International Business Machines Corporation

Patent Trials and Appeals Board

Dec 14, 2021

2020002338 (P.T.A.B. Dec. 14, 2021)

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. 15/473,194 03/29/2017 Scot MacLellan FR920060059US2 8152-0286 7531 112978 7590 12/14/2021 Cuenot, Forsythe & Kim, LLC 20283 State Road 7, Suite 300 Boca Raton, FL 33498 EXAMINER MUDRICK, TIMOTHY A ART UNIT PAPER NUMBER 2194 NOTIFICATION DATE DELIVERY MODE 12/14/2021 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SCOT MACLELLAN, MARCO MECHELLI, ANTONIO PERRONE and ANTONIO ROMEO ____________________ Appeal 2020-002338 Application 15/473,1941 Technology Center 2100 ____________________ Before JEFFREY S. SMITH, JON M. JURGOVAN, and SHARON FENICK, Administrative Patent Judges. JURGOVAN, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks review under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 15-34, constituting the only claims pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm.3 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies IBM Corporation as the real party in interest. Appeal Br. 1. 2 Claims 1-14 were canceled. Appeal Br. 2. 3 Our Decision refers to the Specification (“Spec.”) filed March 29, 2017, the Final Office Action (“Final Act.”) mailed April 16, 2019, the Appeal Brief (“Appeal Br.”) filed September 4, 2019, the Examiner’s Answer Appeal 2020-002338 Application 15/473,194 2 CLAIMED INVENTION The claims are directed to an auxiliary component that monitors usage of bundles in a service framework, such as one which conforms to the Open Services Gateway Initiative (OSGi) standard. Spec. ¶¶ 11-13, Abstract. The auxiliary component subscribes to an event notification interface to monitor usage of bundles and forwards detected events to a licensing agent. Id. Claims 15, 22, and 29 are independent, and the remaining claims depend from one of these claims. Claim 15, reproduced below, is representative of the claimed invention: 15. A method for monitoring a component in a service framework within a computer hardware system, comprising: receiving, by an auxiliary component, a notification of a change to a registry of the service framework; and forwarding, by the auxiliary component and to a licensing agent, an indication corresponding to the notification, wherein the auxiliary component converts the notification into a format supported by the licensing agent, wherein the registry includes a list of all available services. Appeal Br. 20 (Claims Appendix). REJECTION Claims 15-34 stand rejected under 35 U.S.C. § 103(a)4 based on Prasad (US 7,908,358 B1, issued March 15, 2011) and Reed (US 2005/0154785 A1, published July 14, 2005). Final Act. 2-6. (“Ans.”) mailed January 10, 2020, and the Reply Brief (“Reply Br.”) filed February 4, 2020. 4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103 effective March 16, 2013. The Appeal 2020-002338 Application 15/473,194 3 ANALYSIS Legal Principles Title 35, section 103(a) (pre-AIA), provides: A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if 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. 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 ordinary skill in the art; and (4) where present, objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Preliminary Matters Appellant indicates that claims 18-22, 25-29, and 32-34 stand or fall together with independent claim 15, and that claims 17, 23, 24, 30, and 31 stand or fall with dependent claim 16. Appeal Br. 7. In its Appeal Brief, Appellant submits arguments against the Examiner’s rejection and responses in what it calls the “Fourth Office Action” (the Office Action dated April 16, 2019) as well as the “Second Office Action” (the Office Action dated May 21, 2018). Id. at 7-18. Since Examiner determined that this application should be examined under the pre-AIA versions of the statute. Final Act. 2. Appellant does not discuss this determination, and the Specification contains a priority claim which appears to support this determination. Spec. ¶ 1. For these reasons, we apply the pre-AIA version of §103. Appeal 2020-002338 Application 15/473,194 4 the Appeal was taken from the “Fourth Office Action,” we restrict our analysis to only those arguments that Appellant presented for the “Fourth Office Action” and will not address the “Second Office Action” further herein. See 37 C.F.R. § 41.31. Background Specifically, Prasad’s Figure 3 above shows client(s) 204 accessing web service(s) 202 via web services frontend server(s) 200. Prasad 5:8-21. Interceptor 220 intercepts calls for web service(s) 202 and provides usage information to metering service(s) 222. Id. at 5:57-67. Metering service(s) Appeal 2020-002338 Application 15/473,194 5 222 provide batches of usage information to queues 224 of partitions 230. Id. at 6:25-30. Aggregator(s) 226 write aggregate usage information to database(s) 228. Id. at 7:60-66. Usage information or statistics may be used for billing, throttling, and reporting processes. Id. at 4:13-16. The Examiner relies on Reed for a service registry that stores a list of all services, which the Examiner finds in Reed’s teaching that an OSGi service is an object that is registered by a bundle providing the service in a service registry. Final Act. 3 (citing Reed ¶¶ 4, 14). Claim 15 Change to a Registry Argument As noted, independent claim 15 recites “receiving, by an auxiliary component, a notification of a change to a registry of the service framework.” Appeal Br. 20 (italics added). The Examiner found this feature disclosed by Prasad’s interceptor. Final Act. 3 (citing Prasad 2:10-37). Appellant argues that “usage information does not disclose the claimed ‘change to a registry.’” Appeal Br. 8. The Examiner responds that, in Prasad, “the claimed change occurs when the usage information is written into a database (as the database is changed by the writing)” and “the claimed registry is disclosed by the database.” Ans. 5. Appellant argues that the “usage information” of