Ex Parte Goodman

Patent Trial and Appeal BoardApr 30, 2013

10959176 (P.T.A.B. Apr. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/959,176 10/07/2004 Brian Daniel Goodman YOR920040309US1 3618 48150 7590 04/30/2013 MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC 8321 OLD COURTHOUSE ROAD SUITE 200 VIENNA, VA 22182-3817 EXAMINER TIV, BACKHEAN ART UNIT PAPER NUMBER 2451 MAIL DATE DELIVERY MODE 04/30/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BRIAN DANIEL GOODMAN ____________________ Appeal 2010-012376 Application 10/959,176 Technology Center 2400 ____________________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012376 Application 10/959,176 2 Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1 and 46-71. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s claimed invention is directed to a method and structure that provides an automatic and autonomic manner allowing interconnected enterprise applications to coordinate among themselves for the purpose of specialization and differentiation (Spec. 6:4-6). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method of deploying an enterprise application, said method comprising: including, in a set of instructions comprising said enterprise application as executed by a processor on a network, a mechanism allowing said enterprise application to autonomously exercise a node differentiation/ specialization, wherein a single set of instructions comprising said enterprise application can selectively be configured for different tasks for execution by each node in said network that implements said enterprise application. REFERENCES and REJECTIONS The Examiner rejected claims 1, 46, 55-57, and 69-71 under 35 U.S.C. § 103(a) based upon the teachings of Shastry (US Pat. Pub. 2005/0071842 A1) and Henseler (US Pat. Pub. 2006/0041644 A1). The Examiner rejected claims 47-54 and 58-68 under 35 U.S.C. § 103(a) based upon the teachings of Shastry, Henseler, and Naeimi (US 6,363,416 B1). Appeal 2010-012376 Application 10/959,176 3 ANALYSIS The Examiner finds Shastry teaches all the limitations of Appellant’s claimed invention (claims 1, 46, 55-57, and 69-71) except for an enterprise application and a mechanism to allow an application to autonomously exercise a node differentiation/specialization (Ans. 4). The Examiner then finds Henseler teaches this features (id.). The Examiner concludes it would be obvious to an ordinarily skilled artisan at the time of Appellant’s invention to modify the teachings of Shastry to assign specific nodes (node specialization) as taught by Henseler to provide a set of processing services for implementing high performance computing applications (Ans. 5). We agree with and adopt the Examiner’s findings as our own. Particularly, we concur with the Examiner’s conclusion that Shastry in combination with Henseler teaches and fairly suggests Appellant’s claimed invention (Ans. 14-16). We further agree with the Examiner’s broad but reasonable interpretation of Appellant’s claimed terms “differentiation/specialization” and “enterprise application” as no express definitions are provided in Appellants’ Specification (Ans. 14). Rather, non- limiting examples are given (see e.g., “typically” (Spec. 3:6); “potentially” (Spec. 2:3); “might be” (Spec. 2:4)), which do not specifically define the claim terminology. Additionally, we find Appellant’s arguments are not commensurate in scope with the broad claim language. For example, Appellant contends the claimed invention is “directed to the specialization of enterprise application functions, not the specialization of network administrative tasks” (App. Br. 8). However, the claim language (“node differentiation/specialization”) does not distinguish between functions or tasks. “[I]nterpreting what is meant by Appeal 2010-012376 Application 10/959,176 4 a word in a claim is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed. Cir. 2002) (internal quotation marks and citations omitted; emphasis in original). Further, Appellant urges “us to consult the specification . . . and interpret the disputed language more narrowly in view thereof . . . . Such an approach puts the burden in the wrong place. It is the applicants’ burden to precisely define the invention, not the PTO’s.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Thus, in light of the broad terms recited in the claims and the arguments presented, Appellants’ have failed to clearly distinguish their claimed invention over the prior art relied on by the Examiner. With respect to claims 47-54 and 58-68, Appellant contends the tertiary Naeimi reference does not overcome the deficiencies of the Shastry/Henseler combination (Br. 12-14). Appellant again contends Henseler is directed to specialization of network administration capability and not of enterprise application functions as claimed (App. Br. 13). As noted above, limitations in the Specification are not read into the claims. For the above reasons, we are not persuaded the Examiner’s cited combination of references is overly broad, unreasonable, or inconsistent with the Specification. We find the weight of the evidence supports the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness. We therefore sustain the Examiner’s obviousness rejection of claims 1 and 46-71. DECISION The Examiner’s rejection of claims 1 and 46-71 under 35 U.S.C. § 103 is affirmed. Appeal 2010-012376 Application 10/959,176 5 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). AFFIRMED Vsh