Ex Parte Nguyen et alDownload PDFPatent Trial and Appeal BoardMay 14, 201412367797 (P.T.A.B. May. 14, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KIET Q. NGUYEN, ANNAPUREDDY S. REDDY, and SHUBHA S. TANGIRALA ____________________ Appeal 2012-000421 Application 12/367,797 Technology Center 2400 ____________________ Before: JAMES P. CALVE, ANNETTE R. REIMERS, and JILL D. HILL, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the final rejection of claims 1-20. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-000421 Application 12/367,797 2 CLAIMED SUBJECT MATTER Claims 1, 2, and 14 are independent. Claim 1 is reproduced below. 1. A computer-implemented method of monitoring assets, the method comprising: receiving asset state change data for an asset at a first computer system, wherein the asset is a physical object utilized by an enterprise and wherein the asset change data includes a current state of the asset; generating an update message based on the asset state change data with the first computer system, wherein the generating includes: obtaining an asset-state identifier corresponding to a combination of the current state for the asset and the asset, wherein the asset-state identifier uniquely identifies the combination from all other possible combinations of assets and states being monitored; and adding the unique identifier to the update message; and transmitting the update message for processing by a second computer system. REJECTIONS Claims 14-17 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claims 1-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hansen (US 2004/0177124 A1; pub. Sep. 9, 2004) and Haines (US 2003/0072027 A1; pub. Apr. 17, 2003). ANALYSIS Claims 14-17 are rejected under 35 U.S.C. § 101 Appellants argue claims 14-17 as a group. App. Br. 5. We select claim 14 as representative. 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 15- 17 stand or fall with claim 14. Appeal 2012-000421 Application 12/367,797 3 The Examiner determined that the limitation “computer readable storage medium” in claim 14 appears to cover transitory and non-transitory embodiments and thus encompasses non-statutory subject matter such as transitory propagating signals. Ans. 5. The Examiner found that the Specification discloses a “computer readable medium” but does not mention a “computer readable storage medium.” Id. at 18 (emphasis in original) (citing Spec., para. [0049]). The Examiner also found that the Specification discloses that the “computer readable medium” includes one or more of any type of tangible medium of expression “and/or the like” and therefore is not inclusive but may include transitory mediums. Id. The Examiner reasoned that such a transitory computer readable storage medium allows a computer to execute instructions stored on a signal, which is considered a medium that stores the instruction that is readable by the computer. Id. Appellants argue that the Examiner cannot ignore the term “storage” in the claimed “computer usable storage medium.” App. Br. 5. Appellants provide dictionary definitions of “storage medium” to mean “[a]ny device or recording medium into which data can be copied and held until some later time, and from which the entire original data can be obtained” and “storage” to mean “[a]ny device that can accept, retain and read back one or more times, the means of storing data may be chemical, electrical magnetic, magnetic, mechanical, or sonic.” Id. at 7. Appellants cite several United States patents that are unrelated to the current application as evidence that a skilled artisan would distinguish between a transmission medium and a storage medium. Id. at 8-11. Appellants also cite to Ex Parte Mehta, which is a non-precedential decision of the Patent Trial and Appeal Board, as evidence of this understanding of a storage medium. Id. at 12. Appeal 2012-000421 Application 12/367,797 4 Appellants’ arguments are not persuasive for the following reasons. Appellants have not defined “computer readable storage medium” in their Specification. Appellants instead disclose that “computer readable medium” comprises “one or more of any type of tangible medium of expression, now known or later developed, from which a copy of the program code can be perceived, reproduced, or otherwise communicated by a computing device” and can comprise “one or more portable storage articles of manufacture; one or more memory/storage components of a computing device; paper; and/or the like.” Spec. 22, para. [0049]. The Examiner reasonably interpreted this disclosure as open-ended, non-inclusive, and as encompassing a transitory computer readable media that allows a computer to execute instructions stored on a signal. Ans. 18. We agree with the Examiner that a broadest reasonable interpretation of the term “computer readable