Ex Parte Okamoto et al

Patent Trial and Appeal Board

Jun 30, 2014

10768905 (P.T.A.B. Jun. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KOHSUKE OKAMOTO, KATSUYOSHI YAMAMOTO, and
HIROYUKI OGURA
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Appeal 2011-013609
Application 10/768,9051
Technology Center 2400
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 11, 14, and 21–35. App. Br. 2. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 According to the Appellants, the real party in interest is “International
Business Machines Corporation” (App. Br. 2).
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Claimed Subject Matter
Claims 1, 11, 14, and 28 are the independent claims on appeal. Claim
11, reproduced below, is illustrative of the subject matter on appeal.
11. A computer-implemented method of
monitoring component processing in a computer
system, said method comprising the steps of:
acquiring a correspondence between a
plurality of components of a computer in a single
node of a network;
generating an interface for passing data
through said network from an interconnection
between said plurality of components;
acquiring a transmission path of data
transmitted via said interface and connecting said
acquired transmission path to generate a
transmission path for transferring the data;
receiving said data via said transmission
path and transferring the data; and
monitoring said data transmitted on said
network.

Rejections
The following Examiner’s rejections2 are before us for review:
claims 1, 11, 14, 21–23, 28–31, and 35 are rejected under 35
U.S.C. § 102(e) as being anticipated by Haghpassand (US 7,587,499
B1, iss. Sept. 8, 2009);
claims 24–27 and 32–34 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Haghpassand and Hoyer (US 6,339,750
B1, iss. Jan. 15, 2002); and

2 To facilitate our analysis, we set forth the rejections in a different order
than the order presented in the Examiner's Answer.
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claims 1, 14, 21–29, and 32–35 are rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.

ANALYSIS
Rejection under 35 U.S.C. § 102
Claims 11, 14, 30, 31, and 35
The Examiner finds that Haghpassand discloses, “acquiring a
correspondence between a plurality of components of a computer in a single
node of a network,” as recited in independent claims 11 and 14. Ans. 6–8
(citing Haghpassand, Figs. 6–7 and col. 8, ll. 35–67).
The Appellants’ contention that the portions of Haghpassand relied
upon by the Examiner do not disclose the above-quoted limitation of claims
11 and 14 is persuasive. App. Br. 12, Reply Br. 9. According to the
Appellants, Haghpassand’s components “do not correspond with one
another.” Id.
The portions of Haghpassand relied upon by the Examiner disclose a
system including a local host located on a network (LAN 1). See
Haghpassand, Fig. 1A and col. 4, ll. 44–54. A proxy server, a HTTP client,
an inbound access list, and an outbound domain access list are resident on
the local host. See id. at Fig. 1A. The proxy server accepts a request from
the HTTP client, and checks the inbound domain access list or outbound
domain access list to determine whether to forward, terminate, or re-route
the request. See id. at col. 4, l. 55–col. 5, l. 23; col. 8, l. 35–col. 9, l. 38.
In response to the Appellants’ contention, the Examiner explains,
“[the] Proxy server further communicates with different components such as
[the] inbound client and outbound client reference list[s], [and the] HTTP
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client browser on [the] local host.” Ans. 16 (citing Haghpassand, col. 4, ll.
45–65 and Fig. 1A).3 As pointed out by the Appellants, the Examiner
determines that Haghpassand’s inbound domain access list, outbound
domain access list, and HTTP client correspond to the recited “components.”
See Reply Br. 9. There is inadequate evidence that a plurality of
Haghpassand’s components (i.e., inbound domain access list, outbound
domain access list, and HTTP client) correspond with one another, such that
there is a correspondence between a plurality of such components. In other
words, although Haghpassand’s proxy server receives a request from the
HTTP client and interacts with the access lists, nothing in the cited portions
of Haghpassand discloses “acquiring a correspondence between a plurality
of components of a computer in a single node,” as recited in claims 11 and
14. Therefore, the Examiner’s finding that Haghpassand discloses
“acquiring a correspondence” as required by independent claims 11 and 14
is inadequately supported.
Thus, the Examiner’s rejection of independent claims 11 and 14, and
their respective dependent claims 30, 31, and 35, as anticipated by
Haghpassand is not sustained.

