Ex Parte Maclellan et al

Patent Trial and Appeal Board

Sep 26, 2016

11963387 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111963,387 12/21/2007
57736 7590 09/28/2016
PATENTS ON DEMAND, PA IBM-RSW
4581 WESTON ROAD
SUITE 345
WESTON, FL 33331
FIRST NAMED INVENTOR
SCOT MACLELLAN
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.
FR920060059US 1 9915
EXAMINER
MUDRICK, TIMOTHY A
ART UNIT PAPER NUMBER
2194
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
brian.buchheit@patentsondemand.com
docketing 1@patentsondemand.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOT MACLELLAN, MARCO MECHELLI,
ANTONIO PERRONE, and ANTONIO ROMEO
Appeal2015-005187
Application 11/963,387
Technology Center 2100
Before JEFFREYS. SMITH, JON M. JURGOV AN, and
SHARON PENICK, Administrative Patent Judges.
JURGOVAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.2
1 Appellants identify International Business Machines Corporation as the
real party in interest. (Br. 3.)
2 Our Decision refers to the Specification filed Dec. 21, 2007 ("Spec."), the
Final Office Action mailed Feb. 21, 2014 ("Final Act."), the Appeal Brief
filed Oct. 21, 2014 ("Br."), and the Examiner's Answer mailed Feb. 9, 2015
("Ans.").
Appeal2015-005187
Application 11/963,387
CLAIMED INVENTION
The claims are directed to monitoring components in a service
framework. (Spec. Title.) Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method for monitoring components being available
in a service framework for providing services on a data
processing system, each one of the components submitting
invocations of a service interface of the framework, each
invocation requesting a change of state of the component,
wherein the change of state includes at least one of addition,
removal, start, stop and update, wherein the method comprises
the steps of:
a computer detecting at least part of the invocations by an
auxiliary component, wherein the detecting comprises the steps
of the computer subscribing the auxiliary component to an event
notification service of the framework, and the computer
providing an indication of each invocation submitted to the
framework by the event notification service to the auxiliary
component; and
the computer identifying the components according to the
corresponding detected invocations.
(Br. 24 - Claims App 'x.)
REJECTIONS
Claims 1-3, 7, 9, 10, and 12-18 stand rejected under 35 U.S.C.
§ 102(e) based on Prasad (US 7,908,358 Bl, iss. Mar. 15, 2011). (Br. 2-7.)
Claim 4 stands rejected under 35 U.S.C. § 103(a) based on Prasad and
Elson (US 2003/0014521 Al, publ. Jan. 16, 2003). (Br. 7-9.)
Claims 5, 6, 11, and 19 stand rejected under 35 U.S.C. § 103(a) based
on Prasad and Ma (US 2006/0140199 Al, publ. June 29, 2006). (Br. 9-11.)
Claim 8 stands rejected under 35 U.S.C. § 103(a) based on Prasad,
Ma, and Elson. (Br. 11-13.)
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Application 11/963,387
ANALYSIS
Claims 1, 13, 14
Appellants argue Prasad' s recording of usage information cannot
properly be interpreted as invocation of a service interface of a framework.
(Br. 11.) The Examiner finds that Prasad teaches that a client invokes a web
service that in tum invokes a method to add usage information to a usage
database. (Final Act. 3 citing Prasad Fig. 5, steps 400, 402). Thus,
Appellants' argument does not align with what the Examiner views as
invocation in Prasad, and the argument is unpersuasive to show Examiner
error.
Appellants argue Prasad's metering system merely collects usage
information by the add usage method, whereas the claimed invocation
requests change the state of the component that has submitted the
invocation. (Br. 11.) The Examiner finds Prasad' s change of state relates to
the amount of usage of the web service for each client. (Ans. 3 citing Prasad
10:50-11:10.) In this process, the web service receives the client request
and in response invokes itself (Prasad 10:50-56) to change usage state from
not-in-use to in-use. Thus, Appellants do not persuade us of Examiner error
in these findings.
Appellants argue the Examiner improperly asserts that a failure of a
§ 102 rejection invokes a§ 103(a) rejection. (Br. 12-13.) As the Examiner
clarifies, the purpose of the cited standard paragraph is to ensure continuity
between pre- and post-AIA §§ 102 and 103(a) rejections, and does not relate
to invoking a§ 103(a) rejection ifthe Board decides not to sustain a§ 102
rejection. (Ans. 3--4.)
Appellants provide an interpretation of how the Examiner applies
Prasad to claim 1, which the Examiner states is incorrect. (Ans. 5 citing Br.
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Application 11/963,387
14--15.) The Examiner explains the interpretation of Prasad by annotating
Figure 2 of Prasad, as reproduced below:
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.-~--4--' . • U U UU u' H-~ .. t'.: .. ~~·:=J ,:~:~,;,;~~,f:~":r:::~, ""ffi (>[ ,,,.
