Ex Parte Koegel

Patent Trial and Appeal Board

Feb 20, 2014

11322796 (P.T.A.B. Feb. 20, 2014)

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

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Application 11/322,796

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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
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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.
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Application 11/322,796

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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)
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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
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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).
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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).
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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)).

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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
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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.

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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

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