Ex Parte Fatula

Board of Patent Appeals and Interferences

Sep 8, 2010

10735938 (B.P.A.I. Sep. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH JOHN FATULA, JR.
____________

Appeal 2009-007432
Application 10/735,938
Technology Center 2400
____________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and DEBRA
K. STEPHENS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL 1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-007432
Application 10/735,938

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1-9, and 20-35. Claims 10-19 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
Invention
An apparatus, system, and method are disclosed for
autonomic management of data operations and performance
resources on a grid computing system. An autonomic
management apparatus includes a monitor module, a policy
module, and a regulation module. The monitor module is
configured to monitor the grid computing system for a trigger
event. The policy module is configured to access one of a
plurality of system policies. Each of the plurality of system
policies corresponds to an operational control parameter of a
system resource of the grid computing system. The regulation
module is configured to autonomically regulate the system
resource in response to a recognized trigger event according to
one of the plurality of system policies. The trigger event may
be a prediction trigger event, an initiation trigger event, a
regulation trigger event, or a termination trigger event.
(Abstract, Spec. 33; see also Figs. 3-7).
Representative Claim
20. A method for autonomic management of system resources
on a grid computing system, the method comprising:

monitoring the grid computing system for a trigger event;

accessing one of a plurality of system policies, each of
the plurality of system policies corresponding to an operational
control parameter of a system resource of the grid computing
system, wherein the plurality of system policies comprises a
system prediction policy; and

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Application 10/735,938

regulating the system resource in response to a
recognized trigger event according to one of the plurality of
system policies.

Prior Art and the Examiner’s Rejections
The Examiner relies on the following references as evidence of
unpatentability:
Chase, Dynamic Virtual Clusters in a Grid Site Manager, Proceedings
of the 12th IEEE International Symposium on High Performance
Distributed Computing (HPDC ’03) 90-100, (June 22, 2003).

Fu, Sharp: An Architecture for Secure Resource Peering, Proceedings
of the 19th ACM Symposium on Operating System Principles
(SOSP’03) 133-148, (Oct. 19, 2003)

All claims on appeal, claims 1-9, and 20-35, stand rejected under 35
U.S.C. § 103. As evidence of obviousness the Examiner relies on Chase in
view of Fu.
ANALYSIS
We vacate the prior art rejection encompassing all claims on appeal
because we conclude that all claims on appeal, claims 1-9, and 20-35, are
“barred at the threshold by § 101.” In re Comiskey, 554 F.3d 967, 973 (Fed.
Cir. 2009) (citing Diamond v. Diehr, 450 U.S. 175, 188 (1981)). Therefore,
the following new ground of rejection is set forth in this Opinion within the
provisions of 37 C.F.R. § 41.50(b).
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Appeal 2009-007432
Application 10/735,938

NEW REJECTION UNDER 35 U.S.C. § 101
PRINCIPLES OF LAW
Statutory Subject Matter
The subject matter of claims permitted within 35 U.S.C. § 101 must
be a machine, a manufacture, a process, or a composition of matter.
Moreover, our reviewing court has stated that “[t]he four categories [of
§ 101] together describe the exclusive reach of patentable subject matter. If
a claim covers material not found in any of the four statutory categories, that
claim falls outside the plainly expressed scope of § 101 even if the subject
matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1354
(Fed. Cir. 2007); accord In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009).
This latter case held that claims directed to a “paradigm” are nonstatutory
under 35 U.S.C. § 101 as representing an abstract idea. Thus, a “signal”
cannot be patentable subject matter because it is not within any of the four
categories. In re Nuijten, 500 F.3d at 1357. Laws of nature, abstract ideas,
and natural phenomena are excluded from patent protection. Diamond v.
Diehr, 450 U.S. at 185. A claim that recites no more than software, logic or
a data structure (i.e., an abstraction) does not fall within any statutory
category. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994).
Significantly, “[a]bstract software code is an idea without physical
embodiment.” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
The unpatentability of abstract ideas was reaffirmed by the U.S. Supreme
Court in Bilski v. Kappos, 130 S.Ct. 3218 (2010).
With this background in mind, all claims on appeal, 1-9, and 20-35,
are rejected under 35 U.S.C. §101 as being directed to non-statutory subject
matter.
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Appeal 2009-007432
Application 10/735,938

Consistent with our earlier-noted invention statement taken from
Appellant’s Abstract of the disclosure, the disclosed and claimed invention
is directed to software per se, abstract ideas, abstract concepts and
methodologies and the like, including various data structures and named
entities, such as various labeled modules and various functionalities
associated therewith, software, software applications, and abstract
intellectual processes associated with them within the claims on appeal.
As set forth in the second sentence of the abstract of Appellant’s
disclosure reproduced in our invention statement, the claimed autonomic
management apparatus is comprised of computer software-based modules
which are directly claimed in the body of apparatus independent claim 1 on
appeal and in a corresponding means plus function manner in the body of
independent claim 30. The functionality is in turn reflected in flow chart
Figures 5-7. It is significant to note that the depiction of the global
autonomic management apparatus 312 in Figure 3 is illustrated to comprise
only modules and, correspondingly, a client version of the management of
such an autonomic management apparatus is depicted in Figure 4 in the
same manner. Thus, no true apparatus in a hardware sense is disclosed to
embody the recited autonomic management apparatus in the preamble of the
claims on appeal that purport to recite apparatus, such as independent claims
1 and 30 on appeal.
These views with respect to these claims are buttressed by the
following paragraphs reproduced from Appellant’s Specification as filed:
Modules may also be implemented in software for
execution by various types of processors. An identified module
of executable code may, for instance, comprise one or more
physical or logical blocks of computer instructions which may,
for instance, be organized as an object, procedure, or function.
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Nevertheless, the executables of an identified module need not
be physically located together, but may comprise disparate
instructions stored in different locations which, when joined
logically together, comprise the module and achieve the stated
purpose for the module.
Indeed, a module of executable code could be a single
instruction, or many instructions, and may even be distributed
over several different code segments, among different
programs, and across several memory devices. Similarly,
operational data may be identified and illustrated herein within
modules, and may be embodied in any suitable form and
organized within any suitable type of data structure. The
operational data may be collected as a single data set, or may be
distributed over different locations including over different
storage devices, over disparate memory devices, and may exist,
at least partially, merely as electronic signals on a system or
network.
(Spec. 7, ¶¶ [0026] and [0027]).
The reader will thus appreciate that the claimed modules within
independent claim 1 and the correspondingly recited means in independent
claim 30 are directed to software instructions, software per se and the like.
The functionalities are reflected in a direct manner associated with the logic
processes associated with these modules in method independent claims 20
and 23 on appeal that also appear to correspond to some of the functionality
depicted in flow charts Figures 5-7.
As a separate matter, the preamble of independent claim 24 states that
the recited computer readable storage medium “comprises” computer
readable code per se consistent with the methodologies set forth in method
independent claim 20, for example. Significantly, the last sentence within
Specification paragraph [0027] that we reproduced earlier indicates that this
medium is intended to comprise electronic signals per se. Media that
include and encompass signals per se are proscribed by the earlier-noted
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case law. Note also the analysis provided by Subject Matter of Eligibility of
Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).

CONCLUSION AND DECISION
We have pro forma vacated the outstanding rejection over applied
prior art of all claims on appeal, claims 1-9, and 20-35. We have instituted a
new ground of rejection within 37 C.F.R. § 41.50(b). This new rejection of
all claims on appeal is based upon 35 U.S.C. § 101 since these claims are
directed to non-statutory subject matter.
A new ground of rejection is pursuant to 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that: “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 C.F.R. § 1.197(b)) as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be
reheard under 37 C.F.R. § 41.52 by the Board upon the same
record . . . .

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Appeal 2009-007432
Application 10/735,938

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).

VACATED; 37 C.F.R. § 41.50(b)

peb

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