Prasad, Figure 2 shows clients 204 requesting web services 202. Web
services frontend server( s) 200 intercepts the requests and notifies metering
system 210 of usage information to add to usage information store 212. The
Examiner's annotations show where the Examiner finds various features of
claim 1.
Appellants state Prasad is a "key logger" or "spyware" because the
disclosed system intercepts requests directed to a source, records their
activity, and then forwards them on. (Br. 17.) The Examiner views this
contention as speculative and finds Prasad reveals nothing about recording
information without a user's consent, as key loggers or spyware would do.
(Ans. 6.) We view Appellants' contention and the Examiner's findings on
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Application 11/963,387
whether Prasad's system is or is not considered a key logger or spyware
immaterial to any dispositive issue in this case, and, therefore, we disregard
them.
Appellants argue, in contrast to the claimed invention, Prasad requires
"instrumenting" of web services to trigger monitoring code whenever the
web service executes. (Br. 18.) We agree with the Examiner that there is no
limitation in the claims stating that the web services are not instrumented.
(Ans. 7-8.) Thus, Appellants' argument is not commensurate in scope with
the claim as written, and we do not find Appellants' argument persuasive to
show error.
Appellants contend that Prasad discloses no "auxiliary component"
that subscribes to an event notification service (e.g., a listener) to detect
invocations of other components (e.g., bundles). (Br. 18.) As shown in
Prasad Figure 2, supra, the Examiner has shown the metering system 210 as
the "auxiliary component," the claimed "components" are the web services
202, and the "event notification service" may be viewed as the triggering of
the add usage method by web services frontend server(s) 200. (Ans. 8).
Thus, we are not persuaded of Examiner error.
Appellants argue there is no "additional component" in Prasad that
subscribes to an event notification service using an instrumented interface.
(Br. 18.) As the Examiner notes, there is no commensurate language in the
claim to support this argument, and we find it unpersuasive. (Ans. 8-9.)
Appellants argue the claims state that a component invokes a service,
which changes the state of the component itself. (Br. 18.) The Examiner
finds Prasad's change of state relates to the amount of usage of the web
service for each client. (Ans. 9.) As noted, Prasad's web services receive
client requests and responsively invoke themselves to transition usage state
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Application 11/963,387
from not-in-use to in-use. We agree with the Examiner this is sufficient to
disclose the claimed feature.
Appellants argue that Prasad externally monitors usage and does not
change an internal state of the component being used. (Br. 18-19.) As the
Examiner correctly notes, the claims do not mention the internal state of a
component. (Ans. 10-11.) Thus, Appellants' argument is not
commensurate in scope with the claim as written. In any case, we disagree
with Appellants' argument for reasons explained supra.
Appellants argue that Prasad fails to disclose the claimed limitation of
"the detecting comprises the steps of subscribing the auxiliary component to
an event notification service, and the computer providing an indication of
each invocation submitted to the framework by the event notification service
to the auxiliary component." (Br. 19.) Specifically, Appellants argue
providing an interface for usage updates is not equivalent to subscribing to
an auxiliary component. (Id.) Reviewing the Specification, we find no
definition for the term "subscribing" and Appellants offer none in their
briefing. Applying broadest reasonable interpretation, we see no reason the
Examiner could not properly view the act of providing an interface between
interceptor 220 and the metering system 210 as the claimed subscribing.
(Ans. 12; see also In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369
(Fed. Cir. 2004) (Claims are given their broadest reasonable interpretation
consistent with the specification.)).
Appellants further argue the act of providing an interface (the API) is
not a subscribing separate from the invoking. (Br. 19.) Again, Appellants
do not define "subscribing" or "invoking" in a restrictive way that would
distinguish over Prasad. Moreover, as the Examiner notes, the claimed
subscribing may be interpreted as Prasad's providing an interface for usage
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Application 11/963,387
updates, and the claimed "invoking" may be regarded as the triggering of
usage updates. Thus, under broadest reasonable interpretation of these
terms, we do not agree with Appellants' argument. (Ans. 12.)
Appellants argue Prasad fails to disclose the claimed limitation "the
computer identifying the components according to the corresponding
detected invocations." (Br. 19.) However, the Examiner notes that
requests to Prasad's Add Usage API must include a "Service" string to
identify the web service invoked by the request. (Ans. 13-14 citing Prasad
table at cols. 10-11.) Thus, the Examiner demonstrates the limitation is
disclosed in Prasad.
