Ex Parte Ismail

Board of Patent Appeals and Interferences

Mar 15, 2011

10788099 (B.P.A.I. Mar. 15, 2011)

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.
10/788,099 02/26/2004 Labeeb K. Ismail 007412.00068 7917
71867 7590 03/15/2011
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
LIE, ANGELA M
ART UNIT PAPER NUMBER
2163
MAIL DATE DELIVERY MODE
03/15/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LABEEB K. ISMAIL
____________

Appeal 2009-009990
Application 10/788,099
Technology Center 2100
____________

Before JOHN A. JEFFERY, DEBRA K. STEPHENS, and
JAMES R. HUGHES, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-9, 11-21, and 28-32. Claims 10, 22-27, 33, and 34
have been canceled. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm the rejection of claims 1-9, 11-13, and 21 under 35 U.S.C.

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.
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§ 102(e), but do not reach the question whether the Examiner’s rejection of
claims 14-20 and 28-32 under § 102 is erroneous. We enter a new ground of
rejection under 35 U.S.C. § 112, second paragraph for claims 14-20 and 28-
32.

STATEMENT OF THE CASE
Appellant’s invention allocates resources within a client device, such
as personal video recorder (PVR). See generally Spec. 1. Claim 1 is
reproduced below with the key disputed limitations emphasized:
1. A method for adapting a resource allocation, comprising:
receiving, at a client device, a provisioning command
including resource allocation parameters indicative of an allocation
of client device resources for a plurality of client applications;
responsive to said command, determining and storing at said
client device allocation provisioning information, said allocation
provisioning information indicating an apportionment of said client
device resources into a plurality of volumes, each volume allocated
for use by a respective one of said plurality of client device
applications, said allocation provisioning information being
independent of the use or reservation for the use of said client
device resources to store particular data;
responsive to a request by said at least one client application
for said client device resources at said client device, determining if
said request is consistent with said allocation provisioning
information; and
if said request is consistent with said allocation provisioning
information, granting said request.

The Examiner relies on the following as evidence of unpatentability:
Westbrook US 2005/0050577 A1 Mar. 3, 2005
(filed Jan. 8, 2003)

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THE REJECTION
The Examiner rejected claims 1-9, 11-21,2 and 28-32 under 35 U.S.C.
§ 102(e) as anticipated by Westbrook. Ans. 3-8.3

THE CONTENTIONS
Regarding representative independent claim 1, the Examiner finds that
Westbrook discloses all recited limitations, including Paragraphs 0021- 0022
disclosing that the allocation provisioning information is independent of the
use or reservation for use of the client device’s resources to store particular
data. See Ans. 3-4, 9-10. Appellant mainly argues that both the capture and
recording requests are recording requests, and thus neither allocates
resources independent of, or distinct from, actual use or reservation for use
on the client device. See App. Br. 6-12; Reply Br. 2-8. According to
Appellant, claim 1 recites provisioning commands that allocate memory for
use by a specific software application, while Westbrook only teaches a
command to use memory to record the actual programs. App. Br. 7-9.
The issue before us, then, is as follows:

2 Claim 21 is not included in the heading of the rejection (Ans. 3) nor
specifically addressed in the body of the rejection (see Ans. 3-8). However,
the scope of claim 21 is encompassed by claim 28, which was discussed in
the rejection (see Ans. 7). We therefore presume—like Appellant (App. Br.
5)—that claim 21 is rejected over Westbrook under § 102.
3 Throughout this opinion, we refer to (1) the Appeal Brief filed July 9,
2008; (2) the Examiner’s Answer mailed October 1, 2008; and (3) the Reply
Brief filed December 1, 2008.
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ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Westbrook discloses allocation provisioning information being
independent of using, or reserving for using, a client device’s resources to
store particular data?