3 In the Reply Brief, the Appellants assert that the additional citations and
explanations provided in the Answer “should be designated as a new ground
of rejection.” Reply Br. 6–7. Whether an Examiner’s Answer includes an
undesignated new ground of rejection is an issue reviewable by petition, and
not within the jurisdiction of the Board. See 37 C.F.R. § 1.181, Manual of
Patent Examining Procedure (MPEP) §§ 1002 and 1201 (8th ed., Rev. 9,
Aug. 2012). As such, we make no findings of fact or judgment with respect
to the Examiner’s actions.
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Claims 1, 21–23, 28, and 29.
The Examiner finds that Haghpassand discloses each of the features
recited in independent claims 1 and 28. Ans. 5–8. As an initial matter, the
Appellants contend that the Examiner fails to establish a prima facie case of
anticipation because “the Examiner generally cite[s] to certain passages of
the reference without any explanation [of] how the cited text applies to the
limitations of [the] claim.” App. Br. 11. The Appellants further contend
that Haghpassand does not disclose several limitations of “exemplary claim
11” that are “integral” to independent claims 1 and 28. Id. at 8–9, Reply Br.
9.
The Appellants’ initial contention that the Examiner fails to establish
a prima facie case of anticipation is unpersuasive. “[A]ll that is required of
the office to meet its prima facie burden of production is to set forth the
statutory basis of the rejection and the reference or references relied upon in
a sufficiently articulate and informative manner as to meet the notice
requirement of [35 U.S.C. ]§ 132.” In re Jung, 637 F.3d 1356, 1363 (Fed.
Cir. 2011). As per section 132, the rejection must state the reason for the
rejection “[‘]together with such information and references as may be useful
in judging of the propriety of continuing the prosecution of [the]
application.’” Id. at 1363 (quoting 35 U.S.C. § 132).
Here, the Examiner generally quotes each sub-paragraph of each
claim, followed by a parenthetical citation to columns and lines of
Haghpassand. See Ans. 5–9. The Examiner’s discussion of the theory of
invalidity and identification of the columns and lines of Haghpassand found
to disclose the quoted limitations of the rejected claims is sufficient to allow
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the Appellants to respond, as the Appellants have in fact done (see Reply Br.
9), and thereby satisfy the notice requirement of 35 U.S.C. § 132.
The Appellants’ further contention that Haghpassand does not
disclose various limitations of “exemplary claim 11” is not commensurate
with the scope of independent claims 1 and 28 and, therefore, is also
unpersuasive. Specifically, claims 1 and 28 do not recite any of the argued
features of claim 11. See Reply Br. 9, App. Br, Clms. App’x. Accordingly,
the Appellants have not identified an error in the Examiner’s rejection of
claims 1 and 28.
For the foregoing reason, the Examiner’s rejection of independent
claims 1 and 28 as anticipated by Haghpassand is sustained. Claims 21–23
and 29 depend either directly or indirectly from claims 1 or 28, are not
argued separately, and thus, the Examiner’s rejection of claims 21–23 and 29
is sustained.

Rejections under 35 U.S.C. § 103
Claims 24–27
The Appellants have not provided further arguments for the rejection
of claims 24–27 under 35 U.S.C. § 103(a) as unpatentable over Haghpassand
and Hoyer. App. Br. 13. The Appellants merely rely on the arguments
presented for the Examiner’s rejection of claim 1 for this ground of
rejection.
For the same reasons we have sustained the rejection of claim 1, we
likewise sustain the rejection of claims 24–27 under 35 U.S.C. § 103(a) as
unpatentable over Haghpassand and Hoyer.
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Claims 32–34
The Examiner’s rejection of claims 32–34, which depend directly
from claim 14, relies on the same inadequately supported finding discussed
above. The Examiner’s findings pertaining to Hoyer do not remedy the
deficiency in the rejection of independent claim 14. Therefore, the
Examiner’s rejection of claims 32–34 as unpatentable over Haghpassand and
Hoyer is not sustained.

Rejections under 35 U.S.C. § 101
Claims 1 and 21–29
As discussed above, claims 1, 21–23, 28, and 29 are properly rejected
under 35 U.S.C. § 102. As such, we do not reach the rejection of those
claims under 35 U.S.C. § 101. Likewise, as discussed above, claims 24–27
are properly rejected under 35 U.S.C. § 103. Thus, we do not reach the
rejection of those claims under 35 U.S.C. § 101.
Claims 14 and 32–35
Independent claim 14 recites “[a] computer-readable tangible
medium.” The Examiner determines that the term “tangible medi[um]” is
broad enough to encompass transitory signals and, therefore, rejects claim
14 and dependent claims 32–35 under 35 U.S.C. §101 as drawn to non-
statutory subject matter. Ans. 5.
We have considered the Appellants’ arguments against the
Examiner’s rejection (see App. Br. 6–7), and agree with Examiner.
A claim term is given “[its] broadest reasonable interpretation
consistent with the specification,” and “in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
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Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In support of claim
14, the Appellants cite page 8 of the Specification, which states: “the
program may be provided by storing it in a magnetic disk, an optical disk, a
semiconductor memory or other recording medium, or distributing it via the
network.” Spec. 8, ll. 21–24 (emphasis added). The clear import from the
possible alternatives provided in the cited portion of the Appellants’
Specification is that transitory media or signals are not excluded. Further,
upon reviewing the remainder of the Appellants’ Specification, we do not
find a definition of the term “computer-readable tangible medium” expressly
excluding signals. Accordingly, the broadest reasonable interpretation of the
term “computer-readable tangible medium” includes both non-transitory and
transitory propagating signals. Thus, the Examiner’s rejection of claims 14
and 32–35 under 35 U.S.C. §101 as being directed to non-statutory subject
matter is sustained.

DECISION
We AFFIRM the rejections of: claims 14 and 32–35 under 35 U.S.C.
§ 101; claims 1, 21–23, 28, and 29 under 35 U.S.C. § 102(e); and claims 24–
27 under 35 U.S.C. § 103(a).
We REVERSE the rejections of: claims 11, 14, 30, 31, and 35 under
35 U.S.C § 102(e); and claims 32–34 under 35 U.S.C. § 103(a).
We do not reach the rejection of claims 1 and 21–29 under 35 U.S.C.
§ 101.

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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.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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