Ex Parte Pratt et al

Board of Patent Appeals and Interferences

Mar 31, 2009

09726266 (B.P.A.I. Mar. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEVEN L. PRATT and DENNIS WAYNE RIDDLEMOSER
____________________

Appeal 2008-0371
Application 09/726,266
Technology Center 2400
____________________

Decided:1 March 31, 2009
____________________

Before ALLEN R. MACDONALD, JOHN A. JEFFERY, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).
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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-3, 5-12, 15, and 18-28. We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 4, 13, 14, 16, and 17 have been cancelled.
According to Appellants, the invention relates to the allocation of
resources in a computer network. More specifically, the present invention
relates to allocating resources based on user identification. (Spec. 1:10-13).

Exemplary Claim(s)
Exemplary independent claims 1 and 18 under appeal read as follows:
1. A method for managing resources in a computer network,
comprising:

creating a particular configuration file for each user of a network,
wherein each configuration file contains a list of the network resources that a
user may access;

receiving a user identification at a client;

initiating a resource attachment program in response to receiving the
user identification;

matching, using the resource attachment program, the user
identification with a configuration file associated with the user
identification; and

attaching, using the resource attachment program, network resources
to the client based on the list contained in the configuration file associated
with the user identification.

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18. A computer program product in a computer readable medium for
use in a data processing system for managing resources in a computer
network, the computer program product comprising:

instructions for creating a particular configuration file for each user of
a network, wherein each configuration file contains a list of the network
resources that a user may access;

instructions for receiving a user identification at a client;

instructions for initiating a resource attachment program in response
to receiving the user identification;

instructions for matching, using the resource attachment program, the
user identification with a configuration file associated with the user
identification; and

and instructions for attaching, using the resource attachment program,
network resources to the client based on the list contained in the
configuration file associated with the user identification.

Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Corn US 5,781,738 Jul. 14, 1998
Birrell US 5,805,803 Sep. 8, 1998
Win US 6,161,139 Dec. 12, 2000
Marks US 2002/0010768 A1 Jan. 24, 2002

Rejections
1. The Examiner rejected claim 18 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
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2. The Examiner rejected claims 1, 3, 5, 18, 19, and 27 under
35 U.S.C. § 102(e) as being anticipated by Marks.
3. The Examiner rejected claims 2, 6, 8, 9, 15, 20, 22, and 23
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Marks and Win.
4. The Examiner rejected claims 7, 10, 11, 21, 24, 25, and 28
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Marks and Corn. 2
5. The Examiner rejected claims 12 and 26 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Marks and Birrell.3

Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim
18 under 35 U.S.C. § 101 as being directed to non-statutory subject matter
because:
(A) “[T]he instant claim does not recite a signal.” (App. Br. 12).
(B) There is no basis for holding a computer usable medium claim
non-statutory because the medium may be intangible. (App. Br. 10).

2 The rationale of Examiner’s rejection discusses only Marks and Corn.
However, the statutory statement mistakenly lists Win also. We treat this as
a rejection based on only Marks and Corn as discussed by the Examiner.

3 The rationale of Examiner’s rejection discusses Marks and Birrell.
However, the statutory statement mistakenly lists Win instead of Marks. We
treat this as a rejection based on Marks and Birrell as discussed by the
Examiner.
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2. Appellants contend that the Examiner erred in rejecting claims
1, 3, 5, 18, 19, and 27 under 35 U.S.C. § 102(e) as being anticipated by
Marks because:
(A) Marks does not teach “creating a particular configuration file for
each user of a network” as claimed in claim 1. (App. Br. 14).
(B) Marks does not teach “the claimed features of matching and
attaching using the same resource attachment program, as recited in
claim 1.” (App. Br. 14).
3. Appellants contend that the Examiner erred in rejecting claims
2, 6, 8, 9, 15, 20, 22, and 23 as being obvious over the combination of Marks
and Win because:
(A) The failings of Marks alleged with respect to claim 1 are not
corrected by Win. (App. Br. 18 and 23).
(B) The Examiner has not provided a proper teaching, suggestion, or
motivation to combine Marks and Win. (App. Br. 19, 21, and 24).
4. Appellants contend that the Examiner erred in rejecting claims
7, 10, 11, 21, 24, 25, and 28 as being obvious over the combination of Marks
and Corn because:
(A) The failings of Marks alleged with respect to claim 1 are not
corrected by Corn. (App. Br. 26 and 29).
(B) The Examiner has not provided a proper teaching, suggestion, or
motivation to combine Marks and Corn. (App. Br. 27-28 and 29).
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5. Appellants contend that the Examiner erred in rejecting claims
12 and 26 as being obvious over the combination of Marks and Birrell
because:
(A) The failings of Marks alleged with respect to claim 1 are not
corrected by Birrell. (App. Br. 31).
(B) The Examiner has not provided a proper teaching, suggestion, or
motivation to combine Marks and Birrell. (App. Br. 31-32).

