Ex Parte KoegelDownload PDFPatent Trial and Appeal BoardFeb 20, 201411322796 (P.T.A.B. Feb. 20, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MICHAEL KOEGEL ____________________ Appeal 2011-008115 Application 11/322,796 Technology Center 2100 ____________________ Before ST. JOHN COURTENAY, III, THU A. DANG, and LARRY HUME, Administrative Patent Judges. COURTENAY, III, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008115 Application 11/322,796 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. INVENTION The claims are directed to the field of Message-Oriented Middleware (MOM) and more particularly, but not exclusively, to providing separate and dedicated instances for MOM-related processes (Spec., ¶[0001]). Independent claim 1, reproduced below, is representative of the subject matter on appeal: 1. A method, comprising: identifying a standard instance having a plurality of standard nodes each having an application load and a Message Oriented Middleware (MOM) load; separating the MOM load from each of the plurality of standard nodes; and running the MOM load at a plurality of MOM nodes, each of the plurality of MOM nodes dedicated to running the MOM load. REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: T V US 2004/0240458 A1 Dec. 2, 2004 Raev US 2005/0270973 A1 Dec. 8, 2005 Appeal 2011-008115 Application 11/322,796 3 REJECTIONS A. Claims 1, 4-11, 14, 15, and 17-20 stand rejected under 35 U.S.C § 102(e) as being anticipated by Raev (Ans. 3). B. Claims 2, 3, 12, 13, and 16 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Raev in view of TV (Ans. 11). C. Claims 18-20 stand rejected under 35 U.S.C § 101 (Non-Final Action mailed Aug. 6, 2009, p.2). GROUPING OF CLAIMS Based on Appellant’s arguments, we decide the appeal of the anticipation rejection of claims 1, 4-11, 14, 15, and 17-20 on the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).1 We address § 103 rejection B of claims 2, 3, 12, 13, and 16, and § 101 rejection C, separately, infra. ANALYSIS A. Rejection of claims 1, 4-11, 14, 15, and 17-20 under § 102 Issue 1: Under § 102 did the Examiner err in finding Raev discloses the contested limitation: “separating the MOM load from each of the plurality of standard nodes,” within the meaning of representative claim 1? (Emphasis added). As an initial matter of claim construction, we turn to Appellant’s Specification for context regarding the contested limitation “separating.” 1 Appellant filed a Notice of Appeal on August 18, 2010. The date of filing the Notice of Appeal determines which set of rules applies to an Ex parte appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the 2004 version of the Board Rules last published in the 2011 edition of Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the appeal. See also Manual of Patent Examining Procedure (MPEP) Rev. 8, July 2010. Appeal 2011-008115 Application 11/322,796 4 While no specific definition is found in the Specification, we find paragraph [0055] describes “separating” in terms of an exemplary, non-limiting embodiment: [0055] Figure 7 illustrates an embodiment of a Message Oriented Middleware architecture 700. MOM architecture 700 includes a JMS architecture/structure. In one embodiment, using an installation option, the JMS load is separated from the application load by providing a separate set of nodes (e.g., JVM) 718-722 that are dedicated to running the JMS load. (Spec., ¶ [0055], emphasis added). Thus, by providing a separate set of nodes dedicated to running the Java messaging service (JMS) instance, the JMS load (i.e., MOM load, as claimed) is separated from the application load and its standard nodes (See Spec., Fig. 7). The Examiner identifies servers 150 and 152 of the Central Services Instance 114 in Fig. 1 of Raev as corresponding to the claimed MOM nodes. The Examiner additionally finds Message Server 152 provides a messaging service dedicated to internal communication/messaging via links 180 and 182 to standard servers (130, 132, 134, 140, 142, and 144) of Application Server Instances 110 and 112. (Ans. 16). Under a broad but reasonable interpretation of “separating the MOM load from each of the plurality of standard nodes” (claim 1), we agree with the Examiner that Raev’s Central Services Instance 114 (and its servers/nodes 150 and 152) is separated from the standard nodes contained in Application Server Instances 110 and 112, this manner of separation being consistent with Appellant’s described approach of providing a separate set of nodes dedicated to running the Java messaging service (JMS) Appeal 2011-008115 Application 11/322,796 5 instance and the JMS load (i.e., MOM load, as claimed), as discussed above regarding Figure 7 of the Specification. (Cf. with Raev, Fig. 1). However, Appellant cites paragraph [0018] of Raev and contends: In other words, Raev explicitly states that neither of the two types of communications is separated from each server node; instead, each server node transmits both types of communications. Therefore, Raev does not disclose “separating the MOM load from each of the plurality of standard nodes,” as recited in each of independent claims 1, 11, 15, and 18. (Emphasis added.) (App. Br. 14). We disagree with Appellant’s contention. Paragraph [0018] of Raev refers to the server nodes of the Application Server Instances 110 and 112 as having two socket connections, not Message Server 152 as purported by Appellant. We agree with Appellant that Raev’s application server nodes (130, 132, 134, 140, 142, and 144) are capable of both internal communication (via links 180 and 182) and external session communications the dispatchers 120 and 122 (via links 170 and 172, respectively). However, as illustrated in Fig. 1 of Raev, we find Message Server 152 is dedicated to internal communication via links 180 and 182 and is not provided with links 170 and 172 for external communication. Therefore, we find the preponderance of the evidence supports the Examiner’s findings regarding Issue 1. Issue 2: Under § 102, did the Examiner err in finding that Raev discloses the disputed limitation, “each of the plurality of MOM nodes Appeal 2011-008115 Application 11/322,796 6 dedicated to running the MOM load,” within the meaning of representative claim 1? (emphasis added). Appellant contends, inter alia: Each of independent claims 1, 11, 15, and 18 also recites, in part, “running the MOM load at a plurality of MOM nodes, each of the plurality of MOM nodes dedicated to running the MOM load.” (Emphasis added.) In support of an allegation that Raev discloses this recitation, the Examiner cited to Raev at [0018]. However, as described above, this paragraph of Raev explicitly states that each server node has at least two socket connections over which to transmit both types of communications. Thus, even if the two types of communications discussed in Raev were equivalent to “MOM load” and “application load,” which Applicant does not admit, the discussion in Raev that each server node transmits both types of communications is contrary to “each of the plurality of MOM nodes dedicated to running the MOM load,” as recited in independent claims 1, 11, 15, and 18. (App. Br. 14-15). However, the Examiner identifies that the contested limitation is disclosed in both paragraphs [0017] and [0018] of the Raev reference. (Ans. 4-5, 16). Appellant’s contentions are unpersuasive because the arguments advanced are grounded on an erroneous premise – that Raev’s Message Server 152 (MOM node) has two socket connections for internal communication (via links 180 and 182) and external communications (via links 170 and 172). However, Paragraph [0018] of Raev refers to the server nodes of the Application Server Instances 110 and 112 as having two socket connections, not Message Server 152 as purported by Appellant. (See App. Br. 14-15; see also Raev Fig. 1). Appeal 2011-008115 Application 11/322,796 7 We agree with Appellant that Raev’s application (i.e., standard) server nodes (130, 132, 134, 140, 142, and 144) are capable of both internal communication (via links 180 and 182) and external session communications (via links 170 and 172). (Raev Fig. 1). However, as illustrated in Fig. 1, Message Server 152 is dedicated to internal communication via links 180 and 182 and is not provided with links 170 and 172 for external communication. (Id.). Moreover, we conclude, under a broad but reasonable interpretation, that the scope of the contested limitation (“each of the plurality of MOM nodes dedicated to running the MOM load”) does not preclude the claimed MOM nodes from performing additional or secondary functions, since claim 1 does not limit the MOM nodes as being solely dedicated to running the MOM load (emphasis added). 2 Appellant has not expressly claimed that each of the plurality of MOM nodes are “only” or “solely” dedicated to running the MOM load. Thus, even assuming arguendo, that Raev’s Enque Server 150 and Message Server 152 (MOM nodes) also perform secondary functions not associated with running the MOM load, we are not persuaded the Examiner erred. Therefore, for essentially the same reasons articulated by the Examiner in the Answer (p. 16), as discussed above, we sustain the § 102 rejection (A) of representative independent claim 1. Claims 4-11, 14, 15, and 17-20 (not argued separately) fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). See n.1 supra. 