Ex Parte Franke et al

Patent Trials and Appeals Board

Jul 21, 2014

11339867 - (R) (P.T.A.B. Jul. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JEFFERY M. FRANKE and MICHAEL S. ROLLINS
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Appeal 2011-013669
Application 11/339,867
Technology Center 3600
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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

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