Ex Parte Doyle et al

Patent Trial and Appeal Board

Jun 28, 2013

11238615 (P.T.A.B. Jun. 28, 2013)

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.
11/238,615 09/29/2005 Ronald P. Doyle RSW9200501330US1
(215)
1022
46320 7590 06/28/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
MEANS, JAREN M
ART UNIT PAPER NUMBER
2447
MAIL DATE DELIVERY MODE
06/28/2013 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 RONALD P. DOYLE and DAVID L. KAMINSKY
____________

Appeal 2010-011959
Application 11/238,615
Technology Center 2400
____________

Before DENISE M. POTHIER, BRUCE R. WINSOR, and
BARBARA A. BENOIT, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Invention
Appellants’ invention relates to a data processing system for Quality
of Service (QoS)-based planning in Web Services aggregation. See
generally Abstract.
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Illustrative claim 1 is reproduced below:
1. A computer-implemented method for Quality of Service
(QoS) based planning in a Web services aggregation comprising:
measuring both the individual performance of Web services in an
aggregation of Web services and also the cumulative performance of
the aggregation of Web services; and,
modifying the aggregation of Web services responsive to the
measuring both of the individual performance of Web services in the
aggregation of Web services and also of the cumulative performance
of the aggregation of Web services.

The Examiner relies on the following as evidence of unpatentability:
Vaid US 6,502,131 B1 Dec. 31, 2002

The Rejections
Claims 7-11 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Ans. 4-6.
Claims 1-11 are rejected under 35 U.S.C. § 102(b) as anticipated by
Vaid. Ans. 7-14.

THE NON-STATUTORY SUBJECT MATTER REJECTION
Regarding illustrative independent claim 7, the Examiner finds that
the recited computer program product comprising a computer usable storage
medium includes a transitory medium, such as a propagating signal, which is
non-statutory subject matter. See Ans. 5. Appellants contend that claim 7
recites a computer usable storage medium having code stored thereon and is
statutory under § 101 according to In re Beauregard, 53 F.3d 1583 (Fed. Cir.
1995). See App. Br. 5-6. The issue before us is whether claim 7 is directed
to non-statutory subject matter under § 101?
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ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of independent claim 7. First, Appellants state that the “computer-
usable” medium includes “any apparatus that can contain, store,
communicate, propagate, or transport the program for use by or in
connection with the instruction execution system, apparatus, or device. The
medium can be an electronic, magnetic, optical, electromagnetic, infrared, or
semiconductor system (or apparatus or device) or a propagation medium.”
Spec. ¶ [0023] (emphases added). Thus, the disclosure includes a
propagation medium (e.g., a signal) as an example of a computer usable
medium.
Second, as broadly as recited, the “machine computer usable storage
medium having . . . code, stored thereon” fails to exclude a transitory
embodiment. That is, a propagation medium contains and stores code at
least temporarily thereon. Such claims have been found to be patent
ineligible. See In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) (finding
a signal with embedded data is not patent eligible under § 101); see also the
Manual of Patent Examining Procedure (MPEP) § 2106(II)(A) (8th ed. Rev.
9, August 2012). According to United States Patent and Trademark Office
(USPTO) guidelines, such claims must be amended to recite solely statutory
subject matter. See Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of independent claim 7 and claims 8-11 not
separately argued with particularity.

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THE ANTICIPATION REJECTION
Claims 1, 2, 4-8, 10, and 11
Regarding illustrative independent claim 1, the Examiner finds that
Vaid discloses Web services, including information sources as well as a
group of services (see Ans. 7, 16 (citing col. 15, ¶ 5)), monitoring
performance (e.g., bandwidth management tool measuring incoming and
outgoing information), and modifying services based the measurements
(e.g., controlling data flow and making network changes). See Ans. 7-8
(citing col. 9, ll. 22-35, col. 10, ll. 17-26, Abstract), 17 (citing col. 10, ¶ 3).
Appellants argue that Vaid fails to disclose Web services as recited
and as understood by an ordinarily skilled artisan. App. Br. 8-10.
Appellants further assert that Vaid is silent regarding the claimed Web
services, aggregation of Web services, and cumulative performance of the
aggregation. App. Br. 11. Lastly, Appellants contend that the cited passage
of Vaid is silent regarding the recited modifying the aggregation of Web
services step. App. Br. 12.

ISSUES
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Vaid discloses:
(1) measuring individual and cumulative performance of Web services
in an aggregation?
(2) modifying the aggregation of Web services responsive to the
measuring step?

