Ex Parte Butcher

Board of Patent Appeals and Interferences

May 18, 2011

10392698 (B.P.A.I. May. 18, 2011)

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.
10/392,698 03/20/2003 Lawrence Butcher SUNMP614 9421
81505 7590 05/18/2011
MARSH FISCHMANN & BREYFOGLE LLP
(Oracle formerly d/b/a Sun Microsystems)
8055 East Tufts Avenue
Suite 450
Denver, CO 80237
EXAMINER
MANOSKEY, JOSEPH D
ART UNIT PAPER NUMBER
2113
MAIL DATE DELIVERY MODE
05/18/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LAWRENCE BUTCHER
____________________

Appeal 2009-007975
Application 10/392,6981
Technology Center 2100
____________________

Before JAY P. LUCAS, ST. JOHN COURTENAY III and CAROLYN D.
THOMAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals from a final rejection of claims 1 to 35 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Application filed March 20, 2003. The real party in interest is Sun
Microsystems, Inc.
Appeal 2009-007975
Application 10/392,698

2
Appellant’s invention relates to a method and an apparatus for using
digests to achieve fault tolerance in computer hardware and/or software. In
the words of Appellant:
A method and apparatus are provided, the
method and apparatus comprising running a
plurality of identical programs on a plurality of
identical computers and recording information
about at least some state updates done within each
of the plurality of the identical programs running
on the plurality of the identical computers using a
plurality of digests of the at least some state
updates. The method and apparatus also comprises
comparing the plurality of the digests to determine
whether at least one of the plurality of the identical
programs running on the plurality of the identical
computers has failed.
(Abstract, Spec. 38).

The following illustrates the claims on appeal:
Claim 1:
1. A method comprising:

running a plurality of identical programs on
a plurality of identical computers;

recording information about at least some
state updates done within each of the plurality of
the identical programs running on the plurality of
the identical computers using a plurality of digests
of the at least some state updates; and

comparing the plurality of the digests to
determine whether at least one of the plurality of
the identical programs running on the plurality of
the identical computers has failed.
Appeal 2009-007975
Application 10/392,698

3
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jewett US 6,263,452 B1 Jul. 17, 2001
Fukuhara US 2003/0159083 A1 Aug. 21, 2003
(filed on Apr. 26, 2002)

Menezes, Handbook of Applied Cryptography 33 (CRC Press LLC
1997) (hereinafter “Handbook”).

Microsoft Computer Dictionary 214-215 (Microsoft Press 5th ed.
2002) (hereinafter “Dictionary”).

Tanenbaumb, Structured Computer Organization 11-13 (Prentice-
Hall, Inc. 1990).
REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1, 4, 6, 8, 11 to 13, 16, 18, 20, 23 to 24, 26, 29, 31, and 33
stand rejected under 35 U.S.C. § 103 for being obvious over Fukuhara in
view of Handbook.
R2: Claim 25 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Fukuhara and Handbook in view of Dictionary.
R3: Claims 5, 7, 9, 10, 17, 19, 21, 22, 30, 32, 34, and 35 stand rejected
under 35 U.S.C. § 103(a) for being obvious over Fukuhara and Handbook in
view of Jewett.
R4: Claims 2, 3, 14, 15, 28, and 27 stand rejected under
35 U.S.C. § 103(a) for being obvious over Fukuhara and Handbook in view
of Tanenbaum.

