Ex Parte Kline

Patent Trial and Appeal Board

Apr 12, 2016

13072354 (P.T.A.B. Apr. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/072,354 03/25/2011 Christopher N. Kline
30449 7590 04/14/2016
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
END920030058US2 5819
EXAMINER
SWARTZ, STEPHENS
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
04/14/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
30449@IPLA WUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER N. KLINE
Appeal2013-008865 1
Application 13/072,3542
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1--4, 6-12, 14--18, and 20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1. Our decision references Appellant's Appeal Brief ("Br.," filed
January 21, 2013), the Examiner's Answer ("Ans.," mailed April 15, 2013),
and Final Office Action ("Final Act.," mailed August 24, 2012).
2. Appellant identifies International Business Machines Corporation as the
real party in interest (Br. 1 ).
Appeal2013-008865
Application 13/072,354
CLAIMED fNVENTION
Appellant's claimed invention relates generally to maintaining a
computer system and scheduling maintenance tasks (Spec. i-f 2).
Claim 1, reproduced below with added bracketed notations, is
illustrative of the subject matter on appeal:
1. A method for detecting a problem with a server, the
method comprising the steps of:
[a] during each of a plurality of first periods a computer
monitoring respective amounts of available disk space in the
server, and for each of the first periods, responsive to the
respective amount of available disk space being less than a first
predetermined threshold, the computer executing a program tool
to increase the available disk space;
[b] during each of a plurality of second periods the
computer monitoring respective amounts of utilization of the
server other than utilization of the disk space, and for each of the
second periods, responsive to the respective amount of utilization
of the server other than utilization of the disk space being greater
than a second predetermined threshold, the computer executing
a program tool to reduce the utilization of the seP1er other than
utilization of the disk space; and
[ c] the computer automatically notifying an administrator
of a capacity problem with the server based in part on a number
of times that the program tool to increase the available disk space
and the program tool to reduce the utilization of the server have
been executed during the plurality of first periods and the
plurality of second periods.
REJECTIONS
Claims 7 and 8 are rejected under 35 U.S.C. § 112, fourth paragraph,
as being in improper form for failing to incorporate all of the limitations of
the claim to which it refers.
2
Appeal2013-008865
Application 13/072,354
Claims 1--4, 6-12, 14--18, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Graf (US 6,412,026 Bl, iss. June 25, 2002)
and Walter (US 4,914,657, iss. Apr. 3, 1990).
ANALYSIS
Dependent claims 7 and 8 rejected under 35 US.C. § 112,fourth
paragraph, as being of improper dependent form for failing to further limit
the subject matter of a previous claim
Appellant argues that the Examiner erred in rejecting dependent
claims 7 and 8 "'as being in improper form for failing to incorporate all of
the limitations of the claim to which it refers"' (Br. 6-7 (citing Final Act.
3)). More particularly, Appellant argues that claims 7 and 8, which depend
on independent method claim 1, are analogous to a product by process
claim, and as such, "comply with 35 USC 112, fourth paragraph because
they incorporate all the limitations of the base claim 1" (Br. 7).
\Ve are persuaded by the i\ppellant' s argument that claims 7 and 8 are
analogous to a product by process claim, and as such, we do not sustain the
Examiner's rejection of claims 7 and 8 under 35 U.S.C. § 112, fourth
paragraph.
Independent claims 1, 9, and 15, and dependent claims 2-4, 6, 10-12, 14,
16-18, and 20 rejected under 35 US.C. § 103(a) as unpatentable over
Graf and Walter
Appellant argues claims 1--4, 6, 9-12, 14--18, and 20 as a group (see
Br. 9-13). We select independent claim 1 as representative. The remaining
claims stand or fall with independent claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
3
Appeal2013-008865
Application 13/072,354
We are not persuaded by Appellant's argument that the Examiner
erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) because the
combination of Graf and Walter fails to disclose or suggest limitation [ c] of
claim 1 which recites
the computer automatically notifying an administrator of a
capacity problem with the server based in part on a number of
times that the program tool to increase the available disk space
and the program tool to reduce the utilization of the server have
been executed during the plurality of first periods and the
plurality of second periods.
