Ex Parte Chouanard et alDownload PDFPatent Trial and Appeal BoardJun 24, 201311209290 (P.T.A.B. Jun. 24, 2013) Copy Citation 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. 11/209,290 08/22/2005 Jean Chouanard SUN050916-US-NP (SUNM 050 3401 51344 7590 06/25/2013 BROOKS KUSHMAN P.C. /Oracle America/ SUN / STK 1000 TOWN CENTER, TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER MEANS, JAREN M ART UNIT PAPER NUMBER 2447 MAIL DATE DELIVERY MODE 06/25/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JEAN CHOUANARD, SWEE B. LIM, and MICHAEL J. WOOKEY ____________ Appeal 2011-001524 Application 11/209,290 Technology Center 2400 ____________ Before JEAN R. HOMERE, JEFFREY S. SMITH, and BARBARA A. BENOIT, Administrative Patent Judges. BENOIT, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the rejection of claims 1-7, 9, 10, and 14-16, which constitute all the claims pending in the application. Claims 8 and 11-13 have been canceled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2011-001524 Application 11/209,290 2 STATEMENT OF THE CASE Appellants’ invention relates to transport policies for documents transmitted from local storage to end points in a network. See generally Abstract. Claim 1 is illustrative and reads as follows, with key limitations emphasized: 1. A method for transmitting one or more documents from a local storage to one or more endpoints in a network including a plurality of connection offerings platforms (COP), each of the COPs being remote from the local storage and wherein the COPs may be utilized to provide one or more offerings and include at least one remote registry and at least one offlet supporting the corresponding offering, wherein the COPs are further distributed throughout the network, comprising: retrieving a transport policy from the remote registry included with a COP corresponding to an offering, the transport policy for transmission of the documents from the local storage to one or more end points, through a communication system accessible by the offering; and transmitting said documents from the local storage to the end points according to said transport policy. The Rejections The Examiner rejected claims 14-16 under 35 U.S.C. § 101 as directed to non-statutory subject matter. Ans. 4-5. The Examiner rejected claims 1-7, 9, 10, and 14-16 under 35 U.S.C. § 103(a) as unpatentable over Mohaban (US 6,463,470 B1; issued Oct. 8, 2002) and Robb (US 2003/0120502 Al; published June 26, 2003). Ans. 5- 21. THE NON-STATUTORY SUBJECT MATTER REJECTION Claims 14-16 are directed to “[a] computer-readable storage medium having stored thereon a set of computer-readable instructions.” In rejecting these claims as constituting non-statutory subject matter, the Examiner Appeal 2011-001524 Application 11/209,290 3 explains that the claims lack a non-transient or non-transitory computer readable memory or medium, which encompasses a signal. Ans. 5, 22. Appellants contend that the Examiner’s construction of the claim term “computer-readable storage medium” is overbroad in light of their Specification, which “enumerates media, all of which are physical objects.” App. Br. 9 (citing Spec. ¶ 0016). The Specification, however, also indicates that a computer-readable storage medium includes “any type of media suitable for storing electronic instructions.” Spec. ¶ 0016. Moreover, though Appellants assert an ordinarily skilled artisan would understand the claim to be directed at physical objects (App. Br. 9), Appellants have not provided persuasive evidence for their assertion. Thus, weighing Appellants’ argument against the Examiner’s findings that “any type of media suitable for storing electronic instructions” encompasses signals (Ans. 5, 22), we are not persuaded of Examiner error. Transitory signals are not statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Thus, on the record before us, we sustain the § 101 rejection of claims 14-16. THE OBVIOUSNESS REJECTION We agree with the Examiner’s position, with regard to illustrative claim 1, that Mohaban and Robb collectively teach all claim limitations. Ans. 6-11. The Examiner relies on Mohaban’s description of storing policies for policy-based management of network data traffic flows as teaching the recited “transport policies,” including “retrieving a transport policy from [a] remote registry [associated with] an offering” as recited in Appeal 2011-001524 Application 11/209,290 4 claim 1. Ans. 6-8. The Examiner relies on Robb’s description of an application infrastructure platform (AIP) as teaching the connection offerings platform (COP) recited in claim 1. Ans. 8-11. The Examiner provides reasons why an ordinarily skilled artisan would combine the relied- on teachings of the references. Ans. 11. Appellants argue that the combination of Mohaban and Robb does not teach or suggest “retrieving a transport policy from the remote registry included with a COP corresponding to an offering,” recited in claim 1. App. Br. 9; see generally App. Br. 10-15. First, Appellants argue that Mohaban does not teach or suggest the recited retrieving step because “the COP is remote from the local storage and wherein the COPs may be utilized to provide one or more offerings and include at least one remote registry.” App. Br. 10 (emphasis omitted). Appellants’ argument is not persuasive because it is