Ex Parte Cox

Patent Trial and Appeal Board

Jul 14, 2014

11268659 (P.T.A.B. Jul. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ALAN COX
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Appeal 2012-000533
Application 11/268,6591
Technology Center 2100
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is Red Hat, Inc. App. Br. 2.
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STATEMENT OF THE CASE2
The Invention
Appellant’s “invention relates to improvements in computer operating
systems . . . particular[ly] . . . to improving the management of computing
resources by a kernel in sending and receiving messages.” Spec. ¶ 2 (“Field
of the Invention”).
Exemplary Claims
Claims 1 and 19, reproduced below, are representative of the subject
matter on appeal (emphases added):
1. A method for reducing computational overhead
when sending and receiving messages in a computing
environment, comprising:
issuing, by a first process executed by one or more
processors of a computer system, a request to send a message
for accessing a resource of the computer system, wherein the
request to send a message is not directed to or associated with
a mutex;
issuing, by the first process, a request to receive a reply
expected in response to the message;
determining, by an operating system kernel executed by
the one or more processors of the computer system, whether the
first process is to spin waiting for the reply or be suspended
from execution; and

2 Our decision relies upon Appellant’s Appeal Brief (“App. Br.,” filed
Mar. 31, 2011); Reply Brief (“Reply Br.,” filed Aug. 9, 2011 ); Examiner’s
Answer (“Ans.,” mailed June 9, 2011); Final Office Action (“Final Act.,”
mailed July 1, 2010); Advisory Action (“Adv. Action,” mailed
Sept. 16, 2010); and the original Specification (“Spec.,” filed Nov. 8, 2005 ).
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communicating, by the operating system kernel, a result
of the determination to a second process that is owned by the
kernel and called by the first process, wherein the first process
spins waiting or suspends execution based on the result of the
determination.
19. A computer program product, residing on a
computer readable medium, for use in reducing computational
overhead when sending and receiving messages in a computing
environment, the computer program product comprising
instructions for causing a computer to:
determine, by a kernel, whether a process that has issued
a request to send a message for accessing a resource of the
computer system, wherein the request to send a message is not
directed to or associated with a mutex, and a request to receive
a reply expected in response to the message, is to spin waiting
for a reply or be suspended from execution; and
communicate, by the kernel, a result of the determination
to a memory location that is owned by the kernel and called by
the process.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Schopp US 2005/0080963 A1 Apr. 14, 2005
Shorb US 2005/0114609 A1 May 26, 2005
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Rejections on Appeal3, 4
1. Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Schopp and Shorb. Ans. 5.
2. Claims 19 and 20 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 2.
ISSUES AND ANALYSIS
We only consider those arguments actually made by Appellant in
reaching this decision, and we do not consider arguments which Appellant
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
We disagree with Appellant’s arguments with respect to claims 1-20,
and we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
and rebuttals set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Arguments. However, we highlight and address

