Ex Parte Keohane et al

Patent Trial and Appeal BoardAug 29, 2014

12037195 (P.T.A.B. Aug. 29, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/037,195 02/26/2008 Susann M. Keohane AUS920070984US1 3396 50170 7590 09/02/2014 IBM CORP. (WIP) c/o WALDER INTELLECTUAL PROPERTY LAW, P.C. 17304 PRESTON ROAD SUITE 200 DALLAS, TX 75252 EXAMINER LE, THU NGUYET T ART UNIT PAPER NUMBER 2162 MAIL DATE DELIVERY MODE 09/02/2014 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 SUSANN M. KEOHANE, GERALD F. MCBREARTY, SHAWN P. MULLEN, JESSICA C. MURILLO, and JOHNNY M. SHIEH ____________ Appeal 2012-000253 Application 12/037,195 Technology Center 2100 ____________ Before CARLA M. KRIVAK, CARL W. WHITEHEAD JR., and JEFFREY S. SMITH, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1–21. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2012-000253 Application 12/037,195 2 STATEMENT OF THE CASE Appellants’ claimed invention is directed to a “system and method for storing file resource usage information in metadata of a file” (Spec. ¶ 2). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method, in a data processing system, for outputting a warning of resource utilization exceeding a predetermined threshold, comprising: in response to a command to access a file, analyzing metadata associated with the file to identify resource utilization information in the metadata indicating a resource utilization required to access the file; retrieving one or more parameters from a user account configuration file associated with the data processing system, wherein the one or more parameters in the user account configuration file are user defined parameters that identify one or more pre-established warning conditions under which the user is to be informed that accessing the file will degrade performance of the data processing system; comparing the resource utilization required to access the file to the one or more preestablished warning conditions identified by the one or more parameters in the user account configuration file; and outputting, prior to accessing the file, a warning message in response to results of the comparison indicating that one or more of the pre-established warning conditions are met. REFERENCES and REJECTIONS The Examiner rejected claims 11–20 under 35 U.S.C. § 101 as directed to non-statutory subject matter. Appeal 2012-000253 Application 12/037,195 3 The Examiner rejected claims 1, 3–7, 11, 13–17, and 21 under 35 U.S.C. § 103(a) based upon the teachings of Perez (US 2005/0026654 A1; published Feb. 3, 2005) and Fraenkel (US 2003/0065986; published Apr. 3, 2003). The Examiner rejected claims 2 and 12 under 35 U.S.C. § 103(a) based upon the teachings of Perez, Fraenkel, and James (US 6,928,646 B1; published Aug. 9, 2005). The Examiner rejected claims 4 and 14 under 35 U.S.C. § 103(a) based upon the teachings of Perez, Fraenkel, and Reynar (US 2004/0003389 A1; published Jan. 1, 2004). The Examiner rejected claims 8–10 and 18–20 under 35 U.S.C. § 103(a) based upon the teachings of Perez, Fraenkel, and Rawson (US 5,692,204; published Nov. 25, 1997). ANALYSIS Rejection under 35 U.S.C. § 101 The Examiner asserts claims 11–20 are directed to non-statutory subject matter as they are not limited to tangible embodiments. That is, Appellants’ Specification states the computer readable medium can even be paper (Ans. 5). We agree with Appellants. Paper is tangible and is merely a substrate. Thus, as paragraph 55 of Appellants’ Specification states “the program can be electronically captured, via, for instance, optical scanning . . . and then stored in a computer memory.” Therefore, claims 11–20 meet the requirements of 35 U.S.C. §101 in that paper is a tangible medium.1 1 Upon any further prosecution, it is noted paragraph 55 further states the “computer-usable or computer-readable medium may be any medium that Appeal 2012-000253 Application 12/037,195 4 Rejection under 35 U.S.C. § 103 The Examiner finds Perez teaches or suggests all of the limitations of Appellants’ claim 1 except for explicitly teaching “retrieving one or more parameters from a user account configuration file,” but relies on Fraenkel as teaching this feature (Ans. 6–7). Appellants contend the Examiner erred in finding Perez only checks the condition of whether an electronic device can provide resources required and there is no ability for a user to specify which conditions to check and which warnings to provide (App. Br. 10). Appellants then contend Fraenkel does not provide