Ex Parte Childress et al

Patent Trials and Appeals Board

Jun 20, 2013

11264705 - (D) (P.T.A.B. Jun. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RHONDA L. CHILDRESS,
CATHERINE HELEN CRAWFORD,
DAVID BRUCE KUMHYR, NEIL R. PENNELL, and
CHRISTOPHER DANIEL REECH1
____________________

Appeal 2010-011110
Application 11/264,705
Technology Center 2400
____________________

Before JASON V. MORGAN, ERIC B. CHEN, and LARRY J. HUME,
Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-41, all pending claims in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is International Business Machines Corporation.
(App. Br. 2.)
Appeal 2010-011110
Application 11/264,705

2
STATEMENT OF THE CASE 2
The Invention
Appellants’ invention relates to a data processing system, computer
implemented method, and apparatus for processing data and, more
particularly, to capacity planning and resource availability notification on a
hosted grid. Spec. ¶ [0001] (“Field of the Invention”).
Exemplary Claims
Claims 1, 10, and 13 are exemplary claims representing aspects of the
invention which are reproduced below (emphases added):
1. A computer implemented method of dynamically
changing allocation policy in a host grid to support a local grid,
the computer implemented method comprising:
operating the host grid according to a set of allocation
policies, wherein the set of allocation policies correspond to a
predetermined resource allocation relationship between the
host grid and a local grid, wherein the host grid comprises at
least one host data processing system and wherein the host
data processing system has a set of resources, wherein the
local grid comprises at least one local data processing system,
and wherein the local grid is connected to the host grid via a
network;
based on the set of allocation policies, allocating at least
one resource on the host grid to the local grid; and

2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
Oct. 1, 2009); Supplemental Appeal Brief (“Supp. App. Br.” filed
Jan. 13, 2010); Examiner’s Answer (“Ans.,” mailed Apr. 14, 2010);
Miscellaneous Communication to Applicant (“Misc. Comm.” mailed
Apr. 22, 2010); Final Office Action (“FOA,” mailed Jul. 8, 2009); and the
original Specification (“Spec.,” filed Nov. 1, 2005).
Appeal 2010-011110
Application 11/264,705

3
using a monitoring agent to monitor one of the local
grid and both the local grid and the host grid for a change in
a parameter, wherein the change in the parameter indicates a
more optimal resource allocation which would violate the set
of allocation policies.

10. A method in a data processing environment, said
method comprising:
monitoring a parameter in a local grid;
responsive to a change in the parameter, predicting a
configuration that the local grid could request of a host grid,
wherein data representing a predicted configuration is
generated;
transmitting the data to the host grid; and
responsive to the data, offering a customer a new
contract to utilize the host grid.

13. A computer program product comprising:
a computer usable storage medium operable by a data
processing system for dynamically changing allocation policy
in a host grid to support a local grid, said computer program
product including:
computer usable program code for operating the host grid
according to a set of allocation policies, wherein the set of
allocation policies correspond to a predetermined resource
allocation relationship between the host grid and a local grid,
wherein the host grid comprises at least one data processing
system and wherein the host data processing system has a set of
resources, wherein the local grid comprises at least one data
processing system, and wherein the local grid is connected to
the host grid via a network;
Appeal 2010-011110
Application 11/264,705

4
computer useable program code for, based on the set of
allocation policies, allocating at least one resource on the host
grid to the local grid; and
computer usable program code for using a monitoring
agent to monitor one of the local grid and both the local grid
and the host grid for a change in a parameter, wherein the
change in the parameter indicates a more optimal resource
allocation which would violate the set of allocation policies.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Birkestrand US 2005/0044228 A1 Feb. 24, 2005
Martins US 2005/0125537 A1 June 9, 2005
Dan US 2005/0165925 A1 Jul. 28, 2005
Rejections on Appeal3
1. Claims 13-24 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 1-7, 13-19, 25-31, and 37-38 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Martins.

