Chicago Mercantile Exchange Inc.

Patent Trials and Appeals Board

Oct 1, 2021

2020005071 (P.T.A.B. Oct. 1, 2021)

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.
15/691,052 08/30/2017 Kyle Dennis Kavanagh 4672-17009BUS 2554
12684 7590 10/01/2021
Lempia Summerfield Katz LLC/CME
20 South Clark Street
Suite 600
Chicago, IL 60603
EXAMINER
BENGZON, GREG C
ART UNIT PAPER NUMBER
2444
NOTIFICATION DATE DELIVERY MODE
10/01/2021 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):
docket-us@lsk-iplaw.com
mail@lsk-iplaw.com
pair_lsk@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KYLE DENNIS KAVANAGH

Appeal 2020-005071
Application 15/691,052
Technology Center 2400

Before CARL W. WHITEHEAD JR., ERIC S. FRAHM, and
DAVID M. KOHUT, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Chicago
Mercantile Exchange Inc.” Appeal Br. 2.
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Application 15/691,052

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APPELLANT’S INVENTION
Appellant describes the invention as a “monitoring system [that]
monitors processing of incoming messages and logs data related to
performance of an application that processes the messages.” Spec., Abstr.
Independent claim 1, reproduced below, is illustrative of argued subject
matter.
1. A computer implemented method of monitoring
processing of messages by an application in a data transaction
processing system, the method comprising:
detecting, by a processor coupled with the application,
that the application has received a message of a plurality of
messages for processing as each message of the plurality of
messages is received by the application, the application
including a plurality of checkpoints including at least a start
checkpoint associated with an input of the application and an
end checkpoint associated with an output of the application;
associating, by the processor, an identifier of a plurality
of identifiers with each received message; and
upon each received message traversing a checkpoint of
the plurality of checkpoints, storing, by the processor, in a data
store, a data entry based on (i) the identifier associated with the
received message, (ii) the traversed checkpoint, and (iii) a time
when the received message traversed the checkpoint, wherein
each of the plurality of identifiers is sized such that the storage
space necessary to store the identifier is less than the storage
space necessary to store an identifier sized to uniquely identify
all of the plurality of messages.
Appeal Br. 13 (Claims App.).

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REJECTIONS
Claim 20 stands rejected under 35 U.S.C. § 112(b) as being indefinite.
Final Act. 5–8.
Claims 1–5 and 10–20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Lau (US 2017/0286274 A1; pub. Oct. 5, 2017), Allen
(US 2011/0289301 A1; pub. Nov. 24, 2011), and Burka (US 2007/0074171
A1; pub. Mar. 29, 2007). Final Act. 8–21.
Claims 6–9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Lau, Allen, Burka, and Xu (US 2016/0055225 A1; pub.
Feb. 25, 2016). Final Act. 21–25.
OPINION
35 U.S.C. § 112(b)—Indefiniteness
The Examiner finds the following means-plus-function limitations of
claim 20 are indefinite for lacking a sufficient description by the
Specification:
means for detecting that an application has received a message
of a plurality of messages for processing as each message of the
plurality of messages is received by the application, the
application including a plurality of checkpoints including a start
checkpoint associated with an input of the application and an
end checkpoint associated with an output of the application;
means for associating an identifier from a plurality of identifiers
with each received message[.]
Appeal Br. 16 (Claims App.); see also Final Act. 5–8. Specifically, the
Examiner finds these limitations indefinite because the Specification “fails
to disclose the corresponding structure, material, or acts for performing the
entire claimed function and to clearly link the structure, material, or acts to
the function.” Final Act. 5.
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Appellant contends in-toto (i.e., only): “[A]dequate structural support
for the limitations of claim 20 may be found in Appellants’ Specification
at least at Figs. 5, 6, 7A and 7B, as well as paras. 13–21, 25–28, 30, 219–
221, 224–228, and 232–262.” Appeal Br. 4.
The Examiner responds:
The cited portions of the specification and drawings do
not disclos[e] sufficient corresponding structure for performing
the claimed function. [In the] Applicant Specification[,]
Paragraph 226 describes association manager 502 in terms of
functionality but not structure. . . . Paragraph 242 describes a
data parser in terms of functionality but not structure.
. . . Paragraph 249 describes “detecting by a processor” in terms
of functionality but not structure.
The Specification does not describe a specific algorithm
detailing how the claimed function(s) is/are performed or a
separate, distinct and well-known structure (e.g., a switch)
capable of performing the claimed function(s). Thus, the means
for performing the recited function(s) is/are supported by only
functional language in the Specification.
Ans. 3–4.
Appellant replies in-toto by quoting the Specification’s
paragraphs 104, 226, 232, and 249 and then stating: “Thus, adequate
structural support for the limitations of claim 20 may be found in
Appellants’ Specification. Therefore, claim 20 should be interpreted under
35 U.S.C. § 112(f) as being in means plus function form.” Reply Br. 2–3.
Having reviewed the presented Specification disclosures, we are not
apprised of an error in the Examiner’s determination that the Specification
does not “disclos[e] sufficient corresponding structure for performing the
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claimed function[s]” (Ans. 3–4 (block-quoted above)).2 We discern, in the
disclosures, only non-limiting descriptions of a central processing unit
(CPU) and monitoring system 500 that perform the claimed functions. For
example, the disclosures at-best state a “[m]onitoring system 500 includes an
association manager 502[ that] may be implemented as a separate hardware
component or as first logic 502 . . . to cause the processor 202 to associate
each message with an identifier” and “may include or be associated with a
counter, e.g., a 16 bit counter . . . that is incremented (or decremented) with
each message, where the value of the counter is the message identifier.”
Id. (quoting Spec. ¶ 226) (emphases added).
Further, even assuming (arguendo) the above description of the
monitoring system 500 constitutes a sufficient description of structure, it
describes only structure of the claimed “means for associating”—not also
structure of the claimed “means for detecting.” The Specification’s
presented disclosures do not describe, in any manner (limiting or
non-limiting), structure, material, or acts of the claimed “means for
detecting.” As to the claimed “means for detecting,” the presented
disclosures describe only the recited function; namely, they disclose

