Tom Evans et al.

Patent Trials and Appeals Board

Apr 28, 2021

2020000040 (P.T.A.B. Apr. 28, 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.
12/138,585 06/13/2008 Tom Evans GB920070238US1 9709
77212 7590 04/28/2021
Inactive - Cantor Colburn LLP - IBM Endicott
IPLAW D/IQ0, B/256-3
1701 North Street
Endicott, NY 13760
EXAMINER
YUN, CARINA
ART UNIT PAPER NUMBER
2194
NOTIFICATION DATE DELIVERY MODE
04/28/2021 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):
endiplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOM EVANS, GRAHAM D. WALLIS,
DAVID WARE, and CHRISTOPHER WILKINSON
Appeal 2020-000040
Application 12/138,585
Technology Center 2100
Before CAROLYN D. THOMAS, JASON V. MORGAN, and
JEREMY J. CURCURI, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 13, 16, and 19. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as International
Business Machines, Inc. Appeal Br. 1.
Appeal 2020-000040
Application 12/138,585
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CLAIMED SUBJECT MATTER
The claims are directed to a “[m]ethod and system for preferential
reply routing.” Spec., Title. Claim 13, reproduced below, is illustrative of the
claimed subject matter:
13. A method for preferential reply routing, wherein
the method comprises:
receiving, by an application server, a request-reply
message from a requesting application, wherein the application
server includes two or more partitions of a reply queue;
setting a partition, from the two or more partitions, as a
preferred partition of the reply queue of the application server,
wherein the setting of the partition as the preferred partition is
based on an indication in the request-reply message received
from the requesting application,
wherein the indication comprises a name of the
preferred partition stored in the request-reply message;
verifying the preferred partition of the reply queue
is managed locally by the application server;
determining whether the preferred partition is
available;
wherein in the event the preferred partition is
available:
storing a reply message in the preferred
partition; and
retrieving the reply message from the
preferred partition in response to the requesting
application
wherein in the event the preferred partition is
unavailable:
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routing the reply message to an alternate
partition of the reply queue managed locally by the
application server;
directing the requesting application to the
alternate partition; and
retrieving the reply message from the
alternate partition in response to the requesting
application.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Chandra US 6,058,389 May 2, 2000
Sherman US 2006/0126535 A1 June 15, 2006
Banks US 2007/0005800 A1 Jan. 4, 2007
Glenn US 7,898,964 B1 Mar. 1, 2011