FINDINGS OF FACT (FF)
1. Appellant’s “Allocation Provisioning Information” identifies: (a)
software program groups allowed to make reservations; (b) the maximum
value allowed for each software group or program; (c) software program
groups that are allowed to create Logical Volumes; and (d) quota values to
be set for the Logical Volumes. The set of software programs allowed to
make reservations may be specified as software programs with an associated
attribute tag having a specified value. Spec. 7:28-8:9; 13:10-27.
2. Westbrook’s system allows a service provider to remotely control
storage behavior in a client system. “Capture requests” are sent by the
service to the client systems. These requests reflect local storage
management decision about how the client system storage is allocated or
partitioned. Westbrook, ¶¶ 0021-22, 0039, 0249.
3. Westbrook states that every function that a user can control,
including maintenance and control aspects of a client system, are capture
requests. Westbrook’s capture requests include information specifying the
scheduling of and the actual recordings. Westbrook, ¶¶ 0021-22, 0039,
0233, 0236-38, 0249.

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ANALYSIS
Claims 1, 2, 9, 11-13, and 21
We begin by addressing the key disputed limitation of representative
claim 1 which calls for, in pertinent part, the allocation provisioning
information being independent of the use or reservation for use of a client
device’s resources to store particular data. Appellant argues on several
occasions that Westbrook’s request is not “independent of the use or
reservation for the use of said client device resources” as recited in claim 1.
See App. Br. 6 (stating “the ‘capture requests’ of Westbrook are not
allocations of resources separate and distinct from the reservation or use of
the resource.”) Yet, a careful reading of claim 1 requires allocation
provisioning information – not a provisioning command or a request itself –
to be independent of the use or reservation, and also to indicate how the
client device’s resources are apportioned into volumes. Since Appellant
provides examples of “allocation provisioning information” but does not
define the term (see FF 1), we construe this phrase broadly but reasonably to
include any information, other than use or reservation of use, that indicates
how the client device’s resources are allocated into volumes as required by
claim 1. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004).
Westbrook discloses that a capture request (e.g., a provisioning
command) includes functions that control aspects of the client system or
device, including the client system’s storage behavior. See FF 2-3.
Specifically, Westbrook’s capture request contains resource allocation
parameters (e.g., storage management decisions) indicative of allocating
client device resources into volumes (e.g., how local storage is partitioned).
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See FF 2. That is, while Westbrook’s capture request may include
information related to recording (see FF 3), Westbrook’s request (i.e.,
command) can include other information, including how the client device’s
storage is allocated or partitioned (see FF 2). Thus, part of Westbrook’s
command will contain “allocation provisioning information” (e.g., local
storage management decisions) indicating how storage is partitioned into
volumes, and is thus independent of use or reservation for use of the client
device resources to store particular data.
Additionally, once the capture request is received by the client device
(e.g., responsive to the command), Westbrook determines how to allocate
the local storage space as instructed, and then partition the storage into
volumes accordingly. See FF 2. In effect, Westbrook’s partitioning stores
“allocation provisioning information” indicating an apportionment of the
client device resources into volumes, and thus concerns resource allocation
at a level above actual resource allocation during recordings (see App. Br.
8). Contrary to Appellant’s assertions (id. at 6, 10), we therefore find that
Westbrook’s allocation provisioning information is independent of the use or
reservation for use of a client device’s resources to store particular data as
required by claim 1.
For the first time in the Reply Brief, Appellant asserts that the
Westbrook fails to have two levels of partitioning: (1) allocation
provisioning, and (2) actual use. See Reply Br. 3-4. This untimely argument
is waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) (“[T]he reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner’s rejections, but were not.”). Nonetheless, as noted above,
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Westbrook’s requests can include information about resource allocation.
See FF 2. Moreover, we agree with the Examiner (Ans. 11)—and Appellant
admits (Reply Br. 3)—that actual allocation or partitioning based on actual
use is not recited in claim 1.
Lastly, we note that independent claim 21 does not require that
allocation provisioning information be independent of the use or reservation
for use of a client device’s resources to store particular data. Thus,
Appellant’s arguments in this regard are not commensurate in scope with
claim 21.
For the foregoing reasons, Appellant has not persuaded us of error in
the anticipation rejection of representative claim 1, and claims 2, 9, 11-13,
and 21 not separately argued with particularity (App. Br. 6-12).

