Ex Parte Holcomb

Patent Trial and Appeal Board

Oct 24, 2013

11928495 (P.T.A.B. Oct. 24, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/928,495 10/30/2007 Justin H. Holcomb RSW920070146US1 (303) 7436
46320 7590 10/25/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
PATEL, HARESH N
ART UNIT PAPER NUMBER
2493
MAIL DATE DELIVERY MODE
10/25/2013 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 JUSTIN H. HOLCOMB1
____________________

Appeal 2011-005257
Application 11/928,495
Technology Center 2400
____________________

Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is IBM Corporation. App. Br. 1.
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STATEMENT OF THE CASE2
The Invention
Appellant’s invention relates to the field of network connectivity for
roaming mobile end users and more particularly to the field of network
optimization profile generation in performance optimizing network
connections during roaming. Spec. ¶ [0001] (“Field of the Invention”).
Exemplary Claims
Claims 1, 8, and 10 are exemplary claims representing aspects of the
invention which we reproduce below (emphases added):
1. A network optimization profile generation method
comprising:
ranking different performance criterion for a target
network;
testing the target network for the different performance
criterion;
weighting results of the testing according to the ranking
of the different performance criterion;
generating a set of target network configuration
parameters through optimization of the weighted results; and,
applying the set of target network configuration
parameters to the target network as a profile.

2 Our decision refers to Appellant’s Appeal Brief (“App. Br.,” filed
Aug. 24, 2010); Reply Brief (“Reply Br.,” filed Dec. 1, 2010); Examiner’s
Answer (“Ans.,” mailed Oct. 1, 2010); Final Office Action (“FOA,” mailed
May 17, 2010); and the original Specification (“Spec.,” filed Oct. 30, 2007).
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8. A network optimization profile generation data
processing system comprising:
a test device configured for coupling to a target network,
the test device comprising a test suite and a plurality of tests
each directed to a different network performance criterion for
the target network;
a profile generation engine configured for
communicative coupling to the test device over the target
network, the engine comprising program code enabled to
iteratively apply a profile of network configuration parameters
to the target network, to signal the test device to initiate testing
of the target network, and to receive test results from the test
device; and,
simulated annealing logic coupled to the profile
generation engine, the logic comprising program code enabled
to generating a profile of network configuration parameters
through simulated annealing of weighted ones of the test
results.