REJECTIONS
Claims 13, 16, and 19 are rejected under pre-AIA 35 U.S.C. § 112,
second paragraph, as failing to comply with the written description
requirement. Final Act. 3.
Claims 13, 16, and 19 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being obvious over Sherman, Glenn, and Chandra. Final Act. 4–7.
Claims 13, 16, and 19 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being obvious over Sherman, Banks, and Chandra. Final Act. 7–10.
OPINION
The Written Description Rejection of Claims 13, 16, and 19
The Examiner finds claims 13, 16, and 19 fail to comply with the
written description requirement. Final Act. 3. In particular, the Examiner
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finds “the preferred partition is based on an indication in the request-reply
message received from the requesting application” (claim 13) lacks written
description support. See Final Act. 3 (citing Spec. ¶ 21) (“Applicant appears
to equate preferred partition as local partition. However, there is no
indication that the local partition is the preferred partition based on an
indication in the request-reply message received from the requesting
application.”); see also Ans. 11 (“There is NO mention of a preferred
partition set based on an indication in the request-reply message received
from the requesting application.”).
Appellant presents the following principal argument:
[I]t is apparent that the indication in the request-reply message is
referring to the name of the replay queue which is stored in the
request reply message as disclosed in paragraph [0023]. This
leads to the next sentence which looks to the qualified partition
(i.e., preferred partition) to see if it is available for the message.
This shows that the indication is driving the selection of the
preferred partition and is stored in the request-reply message.
Appeal Br. 6; see also Reply Br. 2 (citing Spec. ¶ 21).
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
“[T]he test for sufficiency [of the written description] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc).
We refer to Appellant’s original Specification filed June 13, 2008.
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Appellant’s Specification discloses the following:
Embodiments of the invention provide a method and
system for improved efficiency of the retrieval of reply messages
from partition reply queues. Embodiments of the invention
introduce the concept of a “preferred partition”. A preferred
partition allows the requester to nominate one partition as the one
that should be chosen for a message, if possible, with the
message being routed to an alternate partition only if the
preferred partition is not reachable, or available for some reason,
such as the preferred partition is full. Various implementations
of embodiments of the invention are possible, with the preferred
partition either being explicitly chosen by the requester, or
implicitly selected by the system, during the processing of the
request message.
Spec. ¶ 19.
Appellant’s Specification further discloses the following:
FIG. 1 illustrates a flow chart for preferential reply routing
according to an embodiment of the invention. The process starts
(block 100) with a messaging system receiving a request-reply
message from a requesting application (block 102), and detecting
there is a partition of the reply queue managed locally to an
application server to which the requesting application is
connected (block 104). The messaging system qualifies the name
of a reply queue stored in the request-reply message so that the
name refers to a local partition that is managed locally to the
application server (block 106). In the event the qualified partition
is available (decision block 108 is No), the reply message is
retrieved by the messaging system from the qualified local
partition in response to the requesting application (block 110),
and the process ends (block 116). In the event the qualified
partition is unavailable, the messaging system routes the reply
message to an alternate partition (decision block 108 is Yes), and
the requesting application is directed by the messaging system to
the alternate partition (block 112) for the retrieval of the reply
message (block 114), and the process ends (block 116).
Spec. ¶ 21.
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Thus, as described in Appellant’s Specification, “the preferred
partition [is] explicitly chosen by the requester, or implicitly selected by the
system.” Spec. ¶ 19. Further, as described in Appellant’s Specification,
“[t]he messaging system qualifies the name of a reply queue stored in the
request-reply message so that the name refers to a local partition that is
managed locally to the application server (block 106).” Spec. ¶ 21 (emphasis
added). However, to the extent the name of the reply queue is qualified to
refer to a local partition, there is no disclosure that this particular local
partition is the preferred local partition and that there is also an alternate
local partition as recited in claim 13.
Thus, we find the disclosures in Appellant’s Specification do not
reasonably convey to those skilled in the art that the inventors had
possession of “the preferred partition is based on an indication in the
request-reply message received from the requesting application” (claim 13)
as of the filing date.
We, therefore, sustain the Examiner’s written description rejection of
claim 13. We also sustain the Examiner’s written description rejection of
claims 16 and 19, which each recite the same key disputed limitation.

