Ex Parte Gale et al

Patent Trial and Appeal Board

Jun 28, 2013

11306128 (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.
11/306,128 12/16/2005 Martin J. Gale GB920040113US1 1127
75949 7590 07/01/2013
IBM CORPORATION
C/O: VanCott Bagley, Cornwall & McCarthy
36 South State Street
Suite 1900
Salt Lake City, UT 84111
EXAMINER
LEIBOVICH, YAIR
ART UNIT PAPER NUMBER
2114
MAIL DATE DELIVERY MODE
07/01/2013 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 MARTIN J. GALE, ALEXANDER CRAIG FILSHIE
RUSSELL, and GRAHAM WHITE
____________________

Appeal 2010-011898
Application 11/306,128
Technology Center 2100
____________________

Before: CAROLYN D. THOMAS, KALYAN K. DESHPANDE, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011898
Application 11/306,128

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-5, 7, 9-12, 14, 17, 18, and 201. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

The claims are directed to diagnostics for remote computer systems.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A diagnostic system for use in an environment having a
remote computer system, components of said diagnostic system
being resident on one or more computer systems, said
diagnostic system comprising:
an error detection component for detecting errors
associated with the remote computer system;
a storage component for storing at least one computer
program for performing at least one diagnostic in response to an
error associated with the remote computer system;
a search component, responsive to a first error being
detected by said error detection component, for searching the
storage component for a first computer program associated with
the first error;
a presentation component for presenting a first option to
an administrator, wherein the first option is associated with
selection of the first computer program; and
an execution component, responsive to receiving a first
input from the administrator associated with a selection of the
first computer program, for executing the first computer
program on the remote computer system.

1 Claims 15 and 16 are canceled; claims 6, 8, 13, 19, 21, and 22 are objected
to but would be allowable if rewritten in independent form.
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Application 11/306,128

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sarangam US 7,206,833 Apr. 17, 2007
Ansari US 2004/0153823 A1 Aug. 5, 2004

REJECTIONS
The Examiner made the following rejections:
Claims 1-5, 10, 11, 14, 17, 18, and 20 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Ansari. Ans. 4.
Claims 7, 9, and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ansari and Sarangam. Ans. 7.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions as to all rejections. 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 set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the
conclusions reached by the Examiner. For emphasis, we address
Appellants’ arguments seriatim as they are presented in the Appeal Brief,
pages 5-12.

Appeal 2010-011898
Application 11/306,128

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Rejections under 35 U.S.C. § 102(b)
Claim 1
Appellants contend that Ansari fails to disclose the error detection
component of claims 1. App. Br. 12, In particular, Appellants argue that
Ansari’s ADSH server engine 116 mediates fault detection and works to
resolve the error by identifying a solution to the error but does not detect the
error. App. Br. 11-12. The Examiner responds that Ansari describes that
client 102 and ADSH server engine 116 cooperate to monitor for software
faults, finding that monitoring for faults is detecting. Ans. 9 citing Ansari
[0015] ll. 1-3. We agree with the Examiner.
Appellants’ disclose error detection component 120 as corresponding
to the disputed claim language. App. Br. 6. Appellants’ Specification
describes that “the error detection component (120) monitors one or more
components (e.g. a service, a process … etc.) on the first computer system
(150).” Spec. [0029]. As Appellants’ Specification discloses that the
disputed error detection component performs monitoring, we agree with the
Examiner’s finding that monitoring for software faults performed, at least in
part, by Ansari’s ADSH discloses an error detection component for detecting
errors associated with the remote computer system. Therefore, in the
absence of sufficient evidence or argument to persuade us of reversible
Examiner error, we sustain the rejection of claim 1 and of claim 10 not
separately argued.

Claim 2
Appellants contend that Ansari fails to disclose “wherein the
administrator is a creator of the first program.” App. Br. 13. In particular
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Appellants argue that the activation criteria 132 are rules defining error
thresholds to be exceeded to trigger ADSH action and, as such, “cannot be
reasonably interpreted as an ‘administrator’ which is ‘a creator of a first
computer program.’” Id. The Examiner explains that Ansari’s activation [of
ADSH functionality] creates an instance of software execution and thus
discloses creation of the program. We agree with the Examiner. In
particular, Appellants’ Specification does not define administrator. Thus, a
broad interpretation of administrator includes that which performs the
administrative function as defined by the claim, in this case, providing a first
input associated with a selection of the first computer program (claim 1) and
is a creator of the first computer program (claim 2). Because Appellants’
have failed to provide sufficient evidence or argument controverting the
Examiner’s finding that Ansari’s activation criteria corresponding to block
132 is not a creator of the first computer program by virtue of functioning to
activate the software, we find Appellants’ contention unpersuasive of
Examiner error. Furthermore, we note that the administrator recited by claim
1 is not positively claimed, i.e., is not a required component of the claimed
diagnostic system. Thus, functionality performed by the administrator does
not affect the structure of the claimed system and therefore is not entitled to
patentable weight. Thus, Appellants’ contention is not persuasive of
Examiner error and we sustain the rejection of claim 2.

