Ex Parte Martinot et al

Patent Trial and Appeal Board

Jun 23, 2014

10825243 (P.T.A.B. Jun. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte OLIVIER MARTINOT, STEPHANE BETGE-BREZETZ,
MICHEL CHEVANNE, GERARD DELEGUE,
and EMMANUEL MARILLY
____________

Appeal 2011-004727
Application 10/825,243
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-8, 16-18, 20-25, and 27-29. Claims 19 and 26 were canceled. The
Examiner indicates that claims 9-15 stand objected to as being dependent
upon a rejected base claim, but would be allowable if rewritten in
independent form. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Appellants’ claimed invention “concerns communication networks of
the multidomain type, and more particularly those for which the operators
have concluded service-level agreements with their customers concerning
compliance with a given quality of service (QoS).” (Spec. 2:6-9).
Independent claim 1, reproduced below with contested limitations
emphasized, is representative of the subject matter on appeal:
1. A device for managing measurement of parameters of
end-to-end type data streams in a communication network
composed of at least two domains coupled together, and each
equipped with a measuring appliance to deliver local
measurements representing parameter values of local end-to-
end data streams, which said measuring appliances implement
various measuring processes, the device comprising:
monitoring means for ordering constitution of a specific
measurement configuration in each measuring appliance as a
function of at least a corresponding measuring process of a
respective measuring appliance and overall measurement
specifications, and
calculation means for determining first data
representative of the parameter values of overall end-to-end
data streams from local measurements delivered by the said
configured measuring appliances.

REJECTIONS
A. Claims 1-8, 16-18, 20-22, 25, 28, and 29 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combined teachings
and suggestions of U.S. Patent No. 6,600,735 B1 (issued July 29,
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2003) (“Iwama”) and U.S. Patent Application Publication No.
2002/0194316 A1 (pub. Dec. 19, 2002) (“Gous”).1
B. Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of Iwama,
Gous, and U.S. Patent No. 5,381,403 A (issued Jan. 10, 1995)
(“Maher”).
C. Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of Iwama,
Gous, and U.S. Patent Application Publication No. 2003/0123446 A1
(pub. July 3, 2002) (“Muirhead”).

GROUPING OF CLAIMS
Appellants present substantive arguments directed to independent
claims 1 and 29 and dependent claims 8 and 28, all rejected under rejection
A. We address each of these arguments seriatim below. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2004).2 No substantive separate arguments were
presented regarding rejections B and C.

1 We observe dependent claim 25 is directed to “[a] communication
network” which includes “at least one managing device of claim 1”
(emphasis added). In the event of further prosecution, we leave it to the
Examiner to consider a rejection or objection under §112, fourth paragraph.
See Pfizer Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1292 (Fed. Cir. 2006)
(when a claim relying on another claim “fails to ‘specify a further limitation
of the subject matter’ of the [another] claim to which it refers because it is
completely outside the scope of [the another claim,]” such claim is invalid
under 35 U.S.C. § 112, fourth paragraph).
2 Appellants filed a Notice of Appeal on March 11, 2010. The date of filing
the Notice of Appeal determines which set of rules applies to an ex parte
appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the
2004 version of the Board Rules last published in the 2011 edition of Title
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Claim Construction
Our reviewing court guides that the patentability of an apparatus claim
“depends on the claimed structure, not on the use or purpose of that
structure.” Catalina Marketing Int’l. Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 809 (Fed. Cir. 2002); see also Superior Industries v. Masaba Inc., 553
F. App’x 986, 991 (Fed. Cir. 2014) (Rader, J., concurring) (“[A] system
claim generally covers what the system is, not what the system
does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 [] (1875) (‘The
inventor of a machine is entitled to the benefit of all the uses to which it can
be put, no matter whether he had conceived the idea of the use or
not.’). Thus, it is usually improper to construe non-functional claim terms in
system claims in a way that makes infringement or validity turn on their
function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091
(Fed. Cir. 2009).”).
This reasoning is applicable to each of Appellants’ apparatus claims
on appeal. We note the claims on appeal are directed to a device, or
network, or multi-domain management device, which we construe as being
directed to a type of apparatus. Therefore, a question arises as to how much
patentable weight, if any, should be given to the contested functional
limitations. However, to the extent our reviewing court may give such
contested functional limitations patentable weight, we consider the contested
aspects of the Examiner’s rejection below.

