Ex Parte Di Balsamo et alDownload PDFPatent Trial and Appeal BoardSep 29, 201612190968 (P.T.A.B. Sep. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/190,968 08/13/2008 87220 7590 09/29/2016 Walder Intellectual Property Law (END) C/O Walder Intellectual Property Law, P.C. 17304 Preston Road Suite 200 Dallas, TX 75252 FIRST NAMED INVENTOR Arcangelo Di Balsamo 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. FR920070076US 1 9859 EXAMINER WHEATON, BRADFORD F ART UNIT PAPER NUMBER 2197 MAILDATE DELIVERY MODE 09/29/2016 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 ARCANGELO Di BALSAMO, PIETRO IANNUCCI, FRANCO MOS SOTTO, and FRANCESCA LILIANA PASCERI Appeal2015-005318 Application 12/190,968 Technology Center 2100 Before ST. JOHN COURTENAY III, JOHN P. PINKERTON, and SCOTT E. BAIN, Administrative Patent Judges. BAIN, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-20, which constitute all claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify International Business Machines Corporation as the real party in interest. App. Br. 2. Appeal 2015-005318 Application 12/190,968 STATEMENT OF THE CASE The claimed invention relates to scheduling jobs in a data processing system, in response to rules and events. Spec. i-f 2. Claims 1, 9, and 16 are independent. Claim 1 is illustrative of the invention and reads as follows: 1. A method comprising: storing by a server, a plan, the plan defining a flow of execution of a set of jobs and defining workstations to execute the set of jobs; selecting, by the server, a plan target workstation to execute at least one job in the set of jobs; generating, by the server, a configuration archive for the plan target workstation, wherein the configuration archive defines configuration parameters for executing the at least one job on the plan target workstation; sending the configuration archive from the server to the plan target workstation, wherein the plan target workstation stores the configuration archive as a configuration file; submitting, by the server, the at least one job in the set of jobs to the selected plan target workstation, wherein the plan target workstation executes the at least one job based on configuration parameters in the configuration file; associating by the server, in an action plug-in database, actions with action plug-in modules; storing a rule, the rule defining a relationship between an event and a target action, the target action to be executed in response to the detected event; and responsive to detecting the event during execution of the at least one job on the plan target workstation, utilizing the rule associated with the detected event to facilitate execution of the target action on a selected action target workstation, wherein execution of the target action comprises invoking an action plug- in module associated with the target action using an agent at the selected action target workstation. Br. 18 (emphasis added). 2 Appeal 2015-005318 Application 12/190,968 THE REFERENCES AND REJECTIONS ON APPEAL Claims 9-15 stand rejected under pre-AIA 35 U.S.C. § 101 as being directed to non-statutory subject matter. Final Act. 4--5. Claims 1, 2, 6, 7, 9, 10, and 14 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hideshima (US 2007/0208781 Al; pub. Sept. 6, 2007), Masuoka (US 2004/0194107 Al; pub. Sept. 30, 2004) and Baba (US 2008/0055667 Al; pub. March 6, 2008). Final Act. 5-10. Claims 3 and 11 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hideshima, Masuoka, Baba, and Bharadwaj et al. (US 2004/0194077 Al; pub. Sept. 30, 2004) ("Bharadwaj"). Final Act. 10- 11. Claims 4, 5, 12, and 13 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hideshima, Masuoka, Baba, and Juneja (US 2010/0313194 i\.l; pub. Dec. 9, 2010). Final i~ .. ct. 11-13. Claims 8 and 15 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hideshima, Masuoka, Baba, and Klein et al. (US 7,603,494 B2; Oct. 13, 2009) ("Klein"). Final Act. 13. Claims 16-20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hideshima, Masuoka, Baba, and Benedetti, et al. (US 2007/0016907 Al; pub. Jan. 18, 2007) ("Benedetti"). Final Act. 14--16. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments presented in this appeal. Arguments which Appellants could have made, but did not make in the Briefs are deemed to be waived. See 3 7 3 Appeal 2015-005318 Application 12/190,968 C.F.R. § 41.37(c)(l)(iv). On this record, we are not persuaded the Examiner erred. We adopt as our own the findings and reasons set forth in the rejections from which this appeal is taken and in the Examiner's Answer, and highlight the following for emphasis. Rejection of Claims 9-15 Under 35 US.C. § 101 Claim 9 recites a "computer program product comprising a computer readable storage medium storing instructions that, when executed," cause a processor to perform various steps. App. Br. 20. The Examiner finds claim 9 (as well as dependent claims 10-15 incorporating the same limitation) directed to non-statutory subject matter because it covers "both transitory and non-transitory embodiments." Final Act. 5. Appellants argue the claim's recitation of a "storage" medium means it "cannot be interpreted to be a transitory embodiment." App. Br. 5. We disagree. A PT AB expanded panel has held that one of ordinary skill in the art would understand a "computer readable storage medium" to encompass both non-transitory and transitory media. See Ex parte Mewherter, 107 USPQ.2d 1857, 1860-63 (PTAB 2013) (precedential). When the broadest reasonable interpretation of a claim includes transitory propagating signals, the claim encompasses non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007). Because Appellants have not offered a persuasive reason that their claimed "computer readable storage medium" excludes transitory signals, we agree with the Examiner that claims 9-15 are directed to non-statutory subject matter. We therefore sustain the Examiner's rejection of claim 9-15 under 35 U.S.C. § 101. We note, however, the Office has indicated Appellants may overcome this rejection by amending the claims to include the limitation "non-transitory." Final Act. 5. 4 Appeal 2015-005318 Application 12/190,968 Rejection of Claims 1, 2, 6, 7, 9, 10, and 14 Under 35 US.C. § 103(a) Appellants argue the foregoing claims as a group, with claim 1 being representative of the group. See 37 C.F.R. § 41.37(c)(iv). Appellants contend the Examiner erred in finding the prior art teaches a "configuration archive defines configuration parameters for executing the at least one job on the plan target workstation," and "sending the configuration archive from the server to the plan target workstation." App. Br. 7-10; Reply Br. 3-5. The Examiner finds these limitations taught in Masuoka. Ans. 3. We agree with the Examiner's findings. Masuoka, like Appellants' invention, is directed to scheduling in a data processing system the execution of jobs according to policy rules. Masuoka Abs. As the Examiner finds, Masuoka teaches "configuration parameters" including condition list, action list, and event list, Ans. 3 (citing Masuoka i-fi-135-36), and storing the parameters as a configuration archive, Ans. 3 (citing Masuoka i-fi-13, 27). See also Final Act. 6 (citing Masuoka i1 66). Furthermore, as the Examiner finds, Masuoka teaches sending the configuration archive from an "administration computer" (server) to 'job execution computer" (workstation), as recited in the claim. Ans. 3; Masuoka i-fi-188-89; Figs. 9, 10. Appellants reply that Masuoka fails to teach "the job" and "the configuration archive" being "submitted separately." Reply Br. 4. As the Examiner, finds, however, the claim language includes no such requirement. Ans. 3. Appellants also argue the Examiner erred in finding a rationale to combine the references. App. Br. 10. Specifically, Appellants argue Baba solves the problem of plug-in management for "associating plug-ins with filters," and that Hideshima and Masuoka "do not present such a problem." 