Ex Parte Holdsworth

Board of Patent Appeals and Interferences

Mar 16, 2009

10016935 (B.P.A.I. Mar. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SIMON A. J. HOLDSWORTH
____________

Appeal 2008-2482
Application 10/016,9351
Technology Center 2100
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Decided:2 March 17, 2009
____________

Before ROBERT E. NAPPI, SCOTT R. BOALICK, and
KEVIN F. TURNER, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

1 Application filed December 14, 2001. The real party in interest is IBM
Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-14 and 16, all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant's invention relates to the selection of an appropriate
communication strategy for message brokers to be used for inter-broker
communications within a network. (Spec. 1:13-17.)
Claim 1 is exemplary:
1. A message brokering system for providing a
publish/subscribe service for publisher and subscriber
application programs, comprising:

means for receiving published messages from one or
more publisher application programs;

means for forwarding received messages to connected
message brokering systems;

means, responsive to a communication characteristic of
an inter-broker communication link between the message
brokering system and one of said connected message brokering
systems, for selecting a message filtering policy which is
appropriate for the communication characteristic; and

means for controlling the forwarding of messages via the
inter-broker communication link using the selected message
filtering policy, wherein

the means for selecting a message filter policy is separate
from the publisher and subscriber application programs.
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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Owens US 6,633,630 B1 Oct. 14, 2003
(filed Sep. 12, 1998)
Hurst US 6,131,123 Oct. 10, 2000
Narasimhan US 6,073,165 Jun. 6, 2000
Khan US 2002/0143951 A1 Oct. 3, 2002
Delaney US 2001/0027479 A1 Oct. 4, 2001

Claims 1-4, 10-14, and 16 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Owens and Narasimhan.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Owens, Narasimhan, Hurst, and Khan.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Owens, Narasimhan, and Delaney.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Owens, Narasimhan, Delaney, and Khan.

Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs3 and the Answer4 for their respective details.
Except as noted in this opinion, Appellant has not presented any substantive

3 We refer to the Appeal Brief filed August 11, 2006 ("App. Br."), the Reply
Brief filed October 10, 2006 ("First Reply Br."), and the Reply Brief filed
December 4, 2006 ("Second Reply Br.") throughout this opinion.
4 We refer to the Examiner’s Answer mailed September 8, 2006 ("Ans.")
and the Communication mailed November 2, 2006 ("November
Communication") throughout this opinion.
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arguments directed separately to the patentability of the dependent claims or
related claims in each group. In the absence of a separate argument with
respect to those claims, they stand or fall with the representative independent
claim. See 37 C.F.R. § 41.37(c)(1)(vii). Only those arguments actually
made by Appellant in the Briefs have been considered in this opinion.
Arguments that Appellant did not make in the Briefs have not been
considered and are deemed to be waived. See id.

ISSUE
Appellant argues that "Owens does not teach the claimed means for
selecting a message filtering policy which is appropriate for the
communication characteristic" (App. Br. 5; see also First Reply Br. 6-8) and
"Narasimhan's rerouting based upon a communication characteristic is not
comparable to the claimed selecting a message filtering policy appropriate
for a communication characteristic" (App. Br. 5; see also First Reply
Br. 8-11). Appellant also argues that "Owens does not teach automatically
selecting filtering policies" (App. Br. 6) and the "[p]roposed combination
would not result in [the] claimed invention" (App. Br. 7; see also First Reply
Br. 11-12). Appellant further argues that independent claims 1, 11, and 14
"have been amended to recite that 'the means for selecting a message filter
policy is separate from the publisher and subscriber application programs.'"
(First Reply Br. 4; see also Second Reply Br. 1-4.) In addition, "Appellant
argued that the proposed modification would impermissibly change the
principle of operations [sic] of Owens." (App. Br. 7; see also First Reply
Br. 5; Second Reply Br. 2-3.)
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We note that the Briefs refer to arguments previously made on various
pages of the "Second Amendment" dated October 13, 2005. (See, e.g., App.
Br. 5-8 (referring to a number of arguments made on pages 8-15 of the
"Second Amendment").) This attempt to incorporate arguments by
reference does not comply with our rules. In order for arguments to be
considered by the Board, they must be included in the Briefs. 37 C.F.R.
§ 41.37(c)(1)(vii) ("Any arguments or authorities not included in the brief or
a reply brief . . . will be refused consideration by the Board, unless good
cause is shown."). Appellant has not shown good cause why arguments
made in the "Second Amendment" but not included in the Briefs should be
considered. Therefore, we will treat arguments made in the "Second
Amendment" but not included in the Briefs as waived.

Appellant's arguments present the following issue:

Has Appellant shown that the Examiner erred in rejecting claims 1-14
and 16 under 35 U.S.C. § 103(a)?