2 As reflected by our above quote of the Final Office Action, the America
Invents Act (AIA) describes a “means . . . for performing a specified
function . . . [as] construed to cover the corresponding structure, material, or
acts described in the specification” (35 U.S.C. § 112(f)). As reflected by our
above quotes of the briefs and Answer, Appellant and Examiner repeatedly
refer to only “structure.” We have analyzed the arguments and findings as
though properly referencing “structure, material, or acts” (id.). That is, we
have considered whether the Specification discloses sufficient “structure,
material, or acts” (id.) to determine the scope of the claimed
means-plus-function elements.
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“detecting, by a processor coupled with an application, that the application
has received a plurality of messages for processing, the application including
a plurality of checkpoints including at least a start checkpoint associated
with an input of the application and an end checkpoint associated with an
output of the application.” Reply Br. 3 (quoting Spec. ¶ 249).3
Thus, aside from the Specification’s above mentioning of a 16-bit
counter for the claimed “means for associating,” the presented disclosures
disclose a general purpose processor. This is insufficient because
“computer-implemented invention” claims reciting means-plus-function
structure are indefinite if the specification discloses merely a general
purpose processor for performing the function(s). See Nevro Corp. v. Bos.
Sci. Corp., 955 F.3d 35, 42–43 (Fed. Cir. 2020). An algorithm for
performing the function(s)—i.e., transforming the general purpose processor
to a special purpose processor—must be disclosed. See id.; Function Media,
L.L.C. v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013) (“When dealing
with a special purpose computer implemented means-plus-function
limitation, we require the specification to disclose the algorithm for
performing the function.” (quotation marks and citations omitted));

3 Though seeming to acknowledge the claimed “means for detecting” is a
means-plus-function feature, Appellant presents only the Specification’s
reiteration of the recited function as the corresponding structure. If the
claimed “means for detecting” is a means-plus-function feature, then the
claim must lack sufficient structure for performing the function and the
Specification’s mere reiteration of the recited function must therefore lack
sufficient structure. Appellant perhaps asks us to take a deeper look at the
Specification—i.e., further than the disclosures presented by the briefs.
We will not search the Specification on Appellant’s behalf.
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Aristocrat, 521 F.3d at 1337–38 (“[A] person of ordinary skill in the art
would not recognize the patent as disclosing any algorithm at all.”).
35 U.S.C. § 103—Obviousness
1. Claims 1–5 and 10–20
With regard to the obviousness rejection of claims 1–5 and 10–20
over Lau, Allen, and Burka, Appellant argues the merits of independent
claims 1, 18, and 20 collectively and does not argue the merits of their
dependent claims 2–5, 10–17, and 19. Appeal Br. 5 et seq. Based on
Appellant’s arguments, and because claims 1, 18, and 20 contain
commensurate argued limitations, we select claim 1 as representative of
claims 1–5 and 10–20. See 37 C.F.R. § 41.37(c)(1)(iv). For the reasons
below, we are unpersuaded of error in the obviousness rejection of claim 1.
We therefore sustain the obviousness rejection of claims 1–5 and 10–20.
A first issue is whether Appellant has shown the Examiner erred in
determining the applied prior art teaches or suggests the following
claim limitation: “associating . . . an identifier of a plurality of identifiers
with each received message . . . wherein each of the plurality of identifiers is
sized such that the storage space necessary to store the identifier is less than
the storage space necessary to store an identifier sized to uniquely identify
all of the plurality of messages.” Appeal Br. 6.
Addressing the Examiner’s reliance on Burka, Appellant contends:
Burka . . . teaches compressing the buffered profiling data[,] but
there is no teaching or suggestion of this data being sized in the
manner as claimed, e.g.[,] such that the storage space necessary
to store the identifier is less than the storage space necessary to
store an identifier sized to uniquely identify all of the plurality
of messages.
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[T]he Examiner states “Burka disclosed using one bit with 7
bits either unused or used for another purpose. The Examiner
notes that the Burka compression results in less storage space
necessary to store data. . . . ”
However, the Examiner fails to explain how compression
of the profiling buffer of Burka teaches Appellants’ claimed
identifiers used to identify each of a plurality of messages
which, as claimed, are sized such that the storage space
necessary to store the identifier is less than the storage space
necessary to store an identifier sized to uniquely identify all of
the plurality of messages. . . .
The excerpt of Burka cited by the Examiner also, in fact
fails to teach compression despite using the term but, instead,
merely teaches eliminating unnecessary or unused bits when
storing the collected profiling information so as to minimize the
amount of data stored (but not actually reduce it, such as via
encoding, etc.).
. . . .
To be clear, if Burka utilized Appellants’ claimed
identifiers to store branch targets, for example, that would mean
using 7 or fewer bits to represent all 255 possible values.
Appeal Br. 8–9.
The Examiner responds:
[T]he storage space required to store all of the accumulated
compressed frame IDs [of Burka] will be less than the storage
required for the original size required for all the plurality of
original uncompressed messages/frame IDs.
. . . .
In response to applicant’s argument that the references
fail to show certain features of applicant’s invention, it is noted
that the features upon which applicant relies (i.e., identifiers to
represent all 255 possible values) are not recited in the rejected
claim(s).
Ans. 8–9.
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Appellant replies by reiterating the Appeal Brief arguments as
follows: “So as can be seen, rather than teach identifiers which are sized
less than is necessary to represent all of a plurality of messages as claimed,
Burka teaches identifiers which are sized exactly, and not any bigger, to
uniquely represent all possible values to represent a profile.” Reply Br. 7
(emphases omitted).
We are unpersuaded the Examiner erred. The Examiner determines
that a broadest reasonable interpretation of the disputed recitation for the
claimed associating—i.e., “sized such that the storage space necessary to
store the identifier is less than the storage space necessary to store an
identifier sized to uniquely identify all of the plurality of messages”—can be
read on merely reducing an identifier from an original size in bits to a
smaller size in bits. Ans. 8–9 (block-quoted supra). That is, the Examiner
determines that the disputed recitation encompasses a mere reduction of an
identifier’s bit-size, such that the identifier requires less storage. Id.