37 of the Code of Federal Regulations (37 C.F.R. § 41.1) applies to the
appeal. See also MPEP § 1220, Rev. 8, July 2010.
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ANALYSIS
Responsive to Appellants’ arguments, we review rejection A of
independent claims 1 and 29, and dependent claims 8 and 28 seriatim.

Rejection A – Independent Claim 1
Issue: Under § 103, did the Examiner err in finding the combination
of Iwama and Gous would have taught or suggested the contested claim 1
limitations shown in emphasis below?
1. A device for managing measurement of parameters of
end-to-end type data streams in a communication network
composed of at least two domains coupled together, and each
equipped with a measuring appliance to deliver local
measurements representing parameter values of local end-to-
end data streams, which said measuring appliances implement
various measuring processes, the device comprising:

monitoring means for ordering constitution of a specific
measurement configuration in each measuring appliance as a
function of at least a corresponding measuring process of a
respective measuring appliance and overall measurement
specifications, and

calculation means for determining first data
representative of the parameter values of overall end-to-end
data streams from local measurements delivered by the said
configured measuring appliances.

The Examiner relied primarily on Iwama to teach the “device” and
Gous to teach or suggest the functions of “ordering constitution of a specific
measurement configuration . . .” and “determining first data representative of
the parameter values . . . .” (Ans. 4-6).
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Appellants contend:
Iwama describes element 1705 which enforces the
bandwidth reservation and cancellation. (FIG. 8, col. 13, lines
1-3).
However, Iwama does not teach or suggest that element
1705 executes a measuring process to collect and deliver the
local measurements of a local end-to-end data stream, as
claimed. Further, even if element 1705 is the measuring
appliance, claim 1 recites a measuring appliance in each
domain and implementing various measuring processes.
(App. Br. 12 (emphasis in original omitted, emphasis added)).
The Examiner pointed to Iwama, Figure 1, gateway device 102 and
Figure 8, bandwidth control unit 1705, to teach or suggest “measuring
appliances” which “implement various measuring processes. (Claim 1; Ans.
4).
We find Iwama’s Figure 1 depicts gateway device 102-a in a first
domain (“Zone 1”), and gateway devices 102-b and 102-c in a second
domain (“Zone 2”). Iwama shows various measuring processes as occurring
on the gateway device, as show in detail in Figure 8 (e.g., elements 1705,
1709, 1710). Therefore, we agree with the Examiner’s finding that Iwama,
when combined with Gous, would have taught or suggested “a
communication network composed of at least two domains” with measuring
appliances implementing “various measuring processes,” within the meaning
of the preamble of claim 1.
Appellants further contend the cited prior art does not teach
configuring (“ordering constitution of”) a measuring appliance “as a
function of a corresponding measuring process of a respective measuring
appliance and overall measurement specifications” (Reply Br. 4-5
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(emphasis added); see also App. Br. 11 and claim 1). Appellants primarily
contend that “the bandwidth matrix of Gous is not created as a function of
the measuring process of the alleged measuring appliance (the node). Nor it
is a function of the measuring process and overall measurement
specifications.” (App. Br. 11 (emphasis omitted)).
We agree with the Examiner’s broader interpretation of the claim term
“specific measurement configuration” as including a bandwidth allocation
matrix (Ans. 21), because an allocation of bandwidth is a specific measured
quantity within a system configured to allow a specific Quality of Service
(QoS) on a network (cf. with Appellants’ Specification at 2, and Gous ¶ 7).
The Examiner finds Gous teaches a “central controller” that “may issue
instructions to the nodes of the connection-oriented network for which
routing and/or admission level changes are required” (Ans. 20 (citing Gous
¶¶ 9 and 24)).
The Examiner further finds:
The bandwidth allocation matrix 54 is utilized to represent the
total bandwidth allocated to each element (e.g., node or link) of
a connection-oriented network 12 and/or a particular
routing/admission data structure 36. Specifically, the
bandwidth allocation matrix 54 sums the bandwidths allocated
in each network element used by each connection specified in
the routing/admission data structure 36.
(Ans. 21 (emphasis added) (citing Gous ¶ 42 and Fig. 1)).
The Examiner finds the bandwidth matrix “constitute[s] a collection
of routing/admission data structure[s] that will calculate the bandwidth
allocation matrix for each routing/admission data instruction as shown in
figures 3 and 4” (Ans. 21 (emphasis added)). We concur with the
Examiner’s reading of the claim language of “a function of at least a
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corresponding measuring process of a respective measuring appliance and
overall measurement specifications” to include the summation of
bandwidths over a set of network elements to maintain a maximum
bandwidth allocation, as taught by Gous. (Ans. 21).
Appellants’ argument concerning the bandwidth matrix of Gous is not
persuasive because the argument is directed against the literal terminology
(“function” versus “sum,” “measurement” versus “bandwidth”) and does not
explain why the scope of the claimed “function” excludes a sum of
bandwidth measurements pertaining to each network element.
(App. Br. 11; claim 1). 3 See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
2009) (a reference does not have to satisfy an ipsissimis verbis test to
disclose a claimed element).
Appellants further contend:
Gous does not teach or suggest determining, by the calculation
means, the data representative of the parameter values of
overall end-to-end data streams, from the local measurements
which are delivered to the calculation means. The
acknowledgement message is not the same as or an equivalent
of the local measurements which are performed by the
measuring appliances.
(App. Br. 12).
First, we note claim 1 only requires “local measurements delivered by
the said configured measuring appliances.” (Emphasis added). Claim 1 does
not specify exactly how the “local measurements” are made before being
“delivered by the said configured measuring appliances,” nor does it require

