Ex Parte Iyer et al

Patent Trial and Appeal Board

Apr 13, 2016

12623673 (P.T.A.B. Apr. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/623,673 11123/2009 Sreekanth R. Iyer
52023 7590 04/15/2016
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.
IN920080l62US1
8152-0105
CONFIRMATION NO.
6827
EXAMINER
JORDAN, KIMBERLY L
ART UNIT PAPER NUMBER
2194
NOTIFICATION DATE DELIVERY MODE
04/15/2016 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 SREEKANTH R. IYER, GOWDHAMAN JAY ASEELAN,
and JOJO JOSEPH1
Appeal2014-005843
Application 12/623,673
Technology Center 2100
Before ERIC S. FRAHM, NATHAN A. ENGELS, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify IBM Corporation as the real party in interest. App.
Br. 1.
Appeal2014-005843
Application 12/623,673
STATEMENT OF THE CASE
Introduction
Appellants' invention is directed to an event driven system as
represented by a hybrid Event Processing Network (EPN). Spec. i-f 2. An
EPN typically consists of a set of event processing agents (or nodes)
interconnected by communication channels. Spec. i-f 3. According to the
Specification, a hybrid EPN "may be defined as partly static (declaratively)
and partly dynamic (programmatically), in which nodes can modify the
processing path of an event at runtime based on the processing requirements
for the event." Spec. i-f 25.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A method for constructing an event processing network,
the event processing network including event processing
agents, the method comprising:
declaratively configuring a first set of event processing
agents; and
dynamically configuring a second set of event processing
agents, wherein a resulting combination of the first set of event
processing agents and the second set of event processing agents
forms a hybrid event processing network.
The Examiner's Rejections
1. Claims 8-10 stand rejected under 35 U.S.C. § 112, second
paragraph as being indefinite. Final Act. 3.
2. Claims 18-20 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 3--4.
3. Claims 1-5, 7, 16, 18, and 19 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by WebLogic Event Server Administration and
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Application 12/623,673
Configuration Guide, ver. 2.0 (BEA Systems 2007) ("WebLogic"). Final
Act. 4--10.
4. Claims 6, 8-15, 17, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over WebLogic and Sharon et al., Event
Processing Network-A Conceptual Model, VLDB Endowment 1-9 (Sept.
23-28, 2007) ("Sharon"). Final Act. 10-19.
Issues on Appeal
1. Did the Examiner err in determining claims 8-10 are indefinite?
2. Did the Examiner err in determining claims 18-20 are directed
to non-statutory subject matter?
3. Did the Examiner err in finding WebLogic discloses a hybrid
event processing network is formed from a combination of a first set of
declaratively configured event processing agents and a second set of
dynamically configured event processing agents?
ANALYSIS2
Rejection under 35 U.S. C § 112, second paragraph
The Examiner finds the limitation "in response to an event occurrence
at an event source representing the event in a hybrid event processing
network," as recited in claim 8, to be indefinite because "[i]t is unclear
whether an event source represents the event or representing the event
2 Throughout this Decision, we refer to the Appeal Brief filed September 28,
2013 ("App. Br."); Reply Brief filed April 14, 2014 ("Reply Br."); the
Examiner's Answer mailed on February 13, 2014 ("Ans."); and the Final
Office Action mailed on May 9, 2013, from which this Appeal is taken
("Final Act.").
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Application 12/623,673
happens in response to an event occurrence." Final Act. 3. The Examiner
states the confusion stems from the absence of a comma to indicate when the
introductory phrase ends. Ans. 19. However, in analyzing the two potential
interpretations of the limitation, the Examiner determines if a comma were
placed after the phrase "in response to an event occurrence," there would be
an inconsistency with the Specification. Ans. 19-20 (citing Spec. i-f 10).
Thus, the Examiner has interpreted the limitation as "in response to an event
occurrence at an event source, representing the event in a hybrid event
processing network." Ans. 19-20.
Appellants contend the Specification is clear that "an event source is
an [sic] real world entity that produces an event." App. Br. 5 (citing Spec.
i-f 31 ). Further, Appellants argue the Examiner's alternate interpretation of
the disputed limitation is not supported by the Specification and, thus,
cannot be a plausible interpretation. App. Br. 6.
"The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification."
Miles Laboratories, Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir.
1993). "The purpose of claims is not to explain the technology or how it
works, but to state the legal boundaries of the patent grant. A claim is not
'indefinite' simply because it is hard to understand when viewed without
benefit of the specification." S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1369
(Fed. Cir. 2001 ). However, if a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring an applicant to more
precisely define the metes and bounds of the invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite. Ex
parte Miyazaki, 89 USPQ2d 1207, 1211-12 (BPAI 2008) (precedential).
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Application 12/623,673
We agree with Appellants and find that one of ordinary skill in the art
would understand from the Specification that an event source produces
events. See Spec. i-f 31. Further, we do not find the claim is amenable to two
or more plausible claim constructions, in light of the Specification. See
Miyazaki, 89 USPQ2d at 1211-12.
Accordingly, we do not sustain the Examiner's rejection of claims 8-