Claim 3
Appellants contend that Ansari fails to disclose status data associated
with the availability of the administrator. The Examiner responds that
Ansari’s ADSH server determines whether the application is eligible for
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support and, if not, communicates a message to client 102 indicating that
automatic diagnostic support is not available. Ans. 5, 10-11. The Examiner
further finds that the “administrator” can be an automated service and that
the data must be stored somewhere to be available to be read, thereby
disclosing storing the claimed data. We agree with the Examiner. That is,
broadly interpreting the administrator to be the automated service of
providing automatic diagnostic support, Ansari’s indication that diagnostic
support is not available discloses status data associated with availability of
the administrator. Therefore, in the absence of sufficient evidence or
argument that the administrator of claim 3 is distinguishable from the
diagnostic support of Ansari, Appellants’ contention of error is not
persuasive and we sustain the rejection of claim 3.

Claim 4
Appellants contend that Ansari fails to teach or suggest “any type of
‘identifier associated with the first error’ which is included ‘error data.’”
App. Br. 15. In particular, Appellants argue that Ansari’s machine state
image is not conditioned on the occurrence of an error and may not contain
any type of error. The Examiner responds, although not conditioned on the
occurrence of an error, the image is created for the purpose of error data
once an error is detected. Therefore, the Examiner finds that Ansari’s
machine state image discloses the claimed error data. Since the machine
state identifies the source or sources of an existing execution fault (Ansari
[0017]), Ansari discloses an identifier associated with the first error.
Therefore, we agree with the Examiner that Ansari discloses the disputed
limitations and sustain the rejection of claim 4. We further point out that the
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limitation “identifier associated with the first error” encompasses any title,
code, or description that identifies an error. As such, Ansari’s error types,
such as “application crashes, operating system faults, memory leaks/other
memory faults, driver faults, etc.,” describe an identifier associated with an
error. Ansari Fig. 3.

Claim 5
Appellants contend that Ansari fails to teach or suggest “a checking
component for checking the status data in order to determine whether the
administrator is available.” App. Br. 16. We find this contention to be
unpersuasive of error for the reasons discussed supra in connection with
claim 3 and sustain the rejection of claim 5 for the same reasons.

Claim 11
Appellants contend that Ansari fails to teach or suggest the limitations
of claim 11. App. Br. 11. In particular, Appellants argue that Ansari’s
teaching of inhibiting fixes until some threshold number of faults have
occurred does not teach or suggest the re-execution of the first computer
program in response to unsuccessful diagnostics. Id. The Examiner explains
that when a fault reoccurs, the same portion of software code causing the
fault has been re-executed (Ans. 12), that process being performed
repeatedly until the fault is eliminated (see Ansari [0004] describing
attempting fixes). Therefore, if the first computer program “unsuccessfully”
performs diagnostics such that the fault is not resolved, Ansari discloses that
the first computer program will be executed again upon the next detection of
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the fault. Therefore, Appellants’ contention is not persuasive of error and we
sustain the rejection of claim 11.

Claim 14
Appellants contend that “Ansari does not teach or suggest a ‘program
code’ which ‘in response to a second input associated with a de-selection of
the first computer program’ presents ‘a second option to the administrator.’”
App. Br. 18. In particular, Appellants argue that Ansari discloses that it is
only after an automated solution cannot be found, and therefore could not
have been selected, that further options are presented. Id. The Examiner
replies selection of a second option includes de-selection. Ans. 6. We agree
with the Examiner. Appellants’ Specification describes a scenario in which a
first computer program unsuccessfully performs diagnostics and the user is
presented with a second option “[p]referably, wherein in response to a
second input associated with a de-selection of the first computer program,
the presentation component presents a second option to the user, wherein the
second option is associated with selection of command transmission.” Spec.
[0013]. Therefore, we find that “deselection” may be interpreted to include a
subsequent selection of a second option including in those cases where, after
a first solution did not work, the user attempts the second option. That is,
deselection does not require that the option have been selected by a user and
then canceled prior to use, only that it have been selected (e.g., by the user or
even automatically as an option that could be designated for use) and
subsequently not selected, e.g., an alternative second option is selected
allowing the administrator to input commands to the remote computer
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system. Therefore, we agree with the Examiner that Ansari discloses the
disputed limitations and sustain the rejection of claim 14.

