Ex Parte EDMEADES et al

Patent Trial and Appeal Board

Mar 31, 2016

12774827 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121774,827 05/06/2010
79196 7590 04/04/2016
LAW OFFICE OF JIM BOICE
3839 BEE CA VE ROAD, SUITE 201
WEST LAKE HILLS, TX 78746
FIRST NAMED INVENTOR
JASON C. EDMEADES
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.
GB920080308US 1 8848
EXAMINER
CAO,DIEMK
ART UNIT PAPER NUMBER
2196
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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):
J ennifer@BoiceIP.com
Emily@BoiceIP.com
Jim@BoiceIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON C. EDMEADES, A VINASH GUPTA KONDA,
and PHILIP G. WILLOUGHBY
Appeal2014-004171
Application 12/774,827
Technology Center 2100
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm in part and enter a new ground of rejection under 37 C.F.R.
§ 41.50(b).2
1 The Appeal Brief identifies International Business Machines Corporation
as the real party in interest. App. Br. 2.
2 Our Decision refers to Appellants' Appeal Brief filed October 4, 2013
("App. Br."); Appellants' Reply Brief filed February 18, 2014 ("Reply Br.");
Examiner's Answer mailed December 19, 2013 ("Ans."); and Final Office
Action mailed May 3, 2013 ("Final Act.").
Appeal2014-004171
Application 12/774,827
STATEMENT OF THE CASE
Claims on Appeal
Claims 1, 14, and 15 are independent claims. Claim 1 is reproduced
below (disputed limitations in italics):
1. A method for managing a request for a message
destination, said method comprising:
intercepting a request to create a new temporary
destination for a message to a receiving computer;
suppressing generation of the new temporary destination;
selecting a pre-defined destination to store the message
instead of the new temporary destination;
assigning an identifier to the new temporary destination
being requested; and
associating the identifier with the pre-defined destination.
References
Hallinan et al. US 6,996,614 B2 Feb. 7,2006
Kline US 2007/0294708 Al Dec. 20, 2007
Examiner's Rejections
Claims 1-5, 7, and 10-19 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Hallinan. Final Act. 2-5.
Claims 6, 8, and 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hallinan. Final Act. 6.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hallinan and Kline. Final Act. 7.
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Application 12/774,827
ISSUES
The issues presented on appeal are:
( 1) Did the Examiner err in finding Hallinan discloses "intercepting
a request to create a new temporary destination for a message to
a receiving computer," and "suppressing generation of the new
temporary destination," as recited in independent claim 1 and
commensurately recited in independent claims 14 and 15?
(2) Did the Examiner err in finding Hallinan discloses "removing,
in response to receiving a retrieve access request, the identified
first message from the pre-defined destination," as recited in
claim 7?
(3) Did the Examiner err in concluding the subject matter of claim
8 would have been obvious based on the teachings of Hallinan?
ANALYSIS
Issue 1
The Examiner finds Hallinan discloses "intercepting a request to
create a new temporary destination for a message to a receiving computer"
and "suppressing generation of the new temporary destination," as recited in
claim 1, and we agree. Final Act. 2; Ans. 2--4.
First, as the Examiner finds, Hallinan discloses "resource dispenser 3
intercepts communications between the applications Al to A3 and the queue
manager 1." Hallinan, col. 7, 11. 23-25 (cited at Final Act. 2, Ans. 4). The
Examiner finds that Hallinan discloses one such communication that is
intercepted is an MQOPEN call, as shown in Figure 4. Final Act. 3 (citing
Hallinan, col. 14, 11. 14--46); see Hallinan, col. 11, 11. 19-20 ("Operation of
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Application 12/774,827
processor 4 in response to such an object request is shown in FIG. 4"). As
the Examiner finds, Hallinan discloses that "the objects considered in the
following discussion are message queues to which the queue manager has
access." Hallinan, col. 8, 11. 10-11 (cited at Final Act. 2).
The Examiner further finds Hallinan discloses "a new object handle
will be created if one is not available in the resource pool," but if a requested
object handle is available, then the resource dispenser reserves that handle,
thereby disclosing "suppressing generation of a new temporary destination."
Ans. 4 (citing Hallinan, col. 7, 11. 23-25, col. 8, 11. 1-11, 19-25, col. 13, 11.
49-54, col. 14, 11. 47-62). We agree with the Examiner because Hallinan
discloses in decision boxes 21, 22, and 23 in Figure 4 attempts to use an
existing message queue to avoid the generation of a new message queue.
Referring to Figure 4, Hallinan discloses:
Reverting to step 23, if the resource pool does not contain
a suitable group for a resource swap here, then in step 25 a new
object handle, associated \'l1ith the connection handle currently
reserved for the application, is requested from the queue manager
1. If a new object handle his returned at step 25, this is added to
the resource pool in step 26, and operation proceeds to step 27 as
before.
Hallinan, col. 13, 11. 49-55.
Appellants argue Hallinan does not disclose intercepting a request to
create a new temporary destination because "Hallinan sends messages to
queues, either original or proxy, that have already been created." App. Br. 8.
We are not persuaded because Hallinan discloses that an application sends a
request for a message queue, such as an MQOPEN request, which will result
in the creation of a new object handle if a resource is not available, as found
by the Examiner (Ans. 3--4) and explained above.
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Application 12/774,827
Appellants also argue that "the present invention prevents the system
from generating a new temporary destination for a message, and then routes
the message to an existing pre-defined destination" and that Hallinan does
not disclose "suppressing generation of the new temporary destination."
Reply Br. 3--4; App. Br. 9. This is also unpersuasive because Hallinan
discloses preventing generating a new message queue by looking for other
available resources, as shown in Figure 4 (boxes 21, 22, and 23) and
explained above. Although the process of Hallinan may not always prevent
generation of a new resource, such as when a suitable resource is not
available, Hallinan still discloses the claimed steps of intercepting a request