3 We note that the Examiner incorrectly stated the statutory basis for the
rejections of claims 9-12, 21-24, 33-36, and 39-41, and claims 8, 20, and 32
as being anticipated under 35 U.S.C. § 102(e) over the various combinations
of references cited (Ans. 21 and 36), but the Examiner subsequently
corrected the stated bases for rejection to 35 U.S.C. § 103(a) for these
claims. Misc. Comm. 1.
Appeal 2010-011110
Application 11/264,705

5
3. Claims 9-12, 21-24, 33-36, and 39-41 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Martins and
Birkestrand.
4. Claims 8, 20, and 32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Martins, Birkestrand, and Dan.
ISSUES AND ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions with respect to the claims on appeal, and 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 and rebuttals set forth by the
Examiner in the Examiner’s Answer in response to Appellants’ Arguments.
However, we highlight and address specific findings and arguments
regarding claims 1, 10, and 13 for emphasis as follows.
1. Non-Statutory Subject Matter Rejection of Claims 13-24
Appellants argue (App. Br. 12) that the Examiner’s non-statutory
subject matter rejection of claim 13 under 35 U.S.C. § 101 is in error. These
contentions present us with the following issue:
Issue 1
Did the Examiner err in finding that Appellants’ recitation in claim 13
of “computer usable storage medium” can be interpreted as including
transitory propagating signals?
Appeal 2010-011110
Application 11/264,705

6
Analysis
Appellants’ Specification states “[t]he medium can be an electronic,
magnetic, optical, electromagnetic, infrared, or semiconductor system (or
apparatus or device) or a propagation medium.” Spec. ¶ [0077].
We agree with the Examiner’s findings and conclusions (Ans. 3-4).
Signals are unpatentable under § 101. In re Nuijten, 500 F.3d 1346, 1355
(Fed. Cir. 2007). According to U.S. Patent & Trademark Office (USPTO)
guidelines:
The broadest reasonable interpretation of a claim drawn to a
computer readable medium . . . typically covers forms of non-
transitory tangible media and transitory propagating signals per
se in view of the ordinary and customary meaning of computer
readable media, particularly when the specification is silent.
When the broadest reasonable interpretation of a claim covers a
signal per se, the claim must be rejected under 35 U.S.C. § 101
as covering non-statutory subject matter.
David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (“OG Notice”) (citation
omitted), available at http://www.uspto.gov/web/offices/com/sol/og/2010/
week08/TOC.htm#ref20.
Independent claim 13 recites “computer program product comprising:
a computer usable storage medium operable by a data processing system
. . . .” Appellants emphasize that claim 13 “recites a ‘storage medium’ and
not merely a ‘medium’.” App. Br. 12. However, the Specification does not
provide a definition of a “storage medium” that excludes transitory media.4

4 See Ex parte Mewherter, Appeal No. 2012-007692 (PTAB May 08, 2013),
wherein an expanded panel dealt with the same issue involving the same real
party in interest.
Appeal 2010-011110
Application 11/264,705

7
Thus, we find that claim 13 encompasses the computer program product
being embodied on a carrier wave, since claim 13 does not preclude the
computer program product from being embodied in a carrier wave. A signal
(i.e., a computer program product embodied in a carrier wave) does not fit
within at least one of the four statutory subject matter categories under 35
U.S.C. § 101. In re Nuijten, 500 F.3d at 1357. Since claim 13, as we have
construed it above, encompasses a propagating, transitory signal, we find
claim 13 is directed to non-statutory subject matter. Dependent claims 14-
21, and claims 22-24 are also directed toward non-statutory subject matter
for the same reasons discussed supra.
Therefore, the Examiner did not err in rejecting claims 13-24 under
35 U.S.C. § 101 as being directed toward non-statutory subject matter, and
we sustain the rejection.
2. Anticipation Rejection of Claims 1-7, 13-19, 25-31, and 37-38
Appellants argue (App. Br. 13-16) that the Examiner’s rejection of
claim 1 under 35 U.S.C. § 102(e) as being anticipated by Martins is in error.
These contentions present us with the following issue:
Issue 2
Did the Examiner err in finding that Martins discloses each limitation
of claim 1?
Appeal 2010-011110
Application 11/264,705

8
Analysis
Appellants first contend that Martins does not disclose allocating a
host grid resource to a local grid, but instead, one host transfers
excess/overflow workflow to another host. App. Br. 14.
In response, the Examiner finds that the word “local” means a device
accessed directly rather than through a communications line, or an operation
performed by a “computer at hand” rather than by a remote computer.
Ans. 38 (citing Microsoft Computer Dictionary, Fifth Edition, Published by
Microsoft Press, 2000.). In light of this definition, unrebutted by Appellants,
the Examiner finds that,
“Host 105” in fig. 1 is interpreted by the Examiner to be the
local grid and “Hosts 110, 115, 120, 125” in fig. 1 is interpreted
to be the host grid because access [by] any of the “Hosts 110,
115,120, 125” in fig. 1 from “Host 105” requires communicating
via the “grid network, 100” in fig. 1.”
Ans. 38 (citing Martins Fig. 1).
We find the Examiner’s interpretation of the recitation in claim 1 of
“wherein the local grid is connected to the host grid via a network,” cited
above, to be reasonable, particularly without any rebuttal evidence or
argument being presented by Appellants.
Appellants further contend that Martins does not disclose monitoring
for a change in a parameter, wherein the change in the parameter indicates a
more optimal resource allocation. Instead, Appellants argue that Martins
discloses monitoring to determine whether any policy has been violated, but
does not disclose a parameter change that indicates a more optimal resource
Appeal 2010-011110
Application 11/264,705

9
allocation. Appellants further allege that Martins’ disclosure of determining
whether a policy has been violated does not teach a parameter change that
indicates a more optimal resource allocation that would violate the set of
allocation policies, as variously claimed, since Martins allegedly does not
mention any type of optimal resource allocation. Appellants therefore
conclude that Martins does not disclose a parameter change that indicates a
more optimal resource allocation. App. Br. 15.
In response, the Examiner finds that Martins discloses when a local
user utilization of a given host grows (i.e., changes) to the extent that it
would preclude timely execution of the grid workload (i.e., an example of a
parameter) on Grid VM 200, resources Module 275 may detect the condition
and seek an alternative host on Grid Network 100 having sufficient
resources available to execute the increased grid workload. Ans. 40 (citing
Martins ¶ [0019] and Fig. 2 (i.e., User VM 205 on Host 105, Grid VM 200,
resources Module 275)). Further,
The Examiner equates the parameter change to be the workload
growth on Host 105 (i.e. local grid) of fig. 2. Martins also
discloses . . . where Resource Module 275 may additionally
include predefined policies . . . predefined policy restrictions
include . . . restricting the hosts (i.e. host grids) on the Grid
Network 100 that Grid VM 200 may contact.” The fact that
predefined policy restricts the hosts on the grid network that the
local grid may contact suggests that the local host could contact
more hosts than is allowed in order to achieve a more optimal
resource allocation, however this would be a violation of the
predefined policy.
Ans. 41 (citing Martins ¶ [0018] and Fig. 2).
Appeal 2010-011110
Application 11/264,705

10
We agree with the Examiner’s findings cited above that Martins’
disclosure meets the claim limitation in dispute of “using a monitoring agent
to monitor one of the local grid and both the local grid and the host grid for a
change in a parameter, wherein the change in the parameter indicates a more
optimal resource allocation which would violate the set of allocation
policies,” as recited in claim 1.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s
characterization of the cited art and related claim construction. Therefore,
we sustain the Examiner’s anticipation rejection of independent claim 1. As
Appellants have not provided separate, substantive arguments with respect
to independent claims 13, 25, and 37, which turn on the same dispositive
issues as claim 1, discussed supra, we similarly sustain the Examiner’s
rejection of these claims under 35 U.S.C. § 102(e).
Further, while Appellants raised additional arguments for patentability
of various dependent claims 2-7, 14-19, 26-31, and 38 (App. Br. 16-23),
rejected on the same basis as claim 1, we find that the Examiner has rebutted
each of those arguments in the Answer by a preponderance of the evidence.
Ans. 41-44. Therefore, we adopt the Examiner’s findings and underlying
reasoning, which we incorporate herein by reference. Consequently, we are
not persuaded of any reversible error in the Examiner’s rejections of claims
2-7, 14-19, 26-31, and 38.
Appeal 2010-011110
Application 11/264,705

11
3. Unpatentability Rejection of Claims 8-12, 20-24, 32-36, and 39-41
Appellants argue (App. Br. 25-28) that the Examiner’s unpatentability
rejection of claim 10 under 35 U.S.C. § 103(a) over the combination of
Martins and Birkestrand is in error. These contentions present us with the
following issue:
Issue 3
Did the Examiner err in finding that the combination of Martins and
Birkestrand teaches or suggests all the limitations of claim 10, including,
inter alia, the steps of “responsive to a change in the parameter, predicting a
configuration that the local grid could request of a host grid, wherein data
representing a predicted configuration is generated,” and “transmitting the
data to the host grid; and responsive to the data, offering a customer a new
contract to utilize the host grid,” as recited in claim 10?
Analysis
Appellants asserts that Martins teaches load balancing, shifting a
workload, detecting a growing local user utilization, seeking an alternative
host with available resources, suspending local execution of a workload,
transferring the workload to a new host, and resuming execution at the new
host. App. Br. 26 (citing Martins ¶ [0019]). Appellants contend that none of
these actions taught by Martins are directed to any type of “prediction”
regarding a configuration that the local grid could request of a host grid
because Martins does not teach any type of configuration request between a
local grid and host grid, whether it be predicted or actual. App. Br. 26.
Instead, Appellants contend that Martins describes a situation where
Appeal 2010-011110
Application 11/264,705

