Ex Parte Strub

Patent Trial and Appeal Board

Nov 26, 2012

11014949 (P.T.A.B. Nov. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LYLE STRUB
____________________

Appeal 2010-005727
Application 11/014,949
Technology Center 2400
____________________

Before: ERIC S. FRAHM, DAVID M. KOHUT, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005727
Application 11/014,949

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
3, 5-11, and 13-22. Claims 4 and 12 are canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to an application session management for
flow-based statistics. Claims 1 and 14, reproduced below, are illustrative of
the claimed subject matter:
1. A method of collecting flow statistics at a network node in a
communications network comprising:
providing an application session management (ASM)
function to interface with the network applications, the ASM:
collecting information about application flow statistics
requirements, translating said requirements to network node-
level configuration details, and
configuring operation of a flow monitoring subsystem at
said node to adhere to said network node-level configuration
details; and
maintaining individual session information for each
application.

14. A method of collecting flow statistics at a network node in a
communications network comprising
providing an application session management (ASM)
function, the ASM:
receiving the traffic flow counters from an embedded
flow monitoring subsystem;
generating flow statistics from said traffic flow counters
in accordance with flow statistics requirements from an
application; and
exporting the generated flow statistics in a manner
specified by the application during session initialization.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Moran US 7,299,277 B1 Nov. 20, 2007
Gil
Dietz
US 2002/0035628 A1
US 2004/0083299 A1
Mar. 21, 2002
Apr. 29, 2004

REJECTIONS1
The Examiner made the following rejections:
Claims 9, 11 and 21 stand rejected under 35 U.S.C. § 112 second
paragraph as being indefinite. Ans. 3.
Claims 21 and 22 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Ans. 4.
Claims 14-17 and 22 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Dietz. Id.
Claims 1-3, 5-11, 13 and 21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Dietz and Moran. Ans. 6.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dietz and Gil. Ans. 11.
Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dietz and AAPA. Ans. 12.

1 Claims 9, 11 and 21 rejected under 35 U.S.C. § 112 second paragraph and
claims 21 and 22 rejected under 35 U.S.C. § 101 are collectively argued in
connection with each of those rejections. Claims 14-17 and 22 rejected
under 35 U.S.C. § 102(e) are argued on the basis of claim 14 (App. Br. 8-11)
with those arguments asserted to equally apply to claim 22; claims 15-17 are
not separately argued. Claims 1-3, 5-11, 13, and 18-21 rejected under
rejected under 35 U.S.C. § 103(a) are argued on the basis of claim 1 with
claims 2, 3, 5-11, 13, and 18-21 not separately argued.
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Appellant’s Contentions
(1) Appellant contends (App. Br. 5-6) that the Examiner erred in
rejecting claims 9, 11 and 21 under 35 U.S.C. § 112 second paragraph
because:
(a) “[A] person of skill in the art would understand that
‘minimizing memory and bandwidth usage’ is a definite term relating
to keeping the quantitative metrics of memory and bandwidth usage to
minimum values” thereby rendering claims 9, 11, and 21 definite.
App. Br. 6.
(b) “A person of reasonable skill in the art would understand
that the network node collects flow statistics” thereby rendering claim
21 definite. App. Br. 6-7.
(2) Appellant contends (App. Br. 3-5) that the Examiner erred in
rejecting claims 21 and 22 under 35 U.S.C. § 101(a) because the claimed
network node refers to a physical object comprising a physical device such
that the claims are not directed to software per se. App. Br. 7-8.
(3) Appellant contends (App. Br. 8-11) that the that the Examiner
erred in rejecting claims 14 and 22 under 35 U.S.C. § 102(e) because Dietz
does not teach “generating flow statistics from said traffic flow counters in
accordance with flow statistics requirements from an application and
exporting the generated flow statistics in a manner specified by the
application during session information.” App. Br. 10.
(4) Appellant contends that that the Examiner erred in rejecting claim
1 under 35 U.S.C. § 103(a) because:
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(a) “Moran does not disclose an automated layer between the
network node layer and the application layer that translates the flow
statistics requirements of application … and has the system translate
the application's requirements into configuration details for the flow
monitoring system.” App. Br. 13.
(b) “Moran contains no teachings, let alone implementation
details, regarding a statistics collection method that translates flow
statistics requirements into network node-level configuration details.”
App. Br. 14).