10. A computer program product comprising a
computer usable storage medium embodying computer usable
program code for network optimization profile generation, the
computer program product comprising:
computer usable program code for ranking different
performance criterion for a target network;
computer usable program code for testing the target
network for the different performance criterion;
computer usable program code for weighting results of
the testing according to the ranking of the different performance
criterion;
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computer usable program code for generating a set of
target network configuration parameters through optimization
of the weighted results; and,
computer usable program code for applying the set of
target network configuration parameters to the target network as
a profile.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Marion US 2006/0080658 Al Apr. 13, 2006
Ramachandran US 2007/0239700 Al Oct. 11, 2007
Kami US 2009/0150711 Al June 11, 2009
Rejections on Appeal
1. Claims 10-16 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Ans. 5.
2. Claims 1-15 stand rejected under 35 U.S.C. § 102(a) as being
anticipated by Ramachandran. Ans. 7.
3. Claims 1-15 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Kami. Ans. 15.
4. Claims 1-15 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Marion. Ans. 23.
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ISSUES AND ANALYSIS
We have only considered those arguments actually made by Appellant
in reaching this Decision. Arguments which Appellant could have made but
chose not to make in the Briefs have not been considered and are deemed to
be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
1. §101 Non-Statutory Subject Matter Rejection of Claims 10-16
We disagree with Appellant’s conclusions with respect to claims 10
through 16, and 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 and rebuttals set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Arguments. However, we highlight and address
specific findings and arguments regarding claim 10 for emphasis as follows.
Issue 1
Appellant states that claims 11-16 stand or fall with independent
claim 10 (App. Br. 5), and argues (App. Br. 5-7; Reply Br. 3-16) that the
Examiner’s non-statutory subject matter rejection of claim 10 under 35
U.S.C. § 101 is in error. These contentions present us with the following
issue:
Did the Examiner err in finding that Appellant’s recitation in claim 10
of the phrase “computer usable storage medium” may be construed as
encompassing non-statutory subject matter because the limitation is not
limited to a non-transitory storage medium?
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Analysis
Appellant contends a computer-usable medium is described as an
apparatus, and Appellant’s Specification describes various types of media
that either contain, store, communicate, propagate, or transport information.
Based on these descriptions, Appellant argues the Examiner cannot
reasonably construe the claim language at issue by ignoring that a storage
medium is not necessarily the same as another type of medium that could be
considered to be directed to non-statutory subject matter. App. Br. 7.
Appellant makes similar arguments in the Reply Brief, and adds citations to
numerous issued patents in the apparent belief that similar claim language in
various issued patents can be equally applied to Appellant’s disclosed and
claimed invention. Reply Br. 7-10.
In response, the Examiner points out that Appellant’s Specification
does not define “computer usable storage medium,” and the broadest
reasonable interpretation of the phrase in dispute includes the ordinary and
customary meaning which includes signals per se. Ans. 31-32. In addition,
we note the Examiner provided a suggested amendment to claim 10 to
overcome the § 101 rejection by amending the limitation “computer usable
storage medium” to recite “non-transitory computer readable medium.”
FOA 5.
We note Appellant’s Specification states:
[A] computer-usable or computer readable medium can be 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,
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electromagnetic, infrared, or semiconductor system (or
apparatus or device) or a propagation medium.
Spec. ¶ [0022] (emphasis added).
We agree with the Examiner that the scope of the recited “computer
usable storage medium” encompasses transitory media (Ans. 31-32), such as
propagated signals or carrier waves, where the Specification does not limit
the computer usable storage medium to non-transitory forms. See Ex parte
Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (expanded panel)
(holding recited machine-readable storage medium ineligible under § 101
because it encompasses transitory media). Here, the recited “computer
usable storage medium” is not claimed as being non-transitory, and the
disclosure does not expressly and unambiguously limit that medium to
solely non-transitory forms via a definition or similar limiting language.
Therefore, the medium encompasses transitory forms and is therefore
ineligible under § 101.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of reversible error in the Examiner’s
characterization of the claimed subject matter. Therefore, we sustain the
Examiner’s non-statutory subject matter rejection of independent claim 10.
As Appellant has not provided separate arguments with respect to dependent
claims 11-16, we similarly sustain the Examiner’s rejection of these claims
under 35 U.S.C. § 101.
2. §102(a) Anticipation Rejection of Claims 1-15 Over Ramachandran
We disagree with Appellant’s conclusions with respect to claims 1-15,
and we adopt as our own (1) the findings and reasons set forth by the
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Examiner in the action from which this appeal is taken and (2) the reasons
and rebuttals set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Arguments. However, we highlight and address
specific findings and arguments regarding claim 1 for emphasis as follows.
Issue 2
Appellant states that claims 2-7 and 10-15 stand or fall with
independent claim 1, and claim 9 stands or falls with independent claim 8.
App. Br. 8.
Appellant argues (App. Br. 8-10; Reply Br. 16-23) that the
Examiner’s anticipation rejection of claim 1 under 35 U.S.C. § 102(a) over
Ramachandran is in error. These contentions present us with the following
issue:
(a) Did the Examiner err in finding that Ramachandran anticipates
the limitations in dispute, i.e., “ranking different performance criterion for a
target network; testing the target network for the different performance
criterion; [and] weighting results of the testing according to the ranking of
the different performance criterion,” as recited in method claim 1?
Appellant argues (App. Br. 10-13; Reply Br. 24-25) that the
Examiner’s anticipation rejection of claim 8 under 35 U.S.C. § 102(a) over
Ramachandran is in error. These contentions present us with the following
issue:
(b) Did the Examiner err in finding that Ramachandran anticipates
the limitation in dispute, i.e., a “test device comprising a test suite” and “a
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plurality of tests each directed to a different network performance criterion
for the target network,” as recited in system claim 8?
Analysis
Issue 2(a)
Appellant contends he is unable to identify any teachings in
Ramachandran of ranking different performance criterion or performance
criterion associated with a target network; testing the target network for the
different performance criterion; or weighting the results of the test according
to the ranking of the different performance criterion, as required by claim 1.
App. Br. 9. Other than alleging Appellant’s inability to find disclosure of
the disputed limitations in the cited art, Appellant did not provide any
analysis regarding the Examiner’s findings concerning the disclosure of
Ramachandran with respect to claim 1 as set forth in the Final Rejection.
FOA 6.3
In response, the Examiner finds Ramachandran discloses the
“ranking,” “testing,” and “weighting” limitations recited in claim 1.
Ans. 7-8 (citing Ramachandran ¶¶ [0027]-[0031]). In the Response to
Arguments section of the Answer, the Examiner elaborates on his claim
construction by pointing out that Appellant’s claimed “ranking” is not
limited to the ranking of performance criteria in any particular order,
category, or position, and that the claim does not limit the performance