inconsistent with the rejection, which relies on Robb’s teaching of a COP and does not rely on Mohaban for this teaching. Rather, the Examiner relies on Mohaban for teaching “retrieving a transport policy from [a] remote registry [associated with] an offering” as recited in claim 1. Ans. 6-7. In arguing the combination of Mohaban and Robb does not teach or suggest the retrieving step recited in claim 1, Appellants also contend that Robb does not teach or suggest “‘the COP is remote from the local storage and wherein the COPs may be utilized to provide one or more offerings and include at least one remote registry’ [w]herein that registry further provides [a] ‘transport protocol.’” App. Br. 10 (emphasis omitted). Here, too, Appellants’ argument is not persuasive because it is inconsistent with the Appeal 2011-001524 Application 11/209,290 5 rejection, which relies on Mohaban’s teaching of a transport protocol and relies on Robb for teaching the recited COP. Ans. 6-11. In essence, the Examiner relies on the collective teachings of Mohaban and Robb to teach and/or suggest “retrieving a transport policy from the remote registry included with a COP corresponding to an offering” recited in claim 1. Appellants’ arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and are therefore ineffective to rebut the Examiner’s prima facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is . . . what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). Appellants also contend that the Examiner improperly combined Mohaban and Robb. App. Br. 12-15. Appellants argue that Mohaban makes clear that policy information should be stored in a common location, not be distributed. App. Br. 13. Based on this, Appellants contend that, to meet the limitations of claim 1, the only application of Mohaban to Robb’s application infrastructure platform (which the Examiner equates to the claimed COP) would require the transport policies for all applications in the network to be stored in each AIP, even if AIPs were distributed. App. Br. 13. Appellants conclude that to combine the teachings requires the implementation of a completely different type of network. App. Br. 14. Appellants also argue that Robb and Mohaban teach different methods for handling transport protocols. App. Br. 14. Appellants further contend that the combination of Mohaban and Robb would add an unnecessary step of formatting to Robb’s application infrastructure platform. App. Br. 14. Appeal 2011-001524 Application 11/209,290 6 These arguments are not persuasive because Appellants’ arguments unduly focus on the specific structures present in the prior art and ignore the capabilities of the skilled artisan, who is also a person of ordinary creativity, not an automaton, and whose inferences and creative steps may be considered. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007). The test for obviousness is not whether the features of one reference may be bodily incorporated into the structure of the other reference. See Keller, F.2d at 425. Rather, as noted earlier, the test for obviousness is what the combined teachings of the references would have suggested to an ordinarily skilled artisan. Id. Appellants also contend that the Examiner’s combination is improper because the Examiner improperly selectively picked portions of elements of Mohaban and Robb using impermissible hindsight. App. Br. 15. Although the Examiner turns to various portions of Robb’s description of an application infrastructure platform and to Mohaban’s description of transport policies (Ans. 6-11) to teach the limitations of claim 1, the Examiner reasons: [I]t would have been obvious to one having ordinary skill in the art at the time the invention was made to utilize the teaching of Robb to the system of Mohaban in order to present services including application level services common to a plurality of providers that offer the common services to a plurality of users corresponding to the plurality of providers, the services being accessible via the network. Ans. 11. See also Robb, ¶ 9 (explaining the described “method includes presenting services including application level services common to a plurality of providers that offer the common services to a plurality of users Appeal 2011-001524 Application 11/209,290 7 corresponding to the plurality of providers, the services being accessible via the network”). We agree that the Examiner’s articulated reasons to combine Mohaban and Robb have some rational underpinning to justify the Examiner’s conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”); see also KSR, 550 U.S. at 418 (quoting same). We do not agree that the various portions relied-on by the Examiner indicate impermissible hindsight. See KSR, 550 U.S. at 420 (stating “[c]ommon sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle”). We, therefore, sustain the rejection of claims 1-7, 9, 10, and 14-16, which were not argued separately with particularity. See App. Br. 9, 12, 15. CONCLUSION The Examiner did not err in rejecting claims 14-16 under § 101 or in rejecting claims 1-7, 9, 10, and 14-16 under § 103. Appeal 2011-001524 Application 11/209,290 8 ORDER The Examiner’s decision rejecting claims 1-7, 9, 10, and 14-16 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). AFFIRMED msc Copy with citationCopy as parenthetical citation