Ex Parte Blue et al

Patent Trial and Appeal Board

Jun 14, 2016

13537641 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/537,641 06/29/2012
75949 7590
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
06/16/2016
FIRST NAMED INVENTOR
George Meldrum Blue
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.
GB920080210US2 4233
EXAMINER
KIM, SISLEY NAHYUN
ART UNIT PAPER NUMBER
2196
NOTIFICATION DATE DELIVERY MODE
06/16/2016 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):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE MELDRUM BLUE, NIGEL GODDARD,
MARTIN JAMES GOMPERTZ, ANDREW IAN HICKSON,
GARY PATRICK LONGERSTAEY, and
PHILIP GRAHAM WILLOUGHBY
Appeal 2014-007346
Application 13/537,641
Technology Center 2100
Before CARL W. WHITEHEAD JR., SMITH, JEFFREY S. and
AMBER L. HAGY, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the Final Rejection of claims 1-19 under
35 U.S.C. § 134(a). Appeal Brief 4. We have jurisdiction under 35
U.S.C. § 6(b) (2012).
We affirm.
Appeal2014-007346
Application 13/537,641
Introduction
The invention is directed to:
A method of managing an asynchronous messaging
queue with a client computer in an asynchronous messaging
system, where the client computer is programmed to store an[ d]
manage the asynchronous messaging queue, includes receiving
a reactive message in the asynchronous messaging queue, the
reactive message including an identification of a previously
initiated message and an action to be performed on the
previously initiated message; and upon determining that the
previously initiated message has already been received in the
asynchronous messaging queue, performing the action on the
previously initiated message with the client computer.
Specification i-f 10.
Representative Claim (disputed limitations emphasized)
1. A method of managing an asynchronous messaging
queue with a client computer in an asynchronous messaging
system, said client computer being programmed to store and
manage said asynchronous messaging queue, said method
compnsmg:
receiving a reactive message in said asynchronous
messaging queue stored by said client computer, said reactive
message comprising an identification of a previously initiated
message and an action to be performed on said previously
initiated message; and
responsive to a determination that said previously
initiated message has already been received in said
asynchronous messaging queue, performing said action on said
previously initiated message with said client computer.
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Appeal2014-007346
Application 13/537,641
Rejections on Appeal
Claim 18 stands rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Final Rejection 2-3.
Claims 1, 2, 5-7, 9-12, and 14--18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Garrard (US Patent Application
Publication Number 2008/0196039 Al; published August 14, 2008) and
Lorello (US Patent Application Publication Number 2004/0224706 Al;
published November 11, 2004). Final Rejection 3-15.
Claims 3, 4, and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Garrard, Lorello, and Dievendorff (US Patent Number
5,452,430; issued September 19, 1995). Final Rejection 15-17.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Garrard, Lorello, and Singhal (US Patent Number
7,606,867 Bl; issued October 20, 2009). Final Rejection 17-19.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Garrard, Lorello, and Nagai (US Patent Application
Publication Number 2005/0004996 Al; published January 6, 2005). Final
Rejection 19-21.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed March 3, 2014), the Reply Brief (filed
June 18, 2014), the Answer (mailed April 22, 2014) and the Final Rejection
(mailed October 9, 2013) for the respective details. We have considered in
this decision only those arguments Appellants actually raised in the Briefs.
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Appeal2014-007346
Application 13/537,641
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner's Answer in response to Appellants' Appeal Brief, except where
noted.
35 US.C. § 101 Rejection
Appellants argue that the "[S]pecification explicitly limits the 'storage
medium' to containment or storage i.e. not signal transmission" and,
therefore, the Examiner's 35 U.S.C. § 101 rejection of claim 18 is erroneous.
Appeal Br. 10-11 (citing Specification i-fi-120-21). However, we agree with
the Examiner's conclusion. See Final Rejection 2-3. An expanded PTAB
panel held in an appeal involving a similar issue (Ex parte Mewherter, 107
USPQ2d 1857, 1860 (PTAB 2013) (precedential)) that where Appellants'
Specification fails to define a computer-readable storage medium (or any
variants thereof), the term must be broadly and reasonably construed
according to its ordinary and customary meanings to a person of ordinary