5 Appeal 2015-005318 Application 12/190,968 Id. We disagree. As the Examiner finds, Baba is directed to improving efficiency and reduction of workload in a data processing system, as are Hideshima and Masuoka. Ans. 3--4. Appellants' argument that the data processing in Baba is, specifically, image processing does not persuade us that one of ordinary skill would have "no motivation to look to the Baba reference" (App. Br. 10). See, e.g., Innovention Toys LLC v. MGA Entertainment Inc., 637 F.3d 1314, 1322-23 (Fed. Cir. 2011) (finding rationale to combine references that share the "same purpose," "goal," or "objective"). Moreover, Appellants have not provided persuasive evidence to show incorporating the "image processing" teachings of Baba into the "information [data] processing" teachings of Hideshima and Masuoka would have been "uniquely challenging or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418-19 (2007)). For the foregoing reasons, we sustain the rejection of independent claims 1, 2, 6, 7, 9, 10, and 14 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Hideshima, Masuoka, and Baba. Rejection of Claims 3 and 11 Under 35 US.C. § 103(a) Appellants argue the Examiner erred in finding Bharadwaj teaches "running an event detection module on the plan target workstation to detect an event," as recited in claims 3 and 11. App. Br. 11-12. We are not persuaded of error. As the Examiner finds, Bharadwaj 's paragraph 18 teaches running an "event detector 16" on the target workstation to "monitor" various "predetermined events." Ans. 4 (citing Bharadwaj i-fi-f 14, 18) (emphasis added). Moreover, the Examiner relies on the combination of 6 Appeal 2015-005318 Application 12/190,968 Bharadwaj and Masuoka, not Bharadwaj alone, as teaching the disputed limitation. Final Act. 11. Appellants' arguments regarding the alleged deficiencies of Bharadwaj alone, therefore, do not persuade us of error. See, e.g., In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Accordingly, we sustain the rejection of claims 3 and 11 under pre- AIA 35 U.S.C. § 103(a) as unpatentable over Hideshima, Masuoka, Baba, and Bharadwaj. Rejection of Claims 4, 5, 12, and 13 Under 35 US.C. § 103(a) Appellants argue the Examiner erred in finding the prior art teaches a "cyclic redundancy check value," as recited in claims 4 and 12 (and their dependent claims 5 and 13, respectively). App. Br. 13-14. The Examiner finds this teaching in the combination of Juneja with Hideshima, Masuoka, and Baba. Ans. 4--5. Specifically, the Examiner finds Juneja paragraph 35 teaches a data processing system using "a checksum algorithm such as a cyclic redundancy check (CRC) to ensure that data has not been corrupted." Id. (emphasis added). We discern no error in this finding. Appellants also argue, Reply Br. 6-7, that Juneja fails to cure the alleged deficiencies of Hideshima, Masuoka, and Baba with respect to the limitations of claims 1 and 9 (from which claims 4, 5, 12, and 13 depend) discussed above. But, for the reasons set forth above, we are not persuaded by this argument. Accordingly, we sustain the rejection of claims 4, 5, 12, and 13 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hideshima, Masuoka, Baba, and Juneja. 7 Appeal 2015-005318 Application 12/190,968 Rejection of Claims 8 and 15 Under 35 US.C. § 103(a) The Examiner cites the combination of Klein with Hideshima, Masuoka, and Baba, in rejecting dependent claims 8 and 15. Appellants argue Klein fails to cure the deficiencies of Hideshima, Masuoka, and Baba, as discussed above (in the context of independent claims 1 and 9). Because Appellants' arguments did not persuade us of error regarding the independent claims, we also sustain the rejection of claims 8 and 15 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hideshima, Masuoka, Baba, and Klein. Rejection of Claims 16-20 Under 35 US. C. § 103 (a) The Examiner cites the combination of Benedetti with Hideshima, Masuoka, and Baba, in rejecting dependent independent claim 16 and its dependent claims 17-20. Appellants argue these claims are "allowable for similar reasons" as independent claims 1 and 9, discussed above. App. Br. 15. Namely, Appellants argue Beneditti does not cure the deficiencies of Hideshima, Masuoka, and Baba, in that it does not teach "sending the configuration archive to the plan target workstation" as recited in claim 16. For the reasons discussed above (with respect to claims 1 and 9), however, we are not persuaded of error. Accordingly, we sustain the rejection of claims 16-20 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hideshima, Masuoka, Baba, and Benedetti 8 Appeal 2015-005318 Application 12/190,968 DECISION We affirm the Examiner's decision rejecting claims 1-20. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation