Ex Parte Sharma et al

Patent Trial and Appeal Board

Apr 26, 2013

11411853 (P.T.A.B. Apr. 26, 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.
11/411,853 04/27/2006 Amit Sharma 042144-7 7387
22204 7590 04/26/2013
NIXON PEABODY, LLP
401 9TH STREET, NW
SUITE 900
WASHINGTON, DC 20004-2128
EXAMINER
CHANG, TOM Y
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
04/26/2013 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 AMIT SHARMA, KEYUR GOR, and
NEEL ARURKAR
____________

Appeal 2010-011271
Application 11/411,853
Technology Center 2400
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/411,853

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-7, 17, 18, 20, and 31-45. Claims 8-16 and 22-30 have been withdrawn,
and claims 19 and 21 have been canceled. (App. Br. 2). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
The invention relates to managing resources. Claim 1, reproduced
below, is representative of the claimed subject matter:
1. A system for managing resources comprising:

a server, associated with a plurality of nodes;

an agent adapted for monitoring execution of the at least
one resource on said server to ensure that the execution of jobs
fulfill at least one contractual condition with respect to said
nodes before the job runs;

a control system which runs jobs on said server that meet
said contractual conditions associated with said nodes

an interface adapted for submitting jobs to said control
system in addition to a plurality of meta-attributes which
improve the system’s management of the resource.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bernardin

Tameshige
US 2003/0154284 A1

US 2005/0102674 A1
Aug. 14, 2003

May 12, 2005
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Childress

Dawson

Lowery

Liebling
US 2005/0223299 A1

US 2006/0048157 A1

US 2006/0070067 A1

US 2006/0161551 A1
Oct. 6, 2005

Mar. 2, 2006

Mar. 30, 2006

July 20, 2006
(filed Jan. 19, 2005)

REJECTIONS
Claims 35-37 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
Claims 35-39 and 41-43 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1-5, 7, 17, 18, 20, 31-39, 41, and 43 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Dawson.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dawson, Childress, and Bernardin.
Claim 40 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dawson and Liebling.
Claim 42 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dawson and Tameshige.
Claims 44 and 45 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dawson and Lowery.

ANALYSIS
The Non-Statutory Subject Matter Rejection
The Examiner rejected claims 35-37 as non-statutory because they are
directed to abstract ideas (Ans. 3-4). Appellants contend that the proposed
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after-final amendments overcome the rejection (App. Br. 6; Reply Br. 3).
However, as the Examiner makes clear, these amendments have not been
entered (Ans. 13). We remind Appellants that the Board does not have
authority to enter amendments into the record. See 37 C.F.R. § 1.127
(“From the refusal of the primary examiner to admit an amendment, in
whole or in part, a petition will lie to the Director under § 1.181.”). As
Appellants present no specific arguments explaining why claims 35-37, as
presented on appeal, are directed to statutory subject matter (see App. Br. 6;
Reply Br. 3), we are not persuaded that the Examiner erred in rejecting
claims 35-37 as directed to non-statutory subject matter.

The Indefiniteness Rejection
The Examiner rejected claims 35-39 and 41-43 as indefinite under
§ 112, second paragraph, for various reasons (Ans. 4-5). We find that the
Examiner has failed to establish a prima facie case of indefiniteness for
claims 35-39 and 41-43.
Specifically, the Examiner concludes that claims 35-37 are indefinite
because “[i]t does not make sense that a hardware element is physically
located in a software abstraction level” (Ans. 4). However, the Examiner's
rejection does not specifically address the requirements of § 112, second
paragraph, with respect to “particularly pointing out and distinctly claiming
the subject matter which the applicant regards as his invention.” In other
words, the Examiner has not explained why the recited “software abstraction
level” does not make sense such that the claims fail to particularly point out
and distinctly claim the subject matter of Appellants’ invention. To the
extent that the Examiner’s position is that claims 35-37 are indefinite
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because they recite an organizational abstraction of hardware, i.e., an
abstract idea, § 112, second paragraph, does not include claiming abstract
ideas as a ground of rejection.
The Examiner finds claim 38 to be grammatically incorrect and thus
indefinite (Ans. 4-5). Claim 38 recites “an agent that is not aware of the
contractual conditions between whose role is to report about resource
availability.” Despite the grammatically incorrect recitation of the word
“between,” the claim is sufficiently clear to obtain the proper construction,
which we conclude encompasses an agent that reports on resource
availability but is unaware of the contractual conditions related to the nodes.
(We do not comment on whether there is written description support for the
negative limitation or whether all the language of this claim should be given
patentable weight.) The test for definiteness under 35 U.S.C. § 112, second
paragraph, is whether “those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted).
Finally, the Examiner finds claims 39 and 41-43 indefinite for lacking
in antecedent basis (Ans. 5). Each of the limitations allegedly lacking in
antecedent basis, however, either introduces a feature for the first time or
recites an inherent feature of the previously recited system and thus needs no
explicit antecedent basis. For example, claim 39 recites “wherein internal
functions are carried out by servlets.” This language establishes the
limitation “internal functions” and does not purport to refer back to any
antecedent limitation.
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We, therefore, do not sustain the Examiner’s rejection of claims 35-39
and 41-43 as indefinite.