The resolution of this issue turns on the following subsidiary issues:

1. Has Appellant shown that the Examiner erred in finding that the
combination of Owens and Narasimhan teaches or suggests a means "for
selecting a message filtering policy which is appropriate for the
communication characteristic"?

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2. Has Appellant shown that the Examiner erred in finding that the
combination of Owens and Narasimhan teaches or suggests that "the means
for selecting a message filter policy is separate from the publisher and
subscriber application programs"?

3. Has Appellant shown that the Examiner erred by combining the
applied references because the proposed modification would impermissibly
change the principle of operation of Owens?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

1. Owens describes a system for integrating electronic communications,
such as e-mail, voice mail, and fax messages, in a universal mailbox.
(Col. 1, ll. 11-17; Abstract.) "Message receivers may access their
messages with a telephone or a computer regardless of the
communication medium used by the message sender." (Abstract.)

2. Referring to Figure 1, Owens teaches that the universal mailbox may
include more than one message repository 10, 12. (Col. 5, ll. 61-62.)
"Access to and communications with a message repository that is part
of the universal mailbox may be facilitated by a computer access
service provider such as the CompuServe Information Service
[computer access service provider] 14." (Col. 6, ll. 19-23.) "Access
to and communications with a universal mailbox message repository
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may also be facilitated by a telephone access service provider such as
Premiere Communications [telephone access service provider] 16."
(Col. 6, ll. 23-26.) Figure 1 shows message repository 10 as part of
the CompuServe Information Service 14 and message repository 12 as
part of Premiere Communications 16. "[A] dedicated communication
link 18 may be established between the repositories 10, 12 so
messages may be transferred between repositories." (Col. 6,
ll. 26-30.) A message sender 34 composes and sends a message to a
computer access service provider 14, which is routed by the network
node 26 to a communications server 28, which may make
arrangements to forward the message to another service provider such
as the telephone access service provider 16. (Col. 7, ll. 14-31.) The
message may then be stored in the message repository 12 of the
telephone access service provider 16. (Col. 7, ll. 31-34.) The
message receiver 36 calls the telephone access service provider 16 to
retrieve the message, which may be translated by the communications
server 32. (Col. 7, ll. 34-37.) Thus, "[a]lthough the message sender
34 chose to communicate with the message receiver 36 via e-mail,
using the present invention, the message receiver 34 is able to access
the message using a different communication mode (i.e., the
telephone 24.)" (Col. 7, ll. 37-41.)

3. Narasimhan describes a message processing and forwarding system
for processing electronic messages. (Abstract.) As shown in
Figure 1, "[a] pair of message servers 103 and 105 are linked by a
computer communication network (CCN) 111." (Col. 2, ll. 53-55.)
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"The ultimate source and destination of a message may be the first
message source 115 and a receiver 133." (Col. 2, ll. 66-67.)

4. Narasimhan teaches that a "useful aspect of the embodiment in FIG. 1
is the provision for redundancy by the inclusion of an alternate source
server 117, mirrored database 119, and alternate destination server
125." (Col. 6, l. 66 to col. 7, l. 2.) "The overall system may be
configured to detect failures in either the source or destination servers,
and database server 107, and replace their functions with an alternate
server and/or mirrored database 119." (Col. 7, ll. 2-5.) "This may be
accomplished by configuring the message servers 103 and 105 to
recognize failure conditions (such as failure return codes, or lack of a
successful return code) and accordingly reallocate resources in the
event of failures with either the servers or the database, such that a
message is rerouted via a redundant resource or connection to ensure
that the message is reliably forwarded to the receiver 133." (Col. 7,
ll. 5-12.) "The system will thus adaptively reconfigure itself in
response to changing network and communication conditions."
(Col. 7, ll. 13-15.)

PRINCIPLES OF LAW
All timely filed evidence and properly presented arguments are
considered by the Board in resolving an obviousness issue on appeal. See In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. Id. at 1472.
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When that burden is met, the burden then shifts to the Applicant to rebut.
Id.; see also In re Harris, 409 F.3d 1339, 1343-44 (Fed. Cir. 2005) (finding
rebuttal evidence unpersuasive). If the Applicant produces rebuttal evidence
of adequate weight, the prima facie case of unpatentability is dissipated. In
re Piasecki, 745 F.2d at 1472. Thereafter, patentability is determined in
view of the entire record. Id. However, on appeal to the Board it is the
Appellant's burden to establish that the Examiner did not sustain the
necessary burden and to show that the Examiner erred. See In re Kahn, 441
F.3d 977, 985-86 (Fed. Cir. 2006) ("On appeal to the Board, an applicant can
overcome a rejection [for obviousness] by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.") (quoting In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998)).
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
127 S. Ct. 1727, 1734 (2007).
In KSR, the Supreme Court reaffirmed that "[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." Id. at 1739. The Court
explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
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likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 1740.
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d at 988. "To facilitate review, this
analysis should be made explicit." KSR, 127 S. Ct. at 1741. However, "the
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ."
Id.
During examination of a patent application, a claim is given its
broadest reasonable construction consistent with the specification. In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). "[T]he words of a claim 'are
generally given their ordinary and customary meaning.'" Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). The "ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application." Id. at 1313.

