Ex Parte Vaddagiri

Patent Trials and Appeals Board

May 18, 2016

12644060 - (D) (P.T.A.B. May. 18, 2016)

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.
12/644,060 12/22/2009 Murali Vaddagiri AUS920090158US1 5639
92383 7590 05/18/2016
Joscelyn G. Cockburn
7209 Fontana Place
Raleigh, NC 27615
EXAMINER
JORDAN, KIMBERLY L
ART UNIT PAPER NUMBER
2194
MAIL DATE DELIVERY MODE
05/18/2016 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 MURALI VADDAGIRI
____________

Appeal 2014-006066
Application 12/644,060
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, KRISTEN L. DROESCH, and
LINZY T. MCCARTNEY Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1–11, 13, 14, and 17–20, which are all the claims
pending in this application. Claims 12, 15, and 16 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
The invention on appeal relates to a method and apparatus for
operating systems where instructions “intercept messages requesting use of
System Services, correlate parameters from the messages with [a] table, and
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issue an error message signifying denial to a requesting entity if the
parameters do not match an entry in the table.” (Abstract).
Representative Claim
1. A method performed in a computer for protecting system
services, said method comprising:
providing a user space and a kernel space;
providing a kernel in said kernel space;
[L1] providing a table in the kernel, said table including
a first column in which system services are recorded and a
second column adjoining said first column in which user defined
policies associated with said system services are recorded;
receiving, in said kernel, a message, from an entity, to
access one of said system services;
[L2] examining said message to determine predefined
parameters;
correlating the predefined parameters with entries in said
table wherein an entry including one of the system services and
a corresponding one of said polices; and
issuing to the entity a return message based on results of
said correlation [L3] wherein process steps including receiving,
examining, and correlating used to generate said results for all
messages requesting access to said system services are executed
in the kernel.
(Bracketed matter and emphasis added with respect to contested limitations
L1–L3).
Rejections
A. Claims 1, 2, 4, 6–11, 13, and 17–19 are rejected as being obvious
under 35 U.S.C. § 103(a) over the combined teachings and suggestions of
Provos (Niels Provos, Improving Host Security with System Call
Policies, in Proceedings of the 12th USENIX Security Symposium 257–71
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(2003)), in view of Ebata et al. (US 2004/0064541 Al; pub Apr. 1, 2004)
(“Ebata”).
B. Claims 3 and 20 are rejected as being obvious under 35 U.S.C.
§ 103(a) over the combined teachings and suggestions of Provos, Ebata, and
Moriki et al. (US 2006/0064523 Al; pub Mar. 23, 2006) (“Moriki”).
C. Claims 5 and 14 are rejected as being obvious under 35 U.S.C.
§ 103(a) over the combined teachings and suggestions of Provos, Ebata, and
Appavoo et al. (US 2007/0061372 Al; pub Mar. 15, 2007) (“Appavoo”).
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We disagree with Appellant’s arguments, and we adopt as our
own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Answer in response to Appellant’s arguments. (Ans. 15–24). However,
we highlight and address specific findings and arguments for emphasis in
our analysis below.
Combinability under 35 U.S.C. § 103(a)
As a threshold matter, we decide the question of whether the
Examiner erred by improperly combining the cited references under 35
U.S.C. § 103. Here, Appellant raises four principal arguments:
First, Appellant alleges the rejection of claim 1 “rel[ies] on ‘design
choice’ as basis or ground for [the] obviousness rejection,” and contends
“the Examiner did not provide any argument or line of reasoning why the
table structured and populated as recited in Claim 1 is an obvious matter of
design choice.” (App. Br. 20).
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However, Appellant’s contention fails to address the Examiner’s
reasoning to combine the references under § 103. (See Final Act. 5) (“[t]he
combination allows for the efficient display and use of data in a tabular
format”). Therefore, we do not find Appellant’s first argument persuasive.
Second, Appellant contends the Provos reference “teaches away”
from the “wherein” clause of limitation L3:
In discouraging a complete implementation at the kernel level,
Provos wrote “On the other hand, an implementation completely
at the kernel-level is likely to be fast but less portable and also