We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
Appeal 2009-007975
Application 10/392,698

4
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a). The issue specifically turns
on whether the combination of Fukuhara and Handbook teach the limitations
of claim 1, specifically recording information about state updates within
programs using digests of the state updates.
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant has invented a method and apparatus for indicating
malfunctions in computers by running the same program on multiple
computers and noting if they produce different “states” at the same point
in processing. (Spec. 2, bottom; Spec. 6, top). To affect this efficiently,
the Appellant calculates a digest representing the state of each of the
computers running the program, and these numbers, the digests, can be
easily compared. (Spec. 6, bottom).
2. The Fukuhara reference teaches a fault tolerant system in which the same
request is sent to two servers. (¶ [0008]). A feature of Fukuhara is that
the results from the servers may be compared, and if they do not match,
then the comparing circuit indicates the possibility of a malfunction in
one or both servers. (¶ [0091]).
Appeal 2009-007975
Application 10/392,698

5
3. The Handbook reference teaches a definition of Hash functions. (p. 33).
It mentions that Hash functions can be used to verify data integrity on
transmission. Since the hash is derived from the underlying data from
which it is calculated, the hash numbers calculated at the beginning and
recalculated at the end of a transmission can be compared to indicate a
change in the data over the transmission. (Id.).

PRINCIPLES OF LAW

Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
During examination of a patent application, a claim is given its
broadest reasonable construction consistent with the specification. In re
Prater, 415 F.2d 1393, 1404-1405 (CCPA 1969).

The Court of Appeals for the Federal Circuit has cautioned against
unreasonably broad claim construction:
Although the PTO emphasizes that it was
required to give all “claims their broadest
Appeal 2009-007975
Application 10/392,698

6
reasonable construction” particularly with respect
to [the] use of the open-ended term “comprising,”
see Genentech, Inc. v. Chiron Corp., 112 F.3d 495,
501 (Fed. Cir. 1997) (“the open-ended term
comprising ... means that the named elements are
essential, but other elements may be added”), this
court has instructed that any such construction be
“consistent with the specification, ... and that claim
language should be read in light of the
specification as it would be interpreted by one of
ordinary skill in the art.” In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990).
The PTO’s construction here, though
certainly broad, is unreasonably broad. The
broadest construction rubric coupled with the term
“comprising” does not give the PTO an unfettered
license to interpret claims to embrace anything
remotely related to the claimed invention. Rather,
claims should always be read in light of the
specification and teachings in the underlying
patent. See Schriber-Schroth Co. v. Cleveland
Trust Co., 311 U.S. 211, 217 (1940).

In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010).

ANALYSIS

Arguments with respect to the rejection
of claims 1 to 35
under 35 U.S.C. § 103(a) [R1-R4]

The Examiner has rejected the noted claims for being obvious over
Fukuhara and Handbook alone or with a tertiary reference. All of the
rejections will be considered together.
Appeal 2009-007975
Application 10/392,698

7
Appellant argues that the combination of references “does not teach
using a plurality of digests to record information about state updates done
within the identical programs running on the identical computers.” (App.
Br. 8, top). We agree. Fukuhara compares search request results from two
servers and, if a difference is noted, declares a fault condition. (FF #2). The
Handbook teaches that a hash can be taken of data being transmitted, to
indicate a corruption of the data on transmission. (FF #3). The combination
fails to teach calculating a plurality of digests representing states of the
computers and then comparing the plurality of those digests to indicate a
malfunction. The Examiner points to the example of retrieving bank data
from two stored sources. (Ans. 23, middle; Fukuyama ¶ [0112]). That
teaching is still of the results of a query, not some state updates done within
the programs, as commonly understood and in the context of the
specification. The Examiner’s claim interpretation of the state updates, on
the basis of the common meaning of terms in the light of the specification, is
overly broad, and has just gone a step too far. (See In re Suitco Surface, Inc,
cited above.) We find the references do not teach or suggest comparing the
state updates done within programs in a plurality of computers and then
further do not teach comparing digests of those states, as claimed.
As this argument erodes the bases for each of the four rejections, we
find error in the rejections of all claims. We do not find, nor has the
Examiner established, that any of the cited tertiary references overcome the
deficiencies of Fukuhara and Handbook.

Appeal 2009-007975
Application 10/392,698

8
CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has shown that the Examiner erred in rejecting claims 1 to 35
under rejections R1 to R4.

DECISION
We reverse the Examiner’s rejections R1 – R4 of claims 1 to 35.

REVERSED

peb