Ex Parte Brittenham et al

Patent Trial and Appeal Board

Mar 10, 2016

13412829 (P.T.A.B. Mar. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/412,829 03/06/2012
84986 7590 03/14/2016
GRASSOPLLC
1818 LIBRARY STREET, SUITE 500
RESTON, VA 20190
FIRST NAMED INVENTOR
Peter James Brittenham
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
RSW920090 l l 7US2 9927
EXAMINER
KHAN, AFTAB N
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
03/14/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
admin@grassoip.com
vromme@grassoip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER JAMES BRITTENHAM, DAVID BRUCE LINDQUIST,
and BALAN SUBRAMANIAN
Appeal 2014-002698
Application 13/412,829
Technology Center 2400
Before CARL W. WHITEHEAD, JR, BRUCE R. WINSOR, and
AARON W. MOORE, Administrative Patent Judges.
TT TT-.i. TC"I,,........,. T""ti. ' 1 • • , , • T'lo , , T 1 w 11'\J ~UK, Aamznzsrranve rarenr Juage.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-15 and 29-32, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ). Claims 16-28 are
cancelled. (Final Act. 2.)
We affirm.
1 The real party in interest identified by Appellants is International Business
Machines Corp. (App. Br. 1.)
Appeal2014-002698
Application 13/412,829
STATEMENT OF THE CASE
Appellants' disclosed invention relates to "autonomic management of
resources in or across networks." (Spec. i-f 1.) More specifically, the
disclosed invention relates to "delegation or retrieval of autonomic
management functionality to or from self-managing resources which provide
services in or across networks." (Id.) Claim 1, which is illustrative, reads as
follows:
1. A method of autonomic management involving an autonomic
manager and a plurality of self-managing network resources,
the method comprising:
identifying the status of a network resource and identifying
whether the network resource is a self-managing resource;
at an autonomic manager having a processor and memory,
generating an autonomic management rule for management of an
identified self-managing network resource,
the autonomic management rule comprising diagnostic
information, knowledge code and instruction code for use by a
self-managing resource;
the autonomic management rule being dynamically
movable from hierarchical management resources, to peer-
management resources, to self-management resources; and
after identifying a network resource as being a self-managing
resource, sending the autonomic management rule, over a network, for
use by one or more self-managing resources.
The Examiner relies on the following prior art in rejecting the claims:
Welcher et al. US 2002/0083337 Al June 27, 2002
Chan et al. US 2004/0059966 Al Mar. 25, 2004
Chess et al. US 2007 /0245004 Al Oct. 18, 2007
Sanborn et al. US 2010/0011098 Al Jan. 14,2010
Sailhan et al. US 2011/0191460 Al Aug. 11, 2011
2
Appeal2014-002698
Application 13/412,829
Claims 1-15 and 29-32 stand provisionally rejected on the ground of
non-statutory double patenting over claim 16 and 23 of co-pending
Application No. 12/715,411, which is now US Patent No. 8,719,400 B2.
(See Final Act. 4.)
Claims 1-3, 5, 7, 9, 11-13, 15, and 29-32 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Chan. (See Final Act. 5-11.)
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chan and Sanborn. (See Final Act. 11-12.)
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chan and Welcher. (See Final Act. 12-13.)
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chan and Sailhan). (See Final Act 13.)
Claims 10 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chan and Chess. (See Final Act. 14.)
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed July 19, 2013; "Reply Br." filed Dec. 17, 2013) and the
Specification ("Spec." filed Mar. 6, 2012) for the positions of Appellants
and the Final Office Action ("Final Act." mailed Feb. 1, 2013) and Answer
("Ans." mailed Oct. 22, 2013) for the reasoning, findings, and conclusions
of the Examiner. 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)(l)(iv) (2013).
3
Appeal2014-002698
Application 13/412,829
ISSUES
The dispositive issues2 presented by Appellants' contentions are as
follows:
Do the amendments to the claims in application 12/715,411 obviate
the basis for the non-statutory double patenting rejection of claims 1-15 and
29-32?
Does Chan disclose "[an J autonomic management rule [ (AMR) J being
dynamically movable from [A J hierarchical management resources, to [BJ
peer-management resources, to [CJ self-management resources" (herein "the
disputed limitation"), as recited in claim 1?
PRINCIPLES OF LAW
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). "The identical invention must be shown in as
complete detail as is contained in the ... claim." Richardson v. Suzuki
Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). "These elements must be
arranged as in the claim under review, but this is not an 'ipsissimis verbis'
test." In re Bond, 910 F .2d 831, 83 2 (Fed. Cir. 1990) (citations omitted). To
establish anticipation "[i]t is not enough that the prior art reference ...
includes multiple, distinct teachings that [an ordinary J artisan might
somehow combine to achieve the claimed invention." Net Money!N, Inc. v.
2 Appellants' contentions present additional issues. Because the identified
issues are dispositive of all rejections on appeal, we do not reach the
additional issues.
4
