Ex Parte DeJana et al

Patent Trial and Appeal Board

Dec 22, 2015

13152090 (P.T.A.B. Dec. 22, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/152,090 06/02/2011 Ryan G. DeJana YOR920110246US1 6161
59144 7590 12/22/2015
CAHN & SAMUELS, LLP
1100 17th STREET, NW
SUITE 401
WASHINGTON, DC 20036
EXAMINER
NGUYEN, CHUONG M
ART UNIT PAPER NUMBER
2411
MAIL DATE DELIVERY MODE
12/22/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RYAN G. DEJANA, LISA SEACAT DELUCA,
SOOBAEK JANG, and DANIEL C. KROOK

____________

Appeal 2014-001393
Application 13/152,0901
Technology Center 2400
____________

Before JOHNNY A. KUMAR, LINZY T. McCARTNEY, and
TERRENCE W. McMILLIN, Administrative Patent Judges.

McMILLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision2 on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1–25 which are all the pending claims. Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 According to Appellants, the real party in interest is International Business
Machines Corporation. Br. 3.
2 Our decision refers to the Final Office Action mailed January 29, 2013
(“Final Act.”); Appellants’ Appeal Brief filed July 24, 2013 (“Br.”); the
Examiner’s Answer mailed August 21, 2013 (“Ans.”); and the Specification
filed June 2, 2011 (“Spec.”).
Appeal 2014-001393
Application 13/152,090

2
REJECTION ON APPEAL
Claims 1–25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Banerjee et al. (US 2012/0239792 A1, published Sep. 20,
2012) (“Banerjee”) and Meijer et al. (US 2008/0080396 A1; Apr. 3, 2008)
(“Meijer”). Final Act. 6.

THE CLAIMED INVENTION
According to the Appellants, “[t]he present invention is in the field of
systems, methods, and computer program products for autoconfiguring a
cloud instance based on contextual parameters.” Spec. 1. Independent
claims 1, 8, and 13 are directed to methods and independent claims 17 and
22 are directed to systems. Br. 24, 26, 28–32. Claim 1 recites:
A method comprising:
receiving a request for a resource from an end user;
examining properties of the request, the properties of the
request including a location of the user;
identifying locations of data centers having the resource;
comparing the locations of the data centers to the location
of the end user with a processor;
selecting a data center with the processor for sending the
resource to the end user, the data center being selected based on
said comparing; and
creating a customized instance of the resource when an
encryption parameter of the resource violates a rule at the
location of the end user by modifying the encryption parameter
of the resource to comply with the rule at the location of the end
user.

Br. 24 (disputed limitation italicized).

Appeal 2014-001393
Application 13/152,090

3
ANALYSIS
We have reviewed the Examiner’s rejection in the Final Action,
Appellants’ arguments in the Appeal Brief, and the Examiner’s response in
the Answer. On this record, we agree with Appellants that the cited
combination of references fails to teach or suggest, “creating a customized
instance of the resource when an encryption parameter of the resource
violates a rule at the location of the end user by modifying the encryption
parameter of the resource to comply with the rule at the location of the end
user,” as recited in independent claim 1 and as similarly recited in
independent claims 8, 13, 17, and 22.
Appellants argue, “nothing within the art of record, including the
portions of Meijer cited by the Office action, teaches modifying an
encryption parameter of a resource to comply with a rule at the location of
the end user.” Br. 7. In the Final Action, the Examiner states, “when an
encryption parameter of the resource violates a rule at the location of the end
user by modifying the encryption parameter of the resource to comply with
the rule at the location of the end user” as recited in the independent claims
is taught by the following passages in Meijer: “The permission component
412 can enable a user to assign arbitrary access permissions to various users
. . . based upon considerations related to the user’s history, permissions set
by disparate users, type of content, and so forth;” and “The intelligent
component 702 can be utilized by the dynamic allocation component 110 to
infer user frustration and/or need . . . . The intelligent component 702 can
effectuate this inference based upon user input, historical data, failures,
errors, delays, and so forth.” Final Act. 3 (citing Meijer ¶¶ 60, 70). We do
not agree that the cited passages teach or suggest the disputed limitation.
Appeal 2014-001393
Application 13/152,090

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The Examiner also cites Banerjee as teaching the disputed limitation.
Ans. 3. The Examiner states the disputed limitation is taught by the
following passage in Banerjee:
As an example, a request may include a topology for a
virtualized data center for use in running a particular type of
software application, for which special legal considerations
apply in certain states. In such an example, a user may include a
policy constraint in the request, indicating that the virtualized
data center should be placed within a particular state’s
geographical boundaries, due to legal requirements in the state
regarding backup data for that type of application. In such an
example, the placement system 120 may determine that only
data centers 110 located in within [sic] the specified state
should be considered for fulfilling the received request.

Ans. 3–4 (citing Banerjee ¶ 33). Again, we do not agree that the cited
passage teaches or suggests the disputed limitation.
In the Answer, the Examiner repeats the same passages from Meijer
and Banerjee in response to Appellants’ arguments. Ans. 3–5.
We agree with Appellants as our interpretation of the disclosures of
Meijer and Banerjee coincides with that of Appellants. Therefore, on this
record, we find the weight of the evidence supports the positions articulated
by Appellants in the Brief.
On this record, we do not sustain the Examiner’s rejection of the
claims as unpatentable over Meijer and Banerjee. Since we reverse the
rejection of each independent claim on appeal, we also reverse the rejection
of each of the associated dependent claims.

Appeal 2014-001393
Application 13/152,090

5
DECISION
We reverse the rejection of claims 1–25.

REVERSED

ELD