Ex Parte McClain et al

Patent Trial and Appeal Board

Jun 10, 2014

12114295 (P.T.A.B. Jun. 10, 2014)

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.
12/114,295 05/02/2008 John Wesley Ferguson McClain SUNM 080405 PUS 2792
51344 7590 06/10/2014
BROOKS KUSHMAN P.C. /Oracle America/ SUN / STK
1000 TOWN CENTER, TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
GOLABBAKHSH, EBRAHIM
ART UNIT PAPER NUMBER
2452
MAIL DATE DELIVERY MODE
06/10/2014 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN WESLEY FERGUSON MCCLAIN,
ROBERT WILLIAM SCHEIFLER, PETER C. JONES, and
THOMAS VINOD JOHNSON
____________________

Appeal 2012-002263
Application 12/114,295
Technology Center 2400
____________________

Before MICHAEL W. KIM, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 11–19 and 24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.1

1 Our decision will refer to Appellants’ Appeal Brief (“Br.,” filed April 29,
2011) and the Examiner’s Answer (“Ans.,” mailed June 8, 2011).
Appeal 2012-002263
Application 12/114,295

2
THE CLAIMED INVENTION
Appellants’ claimed invention relates to a method and apparatus for
providing a process descriptor to identify an entity controlling the resources
of a plurality of computer systems. The computer systems are linked via a
network, and access a common set of network file systems. The process
descriptor, via a process abstraction, allows a user to describe a run-time
configuration for a process to be run within the entity (Spec. 6, l. 30 –
7, l. 3).
Claim 11, reproduced below, is illustrative of the subject matter on
appeal:
11. A non-transitory computer readable medium
comprising executable instructions encoded thereon operable on
a computerized device to perform processing comprising:
instructions for obtaining an identity of an entity
controlling resources of a plurality of computer systems linked
via a network, the plurality of computer systems accessing a
common set of network file systems;
instructions for defining a process abstraction to allow a
user to describe a first run-time configuration for at least one
process of a first application to be run within the entity; and
instructions for providing the process abstraction to the
entity thereby causing the entity to instantiate an instance of the
at least one process of the first application according to the first
run-time configuration described in the process abstraction.

THE REJECTIONS
The following rejections are before us for review:
Claims 11, 12, 14–19, and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shukla (US 2009/0240935 A1, pub. Sept. 24, 2009) and
Nixon (US 2002/0013629 A1, pub. Jan. 31, 2002).
Appeal 2012-002263
Application 12/114,295

3
Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Shukla, Nixon, and Yu (US 2009/0210373 A1, pub. Aug. 20, 2009).

ANALYSIS
Appellants argue that the Examiner erred in rejecting the pending
claims under 35 U.S.C. § 103(a).2 However, Appellants’ arguments reflect a
fundamental misunderstanding of the Examiner’s position, and do not
address the rejection, as articulated by the Examiner. For example, in
arguing that representative claim 11 is patentable, Appellants assert, “[a]s
stated by the Examiner, Shukla fails to teach the process abstraction” (Br. 4).
In fact, the Examiner takes the position that Shukla teaches the claimed
“process abstraction” at ¶¶ 36 and 38 (Ans. 5 and 10–11).
Appellants’ misinterpretation of the Examiner’s position fully
permeates Appellants’ arguments in support of the patentability of claims
11, 12, 14–19, and 24 over Shukla and Nixon. Referring again to claim 11,
Appellants argue that Nixon does not teach the claimed subject matter
regarding the process abstraction, and that the Examiner has failed to
provide any explanation regarding how Shukla would or could be modified
in view of Nixon to arrive at the claimed invention (Br. 5). Appellants also
maintain that claim 14 is separately patentable because “Shukla clearly does
not teach the process abstraction . . . , [therefore,] Shukla cannot teach the
further recited subject matter of claim 14” (id. at 5–6).

2 Appellants argue claims 11, 12, 14–19 and 24 as a group, and select
claim 11 as representative (Br. 3–5). This selection notwithstanding,
Appellants also present arguments for the separate patentability of
claims 14–19 (id. at 5–6). Appellants argue that claim 13 is allowable based
on its dependence on claim 11 (id. at 6).
Appeal 2012-002263
Application 12/114,295

4
The Examiner clarified his position in the Response to Argument
section of the Answer — “Examiner . . . would like to clarify his position,
Shukla clearly teaches the processes abstraction in Para[graphs] 36 and
38 . . . .” (Ans. 11). However, based on their apparent misunderstanding
of the bases for Examiner’s rejection, Appellants did not offer any rebuttal in
their Appeal Brief, and Appellants did not file a Reply Brief.
In the absence, on the present record, of any argument by Appellants
to demonstrate that the Examiner erred in finding that Shukla discloses the
claimed process abstraction, we sustain the Examiner’s rejections of
claims 11–19 and 24 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejections of claims 11–19 and 24 under 35 U.S.C.
§ 103(a) are 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)(1)(iv).

AFFIRMED

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