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ANALYSIS
§ 103 Rejection - Owens / Narasimhan
Claims 1, 4, 10-14, and 16
Appellant's arguments that the Examiner erred in rejecting
representative claim 15 as being obvious over Owens and Narasimhan are
not persuasive.
The Examiner found that, while Owens does not expressly "teach
details regarding selecting a message filtering policy based on a
communication characteristic of a link between brokering systems. . . .
Narasimhan discloses another message brokering system which discloses
selecting a policy, based on the communication characteristic of the network
(i.e. if server A is down, then go down the list of user defined available
servers until an appropriate server is found which can route the message to
the user) (col. 4, lines 30-63; col. 5, lines 25-30; col. 7, lines 1-15)."
(Ans. 4; see FF 3-4.) The Examiner stated that "[i]t is the combination of
Owens in view of Narasimhan which disclose[s] selecting a message
filtering policy which deals with the communication characteristic of a
communication link." (Ans. 13.) We agree with the Examiner.
Under the broadest reasonable interpretation consistent with the
Specification, we agree with the Examiner that Narasimhan's "selection of
an alternate destination server and determination of the computer network
routing information required for sending the filtered message to the alternate
destination server can be construed as the claimed 'selecting a message

5 Appellant argues claims 1, 4, 10-14, and 16 together as a group and states
that "claims 4, 10-14, and 16 stand or fall together with independent
claim 1." (App. Br. 4.) Accordingly, we select claim 1 as representative.
See 37 C.F.R. § 41.37(c)(1)(vii).
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filtering policy based on a communication characteristic'" (Ans. 14; see also
FF 3-4). Appellant has not pointed to any particular definition of
"communication characteristic" or "message filtering policy" in the
Specification that would require a different interpretation.
The claimed "communication characteristic of an inter-broker
communication link" is broad enough to encompass the characteristic of
whether an inter-broker communication link is effective to communicate
with a server. If the server is down, the link is not effective to communicate
with that server. We also agree with the Examiner that a "message filtering
policy" can mean "how to deal with the message" (Ans. 13). The claimed
"message filtering policy" is broad enough to encompass a decision to
communicate or not to communicate a message over a particular link.
Therefore, the decision to communicate or not communicate a message over
a particular link depending upon whether a server is up or down, as taught
by Narasimhan, meets the claimed "selecting a message filtering policy
which is appropriate for the communication characteristic." Appellant has
not presented credible evidence or argument to shown error in the claim
interpretation or in the fact finding regarding Narasimhan.
Therefore, Appellant has not shown that the Examiner erred in finding
that the combination of Owens and Narasimhan teaches or suggests a means
"for selecting a message filtering policy which is appropriate for the
communication characteristic," as claimed.
Appellant's argument regarding whether Owens teaches automatically
selecting filtering policies is not germane. As the Examiner has pointed out
(Ans. 14), no such limitation is claimed.
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Appellant's argument regarding the message filter policy selection
means being separate is not convincing. As the Examiner stated in the
November Communication, "Owens' message sender 34 can be construed as
the publishing application and Owens' message reciever [sic] 24 can be
construed as the subscriber application program." We agree with the
Examiner's statement in the November Communication that "[e]verything
inbetween the publisher and subscribers can be construed as 'separate.'" In
particular, the CompuServe Service 14 and the Premiere Service 16 are
inbetween the message sender 34 and the message receiver 24. (See FF 2;
Owens, Fig. 1.) Also, the CompuServe Service 14 and/or the Premiere
Service 16 will include a means for selecting a message filter policy (i.e.,
rerouting in event of failure) when the teachings of Owens are combined
with the teachings of Narasimhan (see Ans. 4-5; FF 2-4), especially the
teaching in Narasimhan that message servers 103 and 105 may be
configured to recognize failure conditions (FF 4). Because the CompuServe
Service 14 and the Premiere Service 16 are separate from the message
sender 34 and the message receiver 24, the means for selecting a message
filter policy is separate from the publisher and subscriber application
programs.
Therefore, Appellant has not shown that the Examiner erred in finding
that the combination of Owens and Narasimhan teaches or suggests that "the
means for selecting a message filter policy is separate from the publisher and
subscriber application programs," as claimed.
Appellant's argument that the proposed combination of Owens and
Narasimhan would not result in the claimed invention is not persuasive. The
Examiner has set forth a prima facie case explaining how each and every
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claim limitation is met by the applied prior art. Appellant has not provided
convincing evidence or argument to rebut the prima facie case.
Appellant's argument that the proposed modification would
impermissibly change the principle of operation of Owens is not convincing.
The Examiner found that "[i]t would have been obvious to one of ordinary
skill in the art to combine the teaching of Owens with Narasimhan in order
to incorporate a backup service to the system of Owens, thereby providing
redundancy by using alternate source servers (i.e. the Premiere service of
Owens), mirrored databases, and alternate destination servers (i.e. the
CompuServe service of Owens) as supported by Narasimhan (col. 6, line 65
to col. 7, line 14)." (Ans. 4-5.) The Examiner found that this combination
"would provide an ability for the users of the system of Owens to receive
their messages via their respective systems even though the CompuServe
server is down or a message is unreachable via the particular network or
link, thereby ensuring that a message gets routed appropriately to the user."
(Ans. 5.) Appellant has not provided convincing evidence or argument as to
how incorporating a backup service, as taught by Narasimhan, in the system
of Owens would impermissibly change the operating principle of Owens.
Therefore, Appellant has not shown that the Examiner erred by
combining the applied references because Appellant has not shown that the
proposed modification would impermissibly change the principle of
operation of Owens.
Accordingly, we conclude that Appellant has not shown that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a). As discussed,
claims 4, 10-14, and 16 were not argued separately and fall together with
claim 1.
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Claim 2
The Examiner presented a prima facie case of obviousness with
respect to claim 2. (Ans. 5.) Appellant states that "[o]n pages 14 and 15 of
the Second Amendment, Appellant separately argued that claim 2 further
distinguishes the claimed invention over the applied prior art." (App. Br. 8.)
However, no such arguments were presented in the Briefs. Therefore, as
discussed supra, we consider these arguments with respect to claim 2 to be
waived.
Accordingly, Appellant has not rebutted the Examiner's prima facie
case of obviousness with respect to claim 2. Thus, we conclude that
Appellant has not shown that the Examiner erred in rejecting claim 2 under
35 U.S.C. § 103(a).