3 In the Final Rejection, the Examiner relies upon detailed findings
concerning claim 1 at pp. 3-4 of the Non-Final Rejection mailed
Nov. 19, 2009. These findings appear to be substantively the same as the
findings in the Examiner’s Answer. Ans. 7-8.
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criteria to a particular type of performance criterion because of the broadly
claimed subject matter in claims 1 and 10. Ans. 33.
In the Reply Brief, Appellant alleges that the Examiner has not
provided findings of fact supported by substantial evidence with respect to
Ramachandran’s disclosure of the limitations in dispute. Reply Br. 17.
We do not consider Appellant’s arguments regarding claim 1,
presented for the first time in the Reply Brief (see id.), since these arguments
are untimely. “Any bases for asserting error, whether factual or legal, that
are not raised in the principal brief are waived.” Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (internal citation omitted) (informative).
Appellant has not explained why, nor is it apparent that, this argument was
necessitated by a new point in the Answer or any other circumstance
constituting “good cause” for its belated presentation. Id. (absent a showing
of good cause, the Board is not required to address argument in Reply Brief
that could have been presented in the principal Brief). The Examiner’s
position has not changed since before the mailing of the Final Rejection, as
discussed above.
Even if timely submitted, Appellant incorrectly argues that the
Examiner’s burden of proof should be analyzed using the substantial
evidence standard. Reply Br. 17. The Board’s decision is the final agency
decision on patentability, and thus the Board reviews the findings of fact
using a preponderance of the evidence (more likely than not) standard of
proof. In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (other than for
fraud or violation of the duty of disclosure, preponderance of the evidence is
the standard that must be met by the PTO in making rejections). On judicial
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review of agency action, administrative findings of fact must be sustained
when supported by substantial evidence on the record considered as a whole.
In re Gartside, 203 F.3d 1305, 1315 (Fed. Cir. 2000).
In addition, we find Appellant’s recitation of “ranking” reads on
Ramachandran’s disclosure of prioritization (Ramachandran ¶ [0031]), as
cited by the Examiner, supra. We also find that Appellant’s recitation of
“target network” reads on Ramachandran’s disclosure of a configuration
item (CI) that includes a computing platform such as a server.
Ramachandran ¶ [0027].
Therefore, because the Examiner has provided a reasonable mapping
between the cited prior art and the limitations of claim 1, cited supra, we
agree with the Examiner’s finding that Ramachandran anticipates claim 1.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s
characterization of the cited art and related claim construction. Therefore,
we sustain the Examiner’s anticipation rejection of independent claim 1. As
Appellant has not provided separate arguments with respect to independent
claim 10 or dependent claims 2-7 and 11-15, we similarly sustain the
Examiner’s rejection of these claims under 35 U.S.C. § 102(a).4