Prasad does not correspond to the claimed “change of registry of the service framework.” Reply Br. 3, 8. Appellant argues that the Examiner’s reading of Prasad’s database as the registry ignores that the claims explicitly recite “the registry includes a list of all available services.” Id. at 4. We agree with the Examiner that Prasad’s teaching of an interceptor is equivalent to the claimed “auxiliary component” that “receiv[es] . . . a Appeal 2020-002338 Application 15/473,194 6 notification of a change to a registry of the service framework” as recited in claim 15. Final Act. 3. Prasad states that “usage information collected by an interceptor process running on each Web services frontend server may be added to the metering system via an add usage interface to a metering service component.” Prasad 2:11-15. Since Prasad’s interceptor collects usage information, it is notified of the usage information and has a store or “registry” that changes upon storing the collected usage information. Prasad’s interceptor could not “collect” usage information without a store to do so. See Ans. 6. Appellant assumes that the claimed “registry of a service framework” must be the “service registry” defined in the OSGi standard. Reply Br. 6-7. We remind Appellant that claim terms are given their broadest reasonable interpretation consistent with the specification in which they appear. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). The claim does not limit the claimed “registry” to be one that is defined in the OSGi standard. Further, Appellant is arguing Prasad individually while the Examiner is relying on the combination of Prasad and Reed. In particular, the Examiner finds that “Reed still provides the prior art disclosure concerning the OSGi framework and that that framework allows for services to be registered.” Ans. 9. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).. Similarly, we are not persuaded by Appellant’s contention that “usage information does not disclose the claimed ‘a change to a registry.’” Appeal Appeal 2020-002338 Application 15/473,194 7 Br. 8. Paragraph 38 of Appellant’s Specification discloses that an entry in the registry is changed when a service starts or stops. The Abstract and paragraph 13 of the Specification disclose that the starting and stopping events of a service are used to monitor the usage of components. We agree with the Examiner, that the scope of the claimed “change to a registry,” read in light of the Specification, encompasses the usage information taught by Prasad. Ans. 5. Appellant’s contention is not commensurate with the scope of the claim. Prasad Alone Argument Petitioner next argues that the Examiner relies on Prasad alone as teaching the claim limitation of “receiving, by an auxiliary component, a notification of a change to a registry of the service framework.” Appeal Br. 10; Reply Br. 5. For the reasons already stated above, the Examiner is correct in finding Prasad alone teaches this claim limitation. Reason to Combine Argument The Examiner’s reason to combine Prasad and Reed was as follows: Therefore it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the method of Prasad to include the teachings of Reed because it provides for the purpose of “[managing] interaction between bundles using a service registry that enables a bundle to explicitly register objects to be shared with other bundles. Together, the bundle management and service registry provide a powerful environment for managing the interaction of bundles and services.” Final Act. 4 (citing Reed ¶ 4). Appellant argues the Examiner does nothing more than to repeat the benefits of using Reed’s service registry. Appeal Br. 11. Appeal 2020-002338 Application 15/473,194 8 We agree with the Examiner that one or ordinary skill in the art would have recognized the benefit of adding Reed’s service registry, which enables sharing of service bundles, with Prasad’s interceptor for monitoring service usage. “Common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Although Appellant asserts that Prasad and Reed are no more similar to each other than the 50,000 other published U.S. applications that mention web services (Reply Br. 8), the Examiner did more than merely point to web services as a common feature warranting one to consider Prasad and Reed together. The Examiner specifically stated that the “bundle management and service registry provide a powerful environment for managing the interaction of bundles and services.” Final Act. 4. Appellant’s argument does not adequately address the Examiner’s reasons to combine. Further, Appellant argues that Prasad makes no mention of bundles or JAR files, so there is not established need within Prasad for the “registration of objects to be shared with other bundles.” Final Act. 12. Appellant’s argument is not commensurate in scope with the claim language, which does not mention bundles or JAR files. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). In addition, Appellant’s argument is an attack on Prasad alone without considering what its teachings combined with Reed’s would have meant to a person of ordinary skill in the art. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” See Merck and Keller, supra. Appeal 2020-002338 Application 15/473,194 9 Format Conversion Argument Claim 15 recites that “the auxiliary component converts the notification into a format supported by the licensing agent.” Appeal Br. 20 (Claims Appendix) (italics added). The Examiner found this feature taught by Prasad. Final Act. 3 (citing Prasad 2:10-37). Appellant argues that it is unclear whether the Examiner is relying on Prasad’s metering service or interceptor to teach the claimed limitation. Appeal Br. 12-13. In addition, Appellant argues that serialization does not necessarily teach formatting, and that Prasad’s interceptor does not perform this function. Reply Br. 9-11. The Examiner infers that the format in which the metering service receives the usage record reflects the format in which the interceptor sent them to the metering service; otherwise, the two could not communicate. Ans. 10-11. Prasad states a “metering service instance receives usage records one at a time and serialized the records into strings, and appends them to one of one or more in-memory usage batches.” Prasad 2:18-21. We agree with the Examiner that Prasad’s interceptor’s converting usage data to records sent “one at a time” and serialized may be regarded as conversion to a format supported by the licensing agent (Prasad’s metering service) as broadly claimed. Ans. 11. Although Appellant argues that there is no indication in Prasad that records had to be converted into this particular format (Reply Br. 9-10), it is understood by those of ordinary skill in the art that communication protocols encapsulate data (such as the usage data at issue here) “one at a time” with headers and trailers for serialized transmission and thus necessarily involve format conversion for the communicating entities (Prasad’s interceptor and metering service in this case) to be able to communicate over a network. Thus, Prasad’s interceptor Appeal 2020-002338 Application 15/473,194 10 converts the format of usage information into one that is supported by the metering service, which satisfies the claimed limitation. Appellant further argues that Prasad does not teach that usage records were converted by Prasad’s interceptors into a format usable by its metering service. Reply Br. 9-10. However, Prasad teaches that its interceptors may invoke the add usage method and describes the format of that method. Prasad 10:50-11:10. Consequently, we are not persuaded by Appellant’s arguments.5 Separate Registry Argument Appellant argues that the Examiner’s combination of Prasad and Reed would result in adding an entirely separate registry because one would not have desired to replace Prasad’s usage information store 212 with Reed’s service registry because it is necessary to achieve Prasad’s stated goal of monitoring network usage. Reply Br. 7. Appellant further states “[t]he Examiner’s proposed combination is not as simple as replacing (or supplementing) the usage information store 212 of Prasad with a registry. Id. at 8. However, the indefinite article “a” in “a registry” in claim 15 means “one or more” in open-ended claims containing the transitional phrase “comprising.” Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1342-43 (Fed. Cir. 2008) (quoting KJC Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)). Consequently, the claim does not foreclose separate registries, as Appellant seems to argue. 5 Prasad also contains detailed discussion of network protocols and communication formats as background to its invention. 1:20-51. Appeal 2020-002338 Application 15/473,194 11 Prasad’s registry registers usage of services, and Reed’s registry registers services for use by bundles. Conclusion for Claim 15 Consequently, we sustain the Examiner’s rejection of claim 15 under § 103. Claim 16 Claim 16 is reproduced below: 16. The method of claim 15, wherein the auxiliary component subscribes to an event handler configured to receive events from the component, the subscription specifies an event from the component relating to a change of state of the component, and the event handler sends the notification to the auxiliary component based upon the event matching the subscription. The Examiner found these features taught by Prasad. Final Act. 4 (citing Prasad 10:50-57). Appellant contends it could not properly evaluate the Examiner’s rejection, and requested the Examiner to identify what specific features correspond to the claimed component, auxiliary component, licensing agent, event handler, notification, and indication. Appeal Br. 15-16. In the Answer, the Examiner set forth the following table of correspondences in response to Appellant’s request: Key claimed term Prasad Auxiliary component Column 2, lines 10-37 “Interceptor” Service framework Fig. 3, Web Services 202 licensing agent Fig. 3, Metering Service 222 component Fig. 3, Web services front end server 200 Ans. 3. Appeal 2020-002338 Application 15/473,194 12 Appellant argues that, in the claim, it is the auxiliary component that subscribes to an event handler. Reply Br. 11. Appellant argues that Prasad’s “Subscriber ID” does not correspond to Prasad’s interceptor (the alleged auxiliary component) but is instead the identifier of an entity to which usage is attributed. Id. Appellant’s argument is a new argument in a reply brief that we may not consider absent a showing of good cause, which has not been made here. 37 C.F.R. § 41.41(b)(2). The Examiner has not considered the argument or entered any response to it in the record. Consequently, we do not consider this argument.6 Appellant further argues that Prasad’s call is a push operation whereas the claimed subscription is a pull operation, which distinguishes Prasad from what is claimed. Appeal Br. 18; Reply Br. 12. Appellant argues that “[a] subscription is a request for information that will be subsequently provided when the conditions stated in the subscription are met.” Reply Br. 12. However, this argument that information must be “subsequently provided” is not commensurate with the scope of the claim, which does not specify when “the event handler sends the notification to the auxiliary component” but only that it be “based upon the event matching the subscription.” We do not agree that the claim is limited to a pull operation. DECISION We affirm the Examiner’s rejection of claims 15-34 under 35 U.S.C. § 103(a). 6 We further note that Reed mentions the capability of a bundle to register a service listener with a framework to be notified when services get added to or removed from the service registry. Reed ¶ 16. Appeal 2020-002338 Application 15/473,194 13 In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 15-34 103(a) Prasad, Reed 15-34 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED