Ex Parte Bae et al

Patent Trial and Appeal Board

Mar 20, 2014

11421591 (P.T.A.B. Mar. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MYUNG M. BAE and JIFANG ZHANG
____________

Appeal 2011-010260
Application 11/421,591
Technology Center 2400
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
MICHAEL W. KIM, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Myung M. Bae, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 8-12 and 21-24. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

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Application 11/421,591

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SUMMARY OF DECISION
We AFFIRM and enter New Grounds of Rejection pursuant to
37 C.F.R. § 41.50(b).1

THE INVENTION
Claim 8, reproduced below, is illustrative of the subject matter on
appeal.
8. A computer readable storage medium containing a
program for dispersing scattered information in a coordinated
fashion, the program comprising instructions for:
a group leader receiving a proposal from a daemon
associated with a first computing entity;
the group leader communicating the proposal to the
group of computing entities;
notifying a second computing entity, which is a member
of the group of computing entities, of the proposal for execution
of a multi-phase protocol received from the group leader of the
group of computing entities, wherein the first computing entity
proposed the proposal;
receiving a vote on the proposal and additional proposal
information from the second computing entity in response to
said notifying the second computing entity of the proposal;
sending the vote on the proposal and the additional
proposal information to the group leader;
the group leader receiving a plurality of responses from
the group of computing entities, wherein the plurality of
responses comprises the vote on the proposal and the additional
information from the second computing entity;

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Nov. 22, 2010) and Reply Brief (“Reply Br.,” filed Apr. 25,
2011), and the Examiner’s Answer (“Answer,” mailed Feb. 23, 2011).
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the group leader communicating the additional
information and the plurality of votes to the group of computing
entities;
the group leader to determine a result with both the
plurality of responses and a second plurality of responses from
the group of computing entities received responsive to the
group leader communicating the additional information and the
plurality of votes to the group of computing entities.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Lamport
Rousseau

US 7,558,883 B1
US 2006/0235889 A1
Jul. 7, 2009
Oct. 19, 2006
The following rejections are before us for review:
1. Claims 8-12 and 21-24 are rejected under 35 U.S.C. §101 as being
directed to non-statutory subject matter.
2. Claims 8-12 and 21-24 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Lamport and Rousseau.

ISSUES
Did the Examiner err in rejecting claims 8-12 and 21-24 under 35
U.S.C. §101 as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 8-12 and 21-24 under 35
U.S.C. §103(a) as being unpatentable over Lamport and Rousseau?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
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ANALYSIS
The rejection of claims 8-12 and 21-24 under 35 U.S.C. §101 as being
directed to non-statutory subject matter.
The Examiner found that the subject matter recited in claims 8-12 and
21-24 cover a signal per se. Ans. 4. Because a signal does not fit within at
least one of the four statutory subject matter categories under 35 U.S.C.
§ 101, the Examiner found that the claims are directed to nonpatentable
subject matter. See In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).
The Appellants argue that “[t]he specification has been amended to
distinguish between a “computer readable storage medium” and “computer
readable signal medium.” App. Br. 6. The Appellants mean to imply that,
when the “computer readable storage medium” claims are read in light of the
Specification, they are reasonably and broadly construed to cover only
tangible mediums.
The difficulty with the Appellants’ argument is that the Specification
as amended does not define the groups “computer readable storage medium”
and “computer readable signal medium” so as to exclude any overlap. The
Specification was amended to read “[[The]] [[c]]Computer readable storage
medium, for example, may include non-volatile memory, such as Floppy,
ROM, Flash memory, Disk drive memory, CD-ROM, and other permanent
storage.” See Amendment filed May 18, 2010. In light of the Specification,
the claim phrase “computer readable storage medium” is not reasonably
broadly construed to exclude transmission media from its scope.
Thus, in light of the Specification, we agree with the Examiner that
the claimed computer readable storage medium is reasonably broadly
construed as covering a signal. Cf. Ex parte Mewherther (PTAB 2013)
(precedential),
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(http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd2012_007692_preced
ential.pdf).
For the foregoing reasons, we are not persuaded by the Appellants’
argument as to error if the rejection of claims 8-12 and 21-24 as directed to
nonpatentable subject matter under 35 U.S.C. § 101.