3 We note Appellant’s amendment after final rejection to independent
claims 1, 10, and 19 filed Sept. 1, 2010, was not entered by the Examiner
because the proposed amendments raised new issues requiring further search
and consideration. Adv. Action 2-3.
4 Appellant argues the refusal of the Examiner to enter the proposed
amendment after final rejection was improper. App. Br. 10-11. Rather than
by appeal to the Patent Trial and Appeal Board, however, such an issue
should have been settled by petition to the Director of the U.S. Patent and
Trademark Office. See In re Hengehold, 440 F.2d 1395, 1403 (CCPA
1971). Thus, refusal of the Examiner to enter the amendment after final
rejection is not properly before us on appeal, and forms no part of our
decision.
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specific findings and arguments regarding claims 1 and 19 for emphasis as
follows.
1. Obviousness Rejection of Claims 1-20
Issue 1
Appellant argues (App. Br. 7-8; Reply Br. 1-2) the Examiner’s
rejection of claims 1-20 under 35 U.S.C. § 103(a) as being unpatentable over
the combination of Schopp and Shorb is in error. These contentions present
us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] method for reducing computational overhead when sending
and receiving messages in a computing environment . . . wherein the request
to send a message is not directed to or associated with a mutex,” as recited in
claim 1?
Analysis
Appellant contends the combination of Schopp and Shorb does not
teach or suggest all the limitations of claim 1. App. Br. 7. In particular,
Appellant contends the prior art combination does not teach or suggest
“issuing . . . a request to send a message . . . wherein the request . . . is not
directed to or associated with a mutex.” Id.
Appellant argues Shorb’s corresponding “request to send a message”
is associated with a mutex (App. Br. 8), and cites Shorb Figure 3 and
paragraphs 21 through 23 describing Figure 3 in support of their contention.
Id. Appellant admits Shorb’s “request to send a message” is not “explicitly
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directed to a mutex,” but “the request is clearly associated with a mutex”
through Shorb’s shared locking mechanism. Id. (emphasis omitted).
In response, the Examiner finds (Ans. 20-21), and we agree, Shorb
teaches or at least suggests an embodiment in which a request to send a
message bypasses a mutex. In particular, we find Shorb discloses:
[0021] The shared locking mechanism 40 could use the lock
state information 56 in combination with a rules mechanism 60.
The rules mechanism 60 provides guidance as to how access to
the resources 32 should proceed based upon the lock state
information 56. Additionally, the rules mechanism 60 may be
formulated to enhance performance. As an illustration,
obtaining exclusive access to the internal data structure of a
shared lock by first obtaining an exclusive lock via OS traps 38
is typically computationally expensive. The rules mechanism
60 may offer an improvement in performance by providing the
following locking guidelines when a request is being processed:
[0022] Any number of read requests succeed in
accessing a resource without using an exclusive lock
unless there is a writer active or pending.
[0023] Only one writer may be active at any given time.
Shorb ¶¶ 21-23 (emphasis added). Thus, we find this cited portion of Shorb
teaches rules mechanism 60 may be configured, appropriate to some
circumstances, to enhance performance by not using an exclusive lock, i.e.,
not using or being associated with a mutex. In further support of the
Examiner’s position, we find Shorb teaches an embodiment that uses an
exclusive lock, i.e., a mutex:
It should be understood that the shared locking mechanism 40
may decide to utilize the OS traps 38, and may use in certain
situations a mutually exclusive locking technique provided by
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the operating system in order to provide access 42 to a
resource 32.
Shorb ¶ 17(emphasis added). Thus, we find the above-cited disclosures
teach or at least suggest the disputed limitation.
In response to the Examiner’s findings, Appellant argues in the Reply
Brief (Reply Br. 1) the Examiner’s findings in this regard represent a new
argument with respect to claims 1, 10, and 19. We disagree, because the
Examiner made the same finding in the final rejection, and thus we find
there to have been no shift in the Examiner’s position in the Answer as cited,
supra. See Final Act. 5. Notwithstanding Appellant’s misplaced assertion
of a new argument being presented in the Answer, we do not find
Appellant’s argument (Reply Br. 1) to be persuasive that, because Shorb’s
shared locking mechanism 40 “receives [a] request from multi-threaded
environment 50 [which] is directly coupled to the operating system traps
(mutex) 38 through a mutual resource request line . . . [t]he request message
is therefore clearly associated with the mutex 38 through the shared locking
mechanism.” Id.
Appellant admits Shorb describes “rule mechanism 60 offers an
improvement in performance by allowing read requests to access the
resource without having to obtain an exclusive lock unless a write request is
active, while allowing only one write request to access the resource at a
time” (Reply Br. 1-2), but contends, “[al]though some requests may not be
directed to a mutex, all requests must be associated with the mutex, e.g., to
maintain consistent system states.” Reply Br. 2.
We note Appellant cites paragraphs 4, 6, and 19 of their Specification
as purportedly providing support for the limitation in dispute (App. Br. 3-4),
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but we find no definition of “directed to or associated with a mutex” in the
cited portions of the Specification, particularly one that would render the
Examiner’s broad definition (Ans. 19-20) unreasonable.5 In fact, we note
the term “mutex” and related technical concept are completely absent from
Appellant’s Specification, and further note the negative limitation in dispute
was added during prosecution6 in an attempt to distinguish over the prior art
cited by the Examiner, i.e., Shorb.
Regarding the amount of patentable weight to be given to the negative
limitation at issue, we find Appellant’s cited support in the Specification
(App. Br. 4, citing Spec. ¶ 19) does not identify any “descri[ption of] a
reason to exclude the relevant limitation.” Santarus, Inc. v. Par
Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative
claim limitations are adequately supported when the specification describes
a reason to exclude the relevant limitation. Such written description support
need not rise to the level of disclaimer. In fact, it is possible for the patentee
to support both the inclusion and exclusion of the same material.”).
To the extent the contested negative limitations recited in independent
claims 1, 10, and 19 may be given patentable weight by our reviewing court,
Appellant fails to persuasively rebut the Examiner’s specific findings
regarding the contested negative limitations (e.g., see Ans. 6 and 20-21 and
claim 1) by citing evidentiary support showing that the Shorb reference