Appellant must present persuasive evidence (e.g., reasoning) that the
Examiner’s interpretation is in error. See, e.g., In re Jung, 637 F.3d 1356,
1363 (Fed. Cir. 2011) (“Section 132 merely ensures that an applicant at least
be informed of the broad statutory basis for the rejection of his claims, so
that he may determine what the issues are on which he can or should
produce evidence.’ Chester [v. Miller], 906 F.2d [1574,] 1578
[(Fed. Cir. 1990)] (internal citation omitted).”).
Appellant does not present sufficient persuasive evidence of Examiner
error. Appellant presents only a non-limiting Specification example of what
the disputed recitation encompasses. Specifically, Appellant asserts that, “if
Burka utilized Appellants’ claimed identifiers . . . , [Burka] would [be] using
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7 or fewer bits to represent all 255 possible values.” Reply Br. 9
(block-quoted supra). This assertion is an implicit request to import the
Specification’s example of the disputed recitation and, namely, to import the
example of “reducing the number of unique identifiers necessary to
represent a larger number of unique messages, which in turn reduces the
[minimum bit-]size of the identifiers[] and thus [reduces] the data
requirements to store the identifiers.” Spec. ¶ 225. Appellant does not
present a corresponding disclaimer of claim scope in the Specification (i.e.,
an intent of the inventors to import the Specification’s above example of the
disputed recitation into the claims). See In re Am. Acad. Of Sci. Tech Ctr.,
367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading
limitations into a claim from the preferred embodiment described in the
specification, even if it is the only embodiment described, absent clear
disclaimer in the specification.”); see also Spec. ¶ 268 (“It is . . . intended
that the foregoing detailed description be regarded as illustrative rather than
limiting[.]”).
Appellant also contends:
Lau’s frames are the messages generated by the disclosed
agents, i.e. “each instrumentation agent collects information to
form a message, also referred to herein as a frame, which
describes characteristics associated with either or both a
detected request and a detected response to the request in a
transaction. . . .” These frames are not the messages received
and processed by the system being monitored.
Appeal Br. 10–11.
The Examiner responds: “Lau Paragraph 31 disclose[s] detecting a
request, response, and/or other activity of a transaction to be monitored. . . .
[T]he Lau frames are directly correlated with the detected request message
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and detected response message and [teach] the claimed application
messages.” Ans. 10.
Appellant replies by reiterating the above contentions presented by the
Appeal Brief. Reply Br. 4.
We are unpersuaded the Examiner erred. In response to Appellant’s
argument, the Examiner emphasizes the following disclosure of Lau:
“In response to detecting a [message (e.g.,] request, response[)] . . . to be
monitored, each agent (e.g., 236, 238) can . . . detect one or more
characteristics associated with that activity . . . . The characteristics can
include a frame identifier, which identifies a message[.]” Lau ¶ 31; see also
Ans. 10 (quoted above and citing Lau ¶ 31). Per this disclosure, Lau teaches
that an agent receives and processes a message, accordingly generates
transaction data including a frame identifier that identifies the message, and
provides the transaction data to an agent manager. Lau ¶¶ 30–31; see also
Final Act. 9 (reliance on Lau ¶¶ 30–31. Lau further teaches that, via the
transaction data, the agent manager monitors the agent’s receipt and
processing of such messages (and thereby monitors the communications of
the agent’s component). Lau ¶ 30. A “frame” is simply a part of a
transaction (Lau, Abst.), e.g., receipt of the above message. In view of the
above, it is clear the Examiner finds Lau’s disclosure of a frame for an
agent’s received message, the frame’s identifier, and the frame’s transaction
data (reported by an agent to the agent manager) collectively teach
receipt/processing of a message (by an agent/component) and monitoring
thereof (by a coupled agent manager). Appellant’s argument fails to
sufficiently address this finding.
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2. Claims 6–9
With regard to the obviousness rejection of claims 6–9 over Lau,
Allen, Burka, and Xu, Appellant does not present any separate arguments.
Appeal Br. 5 et seq. We therefore sustain the obviousness rejection of
claims 6–9, pro forma. See Ex parte Frye, 94 USPQ2d 1072, 1076 (BPAI
2010) (“Precedential”) (“[T]he Board will generally not reach the merits of
any issues not contested by an appellant.”); 37 C.F.R. § 41.37 (c)(1)(iv)
(Each ground of rejection must be treated under a separate heading.).

OVERALL CONCLUSION
We affirm the Examiner’s decision to reject claims 1–20.

DECISION SUMMARY
Claims
Rejected 35 U.S.C. §
Reference(s)/
Basis Affirmed Reversed
20 112(b) Indefiniteness 20
1–5, 10–20 103 Lau, Allen, Burka 1–5, 10–20
6–9 103 Lau, Allen, Burka, Xu 6–9
Overall
Outcome 1–20

TIME PERIOD FOR RESPONSE

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. § 1.136(a)(1)(iv).
AFFIRMED