Ex Parte Burckart et alDownload PDFPatent Trial and Appeal BoardJan 27, 201411094028 (P.T.A.B. Jan. 27, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ERIK J. BURCKART, JEFFREY E. CARE, DAVID J. SCHELL, and RYAN L. URQUHART ____________ Appeal 2011-013530 Application 11/094,028 Technology Center 2400 ____________ Before STEFAN STAICOVICI, EDWARD A. BROWN, and LYNNE H. BROWNE, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-013530 Application 11/094,028 2 STATEMENT OF THE CASE Erik J. Burckart et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 2, 5-9, 12-16, 19-23, and 31-34 under 35 U.S.C. § 103(a) as unpatentable over Bixler (US 6,212,559 B1, issued Apr. 3, 2001), Meyer (US 6,289,378 B1, issued Sep. 11, 2001), and Peer (US 2004/0167976 A1, published Aug. 26, 2004). Claims 3, 4, 10, 11, 17, 18, and 24-30 have been canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). INVENTION Appellants’ invention relates to “a method, system and program product for tracking computer system configuration changes.” Spec. 1, para. [0001]. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A method for tracking computer system configuration changes with corresponding message responses, comprising: at a change tracking computer system: monitoring a plurality of computer systems for configuration changes; detecting initiation of a configuration change for a computer system of the monitored plurality of computer systems; issuing a message selected from a database comprising a library of configuration change messages for the plurality of computer systems based upon the configuration change in response to detecting the initiation of the configuration change, wherein the selected message warns of a potential error condition due to the configuration change being issued from the computer system and requires a response, wherein the response requires choosing to accept the message or ignore the message, wherein accepting the message cancels the configuration change and ignoring the message allows the configuration change; Appeal 2011-013530 Application 11/094,028 3 observing the response to the selected message; storing the configuration change with the selected message and the response in a log file within the database; detecting that an error condition with the computer system has occurred; querying the database in response to detecting the error condition to determine configuration changes identified within the database as possible causes of the detected error condition; and determining whether the configuration change is one of the determined configuration changes identified within the database as possible causes of the detected error condition. SUMMARY OF DECISION We REVERSE and ENTER A NEW GROUND OF REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b). ANALYSIS Independent claim 1 requires “monitoring a plurality of computer systems for configuration changes.” App. Br., Claims App’x. Similarly, independent claims 8, 15, and 22 require a processor, a program code, and a computer infrastructure, respectively, adapted for “monitor[ing] . . . plurality of computer systems for configuration changes.” Id. The Examiner found that because “[t]he user’s requested changes are detected, and the database is updated [in Bixler] based on the changes made by the user . . . the systems are monitored at least to the degree to detect the changes the user made through the system.” Ans. 5 (citing to Bixler, col. 6, ll. 20-39). Appellants argue that because the network configuration tool of Bixler “manipulates preloaded reference data for network configuration” and is Appeal 2011-013530 Application 11/094,028 4 user driven, “the Bixler reference does not monitor the actual computers,” as called for by each independent claim 1, 8, 15, and 22. App. Br. 30. In response, the Examiner takes the position that the “monitoring [step] is actually for the ‘initiation’ of . . . [configuration] changes, rather than monitoring for changes that occurred at some point in the past.” Ans. 14. We do not agree with the Examiner’s position because claims are construed with an eye toward giving effect to all terms in the claim. Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). The Examiner’s interpretation of “monitoring” a plurality of computer systems for configuration changes as covering only “detecting” the initiation of a configuration change, in effect renders meaningless, or superfluous, the term “monitoring.” An ordinary and customary meaning of the term “monitor” is “to watch, keep track of, or check esp. for a special purpose.” Merriam Webster’s Collegiate Dictionary (10th Ed. 1997). In this case, Bixler discloses a network administrator for configuring the computers in a network from a host computer by disseminating new network parameters to the computers. Bixler, col. 5, ll. 34-43. Although we appreciate the Examiner’s position that the computers in Bixler’s system detect initiation of a configuration change, we do not agree with the Examiner that Bixler discloses “monitoring” the computers for configuration changes, as called for by each of independent claims 1, 8, 15, and 22. The computers in Bixler’s network merely detect the initiation of a configuration change, but fail to “watch, keep track of, or check” for the occurrence of a configuration change, that is, they fail to monitor for configuration changes prior to detection of a configuration change. Hence, we do not agree with the Examiner’s interpretation of the term “monitoring” as being limited to Appeal 2011-013530 Application 11/094,028 5 monitoring only for the initiation of configuration changes while disregarding the time period prior to detecting initiation of a configuration change. In other words, the limitation of “monitoring” a plurality of computer systems for configuration changes includes monitoring (watching, keeping track of, or checking) the computer systems prior to detecting a configuration change, and as noted by Appellants, “the Bixler reference does not disclose . . . actually monitor[ing] a plurality of computers for configuration changes.” Reply Br. 7. The addition of Meyer and Perry does not remedy the deficiencies of Bixler discussed supra. Accordingly, for the foregoing reasons, we do not sustain the rejection of claims 1, 2, 5-9, 12-16, 19-23, and 31-34 under 35 U.S.C. § 103(a) as unpatentable over Bixler, Meyer, and Peer. NEW GROUND OF REJECTION We make the following new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Claims 15, 16, and 19-21 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Independent claim 15 is directed to “a computer[-]readable storage medium.” App. Br., Claims App’x. Appellants’ Specification states that, “the term ‘computer-readable medium’ comprises one or more of any type of physical embodiment of the program code.” Spec. 15, para. [0039]. Appellants’ Specification further states that the “computer-readable medium” can include “program code” embodied on “portable storage articles of manufacture (e.g., compact disc, a magnetic disk, a tape, etc.),” data storage of a computing device “(e.g., a Appeal 2011-013530 Application 11/094,028 6 fixed disk, a read-only memory, a random access memory, a cache memory, etc.), and/or as a data signal (e.g., a propagated signal) traveling over a network (e.g., during a wired/wireless electronic distribution of the program code).” Spec. 15-26, para. [0039] (emphasis added). Thus, under the broadest reasonable interpretation, the “computer- readable storage medium” of independent claim 15 encompasses transitory signals. Accordingly, claim 15 is directed to non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1357-58 (Fed. Cir. 2007) (“A transitory, propagating signal like Nuitjen's is not a ‘process, machine, manufacture, or composition of matter.’... [T]hus, such a signal cannot be patentable subject matter.”); see also 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.”). In light of the above, we conclude that independent claim 15 and dependent claims 16 and 19-21 are directed to non-statutory subject matter under 35 U.S.C. § 101. SUMMARY The Examiner’s decision to reject claims 1, 2, 5-9, 12-16, 19-23, and 31-34 is reversed. We enter a new ground of rejection of claims 15, 16, and 19-21 under 35 U.S.C. § 101 as directed to non-statutory subject matter. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of Appeal 2011-013530 Application 11/094,028 7 rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that, TO AVOID TERMINATION OF THE APPEAL AS TO THE REJECTED CLAIMS, 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) Reopen prosecution. 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 rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . REVERSED; 37 C.F.R. § 41.50(b) hh Copy with citationCopy as parenthetical citation