medium” includes transitory propagating signals, particularly when the Specification does not define the term “computer readable medium” expressly to exclude transitory matter such as signals. See id. at 5 and authorities cited therein. We also agree with the Examiner that addition of the term “storage” to “computer readable medium” does not limit the scope of “computer readable storage medium” to only non-transitory media, particularly in view of the fact that transitory media such as signals can store data and instructions. Id. at 18. We also are not persuaded by Appellants’ citations to dictionary definitions, United States patents, and decisions of the United States Federal Circuit Court of Appeals and Patent Trial and Appeal Board at pages 6-17 of the Appeal Brief in view of the precedential decision in Ex Parte Mewherter, 2012-007692, 2013 WL 4477509 (Patent Tr. & App. Bd. May 8, 2013) (precedential). In Mewherter, the Board held that where a specification does Appeal 2012-000421 Application 12/367,797 5 not limit the term “machine readable storage medium” expressly to exclude signals, carrier waves, and other transitory media, the term encompasses transitory propagating signals. The definitions cited by Appellants do not require a different result as data and program code can be copied and held on a signal until some later time and such signals are understood by skilled artisans to provide storage of data. We sustain the rejection of claims 14-17. Claims 1-20 as unpatentable over Hansen and Haines Appellants argue claims 1, 3-8, 10-14, and 16-20 as a group. App. Br. 23. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 3-8, 10-14, and 16-20 stand or fall with claim 1. App. Br. 23. The Examiner found that Hansen discloses a computer-implemented method, as claimed, except for disclosing obtaining an asset-state identifier, wherein the asset-state identifier uniquely identifies the combination from all other possible combinations of assets and states being monitored and adding the unique identifier to the update message. Ans. 6-7. The Examiner found that Haines discloses these features. Id. at 7-8. In particular, the Examiner found that Haines discloses that a web server combines a device identifier with the maintenance threshold status and a message is sent to the vendor. Id. at 7 (citing Haines, para. [0085]); see also Final Rej. 5 (same). Appellants argue that the Examiner’s analysis regarding Haines in the Final Rejection at page 5 “is completely silent with regard to these specific limitations” therefore, “the Examiner has relied solely upon Hansen as to these teachings.” App. Br. 26. Appellants also argue that the Examiner’s findings regarding Haines is an entirely new finding of fact made on page 7 of the Examiner’s Answer. Reply Br. 5. Appellants further argue that the Appeal 2012-000421 Application 12/367,797 6 Examiner has not alleged that either Hansen or Haines teaches that the “asset-state identifier uniquely identifies the combination from all other possible combinations.” Id. at 5-6. These arguments do not persuade us of error in the Examiner’s findings that Haines discloses this step at paragraph [0085]. In this regard, Haines discloses that a web server 26 combines a device identifier with the detected consumable or maintenance threshold status in step S62. Haines, para. [0085]. The identifier can comprise a serial number of the peripheral device. Id. Haines discloses that step S62 involves a collation of the status and identifier. Haines, fig. 7. Appellants’ arguments do not apprise us of error in these findings of the Examiner. Moreover, the Examiner originally found that Hansen does not disclose “obtaining an asset-state identifier corresponding to a combination of the current state for the asset and the asset, wherein the asset-state identifier uniquely identifies the combination from all other possible combinations of assets and states being monitored” and relied on Haines to disclose this feature. See Ans. 7, Final Rej. 5. The Examiner’s findings also make clear that Haines discloses adding the unique identifier to the update message, as claimed. Ans. 7-8. Thus, the Examiner relied on Haines to teach the step of obtaining an asset-state identifier, wherein the asset-state identifier uniquely identifies the combination from all other possible combinations of assets. Appellants’ arguments reciting this claim language and asserting that Haines does not disclose this claimed subject matter do not apprise us of error in the Examiner’s findings that Haines discloses this claimed subject matter. We sustain the rejection of claims 1, 3-8, 10-14, and 16-20. Appeal 2012-000421 Application 12/367,797 7 Because we sustain the rejection of claims 1, 3-8, 10-14, and 16-20 on this basis, we do not decide whether Hansen discloses this claimed subject matter or whether such finding constitutes a new ground of rejection. See Ans. 18-19; see also Manual of Patent Examining Procedure § 1207.03 IV. (8th ed., rev.9, Aug. 2012) (If an appellant believes an examiner’s answer contains a new ground of rejection not identified as such, appellant may file a petition under 37 C.F.R. § 1.181 within two months from mailing of the answer or the allegation is waived). Claims 2, 9, and 15 Appellants argue claims 2, 9, and 15 as a group. App. Br. 23. We select claim 2 as representative. 