Ex Parte Bittles et al

Patent Trials and Appeals Board

Jan 24, 2019

12768475 - (D) (P.T.A.B. Jan. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/768,475 04/27/2010 William Bittles
73109 7590 01/28/2019
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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
ATTORNEY DOCKET NO.
GB920080305US 1
8152-0103
CONFIRMATION NO.
5684
EXAMINER
PATEL,DHAIRYAA
ART UNIT PAPER NUMBER
2453
NOTIFICATION DATE DELIVERY MODE
01/28/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM BITTLES, DAVID GRANSHA W, and
JOHN BRIAN PICKERING
Appeal2017-007615
Application 12/768,475
Technology Center 2400
Before ELENI MANTIS MERCADER, JESSICA C. KAISER, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1, 2, 4, 5, and 16-31. Claims 3 and 6-
15 have been canceled. See App. Br. 21-22, Claims Appendix. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is IBM Corporation.
App. Br. 1.
Appeal2017-007615
Application 12/768,475
RELATED APPEALS
The present application was the subject of Appeal No. 2013-005442,
mailed August 5, 2015 (the "'442 Decision"), in which a panel of this Board
affirmed the Examiner's rejection of claims 1-10 under 35 U.S.C. § 101;
affirmed the Examiner's rejection of claims 7-9 under 35 U.S.C. § 103(a);
and reversed the Examiner's rejection of claims 1---6 and 10-15 under 35
U.S.C. § 103(a).
STATEMENT OF THE CASE
Appellants 'Invention
Appellants' invention generally relates to "a method of operating a
communication system, and to the system itself. The method and system
allow dynamic switching of message formats." Spec. ,r 1. Claims 1 and 2,
which are illustrative, read as follows:
1. A method of operating a computer hardware device within
a client-server system, comprising:
receiving, from a client, messages in a first format that
includes data and descriptive tags;
initiating, after receipt of the message and with the client,
a negotiation to determine whether the client accepts message
format switching;
receiving, from the client, an indication that the client
accepts message format switching; and
transmitting, to the client after receiving the indication, an
instruction to transmit messages in a second format.
2. The method of claim 1, wherein
a message workload from the client is monitored; and
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Application 12/768,475
the negotiation is initiated based upon a determination that
a switch to a different message format would be more efficient
given the message workload from the client.
Rejections
Claims 1, 5, 16-19, 22-26, and 29-31 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Abjanic et al.
(US 7,162,542 B2; issued Jan. 9, 2007) ("Abjanic") and Feingold et al. (US
2008/0168469 Al; published July 10, 2008) ("Feingold"). Final Act. 2-7.
Claims 2, 4, 20, 21, 27, and 28 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Abjanic, Feingold,
Giffin et al. (US 2009/0089417 Al; published Apr. 2, 2009) ("Giffin"), and
Gerdes et al. (US 2007/0189159 Al; published Aug. 16, 2007) ("Gerdes").
Final Act. 7-10.
ANALYSIS
Claim 1
ISSUE 1
Did the Examiner err in finding that the combination of Abjanic and
Feingold teaches or suggests "initiating, after receipt of the message and
with the client, a negotiation to determine whether the client accepts
message format switching," as recited in claim 1?
Appellants argue:
Abjanic does not teach that a determination is not made as to
whether the client accepts message format switching (i.e.,
corresponding to the claimed "to determine whether the client
accepts message format switching"). Instead, the Examiner's
cited passages refer to the actual operation of transforming data
from one format to another format.
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App. Br. 10.
According to Appellants, Feingold teaches "Application 1 sends the
original request to Application 2 along with a propagation information
package that describes what protocols Application 1 accepts." App. Br. 12.
Appellants argue
at the time that Application 2 receives the propagation
information package, which is sent along with the original
request, Application 2 already knows that Application 1 accepts
message format switching because the existence of the
propagation information package sent by Application 1
establishes that Application 1 accepts message format switching.
