Ex Parte Biazetti et al

Patent Trial and Appeal Board

Jan 12, 2015

12347108 (P.T.A.B. Jan. 12, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ANA C. BIAZETTI, THOMAS LUMPP, and
JUERGEN SCHNEIDER
____________________

Appeal 2012-009768
Application 12/347,108
Technology Center 2100
____________________

Before JEAN R. HOMERE, JEFFREY S. SMITH, and
JEFFREY A. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1–12. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

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Application 12/347,108

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Claimed Subject Matter
The invention generally relates to dynamic creation of policies that
provide for high availability computing. See Spec. 1–3. Claim 1,
reproduced below, is illustrative:
1. A method for dynamically creating a high availability
policy based upon entries in a configuration management
database (CMDB) and a best practices template, the method
comprising:
directing resource discovery in a CMDB for a selected
application to discover components and dependencies of the
selected application;
mapping the components and dependencies discovered
for the selected application in the CMDB to a best practices
template specifying a parameterized high availability topology
for the selected application; and,
storing the best practices template with mapped
components and dependencies as a high availability policy for
the selected application.

Rejections
Claims 8–12 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.1

1 The Examiner appears to have withdrawn the rejection of method claims
1–7 under 35 U.S.C. § 101. Should there be further prosecution of this
application (including any review for allowance), the Examiner may wish to
review all of the claims for compliance under 35 U.S.C. § 101 in light of the
recently issued preliminary examination instructions on patent eligible
subject matter. See “Preliminary Examination Instructions in view of the
Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank
International, et al.,” Memorandum to the Examining Corps, June 25,
2014; see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366
(Fed. Cir. 2011) (holding method claim reciting steps of obtaining
information, constructing a map, and utilizing the map invalid under § 101
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Claims 1–12 stand rejected under 35 U.S.C. § 102(b) as anticipated by
O’Brien (US 7,228,453 B2, issued June 5, 2007).

ISSUES
The issues raised by Appellants’ contentions are as follows:
1. Whether the “computer usable storage medium” recited in
claim 8 includes transitory media and is therefore directed to patent
ineligible subject matter.
2. Whether O’Brien discloses “mapping the components and
dependencies discovered for the selected application in the CMDB to a best
practices template specifying a parameterized high availability topology for
the selected application” (hereinafter, the “mapping step”), as recited in
claim 1.

ANALYSIS
Section 101 – Claims 8–12
The Examiner determined that the limitation “computer usable storage
medium” in claim 8 appears to cover transitory and non-transitory
embodiments and thus encompasses non-statutory subject matter such as
transitory propagating signals. Ans. 5–6. The Examiner suggested
Appellants amend claim 8 to recite a “non-transitory computer usable
medium,” Final Act. 4 (mailed Oct. 12, 2011), but Appellants did not do so.
Appellants do not present persuasive evidence or argument that the
Specification explicitly defines “computer usable storage medium” to

as being “drawn to an unpatentable mental process—a subcategory of
unpatentable abstract ideas,” along with related computer readable media
claim).
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exclude non-transitory embodiments, or that any other limitations in claim 8
restrict the claim to non-transitory embodiments. Appellants argue that a
storage medium is not a transitory medium like a signal. Appeal Br. 11.
Since the filing of Appellants’ Brief, the Board held in Ex parte
Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential in relevant
part), that in the relevant timeframe “those of ordinary skill in the art would
understand the claim term ‘machine-readable storage medium’ would
include signals per se.” Appellants’ arguments to the contrary and citation
of prior non-precedential Board opinions are therefore unavailing.
“[W]here, as here, the broadest reasonable interpretations of all the
claims each covers a signal per se, the claims must be rejected under 35
U.S.C. § 101 as covering non-statutory subject matter.” Id. (citing, inter
alia, In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory
embodiments are not directed to statutory subject matter) and U.S. Patent &
Trademark Office, Subject Matter Eligibility of Computer-Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010)). Although Appellants
remark that the “Examiner appears to believe the findings of the Federal
Circuit and the Supreme Court are not binding upon the Examiner as an
agent of the United States Patent and Trademark Office,” Appeal Br. 10,
Appellants do not argue that any specific Federal Circuit or Supreme Court
authority compels us not to follow the Board’s Mewherter decision.
Accordingly, we agree with the Examiner that claim 8 encompasses
non-statutory subject matter. Appellants do not present separate arguments
for dependent claims 9–12, and we sustain the rejection of these claims
under 35 U.S.C. § 101 for the same reasons.