Result
We affirm.

ISSUE(S)
Issues on Appeal
(1)
Whether Appellants have shown that the Examiner has erred in
rejecting claim 18 because there is no requirement that claimed subject
matter is tangible?
(2)
Whether Appellants have shown that the Examiner has erred in
rejecting claims 1-3, 5-12, 15, and 18-28 because Marks does not teach
limitations required by claims 1, 18, and 27?
(3)
Whether Appellants have shown that the Examiner has erred in
rejecting claims 2, 6-12, 15, 20-26, and 28 because a teaching, suggestion, or
motivation is required to combine references?
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FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Appellants’ Invention
1. Appellants’ invention provides a method for managing
resources in a computer network based on user identity. (Spec. 3:4-5).
2. A configuration file defining specific resources is created for
each network user. (Spec. 3:6-7).
3. Appellants’ Figure 4 shows a flowchart illustrating a method
for managing network resources on a per user basis is depicted in
accordance with the present invention. (Spec. 9:22-25).
4. The process of Figure 4 begins by booting the machine (step
401). (Spec. 9:29-30).
5. Next, a resource attachment program is initiated when a user
identification is entered during login (step 402). (Spec. 9:30-32).
6. The resource attachment program matches the user identity with
a particular configuration file (step 403) and then reads the contents of the
configuration file (step 404). (Spec. 10:1-4).
7. The configuration file contains a list of all the network
resources that a user may access. These resources can include, for example,
file systems, printers, disk drives, serial devices, peripheral devices, and any
other shared hardware or software. The contents of the configuration file can
be set and changed by a network administrator. (Spec. 10:4-10).
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8. The resource attachment program uses the information in the
configuration file to attach the authorized resources (step 405).
(Spec. 10:13-15).
9. After the individual configuration of resources has been
attached to the client, the attachment program creates a record containing a
list of all successfully attached resources (step 406). (Spec. 10:15-18).
10. When the session on the client is finished, the user simply
enters a routine logout command (step 407). The resources attachment
program then detaches the resources listed in the attachment record created
in step 406 (step 408). (Spec. 10:23-27).
11. After the resources are detached, the program deletes the
contents of the attachment record (step 409), setting the client back to the
original state before the user logged in at step 401. (Spec. 10:27-30).

Appellants’ Admissions
12. Appellants admit:
[T]hose of ordinary skill in the art will appreciate that the
processes of the present invention are capable of being
distributed in the form of a computer readable medium of
instructions and a variety of forms and that the present
invention applies equally regardless of the particular type of
signal bearing media actually used to carry out the distribution.
Examples of computer readable media include recordable-type
media, such as a floppy disk, a hard disk drive, a RAM,
CD-ROMs, DVD-ROMs, and 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.
(Spec. 11:16-29; emphases added).
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Examiners Findings
13. The Examiner found that Marks describes creating a particular
configuration file at paragraph 47 which states in-part:
In one embodiment, a middleware server in a network
operations center queries the user database in the network
operations center to determine a user profile for the user. The
user profile includes the class of user and a set of user
privileges and settings (e.g., application licenses, bookmarks,
file access privileges, network access privileges, limited access
to specific Web pages defined by specific URL allow and deny
lists) for the user.
(Marks ¶ [0047]).

PRINCIPLES OF LAW
Burden on Appeal
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)). See also Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir.
2007) (“As we explained in In re Oetiker, the prima facie case is merely a
procedural device that enables an appropriate shift of the burden of
production.”) See Id. (“Once the applicant is so notified, the burden shifts
to the applicant to rebut the prima facie case with evidence and/or
argument.”)
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For a rejection under § 102, Appellants may sustain this burden by
showing that the prior art reference relied upon by the Examiner fails to
disclose an element of the claim. It is axiomatic that anticipation of a claim
under § 102 can be found only if the prior art reference discloses every
element of the claim. See In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986)
and Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730
F.2d 1452, 1457 (Fed. Cir. 1984).