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 9 and 15 stand or fall with claim 2. App. Br. 23. Claim 2 depends from claim 1 and recites “wherein the generating further includes obtaining and adding a second asset-state identifier corresponding to a second combination of a current state for a second asset and the second asset, wherein the second asset is a different physical object utilized by the enterprise.” The Examiner found that Haines discloses a device discovery state where multiple devices on the network are discovered and the device identifier is combined with the maintenance threshold in a message. Ans. 9 (citing paras. [0035], [0040], [0085]), 20. The Examiner also found that Haines discloses that multiple devices are discovered and then are monitored for status changes. Id. at 9 (citing para. [0047]; figs. 2- 3). The Examiner determined that it would have been obvious to use a readily-available second asset identifier of Haines in Hansen as all claimed elements are known in the art and can be combined by known methods with no change to their function to yield predictable results of having all pertinent Appeal 2012-000421 Application 12/367,797 8 information in one transmission for multiple assets to enable the monitoring of large networks. Id. at 9-10. The Examiner also reasoned that discovery of multiple network devices in Haines would lead to the plurality of devices being monitored in the manner previously disclosed in Haines with asset- state identifiers. Final Rej. 16; see App. Br. 27. Appellants argue that the portions of Haines that are relied upon by the Examiner, at best, teach that multiple devices associated with a vendor are discovered rather than monitored. Reply Br. 7. Appellants also argue that Haines does not teach obtaining a second asset-state identifier for a second asset or an update message that includes both a first asset-state identifier and a second asset-state identifier. Id. Appellants further argue that just because multiple devices are capable of being discovered does not establish that multiple devices could be monitored, as the Examiner alleges, and the Examiner has not articulated any reason with rational underpinning that establishes the obviousness of modifying Hansen and Haines to include limitations that neither reference teaches. App. Br. 27-28. Appellants also assert that the Examiner does not even allege that a second asset-state identifier is obtained or added to the update message but instead focuses on “device discovery.” Reply Br. 7. Appellants’ arguments are not persuasive for the following reasons. The Examiner found that Haines uses an asset-state identifier to monitor devices on a network and also discovers multiple devices on the network. Ans. 9; Final Rej. 6. The Examiner reasonably concluded that Haines would assign a unique asset-state identifier to each device that is discovered on a network so that the maintenance and threshold status of each device can be monitored for each of those devices as disclosed, for example, in Appeal 2012-000421 Application 12/367,797 9 representative paragraph [0085]. Ans. 9, 20; Final Rej. 16. Appellants’ arguments do not persuade us of error in those findings, particularly where Haines discloses a system for discovering and monitoring the status of multiple network devices and identifies each device by a serial number. Haines, paras. [0040], [0085]. Nor do Appellants’ arguments persuade or apprise us of error in the Examiner’s determination that it would have been obvious to use a second asset-state identifier, as taught by Haines, in Hansen to have all pertinent information for multiple assets in one transmission to enable the monitoring of large networks. In this regard, we note that Haines discloses, for example, that discovered devices are identified by serial number and sorted into groups and maintainers are identified for each group. Haines, paras. [0041]-[0045]; fig. 2, step S15. We sustain the rejection of claims 2, 9, and 15. DECISION We AFFIRM the rejection of claims 14-17 are rejected under 35 U.S.C. § U.S.C. § 101. We AFFIRM the rejection of claims 1-20 under 35 U.S.C. § 103(a) as being unpatentable over Hansen and Haines. 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 hh Copy with citationCopy as parenthetical citation