Ex Parte Kennedy

Board of Patent Appeals and Interferences

Feb 26, 2008

10092170 (B.P.A.I. Feb. 26, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOHN G. KENNEDY
____________________

Appeal 2007-1894
Application 10/092,1701
Technology Center 2100
____________________

Decided: February 26, 2008
____________________

Before ALLEN R. MACDONALD, JAY P. LUCAS, and
JOHN A. JEFFERY, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed June 3, 2002. The real party in interest is Sun
Microsystems, Inc.

Appeal 2007-1894
Application 10/092,170

STATEMENT OF CASE
Appellant appeals from a final rejection of claims 1 to 40 under
authority of 35 U.S.C. § 134. The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
Appellant’s invention relates to a system and method for determining
the availability of a network system on a continuing basis. In the words of
the Appellant:
Independent claim 1 is directed toward a system comprising a
network system and a plurality of network components. A host
computer system is coupled to the network system and is configured
to determine the availability of the network system by determining the
network configuration, detecting a failure of one of its components,
and determining and storing an indication of the availability of the
network components. See, e.g., FIG. 2, and paragraphs 0032 and
0036.
To determine the network configuration, the host computer
system is configured to perform system discovery. As described in
Appellant's specification, a system discovery agent executing on host
101 may be configured to perform system discovery and to provide
the system discovery data to a system availability agent. In some
embodiments, the system discovery agent may create a data file
including the system discovery data or may provide a pointer to a data
structure including the system discovery data. System discovery data
may indicate a configuration of the plurality of network components
and may be gathered in a variety of ways.2

2 See, e.g., the present disclosure, at Figs. 1 and 2; ¶¶ 0022-0025 and 0036;
see also the discussion of claim 7, infra, for a more detailed summary of the
methods by which the host computer system of claim 1 may perform system
discovery.
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Application 10/092,170

Claim 1 is exemplary:
1. A system, comprising:
a network system comprising a plurality of network components;
a host computer system coupled to the network system, wherein the
host computer system is configured to:
perform system discovery to generate data indicative of a
configuration of the plurality of network components;
detect a failure of one of the components included in the
plurality of network components;

in response to identifying the failed component, update an
availability of the network system using the data
indicative of the configuration of the plurality of
network components; and
store data indicative of the availability of the network system.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chirashnya US 2002/0019870 A1 Feb. 14, 2002
(filed 6/28/01)

Noy US 2003/0051049 A1 Mar. 13, 2003
(filed 8/13/02)

Rogers US 2003/0048782 A1 Mar. 13, 2003
(filed 11/1/02)

Rejections (R1 through R6):
R1: Claims 1 to 15, 22 to 31, and 33 to 36 stand rejected under
35 U.S.C. § 102(e) for being anticipated by Chirashnya.
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Application 10/092,170

R2: Claims 16 to 19, 32, 37, 38, and 40 stand rejected under
35 U.S.C. § 103(a) for being obvious over Chirashnya.
R3: Claims 20 and 21 stand rejected under 35 U.S.C. 103(a) for
being obvious over Chirashnya in view of Rogers.
R4: Claims 12 to 33 and 37 to 40 stand rejected under 35 U.S.C.
103(a) for being obvious over Chirashnya in view of Noy.
R5: Claim 39 stands rejected under 35 U.S.C. § 103(a) for being
obvious over Chirashnya in view of Noy.
R6: Claim 40 stands rejected under 35 U.S.C. § 103(a) for being
obvious over Chirashnya in view of the Examiner’s “Official Notice.”
Appellant contends that the claimed subject matter is not anticipated
by Chirashnya, or rendered obvious by Chirashnya alone, or in combination
with Rogers or Noy, as Chirashnya fails to teach the claimed limitations and
the Rogers and Noy references post-date the invention by the Appellant.
The Examiner contends that all claims are properly rejected.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
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) (2004).3