3 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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“local measurements which are delivered to the calculation means,” as
asserted by Appellants (App. Br. 12). Responsive to this contested
limitation, the Examiner points to the teachings and suggestions of Gous:
Paragraph [0050] further discloses a block diagram of FIG. 7
illustrating an acknowledgement 72, which may be sent from
each node responsive to successful execution of a received
instruction 62. Specifically, the acknowledgement 72 is
communicated by each node back to the changeover sequencing
module 32 so as to allow the module 32 to determine when all
instructions required to implement a specific configuration
(e.g., an operational or an intermediate configuration) have
been successfully executed. The acknowledgment 72 is shown
to include the source node label 64 and also a success field 74
which, if true, indicates that the execution of the changeover
instruction 62 was successful.
(Ans. 22-23).
The Examiner additionally finds Iwama teaches an acknowledgement
message when the bandwidth control request is complete (Ans. 23-24). We
agree with the Examiner’s finding the acknowledgement is representative
data, and further that the acknowledgement represents parameter values
(i.e., bandwidth allocations) of overall end-to-end-data streams (gateway
notes in a network), from the local measurements delivered by the
configured measuring appliances (i.e., the specific configuration has been
successfully executed).
Appellants respond: “this acknowledgment message, which indicates
a success of the changeover sequence, cannot serve to determine ‘data
representative of the parameter values of overall end-to-end data streams,’ as
claimed” (Reply Br. 5; claim 1). However, the broad language of claim 1
only requires calculation means for determining “representative” data.
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Claim 1 does not require that the data (e.g., acknowledgement message)
serve to make the determination. See n.3. supra.
We also observe Appellants’ Specification describes:
Measuring appliances which implement this passive measuring
process are commercialised [Brit. sp.] in the form of “middle
boxes” by the Fidelia, Brix Network and Ipanema companies in
particular. The detailed operation of these middle boxes can be
found at internet addresses:
- [] http://www.ipanematech.com [],
- [] http://www.brixnetworks.com [], and
- [] http://www.fidelia.com/news_updates/netvigil.phtml []
in particular.
(Spec. 7:17-23).
Measuring appliances which implement this active measuring
process are commercialized by the Allot, Cisco, Agilent and
NetIQ companies in particular.
(Spec. 7:34–8:1, as amended).
Thus, Appellants appear to be urging patentability based on various
measuring processes that were known (“commercialized,” i.e., on sale or in
public use) prior to Appellants’ application for patent. (Id.) 4 Therefore, on
this record, we are not persuaded that the Examiner erred in reaching the
legal conclusion that claim 1 would have been obvious under § 103 over the
combined teachings and suggestions of Iwama and Gous.