Claim 3
The Examiner presented a prima facie case of obviousness with
respect to claim 3. (Ans. 5-6.) Appellant states that "[o]n page 15 of the
Second Amendment, Appellant separately argued that the Examiner did not
specifically identify, within the applied art, the teachings allegedly
disclosing the claimed features recited in claim 3." (App. Br. 8.) However,
no such arguments were presented in the Briefs. Therefore, as discussed
supra, we consider the arguments with respect to claim 3 to be waived.
Accordingly, Appellant has not rebutted the Examiner's prima facie
case of obviousness with respect to claim 3. Thus, we conclude that
Appellant has not shown that the Examiner erred in rejecting claim 3 under
35 U.S.C. § 103(a).

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§ 103 Rejection - Owens / Narasimhan / Hurst / Khan
With respect to claims 5 and 6, Appellant summarily alleges that these
claims are not unpatentable over the applied references for the same reasons
discussed with respect to claim 1 and because "Hurst and Khan do not cure
the argued deficiencies of Owens and Narasimhan." (App. Br. 8.) Because
Appellant has not provided any arguments regarding Hurst and Khan, or any
additional arguments for claim 1, we will sustain the rejection for the
reasons discussed with respect to independent claim 1, from which claims 5
and 6 depend.

§ 103 Rejection - Owens / Narasimhan / Delaney
Appellant summarily alleges that claim 7 is not unpatentable over the
applied references for the same reasons discussed with respect to claim 1
and because "Delaney does not cure the argued deficiencies of Owens and
Narasimhan." (App. Br. 8-9.) Because Appellant has not provided any
arguments regarding Delaney, or any additional arguments for claim 1, we
will sustain the rejection for the reasons discussed with respect to
independent claim 1, from which claim 7 depends.

§ 103 Rejection - Owens / Narasimhan / Delaney / Khan
With respect to claims 8 and 9, Appellant summarily alleges that these
claims are not unpatentable over the applied references for the same reasons
discussed with respect to claim 1 and because "Delaney and Khan do not
cure the argued deficiencies of Owens and Narasimhan." (App. Br. 9.)
Because Appellant has not provided any arguments regarding Hurst and
Khan, or any additional arguments for claim 1, we will sustain the rejection
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for the reasons discussed with respect to independent claim 1, from which
claims 8 and 9 depend.

CONCLUSION
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown that the Examiner erred in rejecting claims 1-14
and 16.

DECISION
The rejection of claims 1-14 and 16 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

MAT

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