Ex Parte Garza et alDownload PDFPatent Trial and Appeal BoardOct 30, 201411911206 (P.T.A.B. Oct. 30, 2014) 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. 11/911,206 08/18/2008 Jose Emir Garza GB920040084US1 4930 75949 7590 10/31/2014 IBM CORPORATION C/O: VanCott Bagley, Cornwall & McCarthy 36 South State Street Suite 1900 Salt Lake City, UT 84111 EXAMINER NGUYEN, THAI ART UNIT PAPER NUMBER 2469 MAIL DATE DELIVERY MODE 10/31/2014 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 JOSE EMIR GARZA, STEPHEN JAMES HOBSON, MARTIN MULHOLLAND, and STEVEN POWELL ____________ Appeal 2012-004442 Application 11/911,206 Technology Center 2400 ____________ Before CARLA M. KRIVAK, STANLEY M. WEINBERG, and JOHNNY A. KUMAR, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection of claims 1–6, 53–61, and 63–65. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2012-004442 Application 11/911,206 2 STATEMENT OF THE CASE Appellants’ claimed invention is directed to a method, system and computer program for providing atomicity for a unit of work (Spec. 1:1–2). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method for providing atomicity for a unit of work involving a plurality of participants, the method comprising the steps of: sending a prepare request to at least one participant, wherein the prepare request comprises data including an indicated outcome of the unit of work; and in response to occurrence of a need to recover the unit of work, recovering the unit of work comprising: obtaining the data from the at least one participant; and using the obtained data to recover and preserve the atomicity of the unit of work. REFERENCES and REJECTIONS The Examiner rejected claim 53 under 35 U.S.C. § 112, second paragraph as being indefinite. The Examiner rejected claim 58 under 35 U.S.C. § 101 as directed to non-statutory subject matter. The Examiner rejected claims 1–6 and 53–61, and 63–65 under 35 U.S.C. § 103(a) over various combinations of Johnson, Cotner, and Srivastava in view of the remaining cited references. ANALYSIS Rejection under 35 U.S.C. § 112 The Examiner rejected claim 53 under 35 U.S.C. § 112, second paragraph as being indefinite because the “means for” limitation is not Appeal 2012-004442 Application 11/911,206 3 modified by structure for performing the claim limitations (Ans. 4–5, 24). We do not agree with the Examiner. Claim 53 is proper under 35 U.S.C. § 112 (see Reply Br. 6). Rejection under 35 U.S.C. § 101 The Examiner asserts claim 58 is directed to non-statutory subject matter because it recites “a computer usable storage medium” (Ans. 5–6). That is, the Examiner concludes because Appellants’ Specification does not define the scope of “computer readable storage medium,” the term encompasses both non-transitory and transitory propagating signals. Therefore, the claim is directed to non-statutory subject matter. We agree with the Examiner’s conclusion. We note at the outset that Appellants’ Specification does not use the term “a computer usable storage medium” let alone provide a definition. Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential) held that where Appellants’ Specification fails to define a computer-readable storage medium, the term must be broadly and reasonably construed according to its ordinary and customary meanings to a person of ordinary skill in the art to encompass both non-transitory and transitory media. 1 1 See Ex parte Mewherter, 107 USPQ2d at 1859 n.4 (“Although not binding on this Board, we do find noteworthy that the Office recently mandated in training to its examiners that, in such cases, a claim reciting computer- readable storage media must be construed under the broadest reasonable interpretation as encompassing a signal per se unless amended to avoid such language. U.S. Patent & Trademark Office, Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101 (Aug. 2012 Update); pp. 11–14, available at http://www.uspto.gov/patents/law/exam/101_training_aug2012.pdf.”). Appeal 2012-004442 Application 11/911,206 4 Thus, we agree claim 58 is directed to non-statutory subject matter. Rejection under 35 U.S.C. § 103 The Examiner finds Johnson teaches or suggests all of the elements of Appellants’ claimed invention except for “including an indicated outcome of the unit of work” but