2 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). Appeal 2011-008115 Application 11/322,796 8 B. Rejection of dependent claims 2, 3, 12, 13, and 16 under § 103 Appellant contends dependent claims 2, 3, 12, 13, and 16 are non- obvious for the same reasons previously advanced regarding their respective independent claims, (App. Br. 16). We find no deficiencies regarding anticipation rejection A of independent claims 1, 11, 15, and 18, as discussed above. Therefore, we sustain § 103 rejection B of dependent claims 2, 3, 12, 13, and 16 for the same reasons discussed above regarding rejection A. C. Rejection of claims 18-20 under § 101. The Examiner concludes that claims 18-20 are directed to non- statutory subject matter since the claim limitation “machine-accessible medium” is described in the Specification as including “…propagated signals (e.g., carrier waves, infrared signals, digital signals etc.,)” (Non-final Action mailed Aug. 6, 2009, p. 2). In response, on Nov. 6, 2009, Appellant amends the Specification at paragraph [0075] and deletes the portion of the description referring to propagated signals in an effort to overcome the § 101 rejection, (See Remarks filed Nov. 6, 2009, p. 7).3 Appellant does not otherwise contest this ground of rejection. 3 In the event of further prosecution, we leave it to the Examiner to consider an objection to the amendment removing the signal limitations from the Specification because the amendment impermissibly broadens the description and raises the issue of new matter. Anascape, Ltd. v. Nintendo of America, Inc., 601 F.3d 1333, 1338 (Fed. Cir. 2010)(“[a] description can be broadened by removing limitations” which is “classical new matter”) (citing Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1344 (Fed. Cir. 2008)). Appeal 2011-008115 Application 11/322,796 9 We note that the Examiner does not specifically withdraw this ground of rejection in the subsequent Final Office Action or the Examiner’s Answer.4 Accordingly, this ground of rejection under § 101 remains before us on appeal. Turning to the Examiner’s rejection, we agree the scope of the “machine-accessible medium” recited in claims 18-20 is not limited to statutory mediums and therefore additionally covers signals that are not patent-eligible subject matter under § 101. We do not find the originally- filed Specification includes an express disclaimer, such as a definition that clearly and unambiguously excludes signals. Signals are not patent-eligible subject matter under § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). See also United States Patent and Trademark Office (USPTO), Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010), the policy statement by former USPTO Director David J. Kappos, as published in the Official Gazette of the USPTO. The aforementioned USPTO policy statement guides: The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. (Emphasis added). 4 To expedite review at the Board, we urge the Examiner to expressly indicate all withdrawn rejections in any future Answers. See MPEP § 1207.02 Appeal 2011-008115 Application 11/322,796 10 As set forth in the USPTO policy guidance, a claim drawn to a computer-readable medium (and variations thereof) that covers both transitory (signal) and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation “non-transitory” to the claim. (Id.). See also MPEP § 2106 (I) (8th ed., Rev. 9 Aug. 2012). To the extent the claimed “machine-accessible medium” of claim 18 is narrowly construed by Appellant as being limited to a physical storage medium (i.e., excluding signals), we are bound under agency authority by the holding of Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB May 8, 2013) (precedential): (Given the significant amount of available guidance and evidence supra, we conclude that those of ordinary skill in the art would understand the claim term ‘machine-readable storage medium’ would include signals per se. Further, where, 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.). For these reasons, we sustain the Examiner’s § 101 rejection of claims 18-20. Appeal 2011-008115 Application 11/322,796 11 DECISION We affirm the Examiner’s decision rejecting claims 1, 4-11, 14, 15, and 17-20 under § 102. We affirm the Examiner’s decision rejecting claims 2, 3, 12, 13, and 16 under § 103. We affirm the Examiner’s decision rejecting claims 18-20 under § 101. 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). See 37 C.F.R. § 41.50(f). AFFIRMED rwk Copy with citationCopy as parenthetical citation