causes a significant increase in the complexity of the operating
system (see Provos, section 4 Design, page 259, and paragraph
2) . . . . Applicant contends that these disclosures are evidence of
“teaching away” because they discourage complete
implementation in the kernel.
(App. Br. 24).
However, claim 1, considered as a whole, is not limited to a kernel-
only approach. Rather, limitation L3 merely limits the “receiving,
examining, and correlating” steps to being “executed in the kernel.”
Although Provos may discourage a kernel-only approach, the reference
ultimately utilizes “a hybrid approach to implement a small part of the
system at the kernel-level,” while implementing other portions in user space.
(Provos 259). Regarding the hybrid approach of Provos, the Examiner finds
the “receiving, examining, and correlating” steps are implemented at the
kernel level. (See Final Act. 4 relying on Provos 262–265, 258, 259). The
Examiner further finds Provos, “page 259, section 4, paragraphs 1 and 2,
discusses a system entirely kernel based.” (Final Act. 4).
Our reviewing court guides that the “mere disclosure of alternative
designs does not teach away.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir.
2012) (citations omitted). This reasoning is applicable here. Because
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Provos (259) expressly describes “us[ing] existing interception mechanisms
to create an implementation completely in user space, implement the system
entirely at the kernel-level, or choose a hybrid of both, we do not find
Appellant’s “teaching away” argument persuasive.
Third, Appellant contends the combination “is improper because the
subject matter and the problem of the references are different.” (App. Br.
25). “Provos relates to host security using system call interception and
policy decision . . . . The structure of the policy database is not disclosed. In
contrast, Ebata relates to routing messages in a network system.” (Id).
The Examiner disagrees, explaining “Ebata was only provided to
show that data may be structured in columns.” (Ans. 20).
To the extent Appellant is contending Provos and Ebata are non-
analogous art, we note it is not sufficient to merely allege that the references
are different. The question of whether a prior art reference is “analogous”
turns on a two-prong test: “(1) whether the art is from the same field of
endeavor, regardless of the problem addressed and, (2) if the reference is not
within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).
Assuming arguendo that Provos and Ebata are not within the same
field of endeavor, Appellant fails to provide sufficient argument or evidence
explaining why structuring policy data into columns would not be a
reasonably pertinent solution to the problem of storing system call policies.
Moreover, our reviewing court guides it is irrelevant that the prior art
and the present invention may have different purposes. See Nat'l Steel Car,
Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). It is
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sufficient that references suggest doing what Appellant claims, although
Appellant’s particular purpose was different from that of the references. In
re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re Gershon, 372
F.2d 535, 539 (CCPA 1967)). “Obviousness is not to be determined on the
basis of purpose alone.” In re Graf, 343 F.2d 774 (CCPA 1965).
This reasoning is applicable here regarding Appellant’s third
argument, which we find unpersuasive. (See App. Br. 25).
Lastly, Appellant advances the following argument regarding
secondary considerations (i.e., long-felt but unmet need):
[T]he process steps [of the claimed invention] are novel and the
enhanced system security is a benefit to users. Therefore, the
novel process steps and benefits are indicia of non obviousness
. . . . There are no disclosures in Provos or Ebata on fixing this
admitted problem (i.e.[,] reduced security in out of kernel
implementations). Applicant’s solution is placing the system,
covered in the appealed claims, in the kernel. The solution to the
problem is evidence of non obviousness. The problem of hacking
computer systems is well known, documented, and troublesome.
Therefore, any invention, such as the one claimed in this
document, that improves security is worthy of protection.
(App. Br. 26, 27). (Emphasis added).
Without evidence in support, we decline Appellant’s invitation to
speculate as to whether or not one of ordinary skill in the art would expect
enhanced security as a result of an in-kernel implementation.1 Moreover, as
we explained above, although Provos teaches a hybrid in-kernel and out-of-

