Ex Parte Raikar et al

Board of Patent Appeals and Interferences

May 31, 2011

10632446 (B.P.A.I. May. 31, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AMIT RAIKAR and GURUPRASAD RAMARAO
____________

Appeal 2009-009302
Application 10/632,446
Technology Center 2400
____________

Before MARC S. HOFF, CARLA M. KRIVAK, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal 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 and enter a new ground of rejection under 37 C.F.R.
§ 41.50(b).
.

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STATEMENT OF THE CASE
Appellants‟ claimed invention relates to configuring application and
network management systems for providing security to devices and/or
applications associated with networks (Spec. 1:13-16).
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A method for configuring templates, the method
comprising:
configuring a template for an application and
network management system with first information for
determining whether data associated with at least one
message received by the template should or should not be
processed by the template;
configuring the template with second information
for processing the data associated with at least one of the
received messages; and
configuring the template with third information for
preventing the communication of at least one received
message to other templates of the application and
network management system.

REFERENCES
The Examiner rejected claims 1-7 and 14-19 under 35 U.S.C. § 102(e)
based upon the teachings of Desai (US 2003/0188189 A1).
The Examiner rejected claims 8-13 under 35 U.S.C. § 103(a) based
upon the teachings of Desai and Flowers (US 6,957,348 B1).

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ANALYSIS
Claims 1-7
The Examiner finds Desai teaches all the features of Appellants‟
claims 1-7 and 14-19. Appellants address this rejection with respect to claim
1 and contend Desai does not teach multiple steps when analyzing a
message, as Desai teaches filtering processes that are part of a log-based
event classification system and a network/host based intrusion detection
system (App. Br. 10, 15, 17; Reply Br. 5). Appellants further assert Desai‟s
templates/filters are applied to data after it has been collected, parsed,
normalized, and categorized for streamlining a diagnosis (App. Br. 12;
Reply Br. 6). That is, Desai teaches filters that first statistically qualify the
data and “then compare the findings.” In contrast, Appellants assert claim 1
teaches “„configuring the template with third information for preventing the
communication of at least one received message to other templates of the
application and network management system‟” (App. Br. 12, 17).
Additionally, the filter processing in Desai “resides in two different parts of
Desai‟s system,” not as a single template (Reply Br. 8).
We agree with the extensive arguments Appellants have provided as
to the differences between Desai and the claimed invention. Thus, Desai
does not anticipate claims 1, and claims 2-7, which depend therefrom.
Claims 14-19
Appellants argue that claim 14, as well as dependent claims 15-19, is
patentable for similar reasons as raised with respect to claim 1 (App. Br. 18).
We disagree.
Claim 14 recites a computer system comprising a memory unit and a
processor coupled to the memory unit. Claim 14 further recites “wherein the
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processor executes instructions associated with a template automator, and
wherein the instructions of the template automator are for: configuring a
template [with three types of information].” That is, claim 14 affirmatively
recites only the memory unit and the processor. It does not affirmatively
recite the template automator or the instructions associated with the template
automator that the processor is to execute. Rather, the claim language that
inferentially references the automator and the associated instructions
constitutes functional language describing the activity (instruction
execution) that the processor is able to perform.
Thus, claim 14 reads on any general purpose computer that includes a
memory and a processor, as long as the processor is capable of executing the
instructions as claimed. Because Desai discloses a computer network (e.g.,
Fig. 1), Desai discloses all of the affirmatively recited elements of claim 14:
a memory and a processor. Moreover, because the precise purpose of a
processor is to execute computer instructions, Desai‟s computer system
would be capable of executing the instructions claimed. Therefore, claim 14
and claims 15-19, which depend therefrom, are anticipated by the general
prior art.

NEW GROUNDS OF REJECTION
Pursuant to 37 C.F.R. § 41.50(b), we enter new grounds of rejection
for claims 1-13.
Claim 1
Claim 1 is rejected under 35 U.S.C. § 101 as being directed to non-
statutory subject matter. 35 U.S.C. § 101 permits patents to be issued for a
“new and useful process, machine, manufacture, or composition of matter.”
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Claim 1 does not fit into one of these four categories of invention. Claim 1
is directed to a method for configuring templates with information.
Restated, claim 1 is directed to a method of writing computer code or
software. The claimed method does not tie this software to any particular
machine or transform any article into a different state or thing. In re Bilski,
545 F.3d 943, 961 (Fed. Cir. 2008) (en banc), aff’d sub nom. Bilski v.
Kappos, 129 SCt 2735 (U.S. 2010). See also, 1351 Off. Gaz. Pat. Office
212 (Feb. 23, 2010); Subject Matter Eligibility of Computer Readable
Media.
Although claim 1 is rejected under 37 C.F.R. § 41.50(b), claims 2-7
have not been reviewed to the extent necessary to determine whether these
claims are unpatentable under 35 U.S.C. §101. We leave it to the Examiner
to determine the appropriateness of any further rejections based thereon.
Claims 8-13
Claims 8-13 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite. The preamble of claim 8 indicates it is directed to a method
for providing a guideline for creating templates; however the body of the
claim only sets forth the purpose of the information contained within the
guideline. Claim 8 does not set forth any method steps for providing the
guideline. As such, one cannot reasonably ascertain whether claim 8 is
intended to be directed to a method for providing a guideline for creating
templates, a method for creating templates, some communication process
that employs the templates, or the templates themselves.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
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Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). “[I]f a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential), available at
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd073300.pdf.
Claims 9-13, which depend from claim 8, do not clarify the
ambiguities associated with claim 8 and, as such, are rejected under the same
rationale.
Because the metes and bounds of claim 8-13 cannot be reasonably
ascertained, we do not address the merits of the Examiner‟s obviousness
rejection under 35 U.S.C. § 103(a) over Desai in view of Flowers. See In re
Steele, 305 F.2d 859, 862, 134 USPQ 292 (CCPA 1962) (holding that the
examiner and the board were wrong in relying on what at best were
speculative assumptions as to the meaning of the claims and basing a prior-
art rejection thereon.)

DECISION
The Examiner‟s decision rejecting claims 1-7 is reversed.
The Examiner‟s decision rejecting claims 14-19 is affirmed.
New grounds of rejection for claims 1-13 are entered.

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TIME PERIOD
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) also provides that the Appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Submit an appropriate amendment of the claims so
rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .
(2) Request that the proceeding be reheard under § 41.52
by the Board upon the same record. . . .
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)(2010).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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