a warning to be sent before accessing a file (App. Br. 12). Further, Fraenkel’s teachings are all reactionary and not proactive, as in Appellants’ claimed invention (App. Br. 13). We do not agree. We first note Appellants appear to be arguing the references separately and not as a combination. That is, Appellants’ arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and are therefore ineffective to rebut the Examiner's prima facie case of obviousness. As the Court stated in In re Keller, 642 F.2d 413, 425 (CCPA 1981): can contain, store, communicate, propagate, or transport the program . . . .” Propagating is a term used with respect to signals, and thus, the computer- readable medium could be considered a signal. The Examiner should therefore consider a 35 U.S.C. § 101 rejection. See U.S. Patent & Trademark Office, Evaluating Subject Matter Eligibility Under 35 USC § 101 (August 2012 Update) (pp. 11-14), available at http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf (noting that while the recitation “non-transitory” is a viable option for overcoming the presumption that those media encompass signals or carrier waves, merely indicating that such media are “physical” or tangible” will not overcome such presumption). Appeal 2012-000253 Application 12/037,195 5 The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art (emphasis added) (citations omitted). Additionally, we note Appellants’ arguments do not appear to be commensurate in scope with Appellants’ claimed invention (see, e.g., App. Br. 12–13). We also agree with the Examiner’s findings and adopt them as our own. Particularly, the Examiner has reasonably shown how Perez and Fraenkel teach or suggest each of the contested limitations (Ans. 26–30). Appellants’ response in the Reply Brief maintains, for the most part, the arguments in the Appeal Brief, which we find non-persuasive. Therefore, we are not convinced the Examiner’s reading of the claims on the cited combination of references is overly broad, unreasonable, or inconsistent with Appellants’ Specification and consequently, we are not convinced the Examiner erred in rejecting independent claims 1, 11, and 21. With respect to claims 6, 7, 16, and 17, we agree with and adopt the Examiner’s findings regarding the rejection of these claims over Perez and Fraenkel (Ans. 30-32). Therefore, we are not convinced the Examiner erred in rejecting claims 6, 7, 16, and 17. With respect to claims 2 and 12, again, Appellants contend Perez and Fraenkel do not disclose the limitations in these claims and are arguing the references separately (App. Br. 20). Further, we agree with and adopt the Examiner’s findings as our own (Ans. 33–36). Therefore, we are not convinced the Examiner erred in rejecting claims 2 and 12. Appeal 2012-000253 Application 12/037,195 6 With respect to claims 4 and 14, Appellants again argue the references separately (App. Br. 21–23; Reply Br. 11–13). We agree with and adopt the Examiner’s findings as our own (Ans. 36–38). Particularly, we agree Figures 5-9 of Reynar teach and suggest outputting warning messages to a user before downloading software (Ans. 37). Therefore, we are not convinced the Examiner erred in rejecting claims 4 and 14. With respect to claims 8–10 and 18–20, the Examiner relies on Rawson for teaching monitoring and collecting resource utilization (Ans.20– 23). Appellants’ main arguments are Rawson does not teach the features recited in claims 1 and 11 and the references are not in the same field of endeavor and thus, are not combinable (App. Br. 23–27; Reply Br. 13–18). However, Appellants are arguing the references separately and not as a combination. Rawson was cited for the limitation recited in the dependent claims, not the independent claims. Further, Appellants merely state Rawson does not teach this limitation and fails to provide an explanation as to why Rawson does not teach the limitation (App. Br. 26; Reply Br. 16, 18). Therefore we are not convinced the Examiner erred in rejecting claims 8–10 and 18–20. Thus, we sustain the Examiner’s rejection under 35 U.S.C. § 103 of claims 1–21 as obvious over the collective teachings of Perez and Fraenkel, together and in combination with James, Reynar, and Rawson. DECISION The Examiner’s decision rejecting claims 11–20 under 35 U.S.C. § 101 is reversed. The Examiner’s decision rejecting claims 1–21 under 35 U.S.C. Appeal 2012-000253 Application 12/037,195 7 § 103 is affirmed. 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 tj