Ex Parte Salomon et al

Patent Trial and Appeal Board

Oct 31, 2012

10953521 (P.T.A.B. Oct. 31, 2012)

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.
10/953,521 09/30/2004 Thomas Salomon 07781.0199-00 1936
60668 7590 10/31/2012
SAP / FINNEGAN, HENDERSON LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
BRUCKART, BENJAMIN R
ART UNIT PAPER NUMBER
2449
MAIL DATE DELIVERY MODE
10/31/2012 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 THOMAS SALOMON, WOLFGANG AMBROSCH,
and KRISTIAN MITIC
____________

Appeal 2010-007016
Application 10/953,521
Technology Center 2400
____________

Before SCOTT R. BOALICK, JOHN A. JEFFERY, and BRUCE R.
WINSOR, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-53. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF THE CASE
Appellants’ invention externally administers local services, such as
Windows-based services, with a centrally-installed service administration
program. See generally Spec. ¶ 002. Claim 1 is illustrative with key
disputed limitations emphasized:
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1. A method for externally administrating local services with at least
one centrally installed service administration program, the method
comprising:

running, on a first computer, a first instance of a service management
program that administrates a first service and a second service on the first
computer, wherein the first service serves as part of a first application and
the second service serves as part of a second application, both the first and
second applications running on the first computer;

identifying the first and second services by the service management
program running on the first computer;

sending information related to registration of the identified services to
said service administration program, wherein said service administration
program determines whether the identified services are allowed to be
registered for administration;

running, on a second computer, a second instance of the service
management program that administrates a first service and a second service
on the second computer, wherein the first service serves as part of a first
application and the second service serves as part of a second application,
both the first and second applications running on the second computer;

identifying the first and second services by the service management
program running on the second computer;

sending information related to registration of the identified services
running on the second computer to said service administration program,
wherein said service administration program determines whether the
identified services running on the second computer is allowed to be
registered for administration;

communicating, with said service administration program,
administration information to one of said service management programs
running on the first or second computer, the service management program
allowing for configuring both the first and second services; and

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providing, through said service administration program, a single
graphical user interface to administrate the first and second services through
one of said service management programs running on the first or second
computer.

THE REJECTIONS
1. The Examiner rejected claims 1, 2, 4, 5, 12, 20, 21, 23, 29, 30, 32,
33, and 40 under 35 U.S.C. § 103(a) as unpatentable over Da Palma (US
6,874,020 B1; Mar. 29, 2005 (filed Aug. 28, 2000)) and Weisshaar (US
6,895,444 B1; May 17, 2005 (filed Sept. 15, 2000)). Ans. 5-7.1
2. The Examiner rejected claims 3, 9-11, 13-15, 18, 19, 22, 25, 27,
28, 31, 37-39, 41-43, and 46-52 under 35 U.S.C. § 103(a) as unpatentable
over Da Palma, Weisshaar, and Coryell (US 2004/0122924 A1; June 24,
2004 (filed Dec. 18, 2002)). Ans. 7-9.
3. The Examiner rejected claims 16, 17, 44, and 45 under 35 U.S.C.
§ 103(a) as unpatentable over Da Palma, Weisshaar, and Vasudeva (US
2004/0267691 A1; Dec. 30, 2004 (filed June 27, 2003)). Ans. 9-10.
4. The Examiner rejected claim 53 under 35 U.S.C. § 103(a) as
unpatentable over Da Palma, Weisshaar, Coryell, and Vasudeva. Ans. 10.2
5. The Examiner rejected claims 6, 7, 24, 34, and 35 under 35 U.S.C.
§ 103(a) as unpatentable over Da Palma, Weisshaar, and Bush (US
2004/0221059 A1; Nov. 4, 2004 (filed Apr. 16, 2003)). Ans. 11-13.

1 Throughout this opinion, we refer to (1) the Appeal Brief filed December
30, 2009 (“App. Br.”); (2) the Examiner’s Answer mailed February 5, 2010
(“Ans.”); and (3) the Reply Brief filed March 5, 2010 (“Reply Br.”).
2 This rejection reflects the Examiner’s correcting a previous error regarding
the grounds of rejection for claim 53 (Ans. 4)—a correction that is
undisputed.
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6. The Examiner rejected claims 8 and 36 under 35 U.S.C.
§ 103(a) as unpatentable over Da Palma, Weisshaar, Bush, and Betancourt
(US 2005/0028157 A1; Feb. 3, 2005 (filed July 31, 2003)). Ans. 13-14.
7. The Examiner rejected claim 26 under 35 U.S.C. § 103(a) as
unpatentable over Da Palma, Weisshaar, Coryell, and Betancourt. Ans. 14.