Issues
Did the Examiner err in rejecting claims 9, 11 and 21 under 35 U.S.C.
§ 112 second paragraph as indefinite?
Did the Examiner err in rejecting claims 21 and 22 under 35 U.S.C.
§ 101 because the claimed network node refers to a physical object
comprising a physical device such that the claims are not directed to
software per se?
Did the Examiner err in rejecting claims 14 and 22 under 35 U.S.C.
§ 102(e) because Dietz does not teach “generating flow statistics from said
traffic flow counters in accordance with flow statistics requirements from an
application and exporting the generated flow statistics in a manner specified
by the application during session information”?
Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 103(a)
because Moran does not disclose a statistics collection method that translates
flow statistics requirements into network node-level configuration details or
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an automated layer between the network node layer and the application
layer?

Analysis
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We agree with Appellant’s
contention 1a above in connection with the rejections of claims 9 and 11
under 35 U.S.C. § 112 second paragraph. We disagree with Appellant’s
conclusions with regard to the remaining contentions above and, with
respect to those contentions, adopt as our own (1) the findings and reasons
set forth by the Examiner in the action from which this appeal is taken and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Appeal in connection with the remaining rejections.
We highlight the following arguments for emphasis.

Rejection of claims 9, 11 and 21 under 35 U.S.C.
§ 112, second paragraph
Appellant contends that the phrase “minimizing memory and
bandwidth usage” does not render the disputed claims indefinite because
“[i]t is well-known in the art that memory capacity and bandwidth capacity
are finite values for a given network. It is also well-known that ‘to
minimize’ is interpreted as ‘to reduce or keep to a minimum.’” App. Br. 6.
The Examiner responds that “to determine whether or not a particular
parameter value is minimized a skilled artisan would need a reference value
against which the particular value to be measured. The instant Specification
does not provide the needed reference value for ascertaining whether or not
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memory capacity and/or bandwidth capacity is minimized.” Ans. 14. We
disagree with the Examiner that the claim language fails to clearly define the
boundaries of the protected subject matter or that the scope of the disputed
claims is unclear. We note that a broad claim is not indefinite merely
because it encompasses a wide scope of subject matter provided the scope is
clearly defined. Therefore, claims 9 and 11 are not indefinite and we will
not sustain the rejection of those claims under 35 U.S.C. § 112, second
paragraph. However, we do agree with the Examiner that claim 21, directed
to a system for collecting flow statistics, is indefinite for failure to detail
how the flow statistics are collected. Ans. 3. Absent sufficient evidence in
support of their assertion, we are not persuaded by Appellant that “[a] person
of reasonable skill in the art would understand that the network node collects
flow statistics.” App. Br. 7. Therefore, we agree that claim 21 is indefinite
and sustain the rejection of that claim under 35 U.S.C. § 112, second
paragraph. We do not sustain the rejection of claims 9 and 11 under 35
U.S.C. § 112, second paragraph.

Rejection of claims 21 and 22
under 35 U.S.C. § 101
In connection with the disputed rejection, we note that the subject
matter of claims permitted within 35 U.S.C. § 101 must be a machine, a
manufacture, a process, or a composition of matter. Moreover, our reviewing
court has stated that “[t]he four categories [of § 101] together describe the
exclusive reach of patentable subject matter. If the claim covers material not
found in any of the four statutory categories, that claim falls outside the
plainly expressed scope of § 101 even if the subject matter is otherwise new
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and useful.” In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007); accord In
re Ferguson, 558 F.3d 1359, 1365 (Fed. Cir. 2009). This latter case held
that claims directed to a “paradigm” are nonstatutory under 35 U.S.C. § 101
as representing an abstract idea. Thus, a claim that recites no more than
software, logic or a data structure (i.e., an abstraction) does not fall within
any statutory category. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir.
1994). Significantly, “[a]bstract software code is an idea without physical
embodiment.” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
Appellant contends that claims 21 and 22 are directed to statutory
subject matter, i.e., are not directed to software per se, because the claimed
node refers to a physical object in a computer or telecommunications
network. App. Br. 8. The Examiner responds that one physical machine
may host several virtual machines, each with its own network address (i.e.,
constituting a node) such that “a network node may be interpreted by a
skilled artisan as a [sic] software per se.” Ans. 16. We agree with the
Examiner. Furthermore, the disputed claims themselves define the network
node such that it may be reasonably understood to require only software.
For example, claim 21 defines the network node as an (i) embedded flow
monitoring system and (ii) application session management (ASM) function,
the latter comprising an (a) input that receives an application’s flow
requirements and (b) output that changes the network node’s flow
monitoring subsystem. There is no indication in Appellant’s disclosure that
the embedded flow monitoring system is hardware or anything other than
software, and the ASM is positively described as “a software intermediary”
(Spec. 6). “A claim that covers both statutory and non-statutory
embodiments . . . embraces subject matter that is not eligible for patent
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protection and therefore is directed to non-statutory subject matter.”2
Therefore, absent sufficient evidence in support of Appellant’s arguments,
we are not persuaded that the network node comprises a physical device and
is not software per se and therefore sustain the rejection of claims 21 and 22
under 35 U.S.C. § 101.3