3 Appellant has not presented any substantive arguments directed separately
to the patentability of the dependent claims or related claims in each group,
except as will be noted in this opinion. In the absence of a separate
argument with respect to those claims, they stand or fall with the
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Application 10/092,170

We reverse the rejections.
ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a) (2004). The issue turns on
whether 1) there is a disclosure in the Chirashnya reference to the claimed
limitation of “availability of the network system;” and 2) the Examiner has
properly rejected claims 20, 21, and 39 over the cited Rogers and Noy
references.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant has invented a system, method, and computer program
which compute the availability of a network system. The invention
performs a system discovery which determines the configuration of
the components included in the network system (Spec. 8, ¶ 0020).
The topology may be discovered by sending ID requests to each
component on the network, and receiving back unique identifiers with
connection information (Ibid., ¶ 0021). A network system
availability is calculated, expressed in terms of a probability, by one
of certain recognized methodologies (Ibid. 15, ¶ 40 et seq.). If
representative independent claim. See In re Young, 927 F.2d 588, 590 (Fed.
Cir. 1991).

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Application 10/092,170

component failure is detected, then the network system availability is
recalculated (Spec. 10, ¶ 0025).
2. The Chirashnya patent teaches a system for diagnosing a network and
calculating probability of malfunctions of components. When faults
are sensed in the network, the offending components are identified
and the probability of malfunctions is recalculated (¶¶ 0029 to 0031).
Malfunction probabilities are expressed in terms of failure rates, such
as estimated mean time between failures (MTBF) (¶ 0054).
3. Rogers, a U.S. Patent Application Publication, teaches the calculation
of operational availability of one or more networks. Rogers was filed
on November 1, 2002, after the filing date of the instant application,
but claims benefit of a provisional application, 60/344,448 filed
November 1, 2001, before the filing date of the instant application.
Rogers also claims benefit of being a continuation-in-part of
Application 09/446,744, filed December 22, 2000, before the filing
date of the instant application.
4. Noy, another U.S. Patent Application Publication, focuses on the
discovery of the paths in a complicated network of device
components. Noy was filed on August 13, 2002, after the date of the
instant application, but claims the benefit of a provisional application,
60/312,080, filed on August 15, 2001, before the date of the instant
application’s filing.

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Application 10/092,170

PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] 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)).
“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992).
“To reject claims in an application under section 103, an examiner
must show an unrebutted prima facie case of obviousness. . . . On appeal to
the Board, an applicant can overcome a rejection by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.” In re Rouffet,
149 F.3d 1350, 1355 (Fed. Cir. 1998) (citations omitted).
“Shortly after the creation of this court, Judge Rich wrote that ‘[t]he
descriptive part of the specification aids in ascertaining the scope and
meaning of the claims inasmuch as the words of the claims must be based
upon the description. The specification is, thus, the primary basis for
construing the claims.” Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d
448, 452 (Fed. Cir. 1985). On numerous occasions since then, we have
reaffirmed that point . . .” Phillips v. AWH Corp., 415 F.3d 1303, 1315
(Fed. Cir. 2005).
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Our reviewing court states in In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989) that “claims must be interpreted as broadly as their terms reasonably
allow.” Our reviewing court further states that "the 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.

ANALYSIS
From our review of the administrative record, we find that the
Examiner has presented a prima facie case for the rejections of Appellant’s
claims under 35 U.S.C. §§ 102 and 103. The prima facie cases are presented
on pages 3 to 14 of the Examiner’s Answer.

Rejection of claims 1 to 15, 22 to 31 and 33 to 36 under
35 U.S.C. 102(e) over Chirashnya
Rejection of Claims 16 to 19, 32, 37, 38 and 40 under
35 U.S.C. 103(a) over Chirashnya
In response to the prima facie case (see In re Rouffet cited above),
Appellant presents a number of arguments against each of the rejections.
In his most compelling argument, Appellant argues (Reply Br. 4) that
“availability of the network system,” which is a limitation in each of the
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independent claims, is a term specifically defined in the Appellant’s
Specification (Id.).
Fig. 1 shows one embodiment of a method of calculating the
availability of a network system or subsystem. The availability
calculation may determine the instantaneous availability of the
network system. The instantaneous availability of a system is
the probability that the system is available (i.e., in a state to
perform a required function) under a given set of circumstances
at a given time.

(Spec. 7, ¶ 0018) (emphasis omitted).
Not only is the term defined in ¶ 0018,4 but it is mentioned in various
other places throughout the whole Specification, each time meaning
specifically a calculated indication of the availability of the network as a
whole, and as calculated according to various methods described in the
Specification (Reply 5, top). This is clearly a case of a specific meaning of
the term, as recited in Phillips v. AWH Corp. (cited above). Throughout the
Specification, various ways are presented for calculating the availability
using various statistical approaches (see e.g., Spec. ¶¶ 0036, 0040, and
0045). In all cases, the availability is expressed in probabilistic terms, with
the focus on the availability figure for the network. The availability is
expressed as a probability, a number between 0 and 1.
Turning to the prior art, Chirashnya maintains and updates a
collection of network topology information, including Mean Time Between
Failure information of the components. Furthermore, probabilities of a fault

4 Appellants attribute the quoted paragraph to ¶ 0020 in the Reply Brief, as
that is the number in the published application. The paragraph number in
the Specification of record is 0018.
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Application 10/092,170

are described (e.g., Chirashnya 4, ¶ 0037). As faults occur, the probabilities
of malfunction are updated. However, as mentioned in the reference
(¶ 0054), the “malfunction probabilities in fault model 50 are typically
expressed in terms of failure rates, such as estimated mean time between
failures (MTBF).” Significantly, however, the availability, as defined by
Appellant in the Specification, is not taught by this reference, and not
suggested by it. Simply put, determining a system’s MTBF as in Chirashnya
is not determining its “availability” in light of Appellant’s definition of the
term. Although, in view of the teachings of the other references discussed
below, we are sympathetic to the Examiner’s arguments concerning the
similarity of the analyses performed in Chirashnya to those claimed, we
cannot make the leap of obviousness (let alone anticipation) in view of the
expression of the clearly defined claim limitation “availability of the
network system” – a feature which is simply lacking in Chirashnya.
We, thus, find error in the rejections under 35 U.S.C. §§ 102(e) and
103 of the Examiner based on the teachings of Chirashnya alone.

Rejections of
Claims 20 and 21 under 35 U.S.C. 103(a) over Chirashnya in view of
Rogers, and
Claim 39 under 35 U.S.C. 103(a) over Chirashnya in view of Noy
A review of the contents of the Rogers reference indicates that in
¶ 0007 Rogers supplies a link teaching the relationship between operational
availability and MTBF that may have been helpful in this analysis.
However, that particular teaching in Rogers is not supported by the contents
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Application 10/092,170

of the Rogers provisional application, 60/344,448, filed on November 1,
2001, nor in its parent application 09/746,744, filed on December 22, 2000.
The Noy reference, likewise, does not teach the noted relationship.
As the Chirashnya reference cannot be relied upon for teaching the
claimed limitations of claims 20, 21 and 39, we hereby find error the
Examiner’s rejection of those claims under 35 U.S.C. §103.
Appellant challenged the use of the references to Rogers and Noy in
the Examiner’s rejection of claims 20 and 21 and in the rejection of claim 39
respectively (App. Br. 21-22; Reply Br. 20-21). In view of our analysis
above, such a challenge is moot, and need not be decided at this time.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner erred in rejecting claims 1 to 40 under 35 U.S.C. §§ 102 and
103.

OTHER ISSUES
New Ground of Rejection Under 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection under
35 U.S.C. § 101 for claims 7-22. 35 U.S.C. § 101 provides:
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.