THE OBVIOUSNESS REJECTION OVER DA PALMA AND WEISSHAAR
The Examiner finds that Da Palma externally administrates local
services with at least one centrally installed “service administration
program” (i.e., master agent 22) including sending information related to
registration of identified services to the program, which is said to correspond
to registering resources with “mini-agents” 24A, 24B in Da Palma’s Figure
2. Ans. 5, 15. Although the Examiner acknowledges that Da Palma does
not determine if the services are allowed to be registered, the Examiner cites
Weisshaar for teaching this feature in concluding that the claim would have
been obvious. Ans. 6, 15-18.
Appellants argue that since Weisshaar’s foundation software 204 is a
local program in each hand-held device, Weisshaar does not teach a
centrally-installed administration program that determines whether the
identified services are allowed to be registered as claimed. App. Br. 17.
Appellants add that since Da Palma’s registration information is sent only
between management resources and mini-agents—not the master agent—Da
Palma does not send registration information to the service administration
program as claimed. Reply Br. 2-3. Lastly, Appellants contend that there is
no reason to combine Da Palma and Weisshaar as proposed due to their
incompatible system architectures. App. Br. 18.
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ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Da Palma and Weisshaar collectively would have taught or
suggested sending information related to registering identified services to a
centrally-installed service administration program that determines whether
the services are allowed to be registered for administration?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ANALYSIS
We sustain the Examiner’s rejection of representative claim 1 for the
reasons indicated by the Examiner. Ans. 5-6, 15-18. First, Appellants’
contention that Weisshaar’s foundation software 204 is installed in user
device 108 and therefore does not teach a centrally-installed administration
program (App. Br. 17) is inapposite to the Examiner’s reliance on Da
Palma’s master agent 22 for that feature. Ans. 5, 15.
In any event, while Da Palma’s manageable resources 27A, B are
registered with mini-agents 24A, B as the Examiner acknowledges (Ans. 15
(citing Da Palma, col. 7, ll. 19-28)), that does not mean that it would not
have been obvious to send information related to registration to the master
agent (i.e., the centrally-installed service administration program). Since the
master agent receives management commands directed to these registered
resources (Da Palma, Abstract; col. 7, ll. 7-13; Fig. 2), information that at
least relates to the resources’ registration is therefore sent to the master
agent. Therefore, even if Appellants’ arguments raised for the first time in
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the Reply Brief regarding Da Palma’s registration information being sent
only between management resources and mini-agents (Reply Br. 2-3) were
timely,3 they are nonetheless unpersuasive and not commensurate with the
scope of the claim.
Nor do we find error in the Examiner’s reliance on Weisshaar merely
to show that it would have been obvious for Da Palma’s central service
administration program (master agent) to determine whether identified
services are allowed to register. Ans. 6, 15-18. Remote services in
Weisshaar register with service framework 235 on the client side based on
data exchanged between the client and remote services. Weisshaar, col. 20,
ll. 25-53; Fig. 7. As the Examiner indicates, this communication involving
sending parameters from a remote server to the client essentially determines
whether the services are allowed to register with the client. Ans. 15 (citing
Weisshaar, col. 20, ll. 45-54). In view of this teaching, we see no reason
why Da Palma’s master agent could not, at least in part, determine whether
services are allowed to register, particularly since it essentially functions as
an intermediary by relaying commands between applications and associated
resources as noted above. See Da Palma, col. 7, ll. 7-28; Fig. 2. Nothing in
Da Palma precludes these commands sent from the master agent from
relating to registering associated resources with the mini-agents and
therefore at least partly determine registration in that scenario.

3 Arguments raised for the first time in the Reply Brief are typically waived.
See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative)
(“[T]he reply brief [is not] an opportunity to make arguments that could
have been made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not.”).
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And even assuming, without deciding, that allowing registration was
limited solely to Da Palma’s hosts 28A, B with the mini-agents, that still
does not preclude providing at least some of that registration functionality in
connection with the master agent, particularly since the master agent and
mini-agents directly communicate with each other as shown in Figure 2. In
short, as explained by the Examiner, Ans. 17, enhancing Da Palma’s master
agent with at least some registration functions merely predictably uses prior
art elements according to their established functions—an obvious
improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
And where, as here, if a technique has been used to improve one device
(providing registration functions in connection with mini-agents), and an
ordinarily skilled artisan would recognize that it would improve similar
devices in the same way (providing registration functions in connection with
a master agent that communicates with the mini-agents), using the technique
is obvious unless its actual application is beyond his or her skill. See id. We
therefore find the Examiner’s reason to combine the teachings of Da Palma
and Weisshaar supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion.
We are also unpersuaded by Appellants’ contention that “due to the
incompatible system architecture, there is no motivation or apparent reason
to have modified [Da Palma’s] master agent with the foundation software
204 of Weisshaar . . . .” App. Br. 18. In addition to the Examiner’s
explanation, which we find to be reasonable, as to why Da Palma’s and
Weisshaar’s architectures are not incompatible, see Ans. 18, we note that the
test of non-obviousness is not whether one reference can be bodily
incorporated into another, but rather what the references, when considered
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together, would suggest to one of ordinary skill in the art, In re Keller, 642
F.2d 413, 425 (CCPA 1981), who is a person of ordinary creativity and not
an automaton, KSR, 550 U.S. at 421, and whose inferences and creative
steps may be considered, id. at 418.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 2, 4, 5, 12, 20, 21, 23, 29, 30, 32, 33, and
40 not separately argued with particularity.

THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner’s obviousness rejections of claims 3, 6-
11, 13-19, 22, 24-28, 31, 34, 35-39, 41-47, and 48-53. Ans. 7-14. Despite
nominally arguing these claims separately, Appellants reiterate similar
arguments made in connection with claim 1 and allege that the additional
cited references fail to cure those purported deficiencies. App. Br. 18-19;
Reply Br. 4. We are not persuaded by these arguments, however, for the
reasons previously discussed.

CONCLUSION
The Examiner did not err in rejecting claims 1-53 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-53 is affirmed.

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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

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