Ex Parte Martinot et alDownload PDFPatent Trial and Appeal BoardJun 23, 201410825243 (P.T.A.B. Jun. 23, 2014) Copy Citation 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. Appeal 2011-004727 Application 10/825,243 2 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, Appeal 2011-004727 Application 10/825,243 3 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 Appeal 2011-004727 Application 10/825,243 4 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. Appeal 2011-004727 Application 10/825,243 5 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). Appeal 2011-004727 Application 10/825,243 6 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 Appeal 2011-004727 Application 10/825,243 7 (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 Appeal 2011-004727 Application 10/825,243 8 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). Appeal 2011-004727 Application 10/825,243 9 “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. Appeal 2011-004727 Application 10/825,243 10 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). Appeal 2011-004727 Application 10/825,243 11 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: Appeal 2011-004727 Application 10/825,243 12 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. Appeal 2011-004727 Application 10/825,243 13 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 Appeal 2011-004727 Application 10/825,243 14 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. Appeal 2011-004727 Application 10/825,243 15 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). Appeal 2011-004727 Application 10/825,243 16 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 msc Copy with citationCopy as parenthetical citation