Ex Parte Franke et alDownload PDFPatent Trials and Appeals BoardJul 21, 201411339867 - (R) (P.T.A.B. Jul. 21, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JEFFERY M. FRANKE and MICHAEL S. ROLLINS ____________________ Appeal 2011-013669 Application 11/339,867 Technology Center 3600 ____________________ Before ANTON W. FETTING, BIBHU R. MOHANTY, and NINA L. MEDLOCK, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellants filed a Request for Rehearing (hereinafter “Request”) dated July 14, 2014, seeking reconsideration of our Decision, mailed May 12, 2014 (“Decision”), in which we affirmed the rejection of claims 1–12 and 14–20 under 35 U.S.C. § 103(a) as unpatentable over Merkin (US 2003/0074294 A1, pub. Apr. 17, 2003). We have jurisdiction over the Request under 35 U.S.C. § 6(b). Appeal 2011-013669 Application 11/339,867 2 ANALYSIS Appellants allege in the Request that the Board “misapprehended or overlooked certain arguments presented by Appellants in the Appeal Brief of May 9, 2011 (hereinafter the ‘Appeal Brief’) and the Reply Brief of August 29, 2011 (hereinafter the ‘Reply Brief’).” Request 2. More particularly, Appellants maintain that the Board overlooked Appellants’ argument at page 7 of the Reply Brief in which Appellants observed that paragraph 5 of the originally filed Specification “provided for an industrially understood meaning of the term ‘autonomic’ to be ‘self-managing.’” Request 4. First, to the extent that Appellants seek to clarify the term “autonomic,” we note that the Specification does not define that term explicitly. Instead, the Specification states at paragraph 5 that “[a]dvanced forms of complex computing systems extend defect avoidance and remediation systems to behave autonomically” and that “[t]he crux of autonomic computing relates to eight principal characteristics,” enumerated thereafter. Even were that not so, we are not persuaded, on this record, that the recitation of an “autonomic element” in claim 11 is entitled to patentable 1 Claim 1 reads: 1. A method for tamper sensitive warranty management for an autonomic computing system, the method comprising: monitoring an autonomic element within a product for configuration changes to the autonomic element; and, responsive to detecting a configuration change to the autonomic element, reporting the detected configuration change for evaluation in voiding a warranty for the product. Appeal 2011-013669 Application 11/339,867 3 weight so as to provide a basis for distinguishing over the prior art publication to Merkin.2 In the original briefs, Appellants argued that, in relying on Merkin, the Examiner equated the monitoring of an autonomous element within a product to the monitoring of a computer system. Appellants, thus, maintained that, under the Examiner’s interpretation, either (1) there is a product, i.e., the computer system, and no autonomic element or (2) there is an autonomic element, i.e., the computer system, and no product, and that in either case, the Examiner has failed to account for all the elements of the independent claims (see, e.g., Appeal Brief 14–16). We determined that ¶ 43of Merkin discloses a computer system, i.e., a product, having software that monitors various computer system components, i.e., elements within the product, for configuration changes, e.g., upgrading the hard drive from a 20G drive to a 100G drive. Decision 8–9. Therefore, we sustained the Examiner’s rejection of claim 1 under § 103(a) as unpatentable over Merkin. The gist of Appellants’ argument in the Request appears to be that the claimed method is patentable over Merkin because the system components that are monitored in Merkin are not “self-managing elements,” and, thus, not “autonomic elements,” as recited in claim 1. Request 4–5. 2 Appellants argued independent claims 1, 8, and 12 as a group (Appeal Brief 11–16). We selected claim 1 as representative so that the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011). None of the dependent claims was argued separately; instead, Appellants indicated that the dependent claims should stand or fall with their respective independent claims (Appeal Brief 11–12 and 17). Appeal 2011-013669 Application 11/339,867 4 The rationale underlying the “printed matter” cases has been extended to the analysis of the patentability of method claims. King Pharms. Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278–79 (Fed. Cir. 2010) (applying the “printed matter” reasoning to method claims containing an “informing” step that could be either printed or verbal instructions). In this case, the relevant question is whether the characterization of the computer system element, being monitored for configuration changes, as an “autonomic element” has a “new and unobvious functional relationship” with the method. Id. at 1279. There is no objective evidence of record that there is a functional distinction in monitoring an autonomic element in a computer system as compared to monitoring any other system component and, thus, no evidence of any functional relationship between the “autonomic element” and the method. Regardless of the particular type of element being monitored for configuration changes, the underlying method – i.e., detecting configuration changes and, responsive to detecting a configuration change, reporting the detected configuration change for evaluation in voiding a warranty for the product – is the same. The particular element being monitored for configuration changes does not depend on the method, and the method does not depend on the particular element being monitored. Accordingly, we find that the nature of the monitored element, i.e., that it is an “autonomic” element, is non-functional descriptive material that may not be relied on to distinguish over the prior art for purposes of patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability). Appeal 2011-013669 Application 11/339,867 5 For the reasons set forth above, we are not persuaded that we misapprehended or overlooked any points in rendering our Decision. Therefore, we decline to modify our original Decision. DECISION Appellants’ Request has been granted to the extent that we have reconsidered our Decision in light of Appellants’ Request, but is denied in all other respects. 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). DENIED mls Copy with citationCopy as parenthetical citation