1 See Tex. Instruments v. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed.
Cir. 1993) (“[L]ong-felt need is analyzed as of the date of an articulated
identified problem and evidence of efforts to solve that problem.”). In re de
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“It is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements in the specification does not suffice.”).
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kernel system, the features Provos chooses to implement inside the kernel
are the essentially the same features the claimed invention implements inside
the kernel. It is not necessary under § 103 for the prior art to also suggest
the combination achieves the same advantage or result discovered by
Appellant. See In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006).
To the extent Appellant additionally advances an argument alleging
reliance by the Examiner on impermissible hindsight (see App. Br. 26 ¶2),
Appellant has not provided any objective evidence of secondary
considerations, which our reviewing court guides “operates as a beneficial
check on hindsight.” Cheese Systems, Inc. v. Tetra Pak Cheese and Powder
Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Nor has Appellant
provided any evidence demonstrating the Examiner’s proffered combination
would have been “uniquely challenging or difficult for one of ordinary skill
in the art,” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007).
Accordingly, for at least the aforementioned reasons, and by a
preponderance of the evidence, we are not persuaded the Examiner erred by
improperly combining the references under § 103.
Rejection A of Independent Claim 1 under § 103
Contested Limitation L1 of Claim 1
Issue: Did the Examiner err in finding the combination of Provos and
Ebata teaches or suggests contested L1 limitation: “providing a table in the
kernel, said table including a first column in which system services are
recorded and a second column adjoining said first column in which user
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defined policies associated with said system services are recorded,” within
the meaning of claim 1? 2
In rejecting claim 1 over Provos and Ebata, the Examiner concluded it
would have been obvious to store Provos’s system services and associated
user defined policies in a multi-column table, such as the table disclosed in
Ebata. (Final Act. 5).
Appellant urges, repeatedly, that it was improper for the Examiner “to
partition[] or break[] up the recitation [of the table], for purposes of
examination.” (App. Br. 18); (see also id. at 19, 32, 35, 37, 40, 43, and 45–
49).3 Appellant does not provide any authority in support of this contention.
Nevertheless, Appellant maintains “[b]reaking-up the recitation, as the
Examiner did, destroys the functionality of the element within the claim.”
(Id. at 18).
The Examiner notes “Provos discloses a policy table containing
specific data,” (Ans. 15 (citing Provos 262 and 267)), and finds “providing a
specific recitation of multiple columns in [a] table (as seen in Ebata) would
[not] destroy the table as seen in Provos,” because “Ebata provides a
structured way (in columns) of storing the data described in the table of
Provos.” (Id. at 16).
On this record, we are not persuaded the Examiner erred. We find an
artisan possessing common sense would have known that tables have rows