35 U.S.C. § 101
A transitory, propagating signal is not a “process, machine,
manufacture, or composition of matter.” Those four categories define the
explicit scope and reach of subject matter patentable under 35 U.S.C. § 101;
thus, such a signal cannot be patentable subject matter. In re Nuijten, 500
F.3d 1346, 1357 (Fed. Cir. 2007) reh’g en banc denied, 515 F.3d 1361 (Fed.
Cir. 2008), cert. denied, __ U.S.__, 127 S.Ct. 70 (2008).
“If a claim covers material not found in any of the four statutory
categories, that claim falls outside the plainly expressed scope of § 101 even
if the subject matter is otherwise new and useful.” Id. at 1354.
Even when a claim covers patentable subject matter within the scope
of 35 U.S.C. § 101, if the claim also covers subject matter that would be
unpatentable under § 101, then applicant must limit the claim to avoid the
nonstatutory subject matter to in turn avoid a rejection under § 101.
Cf. Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1329
(Fed. Cir. 2003) (“By limiting the claims in this way Amgen simply avoids
claiming specific subject matter that would be unpatentable under § 101.”);
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see also MPEP § 2105 (“If the broadest reasonable interpretation of the
claimed invention as a whole encompasses a human being, then a rejection
under 35 U.S.C. 101 must be made indicating that the claimed invention is
directed to nonstatutory subject matter.”).
35 U.S.C. § 103
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious without an explicit application of the teaching,
suggestion, motivation test.

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In particular, the Supreme Court emphasized that “the principles laid
down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11
How. 248.” KSR at 1739 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966) (emphasis added)), and reaffirmed principles based on its precedent
that “[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” Id.
The Court explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, §103 likely bars
its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
Under this framework, once an Examiner demonstrates that the
elements are known in the prior art and that one of ordinary skill could
combine the elements as claimed by known methods and would recognize
that the capabilities or functions of the combination are predictable, then the
Examiner has made a prima facie case that the claimed subject matter is
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likely to be obvious. The burden then shifts to the Appellants to show that
the Examiner erred in these findings or to provide other evidence to show
that the claimed subject matter would have been nonobvious.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR., 127 S. Ct. at 1741 (citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)).
Claim Construction
"Our analysis begins with construing the claim limitations at issue."
Ex Parte Filatov, No. 2006-1160, 2007 WL 1317144, at *2 (BPAI 2007).
"The Patent and Trademark Office (PTO) must consider all claim
limitations when determining patentability of an invention over the prior
art." In re Lowry, 32 F.3d 1579, 1582 (Fed. Cir. 1994) (citing In re Gulack,
703 F.2d 1381, 1385 (Fed. Cir. 1983)). "Claims must be read in view of the
specification, of which they are a part." Markman v. Westview Instruments,
Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc). "[T]he PTO gives claims
their 'broadest reasonable interpretation.'" In re Bigio, 381 F.3d 1320, 1324
(Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).
"Moreover, limitations are not to be read into the claims from the
specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).

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ANALYSIS
35 U.S.C. § 101
Appellants contend that the Examiner erred in rejecting claim 18
under 35 U.S.C. § 101 as being directed to non-statutory subject matter
because “the instant claim does not recite a signal” (App. Br. 12), and there
is no basis for holding a computer usable medium claim non-statutory
because the medium may be intangible (App. Br. 10). We disagree.
Appellants admit that “[e]xamples of computer readable media
include . . . wireless communications links using transmission forms, such
as, for example, radio frequency and light wave transmissions.” (FF 12).
For this reason we conclude that, contrary to Appellants’ contention, claim
18 does recite a signal. Also contrary to Appellants’ contention and
consistent with Nuijten, 500 F.3d 1346, we conclude that claim 18 must be
limited to tangible embodiments. Since claim 18 is not so limited,
Appellants have therefore not shown that the Examiner erred in rejecting
claim 18 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.
35 U.S.C. § 102
Appellants contend that the Examiner erred in rejecting claims 1, 3, 5,
18, 19, and 27 under 35 U.S.C. § 102(e) as being anticipated by Marks
because Marks does not teach “creating a particular configuration file for
each user of a network,” or “the claimed features of matching and attaching
using the same resource attachment program,” each as recited in claim 1.
(App. Br. 14). We disagree.

