Ex Parte Bhogal et al

Patent Trial and Appeal Board

Feb 27, 2013

11232744 (P.T.A.B. Feb. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KULVIR S. BHOGAL and ALEXANDRE POLOZOFF
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Appeal 2010-009865
Application 11/232,744
Technology Center 2400
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Before CAROLYN D. THOMAS, BRUCE R. WINSOR, and
DANIEL N. FISHMAN, Administrative Patent Judges.

Opinion filed for the Board by FISHMAN, Administrative Patent Judge.

Opinion concurring filed by THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-14 and 17-20, which constitute all the claims pending
in this application. App. Br. 1-2.1 Claims 15 and 16 are cancelled. Id. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Throughout this opinion, we refer to: (1) the Appeal Brief (“App. Br.”)
filed December 30, 2009; (2) the Examiner’s Answer (“Ans.”) mailed April
7, 2010; (3) the Reply Brief (“Reply Br.”) filed June 7, 2010; and (4) the
Specification (“Spec.”) filed September 22, 2005, as amended April 3, 2009.
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STATEMENT OF THE CASE
The Invention
Appellants’ invention relates to splitting an application into
subcomponents based on resource utilization data gathered from a network
and moving at least one subcomponent from a first system of the network to
another system of the network based on a threshold for utilization data. See
generally Abstract.
Claim 1 is reproduced below and is illustrative of the claims at issue
on this appeal:
1. A computer-implemented method for application splitting for
network edge computing, the method comprising:
gathering network resource utilization data for an enterprise network,
wherein network resource utilization data is data describing the state of the
consumption or availability of network resources;
determining whether the network resource utilization data meets an
application split threshold, wherein an application split threshold is a value
of network resource utilization at which splitting one or more applications is
predetermined to be advantageous;
identifying an application on the enterprise network to split if the
network resource utilization data meets an application split threshold;
splitting the application into a plurality of subcomponents; and
moving at least one subcomponent of the application to an edge
network.
The Examiner relies on the following as evidence of unpatentability:
Cohen US 6,011,918 Jan. 4, 2000
Davis US 2003/0154239 A1 Aug. 14, 2003
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The Rejections
Claims 14 and 17-20 stand rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.2 Ans. 3-4.
Claims 1-14 and 17-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cohen and Davis. Ans. 4-11.
Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants did not make in the
Briefs have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2010).

§ 101 REJECTION
The preamble of claim 14 recites: “A computer program product for
application splitting for network edge computing, the computer program
product disposed upon recordable media for machine-readable information,
the computer program product comprising computer program instructions
for . . . .” App. Br. 17. The Examiner rejects claim 14 under § 101 as
directed to non-statutory subject matter finding: “It can be reasonably
interpreted that the computer program product disposed upon recordable
media for machine-readable information that would include embodiments
including propagation media, such as carrier waves, which fail to establish a