12
workload at the local host is suspended, and the work is transferred to
another host as a part of load-balancing. Id.
In response to Appellants’ contentions, the Examiner finds that
Martins teaches or suggests the limitation in dispute, because Martins
teaches “as is typical in a grid network . . . [a] large simulation may be
executed utilizing the resources from various hosts on the network.”
Ans. 46 (citing Martins ¶ [0012]). In this analysis, “[t]he Examiner equates
the execution (i.e. request) of [a] large simulation utilizing the resources
from various hosts (i.e. configuration) to be the ‘predicting a
configuration.’” Ans. 46. We agree with the Examiner’s findings in this
regard, unrebutted by Appellants, because Martins teaches (Martins
¶ [0017]) that the host resource allocation to a Grid VM can be changed
dynamically, which we find implies that the requested local grid
configuration would be predicted or known ahead of time in order to change
the resource allocation, i.e., “Resource Module 275 may be configured to
monitor and dynamically change the resource allocation to Grid VM 200.”
Id.
Appellants further contend that, with respect to the limitation of
“transmitting the data to the host grid; and responsive to the data, offering a
customer a new contract to utilize the host grid,” the cited art does not teach
or suggest either transmitting generated data to a host grid representing a
predicted configuration, or offering a new contract in response to such
purportedly missing data. App. Br. 26-27.
In response, the Examiner finds that Birkestrand teaches “the client
has the opportunity to contract for resources (i.e. contract) to handle peak
Appeal 2010-011110
Application 11/264,705

13
seasonal needs from [a] host service provider (i.e. host grid) with highly
flexible resource capacity . . . [such that] Martins in combination [with]
Birkestrand do suggest these limitations.” Ans. 47 (citing Birkestrand
¶ [0029]). We agree with the Examiner’s findings in this regard, unrebutted
by Appellants, because we find that Birkestrand teaches that a combination
of the grid resources and on-demand resources is desirable because it offers
the host service provider with flexible resource capacity, as well as offering
clients the opportunity to contract for additional resources during a peak
season, while contracting underutilized resources back to the host service
provider during periods of reduced activity. Birkestrand ¶ [0029]. We find
that having the ability to contract for either additional or reduced services
depending on workload meets the limitation of “responsive to the data,
offering a customer a new contract to utilize the host grid,” as recited in
claim 10.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s
characterization of the cited art and related claim construction. Therefore,
we sustain the Examiner’s obviousness rejection of independent claim 10.
As Appellants have not provided separate, substantive arguments with
respect to independent claims 22, 34, and 40, which turn on the same
dispositive issues as claim 10, discussed supra, we similarly sustain the
Examiner’s rejection of these claims under 35 U.S.C. § 103(a).
Further, while Appellants raised additional arguments for patentability
of dependent claims 9, 11, 12, 21, 23, 24, 33, 35, 36, 39, and 41, rejected on
the same basis as claim 10 (App. Br. 24-25, 28-30, and 32-33), we find that
Appeal 2010-011110
Application 11/264,705

14
the Examiner has rebutted each of those arguments in the Answer by a
preponderance of the evidence. Ans. 44-50. Therefore, we adopt the
Examiner’s findings and underlying reasoning, which we incorporate herein
by reference. Consequently, we have found no reversible error in the
Examiner’s rejections of claims 9-12, 21-24, 33-36, and 39-41.
Finally, Appellants raised additional arguments for patentability of
dependent claims 8, 20, 32, rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Martins, Birkestrand, and Dan. App.
Br. 33-34. We find that the Examiner has rebutted each of those arguments
in the Answer by a preponderance of the evidence. Ans. 50. Therefore, we
adopt the Examiner’s findings and underlying reasoning, which we
incorporate herein by reference. Consequently, we have found no reversible
error in the Examiner’s rejections of claims 8, 20, and 32.
CONCLUSIONS
(1) The Examiner did not err with respect to the statutory subject
matter rejection of claims 13-24, and we sustain the rejection.
(2) The Examiner did not err with respect to the anticipation
rejection of claims 1-7, 13-19, 25-31, and 37-38, and we sustain the
rejection.
(3) The Examiner did not err with respect to the various
unpatentability rejections of claims 8-12, 20-24, 32-36, and 39-41, and we
sustain the rejections.
Appeal 2010-011110
Application 11/264,705

15
DECISION
The decision of the Examiner to reject claims 1-41 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)(1)(iv) (2011).
AFFIRMED

tj