4 A statement by an applicant in the specification identifying the work of
another as “prior art” is an admission which can be relied upon for both
anticipation and obviousness determinations, regardless of whether the
admitted prior art would otherwise qualify as prior art under the statutory
categories of 35 U.S.C. § 102. Riverwood Int’l Corp. v. R.A. Jones & Co.,
Inc., 324 F.3d 1346, 1354 (Fed. Cir. 2003); Constant v. Advanced Micro-
Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988).
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Rejection A – Independent Claim 29
Appellants contend claim 29 is allowable for essentially the same
reasons previously advanced regarding claim 1 (Reply Br. 7). We have
addressed Appellants’ arguments regarding claim 1, and particularly
regarding the claimed “various measuring processes,” supra. Regarding
claim 29, Appellants further contend Gous does not teach configuration
modules each coupled to the measuring appliances because “as seen in FIG.
1 of Gous, element 30 is coupled to the alleged calculations (element 32)
and not to the alleged measuring appliances” (App. Br. 17 (emphasis
added)).
However, we agree with the Examiner’s broad but reasonable
interpretation that the term “coupled to” covers or includes indirect
connections. Gous shows a connection between calculation modules
(element 30) and network measuring appliances (network 12 comprising
nodes 14, 16, 18) through a pathway that includes another module (element
32) (Ans. 5-6; see also Gous Fig. 1).
For these reasons, we are not persuaded that the Examiner erred in
rejecting independent claim 29.