4 We note that computer program product claim 11 incorrectly depends
upon independent system claim 8 rather than independent computer program
product claim 10.
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Issue 2(b)
Similar to Appellant’s arguments with respect to claim 1, discussed
supra, Appellant contends he is unable to identify any teachings in
Ramachandran that correspond to the claimed “plurality of tests each
directed to a different network performance criterion for the target network,”
as required by claim 8. App. Br. 10; Reply Br. 24. Other than alleging
Appellant’s inability to find disclosure of the disputed limitations in the cited
art, Appellant did not provide any analysis regarding the Examiner’s
findings concerning the disclosure of Ramachandran with respect to claim 8
as set forth in the Final Rejection. FOA 6.5
In response, the Examiner finds Ramachandran discloses the
limitations concerning “plurality of tests each directed to a different network
performance criterion for the target network,” as recited in claim 8.
Ans. 11-12 (citing Ramachandran ¶¶ [0040]-[0045]). In the Response to
Arguments section of the Answer, the Examiner further elaborates on his
claim construction by pointing out that Appellant’s claimed “tests” are not
limited to any particular type of test, and that the claimed network
performance criterion is also not limited to any particular type of network
performance criterion because of the broadly claimed subject matter in claim
8. Ans. 39-40.
In the Reply Brief, Appellant again alleges that the Examiner has not
provided findings of fact supported by substantial evidence with respect to

5 In the Final Rejection, the Examiner relies upon detailed findings
concerning claim 8 at p. 8 of the Non-Final Rejection mailed Nov. 19, 2009.
These findings appear to be substantively the same as the findings in the
Examiner’s Answer. Ans. 11-12.
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Ramachandran’s disclosure of the limitations in dispute. Reply Br. 24. For
the reasons discussed above with respect to Issue 2(a), this argument is not
only untimely, but is legally incorrect as to the proper evidentiary basis for
establishing findings of fact in proceedings within the Patent Office.
In addition, we find Appellant’s recitation of “a plurality of tests each
directed to a different network performance criterion for the target network”
reads on Ramachandran’s disclosure of a computer containing a
configuration management database with “a variety of rules and analyses”
(Ramachandran ¶ [0043]) applied on the basis of, for example, “a known
update or synchronization rate of the source.” Id. ¶ [0044].
Therefore, because the Examiner has provided a reasonable mapping
between the cited prior art and the limitations of claim 8, cited supra, we
agree with the Examiner’s finding that Ramachandran anticipates claim 8.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s
characterization of the cited art and related claim construction. Therefore,
we sustain the Examiner’s anticipation rejection of independent claim 8. As
Appellant has not provided separate arguments with respect to dependent
claim 9, we similarly sustain the Examiner’s rejection of this claim under 35
U.S.C. § 102(a).
3. §102(e) Anticipation Rejection of Claims 1-15 over Kami
We agree with Appellant’s conclusions with respect to claims 1-15,
and we disagree with (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken and (2) the reasons and
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rebuttals set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Arguments. We highlight and address specific findings and
arguments regarding claims 1 and 8 for emphasis as follows.
Issue 3
Appellant argues (App. Br. 13-14; Reply Br. 25-28) that the
Examiner’s anticipation rejection of claims 1-15 under 35 U.S.C. § 102(e)
over Kami is in error. These contentions present us with the following issue:
Did the Examiner err in finding that Kami discloses all limitations of
claims 1, 8, and 10?
Analysis
Appellant contends Kami does not disclose “ranking different
performance criterion for a target network,” as recited in claim 1 (App.
Br. 13), and further contends Kami does not disclose “a plurality of tests
each directed to a different network performance criterion for the target
network,” as recited in claim 8. App. Br. 14.
In response, the Examiner states that Kami discloses all limitations of
claim 1 and 10 (Ans. 48 (citing Kami ¶¶ [0023] and [0032]-[0035])), and
that Kami also discloses all limitations of claim 8. Ans. 55 (citing Kami
¶¶ [0218]-[0224]).
We have reviewed the portions of Kami cited by the Examiner, and do
not find correspondence between the disputed limitations of any of claims 1,
8, and 10 and the cited prior art. We note the Examiner is required to set
forth at least a minimal, reasonable effort to map the claim limitations to the
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prior art. Lacking such a reasonable mapping, we find that the Examiner has
not met his burden in providing a prima facie case of anticipation, such that
we cannot sustain the Examiner’s anticipation rejection of claims 1, 8,
and 10, and claims 2-7, 9, and 11-15 depending therefrom.
4. §102(b) Anticipation Rejection of Claims 1-15 over Marion
We agree with Appellant’s conclusions with respect to claims 1-15,
and we disagree with (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken and (2) the reasons and
rebuttals set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Arguments. We highlight and address specific findings and
arguments regarding claims 1 and 8 for emphasis as follows.
Issue 4
Appellant argues (App. Br. 14-16; Reply Br. 28-32) that the
Examiner’s anticipation rejection of claims 1-15 under 35 U.S.C. § 102(b)
over Marion is in error. These contentions present us with the following
issue:
Did the Examiner err in finding that Marion discloses all limitations
of claims 1, 8, and 10?
Analysis
Appellant contends Marion does not disclose “ranking different
performance criterion for a target network,” as recited in claim 1 (App.
Br. 15), and further contends Marion does not disclose “a plurality of tests
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each directed to a different network performance criterion for the target
network.” Id.
In response, the Examiner states that Marion discloses all limitations
of claim 1 and 10 (Ans. 23-24 (citing Marion ¶¶ [0034]-[0038]) and Ans.
61-66), and that Kami6 also discloses all limitations of claim 8. Ans. 66-71
(citing Kami ¶¶ [0042]-[0047]).
We have reviewed the portions of Marion cited by the Examiner, and
do not find correspondence between the disputed limitations of any of claims
1, 8, and 10 and the cited prior art. We again note the Examiner is required
to set forth at least a minimal, reasonable effort to map the claim limitations
to the prior art. Lacking such a reasonable mapping, we find that the
Examiner has not met his burden in providing a prima facie case of
anticipation, such that we cannot sustain the Examiner’s finding of
anticipation of claims 1, 8, and 10, and claims 2-7, 9, and 11-15 depending
therefrom.
CONCLUSIONS
(1) The Examiner did not err with respect to the non-statutory
subject matter rejection of claims 10-16 under 35 U.S.C. § 101, and the
rejection is sustained.

