Ex Parte Setnes et al

Patent Trial and Appeal Board

Feb 5, 2014

12135946 (P.T.A.B. Feb. 5, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARIE LOUISE SETNES and JOHN SEBASTIAN WARREN
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Appeal 2011-009416
Application 12/135,946
Technology Center 2400
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Before JOSEPH A. FISHETTI, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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Application 12/135,946

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Claimed Subject Matter
The claimed subject matter “relates to distributed computing” and
more particularly, to “distributing workload by data set.” Spec., paras.
[0001] and [0004]. Claim 1, reproduced below, with emphasis added, is
illustrative of the appealed subject matter.
1. A method, comprising:
establishing communication between a master node and
several federated nodes, wherein each node is an instance of a
distributed application;
initializing the distributed application, wherein the
initialization includes the federated node processing data local
thereto and providing information about the local data to the
master node; and
after initialization, at run time, receiving data requests,
wherein the master node services the data requests by routing
the requests to the nodes.

Rejections
The following Examiner’s rejections are before us for review:
I. claims 7 and 18 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellants regard as the invention;
II. claims 1-6, 9-17, and 20 under 35 U.S.C. § 102(b) as being
anticipated by Levesque (US 2004/0107277 A1, published Jun. 3, 2004);
and
III. claims 7, 8, 18, and 19 under 35 U.S.C. § 103(a) as being
unpatentable over Levesque and Sim (US 2005/0198238 A1, published Sep.
8, 2005).

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OPINION
Rejection I – Indefiniteness
Claim 7 depends indirectly from claim 1 and recites:
further comprising identifying branch roots contained in a set of
the local data, retrieving subordinate resources to a home node
of the root of its branch, assigning to each branch node a set of
references to all descendants of the branch root, wherein at least
some of the descendants are located on remote nodes.
App. Br., Clms. App’x. Claim 18 depends indirectly from claim 16 and
contains the same recitation as claim 7. Id.
The Examiner determines that the phrase “at least some” from the
limitation “wherein at least some of the descendants are located on remote
nodes” of claims 7 and 18 is “not defined in the [c]laim, i.e., greater than 2,”
and that the claims are therefore indefinite for failing to particularly point
out and distinctly claim the invention. Ans. 3 and 13.
Appellants argue that the phrase “at least some” is definite, because it
“means exactly what it says” (i.e., that some (or all) of the nodes are located
on remote nodes), and because one skilled in the art would appreciate the
metes and bounds of the claim. App. Br. 9.
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
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). With regard to the second paragraph requirement for “particularly
pointing out and distinctly claiming the subject matter which the applicant
regards as his invention,” it has been stated that the “essence of that

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requirement is that the language of the claims must make it clear what
subject matter they encompass.” In re Hammack, 427 F.2d 1378, 1382
(CCPA 1970).
We are persuaded by Appellants’ arguments. The Examiner’s
rejection appears to be grounded on a concern that the limitation “at least
some” is not defined numerically. See Ans. 13. A claim need not specify a
numerical amount of nodes in order to satisfy the requirement of definiteness
of 35 U.S.C. § 112, second paragraph. Merely that a claim is broad does not
mean that it is indefinite. See In re Johnson, 558 F.2d 1008, 1016 n.17
(CCPA 1977). In applying the above-mentioned test to the “at least some”1
language of claim 7, one of ordinary skill in the art would understand that
claim language, when the claim is read in light of the Specification, means
that at least “one, a part, or an unspecified number of” the descendants of the
branch roots contained in a set of the local data are located on remote nodes.
Accordingly, we do not sustain the Examiner’s rejection of dependent
claims 7 and 18 under 35 U.S.C. § 112, second paragraph, as being
indefinite.

Rejection II – Anticipation based on Levesque
Claims 1-6 and 9-15

1 An ordinary and customary meaning of the adjective “some” is “being one,
a part, or an unspecified number of something (as a class, group, species,
collection, or range of possibilities) named or contextually implied.”
Webster’s Third New International Dictionary, Unabridged, Merriam-
Webster, Incorporated, © 1993, available at http://lionreference.chadwyck.
com (last visited: Jan. 30, 2014).
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The Examiner finds that Levesque discloses independent claim 1’s
recitation of “after initialization, at run time, receiving data requests,
wherein the master node services the data requests by routing the requests to
the nodes.” See App. Br., Clms. App’x.; see also Ans. 4 (citing Levesque,
paras. [0199]-[0201]); see also id. at 14 (citing Levesque, paras. [0246] and
[0362]). In particular, the Examiner finds that paragraph [0201] of Levesque
discloses the “NE”2 sending alarms to all of the workstations and that
paragraph [0362] of Levesque discloses a method of finding available routes
in a network. See Ans. 14.
Appellants argue that the “alarm” of Levesque is not a “data request”
as claimed, but “[r]ather, from the context of Levesque, the alarm appears to
be a simple notification, with no request for data.” App. Br. 11.
We are persuaded by Appellants’ argument that the “alarm” disclosed
by Levesque does not meet the claimed “data request.” Id. Within the
context of the cited paragraphs [0199]-[0201], there is no evidence that
Levesque uses the language “request” and “alarm” to describe the same
element and thus, the Examiner’s finding does not support anticipation for
the “data request” claim element. Claim 1 requires that “the requests” sent
to the nodes are the same “requests” received in the receiving step. See App.
Br., Clms. App’x. Levesque does not disclose that the “alarms” sent by the
NE in paragraph [0201] are the same data as the “request” of paragraph
[0200]. Further, we are persuaded by Appellants’ argument that paragraph
[0362] of Levesque also does not disclose the claimed feature of sending the
received requests to the nodes.

2 Although not explicitly pointed out by the Examiner, Levesque indicates
that “NEs” are “network elements.” See Levesque, para. [0246].
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Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1, and claims 2-6 and 9-15 which depend therefrom,
under 35 U.S.C. § 102(b) as anticipated by Levesque.
Claims 16, 17, and 20
Similar to claim 1, independent claim 16 is directed to “[a] method”
and includes, inter alia, the similar step of “after initialization, at run time,
receiving data requests, wherein the master node services the data requests
by routing the requests to one of the nodes believed to have the requested
data.” App. Br., Clms. App’x.
The Examiner’s rejection of claim 16 relies on the same erroneous
finding that the “alarm” disclosed by Levesque is the claimed “data request.”
Ans. 8-9. Appellants rely on similar arguments to those raised against the
rejection of claim 1 and discussed supra. App. Br. 16. For similar reasons
to those discussed supra with respect to claim 1, Appellants’ arguments are
persuasive as to error in the Examiner’s rejection of claim 16.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 16, and claims 17 and 20 which depend therefrom, under
35 U.S.C. § 102(b) as anticipated by Levesque.

Rejection III – Obviousness based on Levesque and Sim
The Examiner’s rejection of claims 7, 8, 18, and 19 also relies on the
same erroneous finding that the “alarm” disclosed by Levesque is the
claimed “data request” as discussed with respect to claim 1 supra, and the
Examiner’s rejection does not rely on Sim to cure the deficiency of
Levesque. Ans. 10-13. Thus, for the same reasons as those discussed supra
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with respect to claims 1 and 16, we do not sustain the Examiner’s rejection
of claims 7, 8, 18, and 19, under 35 U.S.C. § 103(a) as unpatentable over
Levesque and Sim.

DECISION
We REVERSE the Examiner’s decision to reject claims 1-20.

REVERSED

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