App. Br. 12. Appellants further argue "[s]ince Application 2 already knows
that Application 1 accepts message format switching as a result of the
message being received, there is no need to perform 'a negotiation to
determine whether the client accepts message format switching' after receipt
of the message," as required by claim 1. App. Br. 12. Appellants argue:
To the extent that a "negotiation" is performed between
Application 2 and Application 1, this negotiation involves
"Transaction Manager 2 108 select[ing] a protocol and
communicates with Transaction Manager 1 106 ( arrow 5)" and
"Transaction Manager 1 106 receives a selection of one of the
supported communication protocols from Transaction Manager
2 108." Accordingly, the interactions between the Transaction
Manager 1 106 and Transaction Manager 2 108 ( as proxies for
the Application 1 102 and Application 2 104) are not "to
determine whether the client accepts message format switching,"
as claimed.
App. Br. 12-13.
Appellants also argue Feingold's teaching that either of the
transaction managers may initiate a re-negotiation of the communication
protocol (Feingold ,r 39) is a negotiation regarding which communication
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Application 12/768,475
protocol to use and not a negotiation to determine whether the client accepts
message format switching. App. Br. 13.
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). Here, the Examiner relies upon the combination of Abjanic and
Feingold for teaching or suggesting the disputed limitation. Final Act. 4--5
(citing Abjanic 11:6-64, 12:30-45; Feingold ,r,r 19, 20, 23, 29, 30, 35-37,
39, 40, 44); see also Ans. 3-5. In particular, the Examiner finds Abjanic
teaches:
[A] first node may issue a request over the network or internet
that is received by the second node (initiating with the client).
The second node may send a response back to the first node.
Both the request and response may typically be routed over the
network and transforming switch, and the request and the
response may both include data that may be transformed (relating
to message format switching). The transforming switch receives
the message provided in one or more packets, determines if the
data within the packets need to be transformed, performs
transformation that is required and forwards the message
(relating to message format switching).
Final Act. 3 (citing Abjanic 11:6-44; 12:30-45); see also Ans. 3--4. The
Examiner finds Feingold teaches initiating, after receipt of a message and
with a client, a negotiation with the client to determine whether the client
accepts message format switching. Ans. 4--5 (citing Feingold ,r,r 19, 20, 23,
29, 30, 35-37, 39, 40, 44). The Examiner finds it would have been obvious
to one of ordinary skill in the art at the time Appellants' invention was made
"to implement Feingold's teaching in Abjanic's teaching to come up with
initiating a negotiation and receiving an indication relating to format
switching." Final Act. 6; see also Ans. 6. Appellants' arguments fail to
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persuasively address the combined teachings of the references and,
therefore, are unpersuasive of error.
ISSUE 2
Did the Examiner err in finding that the combination of Abjanic and
Feingold teaches or suggests "transmitting, to the client after receiving the
indication, an instruction to transmit messages in a second format," as
recited in claim 1?
According to Appellants, Feingold teaches "Transaction Manager 2
initiates communication with Transaction Manager 1 to indicate that
Application 2 has selected one of the protocols already forwarded (by
Application 1) to Application 2." App. Br. 14. Appellants argue:
The limitations at issue are "transmitting, to the client after
receiving the indication, an instruction to transmit messages in a
second format." The Examiner's analysis necessarily requires
that Application 1 be the client that sends the original request and
Application 2 be the receiver of the request. Based upon this
interpretation, the claimed "transmitting" would have to refer to
a message (i.e., instruction) sent from Application 2 to
Application 1. The only message (see Figure 1 of Feingold) that
could correspond to this is arrow 6. However, arrow 6 refers to
"Application 2 104 completes the designated operations in the
transaction and sends the status and/or results to Application 1
102." This does not involve "an instruction to transmit messages
in a second format."
App. Br. 14. Appellants further argue "the claimed invention contemplates
message format switching being performed by the client that sends the
request whereas Feingold contemplates message format selection by the
application that receives the request." App. Br. 15.
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The Examiner finds Feingold teaches that the first transaction
manager receives a protocol request from the second transaction manager.
Ans. 6; see also Feingold ,r 37. The Examiner finds "[t]he protocol request
is a request for the first transaction manager to communicate with the second
transaction manager via a selected communication protocol (transmitting to
the client an instruction to transmit message of a second format)." Ans. 6.
Thus, contrary to Appellants' arguments, the Examiner relies upon the
message represented by arrow 5 in Figure 1 of Feingold, along with the
associated description of that message, for teaching or suggesting the
disputed limitation. See Ans. 6. Appellants' arguments fail to address these
findings of the Examiner and, therefore, are unpersuasive of error.
ISSUE 3
Is the combination of Abjanic and Feingold proper?
Appellants contend the combination of Abjanic and Feingold is
improper because the Examiner fails to provide a rational underpinning to
support the conclusion of obviousness. App. Br. 15. Appellants argue "the
Examiner's 'motivation' is already achieved by Abjanic alone" because
"Abjanic already provides the ability to establish communication 'between
the client and the server in a format which is supported/compatible by both
client and server."' App. Br. 15, 16; see also Reply Br. 5.
We are not persuaded. Although Abjanic teaches transforming
messages generally (Abjanic 11 :6-44), we disagree that this teaching
precludes the Examiner's reasoning from having rational underpinning as
Appellants argue. Instead, we find the Examiner's reasoning has rational
underpinning (i.e., so that communication can be established between the
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client and the server in a format which is supported by both client and server
(and determined by Feingold's handshake/negotiation)).
For the foregoing reasons, we do not sustain the Examiner's rejection
of claim 1; and claims 4, 5, and 16-31, which are not separately argued with
particularity. See App. Br. 8, 16. 2
Claim 2
ISSUE 4
Did the Examiner err by finding the combination of Abjanic,
Feingold, Giffin, and Gerdes teaches or suggests "a message workload from
the client is monitored," as recited in claim 2?
Regarding the disputed limitation, the Examiner finds Giffin teaches
that "the collector receives all the incoming requests/messages at the
incoming load balancer which handles all the traffic relating to all incoming
requests which creates alerts, and the user viewing alerts an HTTP load
balancer is implemented." Ans. 9 (citing Giffin ,r 55). The Examiner further
finds "that the user is viewing alerts which is workload from a client
therefore, the load balance has to be implemented." Id. Additionally, the
Examiner finds "monitoring of screen names of the user for messages is a
message workload from a client because in this case the client is the user and
2 Although Appellants state that claims 4, 20, 21, 27, and 28 stand or fall
together with claim 2 (App. Br. 16), these claims do not depend from claim
2 (see App. Br. 21-24 (Claims Appendix)). As such, Appellants' arguments
with respect to claim 2 are not determinative as to the patentability of claims
4, 20, 21, 27, and 28.
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message workload is all the messages related to the screen name of the
user." Id.
Appellants argue Giffin's teaching of monitoring known screen names
does not teach or suggest monitoring a message workload from a client, as
required by claim 2. App. Br. 17. Appellants argue:
The term "workload" is defined as "the amount of work or
of working time expected or assigned" or "the amount of work
performed or capable of being performed ( as by a mechanical
device) usually within a specific period." What the Examiner
has identified refers to monitoring work product. The teaching
of "monitoring known screen names" does not refer to the
amount of work expected/performed/capable of being
performed.
App. Br. 17 (citing Merriam-Webster Dictionary (available at
http://www.merriam-webster.com/dictionary/workload) (last accessed Dec.
20, 2018)). Appellants further argue Giffin's load balancer does not monitor
a message workload from a client but merely implements "a technique by
which a load is balanced over a number of components (e.g., servers) that
are capable of handling a portion of the load." Reply Br. 7.
We find Appellants' arguments persuasive. Based on the plain
meaning of the terms, "a message workload from the client" refers to a
workload (e.g., an amount of work to be performed) resulting from messages
received from a client, which is consistent with Appellants' Specification.
See Spec. ,r 22. We agree with Appellants (Reply Br. 7) that Giffin teaches
balancing a workload of the system irrespective of the client device from
which the messages were received (see Giffin ,r,r 55-57). The Examiner's
findings fail to show how balancing a workload of a system, as taught by
Giffin, teaches or suggests that the message workload from a client is
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monitored, as required by claim 2. As such, we are constrained by the
record to not sustain the Examiner's rejection of claim 2.
DECISION
We affirm the Examiner's rejection of claims 1, 4, 5, and 16-31 under
35 U.S.C. § 103(a).
We reverse the Examiner's rejection of claim 2 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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