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Application 10/092,170

Claims 7-22 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.
Independent claim 7 recites, in pertinent part, a computer readable
medium comprising program instructions executable to implement the
recited functions. The Specification indicates that “[i]n some embodiments,
the computer readable medium may be a carrier medium such as a network
and/or a wireless link upon which signals such as electrical, electromagnetic,
or digital signals may be conveyed” (Spec. 14, ¶ 0035; emphasis added).
Thus, reading independent claim 7 in light of the Specification, the recited
“computer readable medium” of claim 7 encompasses a carrier medium that
conveys a signal.
Signals are not patentable subject matter under § 101. In re Nuijten,
500 F.3d 1346, 1357 (Fed. Cir. 2007). Although the court in Nuijten
acknowledged the Board’s finding that an allowed claim reciting a storage
medium with a signal stored thereon5 “nominally puts the claims into the
statutory category of a ‘manufacture,’” this claim was nonetheless not before
the court. See Nuijten, 500 F.3d, at 1351; see also id. at 1357.
In any event, a carrier medium that conveys a signal (e.g., a carrier
wave) is distinguished from a tangible medium that stores a signal (e.g., a
disk, memory, etc.), particularly with respect to the functionality of
independent claim 7. Claim 7 calls for instructions that interact with the
computer to perform specific functions. It is our view that the computer

5 See Nuijten, 500 F.3d at 1351 (“Nuijten’s allowed Claim 15 is directed to
‘[a] storage medium having stored thereon a signal with embedded
supplemental data…’”).
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cannot perform the claimed functions while the instructions are within
signals conveyed by a carrier wave.
Specifically, information sent by a carrier wave conveying signals is
transmitted by modulating the carrier wave or signal with the information.
This information must be received and demodulated before the information
is available for use. Thus, the information, while on the carrier wave or
signal, is unavailable to the computer for performing the functions recited in
independent claim 7. It is also likely that all the information necessary to
perform the functions of claim 7 never exists within the carrier wave or
signal at any one time. In other words, it is typical for information that is
transmitted by signals conveyed by carrier waves to begin to be received at
the receiver before all the information is transmitted. Therefore, it appears
to us that complete program instructions for carrying out the claimed
invention cannot exist while the information is being transmitted via signals
conveyed by a carrier wave.
Furthermore, while the exemplary carrier media (i.e., a network
and/or a wireless link) disclosed in paragraph 0035 of the Specification
implicates physical carriers of information, the disclosure hardly limits the
carriers to these examples. Rather, nothing in the passage precludes the use
of any tangible means of information carriage.6 Indeed, non-tangible signals
are specifically recited in the last sentence of this paragraph.

6 Cf. Nuijten, 500 F.3d, at 1353 (“[W]hile the claims are limited so as to
require some physical carrier of information, they do not in any way specify
what carrier element is to be used.”) (emphasis in original).

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Thus, when read in light of the Specification, independent claim 7
includes both statutory subject matter (signals stored on a tangible medium)
and non-statutory subject matter (signals conveyed by a carrier medium).
According to recent USPTO interim guidelines, however, such claims must
be amended to recite solely statutory subject matter.7
For the foregoing reasons, independent claim 7 or dependent claims 8-
22 do not recite statutory subject matter under 35 U.S.C. § 101.
37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (amended effective Sept. 13, 2004, by final rule notice
69 Fed. Reg. 49,960 (Aug. 12, 2004), 1286 Off. Gaz. Pat. Office 21 (Sept. 7,
2004)). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(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. . . .

7 See Manual of Patent Examining Procedure (MPEP) (8th ed., Rev. 6,
Sept. 2007) § 2106(C)(2)(2)(a) (“[A] claim that can be read so broadly as to
include statutory and nonstatutory subject matter must be amended to limit
the claim to a practical application.”).
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

DECISION
The Examiner's rejection of claims 1 to 40 is reversed.
We enter a new ground of rejection under 37 C.F.R. § 41.50(b) for
claims 7 to 22 as failing to recite statutory subject matter under 35 U.S.C.
§ 101.
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).

REVERSED
37 C.F.R. § 41.50(b)

clj

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