10 under 35 U.S.C. § 112, second paragraph as being indefinite.
Re} ection under 3 5 U.S. C. § 101
Appellants allege the Examiner erred in rejecting claims 18-20 under
35 U.S.C. § 101 as being directed to non-statutory subject matter because the
claimed "storage medium" is not "a transitory, propagating signal per se."
App. Br. 18. In support of their position, Appellants provide a number of
definitions of various terms. See generally App. Br. 12-15.
We are unpersuaded of Examiner error because, as the Examiner
explains, the Specification "provides examples of media which are non-
limiting and open-ended." Ans. 20 (citing Spec. i-f 45). Further, "[ t ]here is
no exclusion of signals in the specification when referring to a computer
storage medium. The claimed storage medium when interpreted broadly and
in light of the [S]pecification includes signals/carrier waves and is thus non-
statutory." Ans. 20. We agree with the Examiner's findings and adopt them
as our own.
The Board has found "those of ordinary skill in the art would
understand the claim term 'machine-readable storage medium' would
include signals per se." Ex parte Mewherter, Appeal 2012-007692, 2013
WL 4477509, at *7 (PTAB May 8, 2013) (precedential). Accordingly,
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Application 12/623,673
giving the phrase its broadest reasonable interpretation in light of the
Specification (see In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)), we
construe the recited "storage medium" as encompassing a transitory signal,
which is non-statutory subject matter. Therefore, we sustain the rejection of
claim 18, and claims 19-20 which depend therefrom, as being directed to
non-statutory subject matter under 35 U.S.C. § 101.
Rejection under 35 U.S. C. § 102(b)
Appellants contend the Examiner erred in finding W ebLogic
anticipates, inter alia, claim 1. App. Br. 25-28; Reply Br. 5-7. In
particular, Appellants argue WebLogic does not disclose "that one set of
event processing agents are configured declaratively (i.e., statically) and
another separate set of event processing agents are configured dynamically
(i.e., programmatically)." App. Br. 26; Reply Br. 5-6 ("[T]he claims recite
two different sets of agents"). Appellants concede WebLogic discloses the
use of MBeans, which are used to dynamically configure components.
Reply Br. 6-7. However, Appellants contend W ebLogic is limited to
disclosing only the dynamic configuration of components and not a static
configuration. App. Br. 28; Reply Br. 7.
As an initial matter, we note the claim language does not require the
two sets of event processing agents be mutually exclusive (i.e., separate or
two different sets). In other words, the claim language does not preclude an
event processing agent that is both declaratively and dynamically
configured. Therefore, Appellants' argument is not commensurate with the
scope of claim 1, and thus, for that reason, does not demonstrate error in the
Examiner's rejection. See In re Self, 671F.2d1344, 1348 (CCPA 1982)
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Application 12/623,673
(limitations not appearing in the claims cannot be relied upon for
patentability).
Further, the Examiner finds, and we agree, WebLogic's processors
(which process events) correspond to the claimed event processing agents.
Ans. 20. Further, the Examiner finds, and we agree, WebLogic discloses
using MBeans to manage the configuration of the processors (i.e., event
processing agents). Ans. 20-21. Specifically, WebLogic discloses the
dynamic configuration of the processors using MBeans. Ans. 20-21; see
also WebLogic 4-1 ("[y Jou can dynamically configure each component in
the EPN using managed beans, or MBeans"). Additionally, the Examiner
finds W ebLogic discloses the declarative configuration of the processors
with its disclosures that software developers and system administrators can
manually update and edit an event server configuration file such that "the
manual updating of the config.xml file affects/updates the configuration of
the MBeans." Ans. 21 (citing WebLogic 3-2, 4-2--4-3); see also WebLogic
1-1 (identifying software developers and system architects as the target
audience for the WebLogic reference); compare WebLogic 3-2-3-3
(disclosing exemplary XML programming for an event server's
configuration file), with Spec. i-f 27 ("several embodiments of the invention
allow a developer to define the EPN declaratively") and Spec. i-f 40 ("[a]n
XML schema is created to assist the developer to define the EPN either
manually"). Appellants do not provide sufficient persuasive evidence or
argument to rebut the Examiner's findings.
Accordingly, for the reasons discussed supra, and on the record before
us, we sustain the Examiner's anticipation rejection of claim 1. Appellants
do not advance separate arguments ofpatentability for claims 2-5, 7, 16, 18,
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Application 12/623,673
and 19. App. Br. 25. Accordingly, we also sustain the Examiner's
anticipation rejection of claims 2-5, 7, 16, 18, and 19.
Rejection under 35 U.S.C. § 103(a)
Appellants do not advance separate arguments of patentability for
claims 6, 8-15, 17, and 20. App. Br. 29-30. Accordingly, we sustain the
Examiner's obviousness rejection of claims 6, 8-15, 17, and 20.
DECISION
We reverse the Examiner's rejection of claims 8-10 under 35 U.S.C.
§ 112, second paragraph as indefinite.
We affirm the Examiner's rejection of claims 18-20 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
We affirm the Examiner's rejection of claims 1-5, 7, 16, 18, and 19
under 35 U.S.C. § 102 as anticipated by WebLogic.
We affirm the Examiner's rejection of claims 6, 8-15, 17, and 20
under 35 U.S.C. § 103 as being unpatentable over WebLogic and Sharon.
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.
§ 41.50(±).
AFFIRMED
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