5 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
6 See Amendment in Response to Non-Final Office Action Under
37 C.F.R. 1.111 filed June 8, 2010.
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relied upon as teaching or suggesting bypassing the mutex process is, in fact,
“directed to or associated with a mutex,” contrary to the contested negative
limitation.7 Appellant’s assertions amount to unsupported attorney
argument, and therefore we give them little weight. See In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Huang, 100 F.3d 135, 139-
140 (Fed. Cir. 1996). Therefore, we do not find error in the Examiner’s
reliance on the combined teachings and suggestions of Schopp and Shorb as
rendering claim 1 unpatentable under § 103.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner’s obviousness rejection of independent claim 1. As Appellant has
not provided separate and substantive arguments with respect to independent
claims 10 and 19, or dependent claims 2-9, 11-18, and 20, rejected on the

7 Appellant appears to argue a mutex is a hardware component (e.g., see
App. Br. 8, citing Appellant’s Fig. 3 and direct coupling of shared locking
mechanism 40 to operating system traps 38). However, a mutex is a
software construct, i.e., “[i]n computer programming, a mutex is a program
object that allows multiple program threads to share the same resource, such
as file access, but not simultaneously . . . any thread that needs the resource
must lock the mutex from other threads while it is using the resource. The
mutex is set to unlock when the data is no longer needed or the routine is
finished.” See http://www.webopedia.com/TERM/M/mutex.html (last
accessed July 1, 2014). We note there is no evidence of record to clarify this
point, such that we find the recitation of “not directed to or associated with a
mutex” reasonably reads on Shorb’s non-mutex embodiment discussed
above.
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same basis as claim 1, we similarly sustain the Examiner’s rejection of these
claims under 35 U.S.C. § 103(a).8
2. Non-Statutory Subject Matter Rejection of Claims 19 and 20
Issue 2
Appellant argues (App. Br. 9-10) the Examiner’s rejection of claim 19
under 35 U.S.C. § 101 as being directed to non-statutory subject matter is in
error. These contentions present us with the following issue:
Did the Examiner err in concluding the recitation in claim 19 of a
“computer readable medium” reads on a transitory, propagating signal?
Analysis
Appellant contends,
[C]laim [19] recites a “computer program product, residing on
computer-readable medium” . . . . The term “product” recited in
the claim describes a fixed form of information and excludes
transient energy.
Second, the claim recites “computer program product, residing
on computer-readable medium” . . . . The term “residing”
recited in the claim necessitates a fixed form and therefore
excludes transient energy (i.e., transient energy cannot “reside”
on computer-readable media – otherwise it would not be
transient).
App. Br. 10. We disagree with Appellant’s contentions.
Under our jurisprudence, the scope of the recited “computer readable
medium” encompasses transitory media such as signals or carrier waves,

8 Appellant merely alleges claims 10 and 19 and all dependent claims are
allowable for the reasons set forth with respect to independent claim 1. App.
Br. 9-10.
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where, as here, the Specification does not limit the computer readable
storage to non-transitory forms. Ex parte Mewherter, 107 USPQ2d 1857
(PTAB 2013) (precedential) (holding recited machine-readable storage
medium ineligible under § 101 since it encompasses transitory media).
Here, the recited “computer-readable medium” is not claimed as non-
transitory, and the disclosure does not expressly and unambiguously limit
that medium to solely non-transitory forms via a definition or similar
limiting language. Therefore, the scope of the claimed “computer readable
medium” encompasses transitory forms and is ineligible under § 101.
Accordingly, we affirm the Examiner’s rejection of claims 19 and 20
under § 101.
REPLY BRIEF
To the extent Appellant advances new arguments in the Reply Brief
(Reply Br. 1-2) not in response to a shift in the Examiner’s position in the
Answer, we note that “[a]ny bases for asserting error, whether factual or
legal, that are not raised in the principal brief are waived.” Ex parte Borden,
93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech.,
Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n
issue not raised by an appellant in its opening brief . . . is waived.” (citation
and internal quotation marks omitted)).
CONCLUSIONS
(1) The Examiner did not err with respect to the rejection of claims
1-20 under 35 U.S.C. § 103(a) over the combination of Schopp and Shorb,
and we sustain the rejection.
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(2) The Examiner did not err with respect to the non-statutory
subject matter rejection of claims 19 and 20 under 35 U.S.C. § 101, and we
sustain the rejection.
DECISION
We affirm the Examiner’s decision rejecting claims 1-20.
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) (2011).
AFFIRMED

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