Claims 3-8
Appellant argues that claims 3 and 5 are distinguishable from
Westbrook because of what claims 3 and 5 recite. See App. Br. 13-14.
A statement that merely points out what a claim recites, however, is not an
argument for separate patentability. See 37 C.F.R. § 41.37(c)(1)(vii).
Additionally, as for claim 3, Appellant refers to the arguments made for
claim 1. See App. Br. 14. We are not persuaded by these arguments,
however, for the reasons stated above in connection with claim 1.
Accordingly, we therefore sustain the rejection.
Regarding claim 5, Appellant argues that the recited language is
inconsistent with any possible interpretation of Westbrook reserving
memory for recording program. App. Br. 14. We disagree. As noted
previously, claim 1 recites that the allocation provisioning information—not
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the request—is independent of use or reservation of use. And as noted
above, Westbrook’s capture requests can include more than just recording
information, such as local resource allocation or partitioning. See FF 2-3. In
any event, the Examiner did not map Westbrook’s reserving memory for
programs to be recorded to the recitations in claim 5. See Ans. 5. Thus, we
are not persuaded by Appellant’s contentions.
We are therefore not persuaded of error in the Examiner’s rejection of
claims 3 and 5. Accordingly, we sustain the Examiner’s rejection of these
claims, and claims 4 and 6-8 not separately argued with particularity.

NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
35 U.S.C. § 112, Second Paragraph
Under 37 C.F.R. § 41.50(b), we enter the following new grounds of
rejection for claims 14-20 and 28-32 under § 112, second paragraph, as
being indefinite.

ADDITIONAL FINDINGS OF FACT
4. Claim 14 recites an apparatus:
comprising a memory for storing software instructions which,
when executed by a processor, provide:
a volume manager (VM) for using resource allocation
parameters indicative of portions of client resources that may be
used by respective client device software programs having
attribute tags corresponding to said portions to determine
whether to allow said client device software programs to use
storage space in a storage device based on quotas associated
with said resource allocation parameters[.]

Claim 14, lines 1-8.

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5. Appellant maps the recited VM to steps 415, 436-438, and 442 in
Figure 4B. At step 415, a software program requests reservations on a
volume (e.g., reserve 5 GB of space) received by the VM at step 436. The
request is sent to a Monitor Application (MA) at step 437, which uses
Allocation Provisioning Information to decide whether to grant the request.
At step 442, the MA returns a value for the allowed space reservation if the
allocation provisioning information allows such a reservation. App. Br. 4;
Spec. 12:11-13:9; Fig. 4B.
6. Appellant explains that the VM maintains information about
quotas and enforces quotas by using Logical Volumes. For example, a quota
of 5 GB is set for a Logical Volume, and the space used for all recorded
programs in that Logical Volume should not exceed 5 GB at any time. Spec.
6:29-7:8.
7. Appellant’s provisioning request includes resource allocation
parameters associated with at least one application, and is indicative of an
application. The application set resource allocations are extracted from a
provisioning command at step 520 in Figure 5, and the available resources
are identified at step 530. These extracted application set resource
allocations define memory space, processing time, quality of service and
other criteria, and are used to allocate available resources at step 560. Spec.
1:25-31; 15:1-19; Fig. 5.

PRINCIPLES OF LAW
The test for definiteness under 35 U.S.C. § 112, second paragraph is
“whether those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
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Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).