Rejection A – Dependent Claim 8
Issue: Under § 103, did the Examiner err in finding the combination
of Iwama and Gous would have taught or suggested the claim 8 limitation of
“the device further including: a third memory which stores data representing
said measurement model”?
The Examiner explains the basis for the rejection of claim 8:
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As shown in Fig. 1 of Iwama et al., there is element 103 that is
a bandwidth controller within network 110, provides bandwidth
management for the nodes in the respective zones or domains
throughout the communication process. As shown in Fig. 1 and
Fig. 5 of Gous et al., element 56 is not only a data base of
bandwidth allocations for the network elements but also, has to
have a memory in order to maintain and keep the information.
(Ans. 27 (emphasis added)).
Appellants principally contend claim 8 is allowable because Gous
does not explicitly teach three separate memories, with two memories
containing local measurement specifications (claims 4 and 5) and one
memory containing a measurement model (claim 8) (App. Br. 14).
However, we find the claim limitations directed to three distinct memories
would have been a “predictable use of prior art elements according to their
established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). Thus, claiming a mere plurality of prior art elements is not an
unobvious distinction over the prior art of record, because using plural
elements would have produced a predictable result under § 103. Cf. with In
re Harza, 274 F.2d 669, 671 (CCPA 1960) (“It is well settled that the mere
duplication of parts has no patentable significance unless a new and
unexpected result is produced . . . .”). Following this guidance, we conclude
that claiming a mere plurality of prior art elements used in combination is
not a nonobvious distinction over the prior art of record, absent some
showing of secondary considerations, such as unexpected results. For these
reasons, we are not persuaded that the Examiner erred in rejecting dependent
claim 8.
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Rejection A – Dependent Claim 28
Regarding claim 28, Appellants contend “Iwama does not teach or
suggest executing a different one of ‘a passive measuring process . . . , an
active measuring process . . . , or a measuring process based on a
measurement model’ by each of elements 1705, 1709, and 1710 (alleged
measuring appliances).” (App. Br. 16).
The Examiner disagrees:
As shown in Fig. 8 of Iwama et al., each of the elements
1705, 1709 and 1710 perform their own processing within their
own domain. The bandwidth control unit (1705) is application
software which implements the bandwidth reservation, the
reservation cancel, the reservation alteration, the monitoring,
etc. The bandwidth reservation procedure between the gateway
device (102) and the counterpart device is implemented on the
basis of the RSVP procedure according to the procedure shown
in FIG. 11. The communication control switch (1709)
implements buffering and distribution of transmission/reception
signals between the gateway device (102) and the Internet
(1508) or the PSTN (1712), and serves to control the lines and
the bandwidths, etc. The voice processing device (1710)
implements a function of converting speech packets
transmitted/received in the Internet (1508) when a voice signal
is transmitted/received with the PSTN (1712), whereby speech
is transmitted/received between the Internet (1508) and the
PSTN (1712) (Column 12 ,lines 24-50 and column 13, lines 1-
4). It is know[n] by definition that a passive device is a device
that depends on another device or element to perform a
function. As shown in Fig. 8, a voice signal is needed for the
voice processing device to effectively perform[].”
(Ans. 29 (emphasis added)).
The Examiner interprets a passive device as “a device that depends on
another device or element to perform a function” (Ans. 29). The Examiner
uses this construction to interpret the passive measuring process. Appellants
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do not contest the Examiner’s interpretation of a passive measuring process
(Reply Br. 6).
The Examiner further finds the elements within each of Gous’s
gateway devices (Figures 1, 8, element 102) “perform their own processing”
and also perform a passive measurement process because they depend on
data from another device. With regard to voice processing device (1710),
the Examiner finds: “As shown in Fig. 8, a voice signal is needed for the
voice processing device to effectively perform[].” (Ans. 29). The Examiner
also finds Iwama’s bandwidth control unit 1705 performs “monitoring”
(Ans. 29). We agree with the Examiner’s findings and therefore, we agree
with the Examiner that Gous teaches measuring processes, including passive
measuring processes, within the meaning of claim 28.
We conclude the claim 28 limitation “wherein each first, second and
third measuring process differs from other measuring processes being
executed” broadly covers a replication of the measuring process over
multiple devices. “A mere duplication of parts is not invention.” In re
Marcum, 47 F.2d 377, 378 (CCPA 1931) (citing Topliff v. Topliff, 145 U.S.
156, 163 (1892)). “It is well settled that the mere duplication of parts has no
patentable significance unless a new and unexpected result is produced
. . . .” In re Harza, 274 F.2d at 671. We find such duplication would have
been a “predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417. As previously discussed, we conclude
that claiming a mere plurality of prior art elements used in combination is
not a nonobvious distinction over the prior art of record, absent some
showing of secondary considerations, such as unexpected results.
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Further regarding dependent claim 28, Appellants contend “Iwama
does not teach or suggest that each alleged measuring appliance 1705, 1709,
1710 is associated with its own domain to collect the local measurements of
a local end-to-end data stream which traverses its own domain.” (App. Br.
16). However, the Examiner cites to Iwama’s Figure 1 as teaching or
suggesting measuring appliances in multiple domains (Ans. 13 (“Also see
Fig. 1 Gateways located in different zones.”)). Furthermore, as discussed
supra, we find the mere repetition of a measuring appliance in a single
domain, across multiple domains, would have been a “predictable use of
prior art elements according to their established functions.” KSR, 550 U.S.
at 417.
For these reasons, on this record, we are not persuaded that the
Examiner erred in rejecting dependent claim 28 under § 103 over the
combined teachings and suggestions of Iwama and Gous.

Rejections A, B, and C - dependent claims 2-7, 16-18, 20-25, and 27
With regards to dependent claims 2 and 16, Appellants urge that the
cited prior art does not teach the specific limitations of these claims.
However, the Appellants do not advance substantive arguments showing
error in the Examiner’s rejection. See 37 C.F.R. § 41.37(c)(1)(vii) (noting
that an argument that merely points out what a claim recites is
unpersuasive).
Appellants further contend the cited prior art fails to cure the
deficiencies of Iwama and Gous in the rejection of independent claim 1 from
which claims 2-7, 16-18, 20-25, and 27 depend (App. Br. 13-18).
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We find no deficiencies regarding the Examiner’s rejection of claim 1.
Therefore, we sustain the Examiner’s rejections of dependent claims 2-7,
16-18, 20-25, and 27 for the same reasons discussed supra regarding
claim 1.

Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
(pages 4-7, particularly page 6 regarding dependent claim 16) not in
response to a shift in the Examiner’s position in the Answer, we note that
“[a]ny bases for asserting error, whether factual or legal, that are not raised
in the principal brief are waived.” Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative). Cf. with Optivus Tech., Inc. v. Ion Beam
Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by
an appellant in its opening brief . . . is waived.” (citations and internal
quotation marks omitted)).

DECISION
We affirm the Examiner’s decision rejecting 1-8, 16-18, 20-25, and
27-29 under § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED

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