network router,’” (Ans. 4-5) for which MikroTik is relied upon. The
Examiner concludes that
It would have been obvious to one skilled in the art at the time
of the invention to modify the teachings of Sun, disclosing a
method of retrieving and executing previously entered control
instructions, with the teachings of MikroTik, disclosing a
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method of turning a computer system into a network router,
because this allows the OS system of a computer to control the
functions of a router (see MikroTik, MikroTik v2.0 PC Router
Software). Furthermore, one skilled in the art at the time of the
invention would realize that a PC computer may be running
Linux. Thus, when the computer is turned into a router, UNIX
based commands may be utilized to run router functions of the
data forwarding device.
Ans. 6.
The Appellant disagrees, first arguing that the Examiner’s statement
in the quoted passage above that “a PC computer may be running Linux”
(App. Br. 13) is not a proper test for reaching a conclusion of obviousness,
then listing the findings that the Appellant believes the Examiner should
have made but allegedly did not make (App. Br. 13), and finally making the
statements:
However, based on the Examiner’s reasoning, it seems that the
base system, upon which the technique for reverse searching
using UNIX commands is applied, is the standard computer,
running Java software, discussed in the MicroTik Website. The
appellant respectfully submits that it is inappropriate to
consider the standard computer as the base device since the
claimed subject matter is directed towards embedded systems
such as a router and/or a network switch, which have far more
operating constraints than a standard computer. Accordingly,
the rejection fails to demonstrate the above findings.
Since the Examiner’s combination is based, at least in
part, on a misunderstanding of the platforms on which UNIX
was used, and embedded systems such as routers, at the time of
the invention, such platforms and embedded systems are
introduced below.
(App. Br. 14).
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Appellant proceeds to state that “communications network equipment, such
as routers and switches, were examples of embedded systems” (App. Br.
15) to make the point that “[t]here was no suggestion at the time of the
invention to take features from high-end Unix workstations on which
complex software development and system administration was [sic] often
performed, and apply such features of Unix to other devices that often had
less demanding configuration tasks, and which were not platforms for
software development” (App. Br. 15).
Accordingly, the Sun article and the MicroTik Website
would not suggest a combination of complex UNIX commands
into an embedded system, such as a router or a switch for
example, at the time of the invention because one skilled in the
art would not conclude that doing so would result in an
improved system. That is, one skilled in the art would not have
replaced the “easy and fast, “user-friendly” graphical interface
of the MikroTik Router software on a standard computer with
UNIX-based commands on embedded systems such as a router
and/or a network switch. ... [J]ust because a standard computer
can act as a router, it does not provide any evidence for
supporting that the functionalities of the standard computer is
[sic] supported by a router or network switch.
App. Br. 16.
As we understand the Appellant’s argument, there appears to be no
dispute that the cited prior art discloses all the claim limitations. Rather, the
Appellant does not agree that Sun and MikroTik can be combined to reach
the claimed subject matter because “it is inappropriate to consider the
standard computer [in MikroTik] as the base device since the claimed
subject matter is directed towards embedded systems such as a router and/or
a network switch, which have far more operating constraints than a standard
computer.” (App. Br. 14).
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The Examiner’s response is:
While the applicant argues that that the instant
application is directed to embedded systems (see p. 15, Appeal
Brief), it is also true that at the time of the invention it was
obvious to allow various computing devices to interface with a
data forwarding device to carry out the inputted control
instructions within a conventional network communication
system. Specifically, administrators or other users may access
data forwarding device controls and settings through a
computer that includes a control instruction interface for
communicating with the networked data forwarding device.
Furthermore, the prior art, MikroTik, shows that at the time of
the invention communication network equipment, such as
routers, were not solely bound to embedded systems but were
also implemented and controlled by personal computing
devices.
Ans. 25.
Unix was not solely used for just high-end workstations, but
was developed to allow versions of the operating system,
including Linux, to operate on a variety of computer systems.
Accordingly, the MikroTik software that allows standard PC
computers to be utilized as network routers would also allow
any PC computer with a Linux operating system to be utilized
as a network router.
Ans. 26.
We have reviewed the record and find on balance that the
preponderance of the evidence weighs in favor of the Examiner’s position.
At the outset, we observe that the Appellant’s discussion of the
differences between embedded systems and standard computers, in an effort
to make what appears to be an argument that the references are
nonanalogous, is not supported by the Specification or any independent and
objective evidence. To the extent the Appellant contends that this
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distinction is known to those of ordinary skill in the art, that too is not
supported by evidence on the record. The discussion amounts to attorney
argument. Arguments of counsel cannot take the place of evidence in the
record.
The Examiner has established a prima facie case of obviousness.
The Examiner found that MikroTik discloses a computer containing
software, which turns the standard PC computer into a router
(MikroTikv2.0), i.e., a data forwarding device. The Appellant’s claim
language does not limit data forwarding devices to routers, which are not
computers.
Notwithstanding that Examiner has explained that computers can have
interfaces to control routers, MikroTik also teaches an input console to
control the computer router, thus satisfying the claim limitation of a “user
input device of the data forwarding device” (claim 1).
Given MikroTik, the Examiner has provided evidence in support of
the finding that a computer can be used as a router and that some PC
computers run on the Linux operating systems. The Linux operating system
runs Unix. The Examiner uses these facts in combination with Sun’s Unix
based commands to find that “one skilled in the art at the time of the
invention would realize that a PC computer may be running Linux. Thus,
when the computer is turned into a router, UNIX based commands may be
utilized to run router functions of the data forwarding device.” Ans. 6. The
Examiner’s reasoning is logically underpinned, and not simply a matter of
arguing that “general PC Computers ‘allow’ various things to be done”
(Reply Br. 4).
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We see no evidence on the record that undermines the view taken by
the Examiner that “the MikroTik software that allows standard PC
computers to be utilized as network routers would also allow any PC
computer with a Linux operating system to be utilized as a network router.”
Ans. 26.
For the foregoing reasons, we find that a prima facie case of
obviousness has been made out in the first instance. There being no
objective evidence of nonobviousness on the record before us, we find that
preponderance of the evidence on the record supports the Examiner’s
findings and legal conclusion of obviousness.
We have considered all of the Appellant’s arguments but do not find
them persuasive as to error in the rejection. For example, the Appellant
assumes that the Examiner refers to the GUI version of MikroTik.
See Reply Br. 5. However, the Examiner did not state in his rebuttal that he
was only referring to the GUI version. Although MikroTik discloses a java
console GUI, MikroTik also discloses a command line interface in the form
of Telnet Console to control the computer turned router. The Telnet Console
is a “user friendly command interface,” where users enter commands by
typing them (see MikroTik, page 2, paras. 11 and 12).
The rejection of claims 1-6 and 8-18 is affirmed.