6 It appears that the Examiner has mistakenly cited to Kami, when Marion
appears to be the correct reference with respect to Appellant’s arguments
against this particular anticipation rejection of claim 8.
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(2) The Examiner did not err with respect to the anticipation
rejection of claims 1-15 under 35 U.S.C. § 102(a) over Ramachandran, and
the rejection is sustained.
(3) The Examiner erred with respect to the anticipation rejection of
claims 1-15 under 35 U.S.C. § 102(e) over Kami, and the rejection is not
sustained.
(4) The Examiner erred with respect to the anticipation rejection of
claims 1-15 under 35 U.S.C. § 102(b) over Marion, and the rejection is not
sustained.
DECISION
We affirm:
(1) The decision of the Examiner to reject claims 10-16 under 35
U.S.C. § 101.
(2) The decision of the Examiner to reject claims 1-15 under 35
U.S.C. § 102 (a) over Ramachandran.
We reverse:
(3) The decision of the Examiner to reject claims 1-15 under 35
U.S.C. § 102 (e) over Kami.
(4) The decision of the Examiner to reject claims 1-15 under 35
U.S.C. § 102 (b) over Marion.
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Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).7
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

tj

7 Although not before us on appeal, if further prosecution of claim 1 should
ensue, the Examiner’s attention is directed to independent claim 1 to ensure
compliance with the requirements of 35 U.S.C. § 101 as set forth by the
Supreme Court in Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010). While
admittedly not the only test for subject matter eligibility, method claim 1
does not appear to meet the “machine or transformation test.”