2 We interpret the contested claim limitations according to the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
3 While many of these pages are directed to different claims, Appellant’s
argument is similar for each claim (i.e., the Examiner cannot separate data
from the “table” and “columns” in which it is stored).
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and columns, and Ebata explicitly teaches a table of two or more columns
used for security policies. (Ebata ¶ 75, Fig. 16, depicting host policy table).
Therefore, we find Appellant’s arguments unavailing regarding
contested limitation L1, for essentially the same reasons articulated by the
Examiner in the Answer, and for the reasons discussed above. Accordingly,
Appellant has not persuaded us the Examiner erred in finding the
combination of Provos and Ebata teaches or suggests contested limitation
L1.
Contested Limitation L2 of Claim 1
Issue: Did the Examiner err in finding the combination of Provos and
Ebata teaches or suggests contested limitation L2: “examining said message
to determine predefined parameters,” within the meaning of claim 1?
In finding Provos teaches limitation L2, the Examiner mapped the
claimed “message” to an application’s request for a policy decision, as
shown in Figure 3 of Provos. (Final Act. 4). The Examiner then found the
message is “examined” when “the kernel consults a policy database to check
if the system call should be denied or permitted.” (Id.) (citing Provos 262).
Appellant points to the next sentence in Provos, which describes, “[a]t
this point policy decisions are made without inspecting any of the system
call arguments.” (App. Br. 21) (citing Provos 262). “Stated another way,
Provos does not examine system calls (i.e. messages) to detect system call
augment for decision [sic.] made in the kernel.” (App. Br. 22). (Emphasis
added).
In response, the Examiner interprets the claim term “predefined
parameters” as not being limited to the arguments of a system call: “[t]he
system call is not exclusively arguments, for instance the system call would
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specify to what service the system call is directed” and the identity of the
user running the code that made the system call. (Ans. 18).
The Examiner’s broad but reasonable construction of the claim term
“predefined parameters” is consistent with Appellant’s Specification. (See,
e.g., Spec. ¶ 7 (“the System Call Handler intercepts, and examines the
credentials to determine the identity of the process or application program
which invoked the System Service”) (Emphasis added); id. at ¶ 30 (“[t]he
decision can be implemented by comparing the identity (id) of the requested
System Service extracted from the request message with entries in the
database”) (Emphasis added)). Therefore, we are not persuaded the
Examiner’s interpretation of limitation L2 is overly broad or unreasonable,
in light of Appellant’s Specification (¶ 7). See n.8, infra.
In the Reply Brief (5), Appellant further urges: “if the examining
recitation is construed to exclude examination of the attributes and/or the
system call augments, Claim 1 could be construed as useless,” 4 because the
“correlating” and “issuing” steps “could not be executed if examination of
system call augments was not included in the examining recitation.”
Appellant’s argument is not persuasive. The Examiner finds Provos
teaches “correlating” the identity of the system call with an in-kernel
database “to check if the system call should be denied or permitted; [Provos]
page 264, column 1, paragraph 3,” and then returns the result of the
correlation back to the application. (See Final Act. 4). See Provos, 264, ¶ 3:
e.g., regarding policies for system calls, Provos describes: “It is possible to

4 The Examiner’s broad but reasonable construction does not exclude the
system call arguments, but rather, includes things other than the system call
arguments as being within the scope of the claim.
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make policies more flexible by using predicates. Policy statements are only
evaluated if their predicate matches,” for example, “execution of a shell
could be predicated so that it applies only to non-root users.”
The Examiner’s findings regarding limitation L2 are supported by a
preponderance of the evidence. Accordingly, we are not persuaded the
Examiner erred in finding Provos teaches or suggests contested limitation
L2.
Contested Limitation L3 of Claim 1
Issue: Under § 103, did the Examiner err in finding the combination
of Provos and Ebata teaches or suggests contested limitation L3: “wherein
process steps including receiving, examining, and correlating used to
generate said results for all messages requesting access to said system
services are executed in the kernel,” within the meaning of claim 1?
Appellant contends:
[T]he alleged disclosure of a system entirely kernel base (on
which the Examiner relied) is too nebulous and unclear to meet
the recitation of the wherein limitation clause. Stated another
way, the mere mention of an entirely kernel base system is not
sufficient to meet the recitation of the wherein limitation
recitation of Claim 1 because the implementation may not
include or require all of the steps recited in Claim 1.
(App. Br. 22).
However, the Examiner did not rely on the “mere mention” of an
entirely kernel based system. As the Examiner explains:
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[T]he citation of page 262, section 5, paragraph 3[] specifically
states the kernel consults the in-kernel policy table to decide
whether or not to allow the system call. This section was relied
on for the examining and correlating steps and shows the kernel
specifically performing these steps. Also of note is that as seen
in the rejection of the receiving step (page 263, figure 3) that the
kernel receives an indication of system call. Therefore the steps
of receiving, examining, and correlating are indeed executed in
the kernel as seen in Provos.
(Ans. 19).
Given the Examiner’s clear mapping, we find Appellant’s allegation
of Provos being “too nebulous and unclear to meet the recitation of the
wherein limitation clause” is without merit. (App. Br. 22). Therefore, we
find Provos teaches or at least suggests contested limitation L3.
For at least the aforementioned reasons, on this record, we find a
preponderance of the evidence supports the Examiner’s underlying factual
findings and ultimate legal conclusion of obviousness regarding independent
claim 1. Because Appellant has not persuaded us the Examiner erred, we
sustain Rejection A of claim 1.
Rejection A of Dependent Claim 2 under § 103
Claim 2 recites: “The method of Claim 1 including logging in
memory information associated with said message and said results of said
correlation.”
Appellant contends the claimed logging step “is performed for all
messages,” and alleges, “Provos only records information for a system call
that matches [the] selected policy statement.” (App. Br. 27–28) (Emphasis
added).
However, claim 1 is silent regarding a logging step that “is performed
for all messages.” (Id.). The antecedent basis for “said message” (claim 2)
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is “receiving in said kernel, a message,” as recited in claim 1. Therefore,
claim 1 (from which claim 2 depends) merely requires one (or more)
messages.5 Appellant does not argue a definition in the Specification or
provide rebuttal evidence in the record that would preclude the Examiner’s
reading of claim 2. However, even if Appellant’s construction was applied,
Appellant’s assertion regarding Provos is incorrect. The Examiner finds
Provos does not merely log the matched system calls, rather at “page 262,
column 1, paragraph 2, [Provos] discloses logging the attempt when a
system call is denied.” (See Ans. 20). See Provos at 262 “the system call is
denied and an error code returned to the application. The errant attempt is
logged by the operating system.” (Emphasis added).
Therefore, on this record, we find a preponderance of the evidence
supports the Examiner’s underlying factual findings and ultimate legal
conclusion of obviousness regarding claim 2. Because Appellant has not
persuaded us the Examiner erred, we sustain Rejection A of dependent claim
2.
Rejection A of Dependent Claim 6 under § 103
Claim 6 recites: “The method of Claim 1 wherein examination of said
message includes extracting indicia that identify said system service for
which access is requested; and extracting attributes associated with said

