Ex Parte Pourheidari et al

Board of Patent Appeals and Interferences

Sep 16, 2010

10438662 (B.P.A.I. Sep. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte M. HOMAYOUN POURHEIDARI, NICOLAS CATANIA,
BRYAN P. MURRAY, and GUILLAUME N. VAMBENEPE
____________

Appeal 2009-005007
Application 10/438,662
Technology Center 2100
____________

Before LANCE LEONARD BARRY, JEAN R. HOMERE, and STEPHEN
C. SIU, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL 1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-005007
Application 10/438,662

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STATEMENT OF THE CASE
The Patent Examiner rejected claims 1-46. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

INVENTION
The Appellants describe the invention at issue on appeal as follows.
"[A] system for managing an information technology (IT) resource
comprises a computer processor and a managed object executable on the
computer processor. The managed object is associated with the resource and
includes information regarding at least one interface configured to allow a
manager to monitor the resource." (Spec., ¶ 0011.)

ILLUSTRATIVE CLAIM
1. A system for managing an information technology (IT)
resource, comprising:
a computer processor; and
a managed object executable on the computer processor,
wherein:
the managed object represents the resource and
includes information regarding at least one interface
configured to allow a manager to manage the resource;
and
the at least one interface is configured to provide
information regarding a relationship between the
managed object and another managed object.

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REJECTION
Claims 1-46 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Rajarajan (U.S. Patent No. 6,950,990 B2, Sept. 27, 2005).

ISSUE
Based on the Appellants' arguments, we will decide the appeal of
claims 1-46 based on claim 1 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
Therefore, the issue before us is whether the Examiner erred in finding that
Rajarajan discloses (1) a managed object that includes information and (2) at
least one interface that provides information.

FINDINGS OF FACT
Rajarajan discloses "a management system for managing computer-
related resources within a distributed or network relationship." (Col. 2,
ll. 58-60.)

ANALYSIS
"[O]ur reviewing court has held that nonfunctional descriptive
material cannot lend patentability to an invention that would have otherwise
been anticipated by the prior art." Ex parte Mathias, 84 USPQ2d 1276,
1279 (BPAI 2005) (informative) (citing In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004)), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006)). "[W]hen
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability." Mathias, 84 USPQ2d at 1279 (citing In re Gulack,
703 F.2d 1381, 1385 (Fed. Cir. 1983)).
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Application 10/438,662

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Furthermore, "[a]n intended use or purpose usually will not limit the
scope of the claim because such statements usually do no more than define a
context in which the invention operates.'' Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed.Cir. 2003).
Although ''[s]uch statements often . . . appear in the claim's preamble,'' In re
Stencel, 828 F.2d 751, 754 (Fed.Cir. 1987), a statement of intended use or
purpose can appear elsewhere in a claim. Id.
Here, claim 1 recites in pertinent part the following limitations:
the managed object represents the resource and
includes information regarding at least one interface
configured to allow a manager to manage the resource;
and
the at least one interface is configured to provide
information regarding a relationship between the
managed object and another managed object.
(Emphases added.) We construe the phrases "represents the resource,"
"regarding at least one interface," and "regarding a relationship between the
managed object and another managed object" as merely indicating what the
claim's managed object or information represent. Therefore, these phrases
constitute nonfunctional descriptive material that cannot lend patentability to
an invention that would have otherwise been anticipated by the prior art.
Because no management of the resource by a manager is claimed,
furthermore, we construe the phrase "configured to allow a manager to
manage the resource" as doing no more than defining a context in which the
invention operates. Therefore, the phrase merely indicates an intended use
or purpose of the object that will not limit the scope of the claim.
In view of these claim interpretations, we consider whether the
Examiner erred in finding that Rajarajan discloses (1) a managed object that
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includes information and (2) at least one interface configured to provide
information.
First, Rajarajan includes the following description of its property
sheets.
The resources 306 manage objects, such as objects 329.
Therefore, each resource 306 provides information to the
system 304 about its objects, e.g., resource 312 provides
information about objects 329. In an embodiment, the resource
may provide object information in a property sheet which may
be in [eXtensible Markup Language] format and which defines
a generic object, e.g., such as a generic user object.
(Col. 14, ll. 47-53.) The Examiner finds that the reference's property sheet
constitutes a managed object that includes information. (Ans. 12.) The
Appellants do not contest this finding. Their "[s]ilence implies assent."
Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 572
(1985)).
Second, Rajarajan discloses that its "resources may further include
resource [application program interfaces] APIs, such as APIs 318, 320, 322.
Resource APIs relate to application program interface modules that
allow communication between the resource itself and a . . . management
system 304." (Col. 8, ll. 18-22.) The Examiner finds that the resources'
APIs constitute interfaces configured to provide information. (Ans. 4.)
The Appellants admit that "the APIs allow resources to communicate with
one another and the new object information is supplied to managers"
(Appeal Br. 5), but argue that "Rajarajan does not teach that the interface is
configured to provide information regarding a relationship between managed
objects . . . ." (Id.) As explained supra, however, what the information
represents constitutes nonfunctional descriptive material that cannot lend
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patentability to an invention that would have otherwise been anticipated by
the prior art.
Based on the aforementioned facts and analysis, we conclude that the
Examiner did not err in finding that Rajarajan discloses (1) a managed object
that includes information and (2) at least one interface configured to provide
information.

DECISION
We affirm the rejection of claims 1-46. No time for taking any action
connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
See 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

Erc

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