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As to the limitation calling for “creating a particular configuration file
for each user of a network,” Appellants’ Specification states that a
configuration file defining specific resources is created for each network
user. (FF 2). Neither Appellants’ Specification or claim language further
limits this broad definition of a configuration file for each user. The
Examiner found that paragraph 47 of Marks describes such a configuration
file. As the Examiner further pointed out in the Answer at page 12, each
user profile, which must be stored in the database in order to be retrieved, is
a configuration file. We agree. We conclude that nothing in Appellants’
disclosure or claims precludes each configuration file from being a
subcomponent of a larger database file such as in Marks.
As to Appellants’ argument regarding “the claimed features of
matching and attaching using the same resource attachment program,”
Appellants’ claim language merely requires “using the resource attachment
program.” Such language places no restriction on the form or amount of this
usage. That is, the claim language broadly requires some amount of usage
of a single program to perform the two steps. We conclude that a program
be used during the initiating of a step is sufficient to be usage. Appellants
point out that middleware is used in the matching step to determine user and
device privileges (App. Br. 16) and as the Examiner correctly pointed out in
the Answer at pages 12-13, the network operations center software (i.e.,
program) includes this middleware and also provides the resulting privileges
to the client application thus initiating the attaching. We conclude that
Marks’ software system for matching and attaching is not precluded by the
claim language.
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Therefore, for the reasons above, Appellants have not established that
the Examiner erred with respect to this rejection of claims 1, 3, 5, 18, 19,
and 27 under § 102.
35 U.S.C. § 103
Appellants contend that the Examiner erred in rejecting claims 2,
6-12, 15, 20-26, and 28 under 35 U.S.C. § 103(a) as being unpatentable
because as argued with regards to claim 1, Marks does not teach “creating a
particular configuration file for each user of a network,” or “the claimed
features of matching and attaching using the same resource attachment
program,” (App. Br. 18, 23, 26, 29, and 31). We disagree for the reasons
discussed supra with regards to claim 1.
Appellants also contend that the Examiner erred in rejecting claims
under 35 U.S.C. § 103(a) as being unpatentable because the Examiner has
not provided a proper teaching, suggestion, or motivation to combine Marks
with any of Win, Corn, or Birrell (App. Br. 19, 21, 24, 27-29, 31, and 32).
We disagree.
Appellants’ contentions and arguments that the Examiner is required
to provide a teaching, suggestion, or motivation to combine the various
references are without merit. Rather, all the references before us are in the
same field of computer network access, and the Examiner has demonstrated
that the claimed elements were known in the prior art and that one of
ordinary skill could have combined the elements as claimed by known
methods and would have recognized that the capabilities or functions of the
combination were predictable. See KSR, 127 S. Ct. 1727.
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We conclude that based on the strength of Examiner prima facie
showing, nothing in Appellants arguments is sufficient to rebut a final
conclusion of obviousness with regard to these claims.
Therefore, for the reasons above, Appellants have not established that
the Examiner erred with respect to this rejection of claims 2, 6-12, 15, 20-26,
and 28 under § 103.

CONCLUSION OF LAW
(1) Appellants have failed to establish that the Examiner erred in
rejecting claim 18 as being unpatentable under 35 U.S.C. § 101 because
there is a requirement that claimed subject matter is tangible.
(2) Appellants have failed to establish that the Examiner erred in
rejecting claims 1, 3, 5, 18, 19, and 27 as being anticipated under
35 U.S.C. § 102(e) because Marks does teach the limitations required by
claims 1, 18, and 27.
(3) Appellants have failed to establish that the Examiner erred in
rejecting claims 2, 6-12, 15, 20-26, and 28 as being unpatentable under
35 U.S.C. § 103(a) because Marks does teach the limitations required by
claims 1, 18, and 27.
(4) Appellants have failed to establish that the Examiner erred in
rejecting claims 2, 6-12, 15, 20-26, and 28 as being unpatentable under
35 U.S.C. § 103(a) because a teaching, suggestion, or motivation is not
necessarily required to combine references.
(5) Claims 1-3, 5-12, 15, and 18-28 are not patentable.

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DECISION
The Examiner's rejections of claims 1-3, 5-12, 15, and 18-28 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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