5 See, e.g., Free Motion Fitness, Inc. v. Cybex Int’l, Inc., 423 F.3d 1343,
1350 (Fed. Cir. 2005) (A singular indefinite article “a” or “an” with a claim
feature may support an interpretation of “one or more” of those claim
features); SanDisk Corp. v. Kingston Technology Co., Inc., 695 F.3d 1348,
1360 (Fed. Cir. 2012).
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extracted indicia.” (Emphasis added with respect to the contested
limitation).
The Final Office Action cites Provos as teaching the contested
limitation, by disclosing “the system call and its arguments are translated.”
(Final Act. 6, quoting Provos 260). Appellant contends the Examiner’s
finding is erroneous because “translating and extracting are different acts or
steps and one does not suggest the other.” (App. Br. 29). However,
according to the Examiner, the process of “translating” necessarily
“include[es] extracting since data has to be gleaned from the system call in
order to translate the system call as well as the arguments associated with the
system call.” (Ans. 21).
In the Reply Brief (7), Appellant contends the Examiner “interpret[s]
the reference to include that which is gleaned from Appellant’s disclosure
[which] appears to be improper.”
We have addressed Appellant’s allegation of hindsight, supra.
Appellant’s argument appears to refer to the Examiner’s statement that
“[t]he process of translating was interpreted as including extracting.” (Ans.
21) (Emphasis added).
However, we find the Examiner merely used the word “interpreted” to
clarify her finding of extraction being inherent to the process of translating,
and therefore the translation of system calls in Provos (260) at least suggests
the claimed extracting. Regarding inherency under § 103, the evidence cited
by the Examiner (Final Act. 6, Ans. 21) is sufficient to show “the natural
result flowing from the operation as taught would result in the performance
of the questioned function.” PAR Pharm., Inc. v TWI Pharms., Inc., 773
F.3d 1186, 1194–95 (Fed. Cir. 2014)(internal citation omitted).
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For at least these reasons, Appellant has not persuaded us the
Examiner erred. Therefore, we sustain the Examiner’s Rejection A of claim
6.
Rejection A of Independent Claim 11 under § 103 6
Appellant contests an additional temporal limitation recited in claim
11 that was not recited in claim 1.
Claim 11 recites an [a]pparatus . . . wherein said first table is provided
when a product is available.” (Emphasis added). According to Appellant,
the foregoing limitation “should be interpreted as ‘when a product is first
available,’” because “Figure 2, applicant’s specification, shows the main
kernel and first table,” and because pages 10–11 of the specification
provides: “[t]he Kernel Extension 1 and associated system services 508
could be added after the main kernel 504 and system services 506 are
provided in a product.” (App. Br. 34) (Emphasis added).
We decline to read the argued but unclaimed term “first” into claim
11. 7 The specification (10–11) merely suggests “associated system
services 508 could be added after the main kernel 504.” (Emphasis added).
Appellant could have amended claim 11 to narrow the claim scope to be