2 Claims 14 and 17-20 were rejected in the Final Office Action mailed July
1, 2009, under 35 U.S.C. § 112, second paragraph, as indefinite for
essentially the same reasons as presented in the § 101 rejection. Appellants’
Appeal Brief responded to the § 112 rejection. App. Br. 6-8. The Examiner’s
Answer re-framed the § 112 rejection as new grounds for rejection under §
101. Ans. 3-4. Appellants replied to the new grounds for rejection in the
Reply Brief. Reply Br. 6. We therefore review this rejection based on
Appellants’ arguments stated in the Reply Brief.
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statutory category of invention.” Ans. 4. Appellants replied suggesting the
recited “recordable media” is specifically distinguished from “transmission
media” at pages 7 and 8 of the Specification and thus claim 14 does not
include non-statutory transmission media. Reply Br. 6.
ISSUE
Has the Examiner erred in rejecting claim 14 under § 101 by finding
that claim 14 encompasses non-statutory embodiments (i.e., transitory
signals such as propagation media)?
ANALYSIS
Transitory signals are unpatentable as non-statutory subject matter
under § 101. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007).
The USPTO also provides the following guidance:
The broadest reasonable interpretation of a claim drawn to a
computer readable medium . . . 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.
When the broadest reasonable interpretation of a claim covers a
signal per se, the claim must be rejected under 35 U.S.C. § 101
as covering non-statutory subject matter.
David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 OFF. GAZ. PAT. OFFICE 212 (Feb. 23, 2010) (citation omitted) (second
emphasis added).
Appellants argue that “recordable media” is clearly defined in the
Specification to exclude transmission media. We are unpersuaded. We first
note that the Specification recites: “The invention also may be embodied in a
computer program product, such as a diskette or other recording medium as
well as any transmission medium such as wireless transmission, for use with
any suitable data processing system.” Spec. 7:25-27 (emphasis added). The
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Specification is therefore not silent as regards whether the invention may
encompass non-statutory subject matter but rather explicitly recites that the
computer program product may be embodied in a manner that encompasses
non-statutory subject matter – i.e., “any transmission medium.” Thus, we
find that the recited “computer program product” of claim 14 encompasses a
“transmission medium” rendering the claim non-statutory subject matter
under § 101.
Appellants also argue that page 8 of the Specification distinguishes
(potentially patentable) “recordable media” from non-statutory
“transmission media.” Reply Br. 6. We are unpersuaded. Indeed page 8 of
the Specification as originally filed September 22, 2005, included recitations
that defined “signal bearing media” as including “transmission media” or
“recordable media” and then provided non-exclusive examples of
“transmission media” and non-exclusive examples of “recordable media.”
Since the terms “transmission media” and “recordable media” are defined as
inclusive of examples and not exclusive of other examples (nor even
mutually exclusive of one another), we find that the recitations of claim 14
do not limit the “recordable media” of claim 14 to distinguish from, and thus
exclude, non-statutory “transmission media.” We further note that
Appellants amended page 8 of the Specification in a response filed on April
3, 2009. This amendment attempted to remove reference to “transmission
media” and corresponding examples but did not further narrow the definition
of “recordable media” or “computer program product” given the disclosure
on page 7 of the Specification noted supra. Furthermore, Appellants’
amendment to the Specification—without a corresponding claim
amendment—falls short of overcoming the Examiner’s § 101 rejection of
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claim 16. See OG Notice (noting that adding the term “non-transitory” to a
claim drawn to computer readable medium that covers both transitory and
non-transitory embodiments can avoid a rejection under § 101). Accord Ex
parte Busche, No. 2009-007718, 2010 WL 5184640, at *5 (BPAI 2010)
(non-precedential).
This amendment is consistent with our finding that a “computer
program product” disposed on a “recordable media”, as recited in claim 14,
encompasses non-statutory subject matter (i.e., transitory signals).
We are not persuaded of error in the Examiner’s rejection of claim 14
and dependent claim 17-20 not separately argued with particularity. Reply
Br. 6.

