Ex Parte Awada et al

Board of Patent Appeals and Interferences

Apr 28, 2010

10845534 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte FAISAL M. AWADA, JOE NATHAN BROWN,
PHILIP BERNARD BURKES, and VICTOR ESPINOZA, JR.
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Appeal 2009-004473
Application 10/845,534
Technology Center 2100
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Decided: April 28, 2010
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Before JAMES D. THOMAS, JAY P. LUCAS, and JAMES R. HUGHES,
Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
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We vacate all the rejections before us under 35 U.S.C. § 103 and
institute a new ground of rejection within the provisions of 37 C.F.R. §
41.50(b).

Invention
A system, method, and computer program product are disclosed
for monitoring resources capable of being assigned to
different partitions of a data processing system from a
free resources pool of the data processing system. A free
resources event log is associated with the free resources pool
for maintaining a log of events for each resource that is in the
free resources pool.
(Abstract, ll. 1-7; Spec. 28; Figs. 4A-4C. )

Representative Claim
1. A data processing system, comprising:
a plurality of partitions;
a free resources pool for maintaining at least one resource that is
capable of being assigned to any partition of the plurality of partitions from
the free resources pool but is not currently assigned to any partition of the
plurality of partitions; and
a free resources event log associated with the free resources pool for
maintaining a log of events for each of the at least one resource that is in the
free resources pool.

Prior Art and Examiner’s Rejections
The Examiner relies on the following references as evidence of
unpatentability:
Bauman 6,279,098 B1 Aug.21, 2001
Kamionka 4,528,624 Jul. 9, 1985
Adams 2003/0017808 A1 Jan. 23, 2003
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Austen 2002/0124215 A1 Sept. 5, 2002
Briggs 2005/0160329 A1 Jul. 21, 2005
(filed Jan. 12, 2004)
All claims on appeal, claims 1-20, stand rejected under 35 U.S.C.
§ 103. As to claims 1-6 and 8-13, the Examiner relies upon Bauman in view
of Kamionka. Next, as to claim 7, the Examiner relies upon this
combination of references in addition to Briggs. Turning to claims 16-18,
the Examiner relies upon Bauman in view of Kamionka, further in view of
Adams. As to claims 14 and 15, the Examiner relies upon Bauman in view
of Kamionka, further in view of Austen. Lastly, as to claims 19 and 20, the
Examiner relies upon this latter combination of references, further in view of
Adams.

FINDINGS OF FACT (“FF”)
Based upon Appellants’ Specification as filed, the claimed term,
“partitions” is construed to identify logical partitions and not necessarily
apparatus or structural partitions. The claimed “resources” are inclusive of
software only resources. Likewise, the claimed “pool” and “event log” are
abstract data or logical constructs. The portions of prior art Figure 3
illustrate various partitions, as well as a free resources pool. In contrast,
Appellants’ contribution to the art in the various portions of Figure 4 mirror
the partitions of Figure 3 and add a free resources pool that includes an event
log, which is not illustrated in prior art Figure 3. For each independent
claim on appeal, claims 1, 10, and 16, pages 6 and 7 of Appellants’ Brief
make reference to the various portions of Figure 4 to describe the claimed
invention.

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ANALYSIS
We vacate the five rejections under 35 U.S.C. § 103 encompassing all
claims on appeal because we conclude that all claims on appeal, claims 1-20
are “barred at the threshold by § 101.” In re Comiskey, 554 F.3d 967, 973
(Fed. Cir. 2009) (citing Diamond v. Diehr, 450 U.S. 175, 188 (1981)).
Therefore, the following new ground of rejection is set forth in this Opinion
within the provisions of 37 C.F.R. § 41.50(b).

NEW REJECTION UNDER 35 U.S.C. § 101
PRINCIPLES OF LAW
Statutory Subject Matter
The subject matter of claims permitted within 35 U.S.C. § 101 must
be a machine, a manufacture, a process, or a composition of matter.
Moreover, our reviewing court has stated that “[t]he four categories [of
§ 101] together describe the exclusive reach of patentable subject matter. If
the claim covers material not found in any of the four statutory categories,
that claim falls outside the plainly expressed scope of § 101 even if the
subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346,
1354 (Fed. Cir. 2007), reh’g en banc denied, 515 F.3d 1361 (Fed. Cir.
2008), cert. denied, 127 S. Ct. 70 (2008). Accord In re Ferguson, 558 F.3d
1359 (Fed. Cir. 2009). This latter case held that claims directed to a
“paradigm” are nonstatutory under 35 U.S.C. § 101 as representing an
abstract idea. Thus, a “signal” cannot be patentable subject matter because it
is not within any of the four categories. In re Nuijten, 500 F.3d at 1357.
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Laws of nature, abstract ideas, and natural phenomena are excluded from
patent protection. Diamond v. Diehr, 450 U.S. at 185. A claim that recites
no more than software, logic or a data structure (i.e., an abstraction) does not
fall within any statutory category. In re Warmerdam, 33 F.3d 1354, 1361
(Fed. Cir. 1994).

ANALYSIS
With this background in mind, claims 1-20 are rejected under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
Consistent with our earlier-noted invention statement from
Appellants’ disclosed Abstract and in view of our brief Findings of Fact
section in this opinion, the disclosed and claimed invention is directed to
software per se, abstract ideas, abstract concepts and the like including the
logical partitions and the claimed data constructs of a pool and a log.
As to independent claim 1, the claimed system in the preamble is
construed as a software-based only system since no apparatus or hardware is
recited there or in the body of that claim. The claimed partitions and pool
appear to read on the disclosure and various portions of admitted prior art
Figure 3 as well as Figure 4. The claimed free resources event log is
depicted in the various portions of Figure 4, as discussed earlier in this
opinion, that are only associated with the free resources pool. This log,
again, is a mere label of data or data structure or construct. The subject
matter of independent claim 10 mirrors the subject matter of independent
claim 1 just discussed.
Moreover, the subject matter of independent claim 16 also mirrors the
subject matter of these independent claims, but is directed to a computer-
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readable medium. That recitation as well as the computer program product
also of the preamble of this claim are construed to be a software module or
directed to software per se because they are recited to comprise only
computer instructions. With respect to a recitation of the computer readable
medium, the discussion in the paragraph bridging pages 21 and 22 of the
Specification as filed makes clear that the processes and procedures of the
claimed invention are stated to include signal embodiments. As such, the
medium includes transitory embodiments, such as to comprise signals per se.
Note also the analysis provided by Subject Matter Eligibility of Computer
Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).

CONCLUSION AND DECISION
We have pro forma reversed the five outstanding rejections under 35
U.S.C. § 103 that encompass all claims on appeal, claims 1-20. We have
instituted a new ground of rejection within 37 C.F.R. § 41.50(b). This new
rejection of all claims on appeal is based upon 35 U.S.C. § 101 since these
claims are directed to non-statutory subject matter.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
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new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .

The two-month time period for exercising one of the options provided
in 37 C.F.R. § 41.50(b) begins to run from the Decided Date shown on the
first page of the decision. The time period does not run from the Mail Date
(paper delivery) or the Notification Date (electronic delivery).
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) (2007).

REVERSED; 37 C.F.R. § 41.50(b)

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