6 To the extent Appellant raises the same arguments for independent claim
11 as were previously advanced regarding the rejection of independent claim
1 (App. Br. 31–34), we do not find these arguments persuasive for the same
reasons as discussed above regarding rejection A of claim 1.
7 Our reviewing court guides: “it is important not to import into a claim
limitations that are not part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.” Superguide
Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).

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commensurate with the argued meaning. (App. Br. 34). Instead, we broadly
but reasonably interpret the temporal limitation “when” recited in the
“wherein clause” of apparatus claim 11 as not being limited to providing
“said first table” when a product is first available, as urged by Appellant.
(App. Br. 34). 8 9
With this construction in mind, we turn to the rejection. The
Examiner cites to page 263 of Provos, explaining “Systrace is a kernel
extension added to an already available computer system.” (Final Act. 8).
A preponderance of the evidence (id.) supports the Examiner’s finding
that Provos teaches, or at least suggests, the contested limitation of claim 11.
Because Appellant has not persuaded us the Examiner erred, we sustain
Rejection A of claim 11.

8 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
9 As a further matter of claim construction of the contested temporal
“wherein clause” limitation, MPEP §2111.04 guides:
Claim scope is not limited by claim language that suggests or
makes optional but does not require steps to be performed, or by
claim language that does not limit a claim to a particular
structure. However, examples of claim language, although not
exhaustive, that may raise a question as to the limiting effect of
the language in a claim are:
(A) "adapted to" or "adapted for" clauses;
(B) "wherein" clauses; and
(C) "whereby" clauses.
MPEP § 2111.04, 9th Ed., Nov. 2015 (emphasis added).

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Rejection A of Independent Claim 18 under § 103
Appellant does not advance separate, substantive arguments and
supporting evidence demonstrating error regarding the Examiner’s
Rejection A of independent claim 18. Instead, Appellant merely restates the
purported deficiencies in the references regarding the database comprising a
table with columns, as previously raised regarding Rejection A of
independent claims 1 and 11. However, for the reasons discussed above, we
find no deficiencies regarding the contested aspects of Rejection A for
claims 1 and 11. Therefore, we sustain the Examiner’s rejection A of
independent claim 18 for the same reasons discussed above regarding
independent claims 1 and 11.
Rejection A of Dependent Claims 4, 7–10, 13, 17, and 19 under § 103
Appellant does not advance separate, substantive arguments and/or
supporting evidence demonstrating error regarding the Examiner’s rejection
A of claims 4, 7, 9, 10, and 13. Instead, Appellant merely restates the
purported deficiencies in the references regarding the database comprising a
table with columns, as previously raised regarding the rejection of
independent claims 1 and 11. However, for the reasons discussed above, we
find no deficiencies regarding obviousness Rejection A, and we adopt the
Examiner’s findings.
Regarding claim 17, Appellant merely recites the claim language,
restates the Examiner’s findings, and concludes “[n]one of the disclosures
appears relevant to the recitation of Claim 17.” (App. Br. 39). However,
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mere attorney argument and conclusory statements do not demonstrate error
in the Examiner’s rejection. 10
Appellant does not advance separate substantive arguments and/or
supporting evidence demonstrating error regarding the Examiner’s rejection
A of claims 8, 10, and 19 which depend from respective claims 7, 1, and 18.
Arguments not made are considered waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).
For these reasons, we sustain the Examiner’s Rejection A of
dependent claims 4, 7–10, 13, 17, and 19.
Rejection B of Claims 3 and 20 under § 103
Claim 3 recites: “The method of Claim 2 further including notifying
an administrator if a return message denies access to said requested system
service.” (Emphasis added).
Regarding the tertiary Moriki reference, Appellant acknowledges that
“faults in I/O devices are logged and the log is reported to an administer
[sic.],” but contends “[w]hat is reported is different from the recitation in
Claim 3 relating to notifying for denying access to requested system
service.” (App. Br. 46) (Emphasis added). 11