§ 103 REJECTION
The Examiner rejects claim 1, finding each of the recited method steps
in teachings of Cohen, but noted: “Cohen does not explicitly disclose
threshold and wherein network resource utilization data is data describing
the state of the consumption or availability of network; wherein an
application [split threshold] is a value of network resource utilization [at
which splitting] one or more applications is predetermined to be
advantageous.” Ans. 5. The Examiner then finds that Davis provides such
teachings such that the combination of Davis and Cohen teaches all elements
of claim 1, and articulated a rationale for the combination. Ans. 6.
Appellants contend that the combination of Cohen and Davis fails to teach
or suggest the recited “determining” and “identifying” steps. App. Br. 8;
Reply Br. 7.
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ISSUE 1
Has the Examiner erred in finding that the combination of Cohen and
Davis teaches the “determining” step?
ANALYSIS
The determining step in claim 1 recites (emphases added):
“determining whether the network resource utilization data meets an
application split threshold, wherein an application split threshold is a value
of network resource utilization at which splitting one or more applications is
predetermined to be advantageous.” App. Br. 12. The Examiner’s Answer
explains that Cohen teaches that weight values are assigned to classes of an
application and the classes are partitioned based on the weighted classes and
the computing topologies. Ans. 12. The weights for a possible partitioning
are compared to client threshold information specified by the computing
topology. Id. If the weighted classes for a possible partitioning exceed the
threshold, another possible partitioning is evaluated by again comparing
with the thresholds specified by the computing topology. Ans. 12-13. The
Examiner relies on Davis in combination with Cohen to teach a threshold
value used in a comparison with resource utilization to determine whether an
application’s resource usage exceeds a threshold value. Ans. 13.
Appellants contend that Cohen and Davis are not directed to
“splitting” an application as recited in the determining step because they do
not teach (individually or in combination) splitting of an “existing
application.” Reply Br. 7. We find this argument unpersuasive. We note that
the adjective “existing” as a modifier to “application” is not supported in the
Specification and, in any event, is not commensurate with the scope of the
claim.
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Regardless, we find that Cohen does teach splitting of an “existing
application” in accordance with the plain meaning of the term – i.e., an
application that presently exists. Cohen recites (emphases added):
These and other objects of the present invention are
provided by methods, systems and computer program products
for automatically generating client/server applications from an
application written to execute on a single processing system.
The application has program classes and programmed methods
associated with the objects. . . . The identified classes are then
partitioned into client classes and server classes based on the
weighted relationships between the programmed methods in the
classes, the weight associated with each class and a computing
topology associated with a target client processing system.
Cohen col. 3, ll. 11-28. Thus, Cohen shows generating applications from an
“application written to . . . ” (i.e., an application already written – an
existing application). The identified classes are then partitioned (i.e., split).
Thus, we find Cohen teaches splitting an existing application.
Appellants further argue that Cohen fails to teach the determining step
because Cohen fails to teach use of “network resource utilization data” and
an “application split threshold” as the terms are defined in the claim. App.
Br. 9; Reply Br. 7-8. More specifically, Appellants argue that Cohen does
not teach “resource utilization data” as data describing the state of
consumption or availability of network resources. Reply Br. 8. Appellants
further argue that Davis fails to teach the determining step because Davis
describes comparing resource utilization data to a threshold at which a
process should be terminated – not a value at which an application should be
split (i.e., not an “application split threshold” as claimed). App. Br. 9-10;
Reply Br. 8-9. We find these arguments unpersuasive because they are not
commensurate with the grounds of rejection. Further, “one cannot show non-
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obviousness by attacking references individually where, as here, the
rejections are based on combinations of references,” In re Keller, 642 F.2d
413, 426 (CCPA 1981).
The Examiner relies on Cohen’s teaching of an application split
threshold related to resource utilization data. Ans. 5 (citing Cohen, Fig. 9;
col. 10, ll. 58-65; col. 11, ll. 1-40); see also Ans. 12-13. We agree. Both
“network resource utilization data” and “application split threshold” are
defined within claim 1 in terms of values relating to “network resources.”
Appellants define “network resources” in the Specification as referring
generally to any hardware or software within a network used by the network
and describes examples of “network resources” as including: storage,
processors, routers, bandwidth of the network between nodes, applications,
files, etc. Spec. 19-20. Applying such a broad definition, we find that
Cohen’s teachings of weight values associated with classes relate to
“network resource utilization data” in that they relate to “computing
resources required by the identified class.” Cohen col. 3, ll. 21-23. Further,
we find that Cohen’s teachings of “computing topology” information teaches
an “application split threshold” in that a computing topology specifies
capacities of resources available for a partition of classes. Cohen col. 7, l. 57
through col. 8, l. 5. Further, Cohen teaches that one of a plurality of possible
partitions may be selected by determining which possible partitioning
(according to its weights) meets the threshold of available resources of a
computing topology. Cohen col. 11, ll. 2-8.
The Examiner relies on Davis’s teaching of a threshold value relating
to consumption or availability of network resources, i.e., “network resource
utilization data.” Ans. 6 (citing Davis, ¶¶ [0015], [0017], [0046]); see also
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Ans. 13. We agree. For example, Davis recites: “Generally, sandboxing is
accomplished by monitoring the resource (e.g., CPU, memory, disk, network
I/O) utilization of each application server process. If an application server
process over-utilizes resources, it is terminated, and a new application server
is started.” Davis ¶ [0046]. In other words, Davis teaches monitoring
network resource utilization data of a presently operating application and
determines whether the resource is over-utilized by the application.
Accordingly, we find that the combination of Cohen and Davis
teaches the determining step.

ISSUE 2
Has the Examiner erred in finding that the combination of Cohen and
Davis teaches the “identifying” step?
ANALYSIS
The identifying step in claim 1 recites: “identifying an application on
the enterprise network to split if the network resource utilization data meets
an application split threshold.” The Examiner finds Cohen teaches the
identifying step as item 26 of Figure 2 and corresponding text at column 3,
lines 15-25, of the Specification. Ans. 5, 14. Appellants disagree and present
similar arguments to those presented with respect to the “determining” step
(i.e., Cohen and Davis don’t teach network resource utilization data and an
application split threshold as defined in claim 1). App. Br. 10-11; Reply Br.
9-10. We find this argument unpersuasive for the same reasons as discussed
above with respect to the “determining” step.
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SUMMARY
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and claims 2-14 and 17-20 not
separately argued with particularity. App. Br. 11; Reply Br. 10-11.

DECISION
The Examiner’s decision rejecting claims 1-14 and 17-20 is affirmed.
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

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THOMAS, Administrative Patent Judge, concurring.
I concur with, and join, the majority’s decision to affirm the rejection
of claims 1-14 and 17-20. However, the majority contends that Cohen’s
“computing topology specifies capacities of resources available for a
partition of classes” (Opinion at 3). The basis for the majority’s
determination in this regard appears to be founded on equating the
“capacity” to do something with “availability” to do the same. However, I
disagree that a computing capacity necessarily gives you the availability of
resources, as “capacity” merely indicates the potential or suitability for
holding, storing, or accommodating MERRIAM-WEBSTER’S COLLEGIATE
DICTIONARY 168 (10th ed. 1997), whereas “availability” has a temporal
component in that it must be present or ready for immediate use. Id. at 79.
As such, I would not reach the rejection based on Cohen disclosing
“availability,” but would instead focus on Davis’ teachings in which I
concur with the majority. If we were solely relying on Cohen for this feature
(which we are not), I would be inclined to reverse the rejection.

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