The Obviousness Rejection of Claims 13, 16, and 19 over Sherman, Glenn,
and Chandra
The Examiner finds Sherman, Glenn, and Chandra teach all
limitations of claim 13. Final Act. 4–7; see also Ans. 12–13.
In particular, the Examiner finds Glenn teaches “wherein the setting
of the partition as the preferred partition is based on an indication in the
request-reply message received from the requesting application” (claim 13).
See Final Act. 5 (citing Glenn, col. 4, ll. 49–60). The Examiner reasons “it
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would have been obvious to one of ordinary skill in the art to modify the
teachings of Sherman by adding the routing procedures of Glenn in order to
efficiently designate the reply message[] to its designated queue.” Final Act.
7.
In particular, the Examiner finds Chandra teaches “wherein the
indication comprises a name of the preferred partition stored in the request-
reply message” (claim 13). See Final Act. 7 (citing Chandra, col. 3, ll. 1–15,
col. 11, ll. 20–30). The Examiner reasons “it would have been obvious to
one of ordinary skill in the art to modify the teachings of Sherman and
Glenn by adapting the teachings of Chandra efficiently processing messages
in queue.” Final Act. 7.
Appellant presents the following principal arguments: Appellant
argues Glenn does not teach “wherein the setting of the partition as the
preferred partition is based on an indication in the request-reply message
received from the requesting application, wherein the indication comprises a
name of the preferred partition stored in the request-reply message” (claim
13) because “Glenn discloses a queue monitoring system that utilizes a
monitoring component to collect information about queues to monitor
messages travelling through these queues.” Appeal Br. 7. Appellant further
argues “Glenn describes a message processing system (e.g., other message
services) and not the reply-request set up featured in the present claims.”
Appeal Br. 8. Appellant further argues “[s]ince there are two completely
different systems, it would not make sense to combine this reference with
Sherman and/or Chandra because it would render the cited references
unsatisfactory for the intended purpose (e.g., reply-request routing).” Appeal
Br. 8. Appellant further argues “Glenn is only looking at the locality of the
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queue to determine if a queue is ‘preferred’ and does not specifically look to
the features of the present claims.” Appeal Br. 8.
In Glenn, the queue manager is selecting a queue based on
locality considerations (i.e., is the queue local or not?). The
present claims, instead, rely on the requesting application to
designate a preferred partition which can utilize any
consideration for determining a preferred partition (i.e., queue).
Glenn relies on a queue manage[r] to make this determination
where [] the present claims rely on the requesting application
which designates the preferred partition in its message request.
The present claims feature the preferred partition as being set
based on an indication from the requesting application which is
not disclosed, taught, or fairly suggested by Glenn. The
indication could designate a preferred partition based on some
other quality besides being managed locally to the requesting
application.
Reply Br. 3.
We do not see any reversible error in the contested Examiner’s
findings. We concur with the Examiner’s conclusion of obviousness.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the
art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant’s particularized
arguments are directed to Glenn, while the contested findings are based on
the collective teachings of the references. For this reason and for reasons
further explained immediately below, we do not see any reversible error.
In general, regarding Appellant’s arguments that Glenn does not teach
“wherein the setting of the partition as the preferred partition is based on an
indication in the request-reply message received from the requesting
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Application 12/138,585
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application, wherein the indication comprises a name of the preferred
partition stored in the request-reply message” (claim 13), the Examiner finds
the collective teachings of Glenn and Chandra teach this argued limitation.
See Final Act. 5 (citing Glenn, col. 4, ll. 49–60), 7 (citing Chandra, col. 3, ll.
1–15, col. 11, ll. 20–30).
Regarding Appellant’s arguments that Glenn is not directed to a
request-reply message service, the Examiner finds Sherman teaches
“receiving, by an application server, a request-reply message from a
requesting application” (claim 13). See Final Act. 4 (citing Sherman ¶ 18);
see also Sherman ¶ 18 (“[T]he given mobile node may also request an
acknowledgement receipt of the forwarded broadcast message from the at
least one downstream mobile node.”)
Regarding Appellant’s arguments that Glenn only considers locality,
the Examiner finds Chandra teaches “wherein the indication comprises a
name of the preferred partition stored in the request-reply message” (claim
13). See Final Act. 7 (citing Chandra, col. 3, ll. 1–15, col. 11, ll. 20–30); see
also Chandra, col. 3, ll. 5–7 (“Messages comprise user data and control
information such as a queue name.”).
Finally, regarding Appellant’s arguments that the combination would
render the cited references unsatisfactory for the intended purpose, we
disagree. In short, Sherman teaches a request-reply message. See Sherman
¶ 18 (“[T]he given mobile node may also request an acknowledgement
receipt of the forwarded broadcast message from the at least one
downstream mobile node.”). Glenn, when combined with Sherman, teaches
choosing a local queue or a non-local queue for a reply message. See Glenn,
col. 4, ll. 57–59 (“determines whether each message can be serviced locally
by the first local queue 144 or needs to be forwarded to another queue”).
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Chandra, when combined with Sherman and Glenn, teaches a queue name in
the request-reply message. See Chandra, col. 3, ll. 5–7 (“Messages comprise
user data and control information such as a queue name.”). Thus, the
combination teaches the entirety of the argued limitation.
We, therefore, sustain the Examiner’s rejection of claim 13.
We also sustain the Examiner’s rejection of claims 16 and 19, which
are not separately argued with particularity. See Appeal Br. 7–9; see also
Reply Br. 2–3.

The Obviousness Rejection of Claims 13, 16, and 19 over Sherman, Banks,
and Chandra
The Examiner finds Sherman, Banks, and Chandra teach all
limitations of claims 13, 16, and 19. Final Act. 7–10.
Appellant does not present any separate arguments for this ground of
rejection. See Appeal Br. 7–9; see also Reply Br. 2–3. If Appellant fails to
present arguments on a particular issue — or, more broadly, on a particular
rejection — the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection. Id. (citing, inter alia, Hyatt v. Dudas,
551 F.3d 1307, 1313–14 (Fed. Cir. 2008) (the Board may treat arguments
Appellant failed to make for a given ground of rejection as waived)).
We, therefore, sustain the Examiner’s rejection of claims 13, 16, and
19.
CONCLUSION
The Examiner’s decision to reject claims 13, 16, and 19 is affirmed.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
13, 16, 19 103(a) Written
Description
13, 16, 19
13, 16, 19 103(a) Sherman, Glenn,
Chandra
13, 16, 19
13, 16, 19 103(a) Sherman, Banks,
Chandra
13, 16, 19
Overall
Outcome
13, 16, 19

TIME PERIOD FOR RESPONSE
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