The rejection of claims 8-12 and 21-24 under 35 U.S.C. §103(a) as being
unpatentable over Lamport and Rousseau.
The Appellants argued claims 8-12 and 21-24 as a group (App. Br. 4).
We select claim 8 as the representative claim for this group, and the
remaining claims 9-12 and 21-24 stand or fall with claim 8. 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
The Appellants arguments are not persuasive as to error in the
rejection.
Claim 8 calls for “receiving a vote on the proposal and additional
proposal information from the second computing entity in response to said
notifying the second computing entity of the proposal.” (Emphasis added).
Claim 8 further calls for the group leader to receive a plurality of responses
from the group of computing entities comprising the vote on the proposal
and the additional proposal information from the second computing entity.
Claim 8 finally calls for “the group leader to determine a result with both the
plurality of responses and a second plurality of responses from the group of
computing entities received responsive to the group leader communicating
the additional information and the plurality of votes to the group of
computing entities.” (Emphasis added).
As we understand the claimed subject matter, a second computing
entity votes on a first computing entity’s proposal, as do all members of a
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group of computing entities, and that is received by a group leader. The
group leader communicates the vote and additional proposal information to
the group of computing entities and receives a second plurality of responses.
Based on the vote and additional information (“a plurality of responses”) and
the “second plurality of responses,” the group leader “determine[s] a result.”
Claim 8.
The Examiner takes the position that Lamport discloses all the claim
limitations but for “a group leader receiving the proposal from a daemon
associated with the first computing entity,” “notifying a second computing
entity of a proposal” or “receiving a vote on the proposal and additional
proposal information from the second computing entity in response to
said notifying the second computing entity of the proposal” (Ans. 7), for
which Rousseau is relied upon. According to the Examiner, “it would have
been obvious to one of ordinary skill in the art at the time of the invention to
combine the replication system of Lamport with the teachings of Rousseau
to include support for notifying a second computing entity of proposals and
in response receiving a vote and the additional proposal information.” Ans.
12.
The Appellants disagree, arguing that “Lamport and Rousseau,
standing alone or in combination, fail to disclose or suggest a group leader
communicating votes from computing entities back to the computing entities
and determining a result based on those votes and additional votes received
responsive to the communication of the preceding votes.” App. Br. 4. The
Appellants take particular aim at the Examiner’s reliance on Lamport,
arguing that “Lamport does not disclose or suggest a group leader receiving
votes on a proposal from members, communicating those votes to the
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members, and then determining a result based on those votes and additional
votes received from the members responsive to communicating the earlier
votes.” App. Br. 4. According to the Appellants, Lamport shows, instead,
[i]n Figure 4e, the group leader submits the proposal with the
proposal number 200, a step 25, and a function b. In Figure 4f,
the members finally vote upon the proposal numbered 200 from
the group leader. In Figure 4g, the group leader commands the
members to execute a function. Throughout the series of
figures, voting by members on the proposal from the group
leader only occurs in Figure 4f, and those votes are not
communicated to the other members.
App. Br. 5.
“In addition, the art of record fails to disclose or suggest a group leader
determining a result based on a first set of votes, and on a second set of votes
received responsive to the first set of votes being communicated to members
of a group.” App. Br. 5.
The Appellants’ arguments are not commensurate in scope with what
is claimed. We do not see any limitation in claim 8 for “determining a result
based on those votes and additional votes received from the members
responsive to communicating the earlier votes” (App. Br. 4). Claim 8 bases
the result on “a plurality of responses,” which the claim defines as a vote and
additional information, and a “second plurality of responses.” But, unlike “a
plurality of responses,” the “second plurality of responses” is not limited to
comprising additional votes as argued. The scope of claim 8 is not limited
to two rounds of voting. Claim 8 is reasonably broadly construed to cover a
single round of voting and a “second plurality of responses” that does not
include a second vote.
Accordingly, we sustain the rejection.
We make this additional point.
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If claim 8 had been worded more precisely so that one of ordinary
skill in the art would have interpreted the “second plurality of responses” as
comprising the same content as the “plurality of responses” that is defined in
claim 8, i.e., a vote and additional information; then we would have agreed
that a prima facie case of obviousness over Lamport and Rousseau would
not have been made out in the first instance. This is so because, as the
Appellants have argued, Lamport does not disclose communicating the
results of a first vote and then having a second vote. While Lamport at col.
19, ll. 47-56 discloses the possibility of voting on a subsequent proposal,
there is no disclosure of communicating the results of a first vote on a
proposal and taking a second vote.
However, we take Official Notice that it is well known in the art to
have a first vote on an issue, communicate the vote, and then later conduct a
second vote, especially when in the intervening time new information has
come to light. In view of the well-known acts of having a first vote on an
issue, communicating the vote, and then later conducting a second vote, one
of ordinary skill in the art would have been led to modify Lamport to include
a second round of voting on the proposal and thereby reach the claimed
subject matter whereby “the group leader [ ] determines a result with both
the plurality of responses [i.e., first vote] and a second plurality of responses
[i.e., second vote] from the group of computing entities received responsive
to the group leader communicating the additional information and the
plurality of votes [i.e., first vote] to the group of computing entities.” The
result, as expected, would be two rounds of voting. “The combination of
familiar elements according to known methods is likely to be obvious when
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it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 415-16 (2007).
Accordingly, even assuming arguendo that the claims had been more
clearly directed to a method comprising communicating a first vote and
taking a second vote, we would nevertheless find the claimed subject matter
obvious over Lamport, Rousseau, and Official Notice as set forth above.
We affirm the rejection, but our reasons depart from that of the
Examiner. Accordingly, we denominate our affirmance of the §103
rejection as a new ground of rejection.

DECISION
The rejection of claims 8-12 and 21-24 under 35 U.S.C. §101 as being
directed to non-statutory subject matter is affirmed.
The rejection of claims 8-12 and 21-24 under 35 U.S.C. §103(a) as
being unpatentable over Lamport and Rousseau is affirmed.
We denominate the Decision as having new grounds of rejection
under §103.

NEW GROUND
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 Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or 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 . . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED; 37 C.F.R. § 41.50(b)

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