and suppressing generation of a new temporary destination in several
situations depicted in the "Yes" branches from decision boxes 21, 22, and 23
in Figure 4.
Appellants further argue that Hallinan discloses generating a name of
a message queue, not the message queue itself. Reply Br. 3. We are not
persuaded. The Examiner finds, and we agree, Hallinan discloses that "a
proxy object (queue) handle corresponds to a real object handle." Ans. 3
(citing Hallinan, col. 8, 11. 29--46). For example, Hallinan discloses:
Prior to dispensing the proxy handle, the processor 4 checks
whether the resource pool contains a real handle corresponding
to that requested by the application, and, if so, reserves that
handle for possible allocation to the application at a later stage.
If no suitable resource is available in the pool, the processor 4
requests an appropriate resource from the queue manager, adds
it to the pool and reserves it for the application.
Hallinan, col. 8, 11. 33--40. Thus, Hallinan discloses making the actual
resource available in the resource pool and adding the actual resource if it is
not available.
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Application 12/774,827
Because we are not persuaded the Examiner erred in finding Hallinan
discloses the disputed limitations of claim 1, we sustain the rejection of
claim 1, as well as claims 2-5 and 10-19, which recite commensurate
limitations and are not separately argued, under 35 U.S.C § 102(b). We
likewise sustain the rejections of claims 6 and 20, which are not separately
argued, under 35 U.S.C. § 103(a).
Issue 2
The Examiner finds that Hallinan's disclosure of the MQGET request
to retrieve a message discloses "removing, in response to receiving a retrieve
access request, the identified first message from the pre-defined destination."
Ans. 5 (citing Hallinan, col. 15, 11. 5-7, 25-28, col. 16, 11. 39--40).
Appellants argue that Hallinan does not disclose "the MQGET call removing
the message from the queue; rather it simply retrieves the message from the
queue." Reply Br. 4. Appellants further argue that "messages are often left
on message queues in the MQSeries message queuing system even after
being retrieved by a particular application." Reply Br. 4 (citing an excerpt
from "An Introduction to Messaging and Queuing," IBM document number
GC33-0805-01, cited by Hallinan, col. 1, 11. 20-21 ).
We are persuaded that the Examiner has not adequately explained
how the MQGET request removes the message from the queue, rather than
just retrieving it and leaving it on the queue. Therefore, we do not sustain
the rejection of claim 7 under 35 U.S.C. § 102(b) over Hallinan.
However, we determine that the subject matter recited in claim 7 of
"removing, in response to receiving a retrieve access request, the identified
first message from the pre-defined destination" would have been obvious
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Application 12/774,827
over Hallinan. In particular, given the finite number of two design choices
of what to do when retrieving a message from a queue---deleting the
message or leaving it in the queue-we determine removing the message is
an obvious variation. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 421
(2007) ("When there is a design need or market pressure to solve a problem
and there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options within his or her
technical grasp. If this leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and common sense.").
As such, we enter a new ground of rejection of claim 7 under 35
U.S.C. § 103(a) as obvious over Hallinan.
Issue 3
Appellants argue Hallinan does not teach or suggest "intercepting a
delete access request from the requestor to delete the temporary destination
requested, the delete access request comprising the identifier," as recited in
claim 8. App. Br. 10-12; Reply Br. 5. Appellants' arguments are not
persuasive because they do not particularly address the Examiner's
conclusion of obviousness. In particular, the Examiner does not rely on
Hallinan for explicitly teaching the limitations of claim 8. Rather, the
Examiner explains:
Hallinan teaches all the communications between the
applications and the queue manager are intercepted by the
resource dispenser (col. 7, lines 23-25), and multiple types of
service requests are provided to the application (col. 16, lines 3 5-
37). Hallinan further teaches the applications can issue a
disconnect call to terminate the connection with the queue
manager (col. 8, lines 14-17). Given the teaching above, it would
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Application 12/774,827
have been obvious to one of ordinary skill in the art that the
system of Hallinan could also support a delete access request
from the requestor to delete the temporary destination requested,
the delete access request comprising the identifier.
Ans. 6 (emphasis added). Thus, the Examiner concludes the subject matter
of claim 8 would have been obvious in view of the teachings of Hallinan.
Appellants' arguments do not address persuasively the Examiner's
conclusion of obviousness based on the teachings of Hallinan, nor do
Appellants present sufficient evidence or argument that the resulting
arrangement of claim 8 would have been "uniquely challenging or difficult
for one of ordinary skill in the art" or "represented an unobvious step over
the prior art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Therefore, we are not persuaded of error in the Examiner's conclusion
of obviousness based on the teachings of Hallinan, and we sustain the
rejection of claim 8 under 35 U.S.C. § 103(a). We likewise sustain the
rejection of claim 9, which depends from claim 8 and is not separately
argued, under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's decision to reject claims 1---6 and 8-20.
We reverse the Examiner's decision to reject claim 7.
We enter a new ground of rejection for claim 7 under 35 U.S.C.
§ 103(a) as unpatentable over Hallinan in view of the knowledge of a person
of ordinary skill in the art.
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
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Application 12/774,827
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 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 prosecution
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)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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