10 See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).
11 To the extent claim 3 is directed to conveying a message or meaning to a
human reader (e.g., “notifying an administrator”), the MPEP guides: “where
the claim as a whole is directed [to] conveying a message or meaning to a
human reader independent of the intended computer system, and/or the
computer-readable medium merely serves as a support for information or
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19
This argument is not persuasive. One cannot show nonobviousness
by attacking references individually when the rejection is based on a
combination of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
As the Examiner explains, “Provos was provided as disclosing notifying an
entity if access is denied for a system call,” whereas “Moriki was provided
as disclosing notifying an administrator.” (Ans. 24).
Appellant does not advance separate, substantive arguments and/or
supporting evidence demonstrating error regarding the Examiner’s rejection
B of claim 20. Instead, Appellant merely restates the purported deficiencies
in the references regarding the contents of the administrator’s notification,
(App. Br. 46–47), as previously raised regarding the rejection of claim 3.
However, for the reasons discussed above, we find no deficiencies regarding
the rejection of claim 3. Because Appellant has not persuaded us the
Examiner erred, we sustain Rejection B of claims 3 and 20.
Rejection C of Claims 5 and 14 under § 103
Appellant does not advance separate, substantive arguments and/or
supporting evidence demonstrating error regarding the Examiner’s Rejection
C of claims 5 and 14. Instead, Appellant merely restates the purported
deficiencies in the references regarding the database comprising a table with
columns, as previously raised regarding Rejection A of independent claims 1
and 11. Arguments not made are considered waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). Therefore, we also sustain the Examiner’s Rejection C of

data, no functional relationship exists.” MPEP § 2111.05 (III.) (9th Ed.,
Nov. 2015).
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Application 12/644,060

20
claims 5 and 14, for the same reasons discussed above regarding Rejection A
of independent claims 1 and 11.

Reply Brief
To the extent Appellant advances new arguments in the Reply Brief
not in response to a shift in the Examiner’s position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner’s Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
Conclusion 12
For at least these reasons, on this record, we are not persuaded the
Examiner erred. We find a preponderance of the evidence supports the

12 Independent claim 18 is directed to: “A program product for use in a
computer comprising: a tangible computer readable medium; . . . .”
Appellant’s Specification (¶ 19) describes: “A computer readable signal
medium may include a propagated data signal with computer readable
program code embodied therein, for example, in baseband or as part
of a carrier wave. Such a propagated signal may take any of a variety of
forms, including, but not limited to, electro-magnetic, optical, or any
suitable combination thereof.” (Emphasis added).
However, “tangible” (claim 18) does not have the same limiting scope
as “non-transitory,” so as to exclude non-statutory propagating signals.
In the event of further prosecution, we direct the Examiner’s attention
to a precedential Board decision to ensure the “tangible computer readable
medium” recited in independent claim 18 (and associated dependent claims)
is directed to statutory subject matter under 35 U.S.C. § 101. See Ex parte
Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential) (holding recited
machine-readable storage medium ineligible under § 101 since it
encompasses transitory media); see also David J. Kappos, Subject Matter
Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010).
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21
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness for all claims on appeal.

DECISION
We affirm the Examiner’s decision rejecting claims 1–11, 13, 14, and
17–20 under § 103.
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. § 41.50(f).

AFFIRMED

Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02.