that Cotner discloses this feature (Ans. 8). Appellants assert Cotner does not provide a teaching or suggestion of the claimed “prepare request comprises data including an indicated outcome of the unit of work” (App. Br. 15). However, Appellants conclusory statement does not provide persuasive argument regarding why this is. Appellants also contend, in the Reply Brief, that claim 1 recites a “request that includes an indicated outcome of that request (Reply Br. 9). Appellants further assert claim 1 recites “sending a prepare request that that [sic] includes an indicated outcome of a unit of work to which the prepare request relates” (Reply Br. 9–10). We note we are not obligated to give weight to this argument as it could have been provided in the Appeal Brief, but was not. We further note, even if we did give weight to this argument, we still agree with the Examiner that Cotner discloses “suspending prepare-to- commit request in which an outcome of suspended is included in the request sent to participants” (Ans. 8). Therefore, the “database units/transaction participants having received” the request has one of three outcomes depending on when the request is initiated, thus including an indicated outcome of the transaction (unit of work) (Ans. 27-28). For the above reasons, we are not persuaded of Examiner error. We find the weight of the evidence supports the Examiner’s ultimate legal conclusion of obviousness, and therefore sustain the Examiner’s rejection of Appeal 2012-004442 Application 11/911,206 5 claims 1, 4–6, 54–57, 59–61, and 63–65, not argued with particularity, for the same reasons. With respect to claim 2, Appellants assert Hsiao does not remedy the deficiency of Johnson and thus the combination of Johnson and Cotner with Hsiao does not teach or suggest the limitations of claim 2 (App. Br. 16). As we note above, Johnson and Cotner are not deficient. As Appellants have provided no arguments rebutting the Examiner’s findings regarding Hsiao, we sustain the Examiner’s rejection of claim 2. With respect to claim 3, Srivastava was cited for disclosing a “list of other participants” in a distributed transaction involving multiple participants (Ans. 10). Johnson was cited for disclosing another participant in a unit of work also receiving a prepare request (id.). Thus, Appellants contention that Srivastava does not teach information provided in a prepare request (App. Br. 18) is not relevant, as Srivastava was cited only for showing it was obvious at the time of Appellants’ invention to have a list of other participants in a distributed transaction. Additionally, we agree that Appellants are arguing the references individually and not as a combination (Ans. 29-30). For these reasons we sustain the Examiner’s rejection of claim 3. With respect to claim 53, Appellants contend this claim is allowable for the reasons set forth with respect to claims 1 and 3 (App. Br. 19–20). With respect to Appellants’ teaching away argument, we do not agree. We adopt the Examiner’s findings and reasoning on pages 30–31 of the Answer. Particularly, the Examiner is relying on the combination of Johnson and Srivastava (Ans. 29-31). Appellants Reply does not rebut the Examiner’s reasonable findings. Rather, Appellants merely contend page 10 of the Appeal 2012-004442 Application 11/911,206 6 Examiner’s Answer does not address their arguments (Reply Br. 14). It is noted page 10 of the Answer merely recites the Examiner’s rejection. The Examiner’s Response to Appellants’ arguments commences on page 23 of the Answer. Thus, for these reasons, and as we sustained the Examiner’s rejection of claims 1 and 3, we sustain the rejection of claim 53. With respect to claim 58, Appellants contend this claim is allowable for the reasons set forth with respect to claims 1 and 53 (App. Br. 22-23). As we sustained the Examiner’s rejection of these claims, we sustain the rejection of claim 58 for the same reasons. DECISION The Examiner’s decision rejecting claim 53 under 35 U.S.C. § 112 is reversed. The Examiner’s decision rejecting claim 58 under 35 U.S.C. § 101 is affirmed. The Examiner’s decision rejecting claims 1–6, 53–61, and 63–65 under 35 U.S.C. § 103 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 kis Copy with citationCopy as parenthetical citation