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ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of independent claim 1. Given the disclosure (see Spec. ¶¶ [0001]-
[0005]), we agree that the recited phrase, “Web services,” has a particular
meaning to an ordinarily skilled artisan in the present field of art (e.g.,
distributed computing). Thus, while claims are given their broadest
reasonable construction, such construction must also be considered in light
of how the claimed terms would be interpreted by one of ordinary skill in the
art. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). That is, words of a claim are generally given the meaning that the
term would have to a person of ordinary skill in art. See Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc).
Both the Examiner and Appellants provide a definition for “Web
services.” See App. Br. 9; see Ans. 15. While the Examiner’s is directed
broadly to “service,” Appellants provide a specific definition for “Web
service.” Each definition includes a software system (see id.), and thus we
find that “a Web service” is a software system. Yet, we further find that
Appellants’ definition is more specific to “Web services” and more aligned
with the disclosure. As such, we accept Appellants’ meaning (i.e., “a
software system designed to support interoperable machine-to-machine
interaction over a network”) as an ordinary understanding of the term “Web
services.” See App. Br. 9 (citing the World Wide Web Consortium).
Based on this understanding, we find that Vaid discloses “Web
services.” The Examiner provides various examples of “Web services”
found in Vaid, including a group of services discussed in column 15. See
Ans. 16 (citing col. 15, ¶ 5). As the Examiner notes (Ans. 15), Vaid
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describes in Table 2 (col. 8, ll. 8-20) Web service requests are a category of
addressed applications. Vaid further discusses examples of applications,
such as email that use Simple Mail Transfer Protocol (SMTP), having
performance requirements. Col. 7, ll. 51-55. Both the Web services
discussed and email are software systems designed to support interoperable
machine-to-machine interaction over a network.
Second, the Examiner further explains Vaid discloses a service entity
that can be a single service or a group of services and that the present tool
can profile traffic based upon the detected services. Col. 15, ll. 37-38, 40-
42. Thus, even if the information sources and other discussed
telecommunication services are not Web services as understood by an
artisan (see App. Br. 9-10), the Examiner has not ignored the phrase, “Web
services” and discusses other examples in Vaid that address Web services.
Also, Vaid discusses the bandwidth management tool monitors or
measures performance, such as inbound and outbound traffic flow. See Ans.
16-17 (citing col. 11, ¶ 3, col. 10, ¶ 3). As an example, Vaid discloses in
Figure 9 monitoring traffic statistics for selected services or applications.
See col. 18, ll. 30-36; Fig. 9. This example includes individual performance
of a Web service (e.g., Kb Transferred for “SMTP”) and the cumulative
performance of an aggregation of Web services (e.g., Kb Transferred for
“All Services”). Thus, despite Appellants’ contentions (App. Br. 8-10),
Vaid discloses measuring an individual performance (e.g., Kb Transferred)
of a Web service and a cumulative performance of the aggregation of Web
services as recited.
Additionally, Appellants argue that Vaid does not perform the
modifying step. App. Br. 12. We disagree. Claim 1 broadly recites
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“modifying the aggregation of Web services” and does not claim in what
manner the aggregation is modified. As such, we find that, if a characteristic
of the aggregation is modified, this change reasonably reads on “modifying
the aggregation of Web services” as broadly as recited.
The Examiner notes (Ans. 7-8, 17) that Vaid discusses the bandwidth
management tool adapts to real changes on the network, including deploying
changes to match network growth or needs in an office and can be enforced
for a QoS policy for a critical service. See Ans. 17 (citing col. 10, ¶ 3); see
also col. 10, ll. 26-36, 50-63; Fig. 3. In these examples, the changes made
(e.g., adding bandwidth, matching network growth, and enforcing a QoS
policy for a critical service) will affect the aggregation’s characteristics (e.g.,
Kb transferred) and thus will modify the “aggregation of Web services” in
response to the measured performances as recited.
For the above-noted reasons, Appellants have not persuaded us of
error in the rejection of independent claim 1 and claims 2, 4-8, 10, and 11
not separately argued with particularity.

Claims 3 and 9
Claim 3 depends from claim 1. Unlike claim 1, claim 3 further recites
“the modifying of the aggregation of Web services” to include “changing an
order of invocation of the Web Services in the aggregation of Web services
to accommodate a measured performance deficiency for a single one of the
Web services in the aggregation.” The Examiner finds Vaid discloses this
limitation when discussing providing more orderliness to a network.
Ans. 10. The Examiner further finds Vaid discusses setting a priority order
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for bandwidth limiting and servicing traffic from a class. Ans. 18 (citing
col. 14, ¶ 10).
Among other arguments, Appellants assert Vaid’s higher priority
classes are not Web services as recited. App. Br. 13-14. The issue before us
is whether Vaid discloses modifying the aggregation Web services by
changing an order of invoking the Web services in the aggregation of Web
services under § 102?

ANALYSIS
Based on the record before us, we find that the Examiner erred in
rejecting claim 3 under § 102. First, we agree with Appellants that the
originally-cited column 5 fails to discuss modifying the aggregation of Web
services by changing an order of invocation of the Web services. See
Ans. 10. At best, this passage in Vaid discloses implementing policies to a
network to improve orderliness in event of network congestion, but fails to
specifically discuss modifying the aggregated Web services by changing an
invocation order of the Web services. See col. 5, ll. 1-7.
The Examiner seemingly agrees, because in the Response to
Argument section, new references are made to column 14, discussing setting
a priority order for bandwidth limiting or servicing traffic based on class.
See Ans. 18 (citing col. 14, ¶ 10). The Examiner’s position presumes that
each class represents a Web service. See id. However, the Examiner has not
explained how a traffic class is software designed to support interoperable
machine-to-machine interaction over a network. Moreover, the Examiner
has not demonstrated that each class necessarily is associated with a specific
Web service, such that each class is considered software designed to support
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interoperability of machines and thus each service is placed in a priority
order. Given the constraints under an anticipation rejection, we do not find
that Vaid’s disclosure to establish a priority order for different classes would
necessarily involve modifying an aggregation of Web services by changing
an invocation order of the Web services as recited.
For the foregoing reasons, Appellants have persuaded us of error in
the rejection of claim 3 and claim 9, which recites commensurate limitations.

CONCLUSION
The Examiner did not err in rejecting claims 7-11 under § 101.
The Examiner did not err in rejecting claims 1, 2, 4-8, 10, and 11
under § 102.
The Examiner erred in rejecting claims 3 and 9 under § 102.

DECISION
The Examiner’s decision rejecting claims 1, 2 and 4-11 is affirmed.
The Examiner’s decision rejecting claim 3 is reversed.
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-IN-PART

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