Claim 17
Appellants contend that Ansari teaches manual updating of the
database by an administrator but fails to “teach or suggest that any of the
data added by the system administrators to the knowledge base are ‘input
commands’ or ‘have been executed to successful resolve the first error’” or
that “the data is ‘associated with the first error’ as recited in claim 17.” App.
Br. 19. The Examiner responds that “[t]he purpose of the ADSH is to detect
and successfully heal, so updates to it increase detecting and healing
capabilities. Such improvements are due to successful resolutions otherwise
the whole point of updating is moot.” Ans. 13-14. While we are sympathetic
to the Examiner’s line of reasoning concluding that updates in response to
successful resolutions are consistent with the purpose of the ADSH, we are
not persuaded that successful resolutions are so intimately linked with
updating that we can find that, under 35 U.S.C. § 102(b), Ansari explicitly or
inherently discloses storing a new program code component upon successful
resolution of a first error. Therefore, we do not sustain the rejection of claim
17.
Claim 18
Appellants contend that “the ‘activation criteria 132’ taught by Ansari
is not the ‘message broker’ recited in claim 18 [because it] does not accept
subscriptions or perform other broker operations such as tracking various
methods for contacting administrators.” App. Br. 20. The Examiner responds
that Ansari updates which may be automatically transmitted to a client
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device discloses subscribing to updates using block 132 as a broker. Ans. 6-
7. However, we fail to find in the cited portions of Ansari a disclosure of a
message broker wherein the administrator subscribes with the message
broker, independent of any other functionality that might be provided by the
message broker. Therefore, we do not sustain the rejection of claim 18.

Claim 20
Appellants contend that claim 20 is allowable for the reasons set forth
in connection with claims 1 and 14. Having found those arguments
unpersuasive of Examiner error for the reasons supra, we likewise find no
error in connection with and therefore sustain the rejection of claim 20.

Rejections under 35 U.S.C. § 103(a)
Claim 7
Appellants contend that, while Sarangam discloses multiple
administrators, it fails to teach or suggest “[(i)] a ‘presentation component,’
[(ii)] a ‘presentation of an option to execute the first program associated with
the first error,’ or [(iii)] ‘presentation of the option to execute the first
program associated with the first error to a plurality of administrators
authorized to execute the first computer program’ as recited in claim 7.”
App. Br. 23, reference numerals added. The Examiner responds that
Sarangam was only cited for disclosing a plurality of administrators (Ans. 7-
8, 15), such that the combination of Ansari and Sarangam teaches or
suggests the disputed claim limitations. We agree with the Examiner. For
example, element (i), the presentation component, is recited by independent
claim 1 which the Examiner finds to be anticipated by Ansari. Ans. 4-5. As
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such, Appellants are responding to the rejection by attacking the Sarangam
reference individually, even though the rejection is based on the combined
teachings of the references. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Furthermore, Appellants’ contentions are mere
assertions that the disputed claim language is not found in Sarangam. Such
statements are not considered to be arguments. 37 C.F.R.
§ 41.37(c)(1)(vii)2; In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).3
Thus, we do not find Appellants’ arguments to be persuasive and we sustain
the Examiner’s rejection of claim 7.

Claim 9
Appellants contend that Sarangam’s disclosure of authentication and
encryption techniques as the best precaution against malicious attacks over
the network fails to “teach or suggest the ‘authenticating the administrator
before the execution component executes the first computer program’ to
resolve the first error.” App. Br. 24. The Examiner responds that
“[a]uthentication [as disclosed by Sarangam] is applied here to the invention
entirely including the administrators mentioned in abstract [of Sarangam.]”
We agree with the Examiner and find that the combination of Ansari and
Sarangam teaches or suggests the disputed limitation of claim 9. Ans. 15.

2 “A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”
3 “[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.”
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Furthermore, we are not persuaded that Sarangam’s disclosure that the best
precaution against attacks using authentication and encryption techniques is
“expensive when implemented in silicon” is a teaching away. See App. Br.
24. Teaching an alternative or equivalent method does not teach away from
the use of a claimed method. In re Dunn, 349 F.2d 433, 438 (CCPA 1965).
Therefore, we sustain the rejection of claim 9.

Claim 12
Appellants contend that “neither Ansari nor Sarangam teach or
suggest the distribution of a first option to a plurality of administrators in
response to unsuccessfully performing diagnostics on a first error.” App. Br.
25. We disagree for the reasons articulated by the Examiner. See Ans. 8-9,
16. Therefore, we find unpersuasive Appellants’ argument that Sarangam’s
disclosure of multiple administrators (see Ans. 9 citing Sarangam col. 1, ll.
20-27) in combination with Ansari’s system of active diagnosis fails to teach
or suggest the disputed limitations of and we sustain the rejection of claim
12.

CONCLUSION
Appellants have persuaded us of Examiner error in connection with
claims 17 and 18. However, we find that Appellants have failed to provide
sufficient evidence or argument to persuade us that the Examiner erred in
rejecting claims 1-5, 7, 9, 11, 12, 14, and 20 or in rejecting claim 10, not
separately argued. Therefore, we reverse the rejection of claim 17 and 18
under 35 U.S.C. § 102(b) as being anticipated by Ansari. We sustain the
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rejections of 1-5, 10, 11, 14, and 20 under 35 U.S.C. § 102(b) and the
rejection of claims 7, 9, and 12 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision to reject claims 17 and 18 is reversed.
The Examiner’s decision to reject claims 1-5, 7, 9-12, 14, and 20 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-IN-PART

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