Ex Parte Alex et al

Patent Trial and Appeal Board

Apr 22, 2014

10675001 (P.T.A.B. Apr. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte JOHN K. ALEX, REINHARD BUENDGEN,
CHUN-SHI CHANG, RONG-SHENG LEE, JEFFREY S. LUCASH,
THOMAS LUMPP, and JUERGEN SCHNEIDER
_____________

Appeal 2011-002977
Application 10/675,001
Technology Center 2400
______________

Before, ROBERT E. NAPPI, JASON V. MORGAN, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 13 and 15 through 22. Claim 14 has been cancelled.
We affirm in part.
INVENTION
The invention is directed to a method for use on an autonomic
computing system to determine that a desired end state cannot be reached,
determine that an acceptable sub-state can be reached using at least one of
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priority ratings, conditional relationship specifications, and alternative
relationship specifications, and place the computing system in an acceptable
sub-state. See Abstract of Appellants’ Specification. Claim 1 is illustrative
of the invention and reproduced below:
1. A method comprising:
receiving at least one policy definition defined by a user,
wherein the at least one policy definition includes at least one
conditional relationship specification, and wherein the at least
one policy definition programmatically specifies relationships
between at least two resources in a set of resources in an
autonomic computing system and defines at least one desired end
state therefore, and wherein the at least one conditional
relationship specification indicates a relationship between at least
two resources based on a state associated with each of the at least
two resources, and wherein the at least on conditional
relationship specification comprises at least one conditional
statement, and wherein the at least one policy definition
programmatically specifies relationships by using states
associated with the at least two resources, wherein the state of
one of the at least two resources depends on the state of the other
resource, and indicating a decision sequence that is to be
followed to reach the at least one desired end state based on the at
least one conditional relationship specification;
harvesting implicit relationships among the set of
resources via self-discovery, wherein the set of implicit
relationships at least indicate one or more of a set of resource
dependencies for at least one resource in the set of resources and
location requirements for at least one resource in the set of
resources, and wherein self-discovery includes automatically
discovering the set of implicit relationships without the user
explicitly specifying the implicit relationships;
determining, by the autonomic computing system, that a
state of at least one resource in the set of resources substantially
satisfies a predetermined requirement of the at least one
conditional relationship specification and dependencies and
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requirements of the set of implicit relationships that have been
harvested, wherein the set of resources includes any resources
identified based on the set of implicit relationships that have been
harvested;
determining, by the autonomic computing system in
response to the state of the at least one resource substantially
satisfying the predetermined requirement, that the desired end
state can be reached by applying the at least one policy definition
conditioned by the at least one conditional relationship
specification; and
placing the autonomic computing system in the desired end
state by applying the at least one policy definition.

REJECTIONS AT ISSUE
The Examiner has rejected claims 1, 2, 5 through 8, 11 and 12 under
35 U.S.C. § 102(b) as anticipated over Eshghi (US 5,893,083, Apr. 6, 1999).
Answer 3-8.1
The Examiner has rejected claims 3, 4, 9 and 10 under 35 U.S.C.
§ 103(a) as unpatentable over Eshghi and Sankaranarayan (US 2005/
0033846 A1, Feb. 10, 2005, filed Aug. 31, 2004). Answer 8-10.
The Examiner has rejected claims 13 and 15 through 21 under 35
U.S.C. § 103(a) as unpatentable over Sankaranarayan and Eshghi. Answer
11-18.
The Examiner has rejected claim 22 under 35 U.S.C. § 103(a) as
unpatentable over Eshghi. Answer 18-20.

1 Throughout this opinion we refer to the Appeal Brief dated July 6, 2010,
Reply Brief dated November 1, 2010, and the Examiner’s Answer mailed on
September 1, 2010.
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ISSUES
Independent Claims 1, 7, and 13
Appellants argue on pages 14 through 16 of the Appeal Brief and
pages 5 and 7 of the Reply Brief, the Examiner’s rejection of independent
claim 1 is in error. The dispositive issue is: did the Examiner err in finding
Eshghi teaches a policy indicating a decision sequence that is to be followed
to reach the at least one desired end state based on the at least one
conditional relationship specification?
Appellants’ arguments directed to independent claims 7 and 13
present us with similar issues as claim 1.

