Ex Parte Lake et al

Patent Trial and Appeal Board

May 20, 2014

11005529 (P.T.A.B. May. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN MICHAEL LAKE, WENJIAN QIAO,
SRINIVASAN K. RANGASWAMY, and
CHRISTOPHER PAUL VIGNOLA
____________________

Appeal 2011-013675
Application 11/005,529
Technology Center 2400
____________________

Before: JENNIFER D. BAHR, EDWARD A. BROWN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
John Michael Lake et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1, 8, 15, and 23-40. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Claims 1 and 15, reproduced below, is illustrative of the claimed
subject matter.
1. A method in a data processing system for improving
workload management of a computer system comprising a
plurality of sub-systems, the method comprising:
receiving a status of at least one sub-system of the
computer system, wherein the status of the at least one sub-
system is one of active and inactive;
receiving a request for an overall state of the computer
system;
responsive to the received request, retrieving latest
performance data for one or more sub-systems having an active
status and includes sending a pull request only to the one or
more sub-systems having the active status; and
determining the overall state of the computer system
based upon the latest performance data for the one or more sub-
systems having the active status and previously stored
performance data for one or more sub-systems, of the computer
system, with an inactive status.

15. A computer program product including a computer readable
storage medium having embodied therein instructions for
improving workload management of a computer system
comprising a plurality of sub-systems, the instructions, when
executed on a data processing system, causing the data
processing system to perform the steps of:
receiving a status of at least one sub-system of the
computer system, wherein the status of the at least one sub-
system is one of active and inactive;
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receiving a request for an overall state of the computer
system;
responsive to the received request, retrieving latest
performance data for one or more sub-systems having an active
status and includes sending a pull request only to the-one or
more sub-systems having the active status; and
determining the overall state of the computer system
based upon the latest performance data for the one or more sub-
systems having the active status and previously stored
performance data for one or more sub-systems, of the computer
system, with an inactive status.

Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Dean US 6,374,367 B1 Apr. 16, 2002
Abbondanzio
Pandya
US 2003/0188222 A1
US 2004/0037319 A1
Oct. 2, 2003
Feb. 26, 2004

Rejections
Claims 15 and 35-40 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claims 1, 8, 15, and 23-40 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dean, Abbondanzio, and Pandya.

OPINION
Rejection under 35 U.S.C. § 101
Appellants argue claims 15 and 35-40 together in contesting this
rejection. Thus, we decide the appeal of this rejection on the basis of claim
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15, with claims 35-40 standing or falling with claim 15. 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
Claim 15 is directed to a computer program product including “a
computer readable storage medium.” The Examiner finds that Appellants’
Specification does not exclude a number of transmission media types, and
therefore determines that “the ‘computer readable storage medium’” could
be construed as encompassing transient or transitory media, such as a carrier
wave, transmission media, a data signal, or a data structure, which “do not
fall within the boundary of a statutory category of process, machine,
manufacture, or composition of matter.” Ans. 5.
We find that Appellants’ Specification discloses:
Examples of computer readable media include . . .
transmission-type media, such as digital and analog
communications links, wired or wireless communications links
using transmission forms, such as, for example, radio frequency
and light wave transmissions. The computer readable media
may take the form of coded formats that are decoded for actual
use in a particular data processing system.
Spec., para. [0049].
Appellants do not disclaim any of these disclosed transmission-type
media. Accordingly, the Examiner correctly construed the claimed
“computer readable storage medium” of claim 15 as encompassing transitory
propagating signals having instructions embodied therein. Thus, claim 15
covers subject matter that is not patent-eligible under 35 U.S.C. § 101. See
Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential)
(holding recited machine-readable storage medium ineligible under § 101
because it encompassed transitory media); see also David J. Kappos, Subject
Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office
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212 (Feb. 23, 2010) (“The broadest reasonable interpretation of a claim
drawn to a computer readable medium typically . . . covers forms of
. . . transitory propagating signals”); In re Nuijten, 500 F.3d 1346, 1356-57
(Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject
matter)1.
We therefore sustain the rejection of claims 15 and 35-40 under
35 U.S.C. § 101.

Rejection under 35 U.S.C. § 103(a)
Appellants group claims 1, 8, 15, and 23-40 together in contesting this
rejection. App. Br. 8 (stating that “claims 8, 15, and 23-40 stand or fall
together with independent claim 1”). Thus, we decide the appeal of this
rejection on the basis of claim 1.
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner read the
claimed “sub-system of the computer system” on a memory reference of
Dean. Ans. 6, 26-27.
Appellants argue that the Examiner “expressly construed the claim
term ‘sub-system’ to mean ‘memory reference.’” App. Br. 12. This
argument is imprecise. The Examiner did not expressly construe the term
“sub-system” as being limited to “memory reference.” Rather, we
understand the Examiner’s position to be that the claim terminology “sub-
system” is sufficiently broad to cover a “memory reference.” See Ans. 26

1 As noted in Subject Matter Eligibility of Computer Readable Media, “[a]
claim drawn to such a computer readable medium that covers both
transitory and non-transitory embodiments may be amended to narrow the
claim to cover only statutory embodiments to avoid a rejection under 35
U.S.C. § 101 by adding the limitation ‘non-transitory’ to the claim.”
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(stating that “memory could be a ‘sub-system’ of a computer system
according to [Appellants’ Specification]”).
Appellants argue that the Examiner’s construction of “sub-system” is
flawed. App. Br. 12 (citing two definitions purportedly showing the well-
known meaning of “‘sub-system’ in the context of computing”).
Appellants’ argument is not convincing. As pointed out by the
Examiner, Dean explicitly refers to memory as “sub-systems.” Ans. 26;
Dean, col. 2, ll. 33-34; col. 7, ll. 10-11. Further, Dean’s disclosed memory
falls squarely within both of the cited definitions proffered by Appellants to
show the well-known meaning of “‘sub-system’ in the context of
computing,” as Dean’s memory is a “unit or device that is part of a larger
system” and “a system that is part of some larger system.” See App. Br. 12.
Thus, Appellants’ argument does not apprise us of error in the
Examiner’s construction of the claim terminology “sub-system of the
computer system” and, consequently, fails to show error in the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a). We sustain the rejection of
claim 1 and of claims 8, 15, and 23-40, which fall with claim 1, under
35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 1, 8, 15, and 23-40 is
affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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