ANALYSIS
Claim 14 recites a memory with software instructions that are
provided to a VM when executed by a processor. See FF 4.
Additionally, this VM uses “resource allocation parameters indicative of
portions of client resources that may be used by respective client device
software programs.” See id. Claim 14 further recites that the “software
programs” have “attribute tags corresponding to said [client resources’]
portions.” See id. However, we are unsure whether the succeeding
limitation “to determine whether to allow said client device software
programs to use storage space in a storage device” modifies the recited
attribute tags or resource allocation parameters. That is, claim 14 is
amenable to multiple plausible claim constructions.
Appellant indicates that the VM recitation is supported at pages
twelve and thirteen of the disclosure. See FF 5. Particularly, Appellant
cites to using allocation provisioning information to determine whether to
grant a request to reserve a volume, and this information includes an
attribute tag. See FF 1, 5. That is, the attribute tag has a specific value
that identifies the maximum value allowed for a software program. FF 1.
Based on this discussion, the phrase in claim 14 “to determine whether to
allow said client device software programs to use storage space in a
storage device” appears to modify the recited “attribute tags”—not the
“resource allocation parameters.”
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But the phrase following “to determine whether to allow said client
device software programs to use storage space in a storage device” in
claim 14 includes “based on quotas associated with said resource
allocation parameters.” See FF 4. Appellant’s disclosure discusses these
quotas in the context of allocation provisioning information, but not
when specifically addressing the attribute tag. See FF 1. Additionally,
Appellant notes that a VM—not an attribute tag—maintains and enforces
quotas, which may be considered a “resource allocation parameter.” See
FF 6. Moreover, Appellant’s disclosure supports the notion that the VM
uses its resource allocation parameters “to determine whether to allow
said client device software programs to use storage space in a storage
device based on quotas associated with said resource allocation
parameters” as recited in claim 14.
Alternatively, an ordinarily skilled artisan could reasonably
understand that the quotas, which are associated with—but are not—
resource allocation parameters (see FF 4), are used “to determine whether
to allow said client device software programs to use storage space” as
recited in claim 14. Also, the mapped portion cited by Appellant to
support this “determine” limitation (see App. Br. 4) indicates that the
MA—not the VM—decides whether to grant a request reservation for a
volume (i.e., determines whether to allow a program to use storage
space). See FF 5. Because claim 14 has at least two plausible claim
constructions, it is indefinite for that reason alone. See Ex parte
Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential).
Appellant must therefore more precisely define the metes and bounds of
the claimed invention to clarify this ambiguity.
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Additionally, we are not clear what the recited “resource allocation
parameters” in claim 14 are. According to Appellant, resource allocation
parameters are apparently “allocations of chunks of memory for use” (see
App. Br. 6 (emphasis omitted)), while claim 18 describes these
parameters “are specified as rules adapted for computing quotas” (see
Claim 18, lines 2-3). Appellant’s disclosure, however, indicates that
“resource allocation parameters” are included in a provisioning request
but does not define this term. See FF 7. At best, Appellant discusses
“resource allocation parameters” in connection with “resource
allocations” that are extracted from the request and define memory space,
processing time, quality of service, and other criteria. See id. Since each
of these possible “resource allocation parameters” are not the same, we
find that an ordinarily skilled artisan would not be able to reasonably
ascertain what the scope of the “resource allocation parameters”
encompasses when considered in light of the specification. See
Orthokinetics, 806 F.2d at 1576.
Claim 14 is therefore vague and indefinite because (1) the claim’s
elements are amenable to multiple plausible interpretations, and (2) it is
unclear from this record what is encompassed by the recited “resource
allocation parameters.” See Miyazaki, 89 USPQ2d at 1215. Dependent
claims 15-20 and 28-32 are equally indefinite for the same reasons.

REMAINING CLAIMS REJECTED OVER WESTBROOK
Although the Examiner rejected claims 14-20 and 28-32 under 35
U.S.C. § 102(e) over Westbrook (Ans. 6-8), since we cannot determine the
scope of claims 14-20 and 28-32 as noted above, we therefore need not
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reach the question of whether the Examiner’s anticipation rejection of these
claims is erroneous. See In re Steele, 305 F.2d 859, 862 (CCPA 1962). To
do otherwise would require considerable speculation regarding the scope and
meaning of key limitations of claim 14—speculation that obviates any
meaningful assessment of the Examiner’s application of the cited prior art to
the properly-construed claims—a proper interpretation which remains an
open question on this record. See id.

CONCLUSION
The Examiner did not err in rejecting claims 1-9, 11-13, and 21 under
§ 102. We do not reach the question whether the Examiner erred in rejecting
claims 14-20 and 28-32 under § 102, but enter a new ground of rejection for
these claims under 35 U.S.C. § 112, second paragraph.

ORDER
The Examiner’s decision rejecting claims 1-9, 11-13, and 21 is
affirmed. We enter new grounds of rejection under 37 C.F.R. § 41.50(b) for
claims 14-20 and 28-32.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). This section provides that “[a] new ground of rejection . . . shall
not be considered final for judicial review.”
Section 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 the appeal as to the rejected claims:
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(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 . . . .

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
37 C.F.R. § 41.50(b)

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BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051