The Anticipation Rejection
Appellants contend that Dawson fails to describe (1) “an agent
adapted for monitoring execution of the at least one resource on said server
to ensure that the execution of jobs fulfill at least one contractual condition
with respect to said nodes before the job runs” and (2) “an interface adapted
for submitting jobs to said control system in addition to a plurality of meta-
attributes which improve the system’s management of the resource,” as
recited in independent claim 1 (App. Br. 8-13). We disagree.
Dawson discloses that:
[C]lient system 200 sends a job to GM [grid manager] 404 of
RS [resource] 406 with a job object defining the requirements
of the job. . . . GM 404 searches for resources available to
handle the job specified in the job object. First, GM 404 checks
whether RS 406 can handle the job specified in the job object.
If RS 406 cannot handle the job specified in the job object, then
GM 404 determines the most suitable available resource for
handling the job. Preferably, the GM for each resource initially
receives updates about the availability of a selection of local
resources 410, where each resource within local resources 410
includes a GM.

(Dawson, ¶ [0059]). Based on this disclosure, we agree with the Examiner
(see Ans. 5, 15) and find that Dawson meets the first disputed limitation of
“an agent adapted for monitoring execution of the at least one resource on
said server.” The remaining language of the limitation—“to ensure that the
execution of jobs fulfill at least one contractual condition with respect to
said nodes before the job runs”—recites non-functional descriptive material
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and is not given patentable weight. That is, whether the execution of jobs
fulfills a contractual condition is merely information apparent to a human
being and does not have any functional relationship to the structure of the
claimed system. Accordingly, Appellants’ arguments regarding the
contractual condition (see App. Br. 10-12) are not persuasive.
Regarding the second disputed limitation, Dawson discloses that
“client system 200 sends a job to GM 404 of RS 406 with a job object
defining the requirements of the job,” as cited above (Dawson, ¶ [0059]).
We agree with the Examiner (Ans. 5, 16-17) and find that the submission of
“a job . . . with requirements of the job” (Dawson, ¶ [0059]) by the client
meets the limitation of “an interface adapted for submitting jobs to said
control system in addition to a plurality of meta-attributes which improve the
system’s management of the resource” (Claim 1). Appellants’ argument that
“the claimed ‘meta-attributes’ have an additional level of abstraction from
the jobs of Dawson” (App. Br. 12) is not persuasive. Claim 1 does not
specify what type of data the meta-attributes define, and thus we broadly,
but reasonably, interpret the meta-attributes as data related to jobs that the
system can use to run the jobs. Under this construction, Dawson’s
“requirements of the job” meets the limitation of “meta-attributes.”
We are, therefore, not persuaded that the Examiner erred in rejecting
claim 1 and claim 17 not separately argued. Although Appellants nominally
argue claims 2-5, 7, 18, 20, 31-39, 41, and 43 separately, Appellants merely
recite the limitations of the claims without presenting any specific argument
as to why Dawson fails to describe the claimed subject matter (App. Br. 13-
17). “A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.” 37 C.F.R.
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§ 41.37(c)(1)(iv)(2012). We, therefore, also sustain the rejection of claims
2-5, 7, 18, 20, 31-39, 41, and 43 for the reasons discussed above.

The Obviousness Rejection
For each of the dependent claims 6, 40, 42, 44, and 45, Appellants
merely recite the limitations of the claims without presenting any specific
argument as to why the references would not have suggested the claimed
subject matter (App. Br. 17-18). We are, therefore, not persuaded that the
Examiner erred in rejecting claims 6, 40, 42, 44, and 45.

CONCLUSIONS OF LAW
Under § 101, the Examiner did not err in rejecting claims 35-37.
Under § 112, second paragraph, the Examiner erred in rejecting
claims 35-39 and 41-43.
Under § 102, the Examiner did not err in rejecting claims 1-5, 7, 17,
18, 20, 31-39, 41, and 43.
Under § 103, the Examiner did not err in rejecting claims 6, 40, 42,
44, and 45.

DECISION
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
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). See 37
C.F.R. § 41.50(f).
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AFFIRMED

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