Rejection of claims 14 and 22
under 35 U.S.C. § 102(e)
Appellant contends that Dietz’s disclosure of “examining up to
whatever level is sufficient to uniquely identify to a required level, even all
the way up to the application level” is not “equivalent to an application's
request for a particular granularity or precision in any received flow
statistics.” App. Br. 10 (emphasis omitted). Appellant concludes that,
therefore, Dietz fails to disclose “‘generating flow statistics from said traffic
flow counters in accordance with flow statistics requirements from an
application and exporting the generated flow statistics in a manner specified
by the application during session information,’ as recited in claim 14 and
similarly recited in claim 22.” Id. The Examiner responds that “Dietz refers
to [the] OSI model only to explain the meaning of the ‘application level’
term. Therefore, [the] meaning of the term ‘application level statistics’ in
Dietz is the same as in the instant application.” Ans. 17. We agree with the

2 U.S. Patent & Trademark Office, Interim Examination Instructions for
Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 2009, at
2, available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08-
25_interim_101_ instructions.pdf (“Interim Instructions”).
3 Should prosecution continue the Examiner should further consider whether
claim 14 is directed to statutory subject matter.

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Examiner and will sustain the rejection of claims 14 and 22 under 35 U.S.C.
§ 102(e) and of claims 15-17 not separately argued.

Rejection of claim 1 under
35 U.S.C. § 103(a)
Appellant contends that that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because “Moran does not disclose an automated
layer between the network node layer and the application layer that
translates the flow statistics requirements of application … and has the
system translate the application's requirements into configuration details for
the flow monitoring system.” App. Br. 13. The Examiner responds that the
disputed “automatic configuration feature of the invention is not [recited] by
claims 1-3, 5-11, 13 and 21.” Ans. 19. We agree with the Examiner. In that
Appellant’s argument is based on limitations not found in the disputed
claims, such argument are not commensurate with the scope of the claims
and are not persuasive of error.
Appellant further argues that “Moran contains no teachings, let alone
implementation details, regarding a statistics collection method that
translates flow statistics requirements into network node-level configuration
details.” App. Br. 14. The Examiner had found that “Moran implicitly
teaches translation of network application requirements to network node-
level configuration details and configuration of a flow monitoring subsystem
in accordance with the network node-level configuration details by
disclosing the system that can allow the user to configure the trending
collection parameters (col. 51, lines 20-45).” Ans. 7 (emphasis added).
While Appellant argues that “for an implicit disclosure to be proper, one of
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ordinary skill in the art must have also reasonably inferred the same
disclosure” (App. Br. 13), no evidence is provided to persuade us that the
disputed limitation is not reasonably inferred from the Moran disclosure. In
the absence of persuasive evidence to the contrary, we instead agree with the
Examiner that the combination of Dietz and Moran teaches or suggests the
disputed limitation.
Concerning Appellant’s asserted failure of Dietz to disclose (i)“that
the ASM includes the ability to translate network application-level
requirements to network node-level configuration details,” and (ii) “using
configuration details to change the flow monitoring subsystem” (App. Br.
14), we note that Moran, not Dietz, was applied for disclosing the disputed
limitation. Thus, Appellant’s contention does not persuade us of error on the
part of the Examiner because the Appellant is responding to the rejection by
attacking the references separately, even though the rejection is based on the
combined teachings of the references. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Concerning Appellant’s
contention that Dietz does not disclose applications requiring flow statistics
(App. Br. 14), we are not persuaded of Examiner error for the reasons
presented in connection with the rejection of claims 14 and 22 above.
Accordingly, we sustain the Examiner’s rejection of claim 1 under 35
U.S.C. § 103(a) and of claims 2, 3, 5-11, 13, and 18-21 not separately
argued.

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DECISION
The decision of the Examiner to reject claims 1-3, 5-11, and 13-22 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)(2011).

AFFIRMED

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