Appeal 2012-009768
Application 12/347,108

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Section 102 – Claims 1–12
Appellants argue that O’Brien does not disclose the mapping step of
claim 1. Appeal Br. 15. Specifically, Appellants argue that the Examiner
failed to rebut Appellants’ previous arguments that mapping is not disclosed
in O’Brien, that the Examiner misconstrued the term “best practices
template,” and that the Examiner has not established a proper claim
construction of the claim term “parameterized high availability topology.”
Appeal Br. 18.
Regarding construction of the term “best practices template,”
Appellants quote from a previous office action response arguing the
“Examiner has set forth an express claim construction of the term ‘best
practices template’ as a ‘desired configuration.’” Id. at 15. Appellants argue
that the Examiner ignored these arguments regarding “misconstruction of the
‘best practices template.’” Id. at 16. Appellants appear to assert that
describing the “best practices template” as a desired configuration does not
incorporate claim 1’s further limitation that the best practices template
“specif[y] a parameterized high availability topology.” We will, therefore,
address Appellants’ arguments in the context of the term “parameterized
high availability topology,” as recited in claim 1.
Appellants argue that the broadest reasonable interpretation of
“parameterized high availability topology” is “a high availability topology
that has been parameterized.” Appeal Br. 17. According to Appellants, the
Examiner “impermissibly interpreted ‘parameterized high availability
topology’ to more broadly mean ‘structured markup language document’
that describes a ‘managed object class.’” Id. at 17–18. Appellants
elsewhere argue, however, that the Examiner interpreted “parameterized
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high availability topology” to mean a structured markup language document
formatted with different entries specifying a known topology. Id. at 15–16
(citing Final Act. 16–17).
Appellants further assert that the Examiner’s findings relating to high
availability best practices designs, templates, fault management, topologies,
and mapping as disclosed by O’Brien, see Ans. 19–21 (citing O’Brien Fig 2;
col. 2, ll. 37–62; col. 4, ll. 8–33; col. 3, ll. 61–63; col. 5, ll. 17–28; col. 6, ll.
23–39; col. 3, ll. 13–24; col. 3, ll. 37–41; col. 6, ll. 52–67; col. 7, ll. 1–3; col.
9, ll. 16–26), show that O’Brien has “words of varying relevance to
Appellants’ claim language.” Appellants submit, however, the cited textual
portions do not show that O’Brien discloses “a best practices template
specifying a parameterized high availability topology for the selected
application,” Reply Br. 7. In particular, Appellants argue that a “managed
object class” acts as a template for the construction of an object, and that the
Examiner has not shown the managed object classes disclosed in O’Brien
define or specify a parameterized high availability topology. Id.
We are not persuaded that the Examiner interprets “parameterized
high availability topology for the selected application” to mean a structured
markup language document that describes a managed object class, or even a
structured markup language document formatted with different entries
specifying a known topology. The Examiner’s findings indicate that the
term “parameterized” encompasses a structured markup document, and that
a managed object class is a “template.” See generally Ans. 19–21. We
agree with these findings. We do not, however, understand the Examiner’s
interpretation of “parameterized high availability topology” to be limited to
these examples.
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We agree with the Examiner that the term “parameterized topology”
and related terms are described in the Specification open-endedly. See Final
Act. 16 (citing Spec. ¶¶ 31–33). For example, the Specification states that
“the best practices template can be a structured markup language document
such as an extensible markup language (XML) formatted document with
different entries specifying a known topology for rendering an application
highly available.” Spec. ¶ 31. In addition, “the best practices template can
include parameterized entries that can be completed by mapping the
discovered components and dependencies of a selected application to
different ones of the parameterized entries in order to create an application
specific high availability policy 280.” Id. ¶ 32. “For instance, the
parameterized entries of the best practices template can enumerate different
hosts . . . .” Id. One statement about what the best practices template “is”
states that it “is a best practice model of how an application or component
can be made highly available.” Id. ¶ 31. Accordingly, we find the
Examiner’s interpretation of “parameterized topology” to be reasonably
supported by the Specification.
The Examiner finds that O’Brien defines a topology that includes the
availability manager. Ans. 19. Specifically, O’Brien discloses that the
availability manager runs on the same node as the cluster manager, and that
the standby availability manager runs on the cluster standby node and
executes as a hot standby. See O’Brien col. 25, ll. 42–60. The described
topology is depicted in Figure 1 of O’Brien, reproduced below.
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Application 12/347,108

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Ans. 20 (finding that a managed object includes the availability manager
itself).
In light of the foregoing reasons, we are unpersuaded of error in the
Examiner’s findings. We sustain the rejection of claim 1 under 35 U.S.C.
§ 102(b) as anticipated by O’Brien. Appellants do not present separate
arguments for independent claim 8 or dependent claims 2–7 and 9–12. We
sustain the rejection of these claims for the same reasons.

DECISION
The Examiner’s decision to reject claims 1–12 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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