Claim 2
Claim 2 recites "wherein the step of identifying comprises: the
computer forwarding an indication of each detected invocation by the
auxiliary component to a metering module outside the framework, the
components being identified by the metering module." Appellants argue the
Examiner fails to identify where in Prasad the claimed auxiliary component
and claimed metering service are taught. (Br. 19-20.) Appellants also argue
the Examiner's finding that Prasad's metering service is the auxiliary
component is erroneous because the auxiliary component must subscribe to
the event notification service, not itself. (Id. citing Prasad 10:52-53, table at
10-11.) The Examiner notes Prasad' s metering service 222 is analogous to
the claimed metering module, and is an aspect of the metering system
architecture 210. (Ans. 14 citing Prasad 7:4--15.) The Examiner concludes
the claimed limitation is met by the metering service 222 receiving the add
usage requests (which include the "Service" string to identify the web
service invoked, as explained) from the interceptor 220. We find no error in
the Examiner's rejection.
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Application 11/963,387
Claim 10
Claim 10 recites "[t]he method according to claim 1, wherein the
framework comprises a life cycle layer, wherein the life cycle layer
implements functions for managing services at run time." Appellants
contend the cited excerpt of Prasad fails to disclose a "life cycle layer." (Br.
20.) The Examiner notes the Specification does not define "life cycle layer"
and interprets the term as "a layer that implements functions for managing
services at run time." (Ans. 14--15.) The Examiner relies on a queue web
service that decouples components of an application allowing independence
at run time to teach a life cycle layer that manages services at runtime. (Id.)
In the absence of any definition in the Specification or claim to define what
a "life cycle layer" is, we sustain the Examiner's rejection.
Claim 12
Claim 12 recites "[t]he method according to claim 1, wherein the
framework comprises a service registry layer, wherein the service registry
layer provides for cooperation among services." (Br. 20-21.) Appellants
argue Prasad' s aggregators are not a framework including a service registry
layer. (Id. citing Prasad 8:40-42.) The Examiner regards this argument as a
general allegation the claims are patentable without specifically pointing out
how the language distinguishes over the references. (Ans. 15-16.) We
agree with the Examiner Prasad's aggregators handle requests for usage
updates for multiple web services and would have been understood to
provide cooperation among services. Thus, we are not persuaded the
Examiner errs.
Claim 17
Claim 17 recites "wherein the step of subscribing comprises
specifying a parameter for providing an indication of the type of events that
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the auxiliary component is interested in." Appellants contend Prasad' s API
implementation does not disclose the claimed feature in Prasad's table. (Br.
21.) The Examiner finds that requests to Prasad' s Add Usage API must
include various fields including "Usage Type." (Ans. 16-17 citing Prasad
table spanning cols. 10-11.) We agree with the Examiner this is sufficient to
disclose the claimed limitation.
Combination of Prasad and Ma
Appellants argue Ma is non-analogous art. Specifically, Appellants
argue Ma is not reasonably pertinent to the particular problem with which
the inventor was faced, which they assert to be metering web services
without instrumentation. (Br. 22-23.) Appellants argue Ma's problem
relates to SIP bridging. Thus, Appellants contend Ma is non-analogous art.
A reference is analogous art to the claimed invention if: (1) the
reference is from the same field of endeavor as the claimed invention (even
if it addresses a different problem); or (2) the reference is reasonably
pertinent to the problem faced by the inventor (even if it is not in the same
field of endeavor as the claimed invention). In re Klein, 647 F.3d 1343
(Fed. Cir. 2011).
The Examiner does not attempt to show that Ma is from the same field
of endeavor as the claimed invention, but instead states because Ma pertains
to middleware technology, Ma is reasonably pertinent to the particular
problem faced by the inventor. (Ans. 17-18.) We disagree that the problem
faced by the inventor relates to middleware technology. Instead, we agree
with Appellants (Br. 22) that the problem faced by the inventor pertains to
monitoring usage of web services. (See Spec. i-fi-18, 9.) Ma's disclosure of
middleware does not relate to this problem. Thus, we find Appellants'
argument persuasive and do not sustain the rejections based on the
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combination of Ma with other references applied to claims 5, 6, 8, 11, and
19.
Remaining Claims
No separate arguments are presented for the remaining claims and,
therefore, we sustain the rejections of those claims for the reasons previously
stated. 37 C.F.R. § 41.37(c)(l)(iv); In re King, 801F.2d1324, 1325 (Fed.
Cir. 1986); In re Sernaker, 702 F.2d 989, 991 (Fed. Cir. 1983).
DECISION
We affirm the Examiner's rejections of claims 1-3, 7, 9, 10, and 12-
18 under 35 U.S.C. § 102(e).
We affirm the Examiner's rejection of claim 4 under 35 U.S.C.
§ 103(a).
We reverse the rejections of claims 5, 6, 8, 11, and 19 under 35 U.S.C.
§ 103(a).
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-IN-PART
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