(Br. 9--13). More particularly, Appellant submits that, in Graf, an
administrator is notified if the daemon cannot be restarted after a threshold
number of attempts (id. 9), but argues that "Graf does not monitor how many
times the daemon executes to increase the available disk space or reduce the
utilization of the server other than utilization of the disk space" (id. 10).
We agree with the Examiner that the combination of Graf and Walter
discloses the argued limitation (see Final Act. 4--6; see also Ans. 4--7.
Graf is directed to a system for continually monitoring a group of
computers, detecting conditions associated with computer operations, and
performing automatic actions in response to certain conditions (Graf,
Abstract; col. 3, 11. 19--27). Graf discloses various rules are tested in
periodic intervals, i.e., rules are tested during multiple periods (id. col. 8, 11.
1-67). Graf discloses that it generates alerts and actions for problems with
available disk space being less than a threshold (id. col. 34, 1. 61- col. 35, 1.
18; see also id. Tables 11, 15, 17, 20, 21) and also discloses that a system
administrator may be notified "when the load average of a computer remains
4
Appeal2013-008865
Application 13/072,354
above a certain threshold so that the computer is now non-responsive" (id.
col. 13, 11. 29-45).
Walter is directed to
an operations controller for each node in a fault tolerance
multiple node processing system. Each node has an applications
processor for executing a predetermined set of tasks and an
operations controller for establishing and maintaining its own
node in synchronization with every other node in the system, for
controlling the operation of its own node, and for selecting the
task to be executed by its own applications processor in
coordination with all of the other nodes in the system through the
exchange of inter-node messages.
(Walter col. 2, 11. 21-32). Walter describes counting a number times that a
swapper has been initiated, i.e., moved to increase efficiency (see Ans. 5
(citing Walter col. 57, 11. 43---67)).
Appellant also argues that the combination of Graf and Walter fail to
disclose or suggest that "[i]f the program tools of the present invention are
executed more than a threshold number of times, a computer notifies an
administrator of a capacity problem" (Br. 12). However, claim 1 does not
recite notifying an administrator of a capacity problem when "the program
tools of the present invention are executed more than a threshold number of
times;" but rather, recites "notifying an administrator of a capacity problem
with the server based in part on a number of times," as recited by limitation
[c]. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed.
Cir. 2005) (although the specification can be examined for proper context of
a claim term, limitations from the specification will not be imported into the
claims). Although limitation [a] recites "executing a program tool to
increase the available disk space" when "available disk space [is] less than a
5
Appeal2013-008865
Application 13/072,354
first predetermined threshold" and limitation [b] recites "executing a
program tool to reduce the utilization of the server other than utilization of
the disk space" when "utilization of the disk space [is] greater than a second
predetermined threshold;" independent claim 1 does not recite any threshold
upon which "the computer automatically notifyi[ es] an administrator," as
recited by limitation [ c]. Thus, the "number of times," as required by
limitation [ c ], may be interpreted to mean that an administrator is notified
each time there is an issue with available disk space or server utilization
under a broad, but reasonable interpretation.
In view of the foregoing, we sustain the rejection of claim 1 under 35
U.S.C. § 103(a). For the same reasons, we also sustain the Examiner's
rejection of claims 2--4, 6, 9--12, 14--18, and 20, which fall with claim 1.
Dependent claims 7 and 8 rejected under 35 USC§ 103(a) as
unpatentable over Graf and Walter
Claims 7 and 8 depend from independent claim 1. Appellant
generally describe the additional subject matter set forth in claims 7 and 8
(Br. 13-14), and asserts, "[c]laims 7 and 8 distinguish over Graf and Walter
for the same reasons as claim 1" (id. 13). However, we are not persuaded,
for the reasons set forth above with respect to claim 1, that the Examiner
erred in rejecting independent claim 1 under 35 U.S.C. § 103(a), and so we
also sustain the Examiner's rejection under 35 U.S.C. § 103(a) of claims 7
and 8.
6
Appeal2013-008865
Application 13/072,354
DECISION
The Examiner's rejection of claims 7 and 8 under 35 U.S.C. § 112,
fourth paragraph, is reversed.
The Examiner's rejection of claims 1--4, 6-12, 14--18, and 20 under
35 U.S.C. § 103(a) 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)(l )(iv).
AFFIRMED
7