Ex Parte Sharma et alDownload PDFPatent Trial and Appeal BoardApr 26, 201311411853 (P.T.A.B. Apr. 26, 2013) Copy Citation 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 Appeal 2010-011271 Application 11/411,853 2 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 Claims 8-16 and 22-30 have been withdrawn, and claims 19 and 21 have been canceled.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 Appeal 2010-011271 Application 11/411,853 3 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 Appeal 2010-011271 Application 11/411,853 4 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 Appeal 2010-011271 Application 11/411,853 5 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. Appeal 2010-011271 Application 11/411,853 6 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 Appeal 2010-011271 Application 11/411,853 7 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. Appeal 2010-011271 Application 11/411,853 8 § 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). Appeal 2010-011271 Application 11/411,853 9 AFFIRMED peb Copy with citationCopy as parenthetical citation