Independent Claims 2, 8, and 18
Appellants argue on pages 16 and 17 of the Appeal Brief and page 8
of the Reply Brief, the Examiner’s rejection of independent claim 2 is in
error. The issue presented by these arguments is: did the Examiner err in
finding Eshghi teaches placing the autonomic computing system in the
acceptable sub-state as a substitution for the desired end-state, wherein the
acceptable sub-state becomes a new end-state in response to the
substitution?
Appellants’ arguments directed to the anticipation rejection of claim 8
and the obviousness rejection of independent claim 18 present us with the
same issue. App. Br. 17, 21-22.

ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to the Appellants’
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arguments. We agree with Appellants’ conclusion that the Examiner erred
in rejecting claims 1, 7, 13, 15 through 17 and 22 but disagree with
Appellants’ conclusion the Examiner erred in rejection claims 2 through 6, 8
through 12 and 18 through 21.

Independent Claims 1, 7, and 13, and the Claims which depend
therefrom
We concur with the Appellants’ conclusion that the Examiner erred in
finding Eshghi teaches a policy indicating a decision sequence that is to be
followed to reach the at least one desired end state based on the at least one
conditional relationship specification. Each of independent claims 1, 7 and
13 recites a limitation directed to this feature. The Examiner cites to
Eshghi’s Abstract and portions of column 2, as providing a decision
sequence as claimed. Answer 23-24. We disagree with the Examiner and
concur with Appellants’ arguments on pages 14 and 15 of the Brief, and
pages 5 and 6 of the Reply Brief as we do not see how the cited disclosures
of Eshghi recite a decision sequence to reach a desired end state.
Accordingly, we do not sustain the Examiner’s anticipation rejection of
claims 1 and 7.
The Examiner’s obviousness rejections of claims 15 through 17 and
22 similarly rely upon the teachings of Eshghi, to teach this feature.
Accordingly, we similarly do not sustain the Examiner’s rejection of claims
13, 15 through 17 and 22.

Independent Claims 2, 8, and 18 and the Claims which depend
therefrom
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We disagree with the Appellants’ conclusion that the Examiner erred
in finding Eshghi teaches placing the autonomic computing system in the
acceptable sub-state as a substitution for the desired end-state, wherein the
acceptable sub-state becomes a new end-state in response to the substitution.
We are not persuaded by Appellants’ arguments on pages 16 and 17 of the
Brief, that Eshghi’s goal “is not a ‘desired end state for the automatic
computing system[.]’” The Examiner has provided a comprehensive
response to Appellants’ arguments, with which we concur. Ans. 27.
Accordingly, we sustain the Examiner’s anticipation rejection of claims 2, 8,
11, and 12. Appellants’ arguments directed to independent claim 18 present
us with the same issue and Appellants have not presented arguments directed
the rejections of claims 3 through 6, 9, 10, and 19 through 21. Accordingly,
we similarly sustain the Examiner’s rejection of these claims.

NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection
against claims 7 through 12 under 35 U.S.C. § 101. Each of these
independent claims recites a computer program embodied on a computer-
readable storage medium. Appellants’ Specification states, “the computer
readable medium may include computer readable information in a transitory
states medium.” (Specification p. 37, l. 19-p. 38 l. 2). Thus, Appellants’
Specification identifies that the medium can include a propagating signal. A
signal is not within one of the four categories of patentable subject matter as
defined under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir.
2007). See also our recent precedential decision Ex parte Mewherter
(Appeal 2012-007692), 2013 WL 3291360 (PTAB 2013) Precedential, and
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guidance in the Manual of Patent Examining Procedure (“MPEP”)
§ 2106(I), Ed. 8, Rev. 9 (Aug. 2012). Accordingly, we now reject claims 7
through 12 as being drawn to subject matter that is not eligible for patent
protection under 35 U.S.C. § 101.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). This section provides that “[a] new ground of
rejection… shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or new evidence relating to
the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which
event the proceeding will be remanded to the
examiner. . . .

(2) Request that the proceeding be reheard
under § 41.52 by the Board upon the same
record. . . .

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).

DECISION
The decision of the Examiner to reject claims 1 through 13 and 15
through 22 is affirmed-in-part.

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AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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