Claim 32
The Appellant challenges the rejection of claim 32 at page 17 of the
Appeal Brief. But the arguments in support thereof go to limitations not
present in the claim. The Appellant argues that the claim “recite[s] that
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when reverse-expand is requested, a search back . . . [is] performed.” App.
Br. 17. We see no mention of a “reverse expand” in claim 32.
Appellants’ arguments are not commensurate in scope with what is
claimed; as such, the arguments are unpersuasive as to error in the rejection
and the rejection is sustained.

The rejection of claims 7, 19-24, and 26 under 35 U.S.C. §103(a) as being
unpatentable over Sun, MikroTik, and Burk.

Claims 19-24 and 26
The Appellant argues claims 19-24 and 26 as Group III (App. Br. 18).
We select claim 19 as the representative claim for this group, and the
remaining claims 20-24 and 26 stand or fall with claim 19. 37 C.F.R.
§ 31.37(c)(vii) (2011).
The Appellant argues that Sun does not disclose the subject matter of
claim 19:
In the history-substitution commands of the Sun
reference referred to by the Examiner, the entire command
line, not just the first matching word or parameter, is
retrieved. This neither teaches, nor suggests, rendering (or
generating) a command line including the first part of the
user input and the first matching word or parameter as
claimed.
App. Br. 19.
The Examiner’s position is that
The retrieval of the entire command line and not just the first
matching word or parameter includes the first part of the user
input as well as the first matching word or parameter. . . . The
claim limitations do not expressly preclude retrieval of other
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portions of the command line in addition the first part of the
user input and the first matching word or parameter value.
Ans. 29.
We agree with the Examiner. The claim does not preclude other
portions of the command line. Sun, as the Appellant has argued, retrieves
the entire command line, not just the first matching word or parameter, and,
thus, meets the claim limitation “a command line including the first part of
the user input and the first matching word or parameter value” (claim 19,
emphasis added).
For the foregoing reasons, we are unpersuaded as to error in the
rejection. The rejection of claims 19-24 and 26 is sustained.

Claim 7
The Appellant states that
[s]ince the purported teachings of the Burke article do not
provide a reason for one skilled in the art to combine the Sun
article and the MicroTik Website, and since claim 7 depends
from claim 1, it is not rendered obvious for at least the reasons
discussed above with respect to claim 1 (in Group I).

App. Br. 19. However, the Appellant does not present any arguments to
explain why the Examiner’s explicit fact finding is in error. “It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for nonobvious distinctions over the prior art.” In re
Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991).
The Appellant has not persuaded us as to error in the rejection of
claim 7. Accordingly, its rejection is sustained.

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The rejection of claim 33 under 35 U.S.C. §103(a) as being unpatentable
over Sun, MikroTik, and Ahearn.
We understand the Appellant’s position to be that Ahearn cannot be
combined with Sun because Ahearn “suggests operations that occur on a
device external to switches and routers of the computer network . . . [and]
provides no reason to apply the purported teachings of the Sun article to
operate on a data forwarding device.” App. Br. 20. But this is not
responsive to the Examiner’s position, which very clearly looks to Ahearn
for its disclosure of router data interfaces that are connected over a network
to forward data from one router to another (Ans. 24, citing col. 5, ll. 24-35 of
Ahearn). Ahearn was not applied to make the case that, given Sun and in
light of Ahearn, one would be led to operate on a data forwarding device.
The Appellant has not persuaded us as to error in the rejection of
claim 33. Accordingly, its rejection is sustained.

CONCLUSIONS
The rejection of claims 1-6, 8-18, and 32 under 35 U.S.C. §103(a) as
being unpatentable over Sun and MikroTik is affirmed.
The rejection of claims 7, 19-24, and 26 under 35 U.S.C. §103(a) as
being unpatentable over Sun, MikroTik, and Burk is affirmed.
The rejection of claim 33 under 35 U.S.C. §103(a) as being
unpatentable over Sun, MikroTik, and Ahearn is affirmed.

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DECISION
The decision of the Examiner to reject claims 1-24, 26, 32, and 33 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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