Appeal2014-002698
Application 13/412,829
VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Rather, the reference
must "'clearly and unequivocally disclose the claimed [invention] or direct
those skilled in the art to the [invention] without any need for picking,
choosing, and combining various disclosures not directly related to each
other by the teachings of the cited reference.'" Id. (quoting Jn re Arkley, 455
F.2d 586, 587 (CCPA 1972) (brackets in original)). Thus, while "[s]uch
picking and choosing may be entirely proper in the making of a [35 U.S.C.
§] 103, obviousness rejection, ... it has no place in the making of a [35
U.S.C.§] 102, anticipation rejection." Arkley, 455 F.2d at 587-----88.
ANALYSIS
Non-Statutory Double Patenting
Appellants contend as follows:
Claims 16 and 23 of U.S. application 12/715411 [now
8,719,400 B2] were amended on December 6, 2013. Meaningful
and important differences exist bet\~1een the language of claims
16 and 23 of the '411 application and the provisionally rejected
claims in this application. The undersigned submits that these
meaningful differences render the rejection moot and that it
should be withdrawn.
(Reply Br. 13.) Appellants provide a table comparing claim 1 of the instant
application to claims 16 and 23 of the '411 application. (See Reply Br. 14--
15.) Appellants do not otherwise traverse the obviousness-type double
patenting rejection of claims 1-15 and 29-32.
We note that the indicated amendments to claims 16 and 23 of the
'411 application are all added limitations. We see nothing to indicate that
any of the language of claims 16 and 23 that led the Examiner to conclude
that claims 1-15 and 29-32 of the instant application would have been
5
Appeal2014-002698
Application 13/412,829
obvious over the claims of the '411 application was deleted or otherwise
changed. Therefore, the record before us indicates that, although the
amendments to the claims of the '411 application may represent
"meaningful differences" (Reply Br. 13), they do not, in themselves, obviate
the Examiner's basis for entering the obviousness-type double patenting
rejection. Accordingly, we sustain the obviousness-type double patenting
rejection of claims 1-15 and 29-32. Our sustaining the obviousness-type
double patenting rejection is without prejudice to the Appellants' ability to
file an appropriate terminal disclaimer.
Claim 1
The Examiner finds Chan discloses the disputed limitation. (Final
Act. 6 (citing Chan i-fi-15---6, Fig. 7 (items 701, 702, 703, 709, 710); see also
Ans. 22-25 (additionally citing Chan i-f 17, Fig 7 (items 704, 710, 715, 719,
720).)
Appellants contend, inter alia, as follows:
The policy and courses of action of Chan identified by the
[Answer J (at page 21 of the [Answer]) as the AMR of claim 1
are not "dynamically moveable from [A J ... , to [BJ, ... to[C]"
as in claim 1. Chan is disclosing a system where the course of
action is stored and remains in a database for presumptive access
by the requesting component rather than being moveable "from
" . 1 . 1 . . . to . . . to . . . as m c aim .
(Reply Br. 3 (bracketed [AJ, [BJ, and [CJ in original).) "[TJhe rules and
goals described in Chan at paragraphs 28-33, which are instructive of the
Chan system, are not disclosed to be moveable between three kinds of
management resources." (Reply Br. 5 (emphasis added).)
6
Appeal2014-002698
Application 13/412,829
We agree with the Appellants. We find Chan discloses an AMR that
is moveable from a policy server to a requesting component that is an
autonomic element. (See Chan i-f 32 ("[The J policy server component
establishes a policy of rules and goals for requesting component to follow
and communicates this policy to requesting component." (Reference
numbers omitted.)).) Accordingly, Chan discloses the AMR (Chan's rules)
is movable in a single step ([AJ to [BJ, [BJ to [CJ, or [AJ to [CJ). However,
we are unable to locate any disclosure in Chan that the AMR is movable in
two steps ([AJ to [BJ to [CJ) as recited in claim 1.
The Examiner has stated that "[iJn order to completely understand
Chan one must consider the evidence disclosed, in its entirety with all the
embodiments and not discuss portions as portrayed by the arguments." (Ans.
20 (emphasis added).) However, the rejection before us is one for
anticipation, and to establish anticipation the Examiner may not pick and
choose among "all the embodiments" (id.). See Net Nf oney!N, 545 F.3d at
1371.
The Examiner has not established that Chan discloses the disputed
limitation "arranged as in the claim under review," Bond, 910 F.2d at 832.
Accordingly, we do not sustain the rejection of claim 1. Claims 2-15 and
29-32 depend from claim 1. Because the various rejections of claims 2-15
and 29-32 incorporate the findings underlying the rejection of claim 1, we
also do not sustain the various rejections of claims 2-15 and 29-32 under 35
U.S.C. §§ 102(b) and 103(a)
7
Appeal2014-002698
Application 13/412,829
DECISION
The decision of the Examiner to reject claims 1-15 and 29-32 for
non-statutory obviousness-type double patenting is affirmed.
The decisions of the Examiner to reject claims 1-15 and 29-32 under
35 U.S.C. §§ 102(b) and 103(a) are reversed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision to reject claims 1-
15 and 29-32 is affirmed. See 37 C.F.R. § 41.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2013).
AFFIRMED
8