Ex Parte ANTANI et alDownload PDFPatent Trial and Appeal BoardMay 24, 201612982806 (P.T.A.B. May. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/982,806 12/30/2010 46320 7590 05/26/2016 CRGOLAW STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, FL 33434 FIRST NAMED INVENTOR Snehal S. ANTANI 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 ATTORNEY DOCKET NO. CONFIRMATION NO. RSW920090093US 1 (490CIP) 9089 EXAMINER WOO, ANDREW M ART UNIT PAPER NUMBER 2441 NOTIFICATION DATE DELIVERY MODE 05/26/2016 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): docketing@crgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte SNEHAL S. ANTANI, ERIKJ. BURCKART, and ROHIT D. KELAPURE Appeal2014-009252 Application 12/982,806 Technology Center 2400 Before ERIC S. FRAHM, JEFFREY A. STEPHENS, and NATHAN A. ENGELS, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-009252 Application 12/982,806 STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 8-19. Claims 1-7 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Exemplary Claims Exemplary claims 8 and 13 under appeal, with emphases added, read as follows: 8. A data processing system configured with an n-Tier distributed cache, the system comprising: a plurality of cache resources in respective tier nodes arranged in an n-Tier distributed cache; an application server with processor and memory configured to host execution of application logic and coupled to the n-Tier distributed cache; a cache server with processor and memory providing access to the n-Tier distributed cache; and, dynamic distributed cache hierarchy management logic coupled to the n-Tier distributed cache, the logic comprising computer usable program code executable in the memory of the cache server by the processor of the cache server, the computer usable program code when executed establishing a communicative connection to the cache servers, collecting performance metrics for each of the cache resources in the respective tier nodes of the n-Tier distributed cache, identifying a characteristic of a specific cache resource in a corresponding one of the tier nodes of the n-Tier distributed cache crossing a threshold, and dynamically structuring a set of cache resources 2 Appeal2014-009252 Application 12/982,806 including the specific cache resource to account for the identified characteristic. 13. A computer program product for dynamic structural management of an n-Tier distributed caching infrastructure, the computer program product comprising: a computer readable storage medium having computer readable program code embodied therewith, the computer readable program code comprising: computer readable program code for establishing a communicative connection to a plurality of cache servers arranged in respective tier nodes in an n-Tier distributed cache; computer readable program code for collecting performance metrics for each of the cache servers in the respective tier nodes of the n-Tier distributed cache; computer readable program code for identifying a characteristic of a specific cache resource in a corresponding one of the tier nodes of the n-Tier distributed cache crossing a threshold; and, computer readable program code for dynamically structuring a set of cache resources including the specific cache resource to account for the identified characteristic. Examiner's Rejections (1) The Examiner rejected claims 13-19 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Final Act. 2-5. (2) The Examiner rejected claims 8-19 as being unpatentable under 35 U.S.C. § 103(a) over the combination of de Bonet (US 2006/0253461 Al; published Nov. 9, 2006) and Hartsell et al. (US 2002/0049608 Al; published Apr. 25, 2002). Final Act. 5-15. 3 Appeal2014-009252 Application 12/982,806 Issues on Appeal Based on Appellants' arguments in the Appeal Brief (App. Br. 4--10) and the Reply Brief (Reply Br. 2-8), the following two issues are presented on appeal: (1) Did the Examiner err in rejecting claims 13-19 under 35 U.S.C. § 101 as being directed to non-statutory subject matter because a computer readable storage medium cannot be a transitory signal? (2) Did the Examiner err in rejecting claims 8-19 as being obvious because the combination of de Bonet and Hartsell fails to teach or suggest "dynamically structuring a set of cache resources including the specific cache resource to account for the identified characteristic," as recited in representative independent claim 8, and as similarly recited in independent claim 13? 1 ANALYSIS We have reviewed the Examiner's rejections (Final Act. 2-17) in light of Appellants' contentions in the Appeal Brief (App. Br. 2-5) and Reply Brief (Reply Br. 2-8) that the Examiner has erred, and have considered the Examiner's response to Appellants' arguments in the Appeal Brief (Ans. 2- 5). We disagree with Appellants' conclusions as to claims 8-19 and provide the following for emphasis. 1 Appellants present arguments primarily as to independent claim 8, and argue claims 9-19 on the same basis. App. Br. 7-10. We select claim 8 as representative of the group of claims (claims 8-19) rejected as being obvious over the combination of de Bonet and Hartsell. 4 Appeal2014-009252 Application 12/982,806 Re} ection under 3 5 U.S. C. § 101 We disagree with Appellants' conclusions that claims 13-19 are directed to statutory subject matter. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 2-5), and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to the Appellants' Appeal Brief (Ans. 2-3). We highlight and amplify certain teachings and suggestions of the references as follows. Appellants contend (App. Br. 4--7; Reply Br. 2-5) claims 13-19 are statutory, because the (i) Specification (i-f 37) describes statutory embodiments of a computer readable medium such as electronic, magnetic, optical, electromagnetic, infrared, or semiconductor system; and (ii) a computer readable storage medium (as recited in claims 13-19) is inherently tangible because transitory signals cannot store. Appellants' contentions are not persuasive because, although the Specification describes statutory embodiments of a computer readable medium, we agree with the Examiner that the Specification fails to define a computer readable storage medium. Thus, the Specification does not limit computer readable storage media to only statutory embodiments, and claims 13-19 must be interpreted to cover both statutory and non-statutory types of media. In re Ex Parte Mewherter: [T]hose of ordinary skill in the art would understand the claim term "machine-readable storage medium" would include signals per se. Further, where, as here, the broadest reasonable interpretations of all the claims each covers a signal per se, the claims must be rejected under 35 U.S.C. § 101 as covering non- statutory subject matter. See Ex Parte Mewherter, 107 USPQ2d 1857, 1862 (BPAI 2013) (precedential in relevant part). 5 Appeal2014-009252 Application 12/982,806 We note that Appellants are not precluded from amending these claims to overcome this rejection. Nor are Appellants precluded from amending the Specification to specifically define "computer readable storage medium" to include only statutory storage media. Guidance on this point is provided in U.S. Patent & Trademark Office, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) ("A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation 'non-transitory' to the claim."). See also U.S. Patent & Trademark Office, Evaluating Subject Matter Eligibility Under 35 USC§ 101(August2012 Update) (pages 11-14), available at http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf (noting that while the recitation "non-transitory" is a viable option for overcoming the presumption that those media encompass signals or carrier waves, merely indicating that such media are "physical" or tangible" will not overcome such presumption). Consequently, we find the Examiner did not err in rejecting independent claim 13, as well as claims 14--19 which depend therefrom, under 35 U.S.C. § 101, as being directed to non-statutory subject matter. Rejection under 35 U.S.C. § 103(a) In rejecting claims under 35 U.S.C. §§ 102 and 103, it is incumbent upon the Examiner to establish a factual basis to support the prior art rejection-the so-called "prima facie" case. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the USPTO has the initial burden of proof "to 6 Appeal2014-009252 Application 12/982,806 produce the factual basis for its rejection of an application under sections 102 and 103." (quoting In re Warner, 379 F.2d 1011, 1016 (CCPA 1967))). "[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Appellants have the opportunity on appeal to the Board of Patent Appeals and Interferences (BP AI) to demonstrate error in the Examiner's position. See In re Kahn, 441F.3d977, 985-86 (Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented in the specification, In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), by counsel, In re Chu, 66 F.3d 292, 299, 36 USPQ2d 1089, 1094--95 (Fed. Cir. 1995), or by way of an affidavit or declaration under 37 C.F.R § 1.132, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki, 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984). However, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139--40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). In this case, the Examiner (Final Act. 6-9; Ans. 4--5) has established a prima facie case of obviousness by combining de Bonet and Hartsell. Specifically, the Examiner finds that Hartsell (i-fi-f 52, 92, 238) teaches or suggests "dynamically structuring a set of cache resources including the 7 Appeal2014-009252 Application 12/982,806 specific cache resource to account for the identified characteristic." Appellants respond by alleging that: ( 1) the Examiner has accounted only for the general idea of dynamically structuring computing resources without any relationship to any identified characteristic of a cache resource that has crossed a threshold (App. Br. 9); and (2) the Examiner has improperly equated the adjustment of service level agreement (SLA) performance levels with the claimed restructuring of a set of cache resources (Reply Br. 6-8). Regarding the first argument, the Examiner (Ans. 4) identifies service level objectives for allocating system resources, such as bandwidth, storage processing, application processing, etc., as an identified characteristic. Regarding the second argument, the Examiner has not identified the SLA as the identified characteristic, but instead relies upon the objectives of the SLA as being the identified characteristic. In both instances, Appellants have failed to provide any evidence that the Examiner has mischaracterized Hartsell or that the teachings of Hartsell fail to teach or suggest the disputed limitation. As such, Appellants have failed to rebut the Examiner's prima facie case of obviousness. Accordingly, we sustain the Examiner's obviousness rejection of claims 8-19. CONCLUSIONS (1) The Examiner did not err in rejecting claims 13-19 under 35 U.S.C. § 101 as being directed to non-statutory subject matter because a computer readable storage medium as broadly construed could include non- statutory matter. 8 Appeal2014-009252 Application 12/982,806 (2) The Examiner did not err in rejecting claims 8-19 as being obvious because Appellants have failed to show that the combination of de Bonet and Hartsell fails to teach or suggest "dynamically structuring a set of cache resources including the specific cache resource to account for the identified characteristic," as recited in representative independent claim 8, and as similarly recited in independent claim 13. DECISION (1) The Examiner's rejection of claims 13-19 under 35 U.S.C. § 101 as being directed to non-statutory subject matter is affirmed. (2) The Examiner's obviousness rejection of claims 8-19 under 35 U.S.C. § 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation