Ex Parte Todd

Patent Trial and Appeal Board

Jun 23, 2014

10992487 (P.T.A.B. Jun. 23, 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.
10/992,487 11/18/2004 Stephen J. Todd GB920020073US1 8186
7590 06/23/2014
IBM Corporation
IP Law Department
11400 Burnet Road
Austin, TX 78758
EXAMINER
KHOSHNOODI, NADIA
ART UNIT PAPER NUMBER
2494
MAIL DATE DELIVERY MODE
06/23/2014 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 STEPHEN J. TODD
____________________

Appeal 2011-010219
Application 10/992,487
Technology Center 2400
____________________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010219
Application 10/992,487
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-16 and 20-22. Claims 17-19 have been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to a publish/subscribe system and method
where:
Each subscriber registers its event selection criterion with a
message sender, which may be a publisher or a publishing
broker for example, and the message sender allocates a
signature bit pattern to each subscriber. When the message
sender has an event to publish, it first selects those of its
registered subscribers which have selection criteria which
match the event. It then produces an encoded set of the
signatures of the selected subscribers and sends a message
identifying the event and the encoded signature set to each of its
registered subscribers. Each subscriber determines whether the
encoded set corresponds correctly to its signature bit pattern,
and dependent on the correspondence or not of the subscriber's
signature bit pattern, verifies whether the event matches its
selection criteria and, if it matches, processes the event.

(Spec. 24, Abstract of the Disclosure). Claim 1, reproduced below, is
representative of the claimed subject matter:
1. A method of delivering a published event to one or more
subscribers, the subscribers each having a signature bit pattern
and one or more selection criteria for selecting the published
event for processing, the method comprising:

receiving, by a subscriber, a message identifying the
event, the message including an encoded set of subscriber
signatures;

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in response to determining that the encoded set of
signatures corresponds correctly to the signature bit pattern of
the subscriber, verifying whether the event matches the
selection criteria of the subscriber; and

in response to verifying that the event matches the
selection criteria of the subscriber, the subscriber processing the
message identifying the event.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kimball US 2001/0010720 A1 Aug. 2, 2001
Trostle US 2005/0097317 A1 May 5, 2005

REJECTIONS
The Examiner makes the following rejections:
Claims 16 and 21 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter, as they do not
fall under any of the statutory classes of inventions.
Claims 1-16 and 20-22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Trostle in view of Kimball.

ANALYSIS
Appellant did not file a Reply Brief to respond to the Examiner's
further clarifications of the rejections in the responsive arguments (Ans. 8-
16).

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35 U.S.C. § 101
The Examiner maintains that claim 16 and 21 "do not fall under a
statutory class of invention because they are either directed to a program or a
signal." (Ans. 3). Appellant contends:

Applicant['s] specification discloses that a computer program is
stored on a carrier medium in machine or device readable form,
for example[,] in solid state memory, magnetic memory such as
disc or tape, optically or magneto-optically readable memory
such as [C]ompact [D]isk (CD) or Digital Versatile Disk
(DVD) etc, and the processing device utilizes the program or a
part thereof to configure it for operation (See Specification,
Page 17, Lines 13-24). Applicant['s] claims are directed to
computer program code stored on one of the mediums stated
above.

(App. Br. 7). We further note that the Specification states:
The computer program may be supplied from a remote source
embodied in a communications medium such as an electronic
signal, radio frequency carrier wave or optical carrier wave.
Such carrier media are also envisaged as aspects of the present
invention.

(See Spec., page 17, lines 20-24). Appellant contends:
Applicant['s] recitation of "storage type computer usable
medium" in claims 16 and 21 removed all suggestions of carrier
waves of the type now suggested by the Examiner. Nowhere
do[es] Applicant['s] claims recite carrier waves and the
Examiner's statement that the claims still allow for that
storage type to be a carrier wave or signal is not supported
by any cited reference.

(App. Br. 8). We disagree with Appellant and find that the Specification
refers to both types of media as “carrier media.” Therefore, we agree with
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the Examiner that the broadest reasonable interpretation is that the claim
encompasses a transitory signal. (See Ans. 8-9).

35 U.S.C. § 103(a)
Appellant sets forth independent claims 1, 13, 16, and 20 as a group.
(App. Br. 8). Therefore, we select independent claim 1 as the representative
claim for this group. With respect to independent claims 14, 21, and 22
Appellant relies upon the same arguments advanced with respect to
representative independent claim 1. (App. Br. 14-15). Therefore, we also
group these claims as falling with representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellant contends that "Applicant['s] invention require[s] explicit
action only on the encoded set of signatures and not on the entire encrypted
message, as required in Trostle reference." (App. Br. 11). The Examiner
responds that "there is no mention in the claims that requires the encoded set
of subscriber signatures to be included in a header." (Ans. 11). We agree
with the Examiner.
Appellant further contends that "Applicant[] respectfully assert[s] that
the operations carried out in Trostle are for a completely different reasons
and for a different purpose than that in Applicant['s] invention." (App. Br.
13). The Examiner responds that "Trostle . . . is relevant to the field which
pertains to Appellant[']s invention." (Ans. 12 ). We agree with the
Examiner.
Additionally, Appellant contends "Applicant['s] invention, in contrast,
transmits the message without any encryption and requires the user only
look at the encoded set of subscriber signatures to verify that the event
matches the selection criteria of the subscriber. In contrast, Trostle must
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authenticate that the receiver is the only entity that can access the event."
(App. Br. 13). The Examiner maintains that the claim is drafted in open
language and therefore "even if the combination of Trostle . . . and Kimball .
. . performs an encryption step that was not performed in Appellant['s]
invention, it is irrelevant. " (Ans. 12). We agree with the Examiner's
analysis.
Finally, Appellant contends "as argued for the first time, Kimball
does nothing more than what is shown in Trostle, namely, examining an
encrypted message in order to determine that the receiving entity is the
intended target." (App. Br. 13). The Examiner maintains that the Kimball
reference was added to the Trostle reference for encoding a set of signatures.
(Ans. 13). We agree with the Examiner's analysis. Therefore, we find
Appellant's arguments to be unpersuasive of error in the Examiner's
conclusion of obviousness of representative claim 1.
With respect to independent claims 14, 20, and 21, the Examiner
maintains similar responses to Appellant's arguments as to claim 1.
Therefore, we also find Appellant's arguments unpersuasive of error in the
Examiner's conclusion of obviousness of independent claims 14, 20, and 21.

CONCLUSIONS
The Examiner does not err in rejecting claims 16 and 21 under 35
U.S.C. § 101. The Examiner does not err in rejecting claims 1-16 and 20-22
under 35 U.S.C. § 103(a) as being unpatentable over Trostle in view of
Kimball.
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DECISION
For the above reasons, the Examiner's rejection of claims 16 and 21
under 35 U.S.C. § 101 is affirmed and the Examiner's rejection of claims
1-16 and 20-22 under 35 U.S.C. § 103(a) as being unpatentable over Trostle
in view of Kimball is 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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