skill in the art to encompass both non-transitory and transitory media. 1
Therefore, we sustain the Examiner's 35 U.S.C. § 101 rejection of claim 18.
1 Those 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 In re Nuijten, 500 F.3d 1346,
1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to
statutory subject matter).
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Appeal2014-007346
Application 13/537,641
35 US.C. § 103 Rejection
Appellants argue that Garrard fails to teach claim 1 's reactive message
because (1) Garrard's commit message is received by a server and not a
client computer as required by claim 1, and (2) the commit message does not
specify any action to be performed on a previously initiated message.
Appeal Br. 13. (1) There is nothing patentably distinguishable between the
claimed computer and a server since they are often one and the same
wherein their technological realms often overlap. Therefore, it is immaterial
if the device receiving the reactive message (a signal) is considered to be a
computer, server, or both. Further, Lorello teaches the employment of a
client computer in Figure 1. See Final Rejection 5. (2) The claimed reactive
message is merely a signal in the same manner as Gerrard's commit message
wherein Gerrard's commit message causes the computer system to indicate,
identify, and replace messages received in the queue ahead of the remainder
of the first set of messages. See Garrard i-f 5.
Appellants further argue that Lorello fails to address the alleged
deficiencies of Garrard because:
Lorello relates to updating data/programming in a mobile
handset. Lorello describes determining if a received message
relates to an information service and should replace previous
information about that information service. The Lorello message
does not include an express "identification of a previously
initiated message [or] an action to be performed on said
previously initiated message." (Claim 1) (emphasis added).
Thus, as noted, Lorello does not remedy any of the failings of
Garra[ r ]d demonstrated above.
Appeal Brief 15.
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Application 13/537,641
We do not find Appellants' argument persuasive because we do not
find Garrard deficient. Also Lorello discloses receiving new short messages
in a storage queue wherein:
The new short message is determined to be an information
service short message, and stored short messages are reviewed
for any previously stored short message from the same
information service. A queue control overwrites any located
previously stored messages corresponding to the same
information service.
Lorello i-f 35.
The Examiner finds:
It would have been obvious to one of ordinary skill in the art at
the time of the invention was made to modify the teachings of
Garrard to utilize a queue for a reactive message and a technique
for reactive messages as taught by Lorello because it would
enhance the teaching of Garrard with providing a fast means of
inter-process communication utilizing a queue and the reactive
message functionalities (Lorello; all figures, par. 35-37, 57-62).
Final Rejection 5---6.
We agree with the Examiner's findings because in order to
demonstrate obviousness, the Examiner is only required to show "the subject
matter as a whole would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter
pertains." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting
35 U.S.C. § 103) (emphasis added); id. at 418 ("[T]he analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.") Both Garrard and
Lorello discloses manipulation of data signals (reactive messages) and
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Application 13/537,641
provides methods for updating and storing the reactive messages. See Final
Rejection 3---6. Therefore, we sustain the Examiner's obviousness rejection
of claim 1.
Appellants argue that the combination of Garrard and Lorello fails to
render claim 2 obvious because Lorello does not address the alleged
deficiency of Garrard because "Lorello refers to a system in which messages
replace each other or are added to the end of the message queue." Appeal
Brief 17. We do not find Appellants' argument persuasive because, as we
stated above, both Garrard and Lorello teach the manipulation of data
signals, as well as, the storage and updating of the signals in the same
manner as the claimed invention. We sustain the Examiner's obviousness
rejection of claim 2. We also sustain the Examiner's obviousness rejection
of claims 3-19 not separately argued. See Appeal Br. 17-18.
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claim 18 is affirmed
The Examiner's obviousness rejections of claims 1-19 are 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 ). See 37 C.F.R.
§ 1.136(a)(l)(v) (2015).
AFFIRMED
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