Ex Parte Fabrizi et al

Board of Patent Appeals and Interferences

Oct 19, 2009

10602901 (B.P.A.I. Oct. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ALFIO FABRIZI and ANGELO LITTERA
____________________

Appeal 2009-0011861
Application 10/602,901
Technology Center 2100
____________________

Decided: October 19, 2009
____________________

Before ALLEN R. MacDONALD, Vice Chief Administrative Patent Judge,
JEAN R. HOMERE, and JAMES R. HUGHES, Administrative Patent
Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed June 24, 2003. The real party in interest is International Business
Machines.
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 19 through 53. Claims 1 through 18 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for configuring a data
processing (DP) system to enhance its fault tolerance thereby making it
highly available (HA). (Spec. 1, ll. 5-6.) As shown in Figure 3, the DP
system includes a server computer (105) having an inspection/interrogation
agent (300) that collects production server parameters, which are used to
generate a parameter database (303), and to configure the server as a highly
available system. (Spec. 10, l. 12- spec. 11, l. 5.) The DP system also
includes a client computer (115/125) having an expert system (309) and a
project database (315) into which the server parameters are downloaded via
a network (110). (Spec. 11, ll. 5-19.) The project database (315) may also
contain default questions and parameters derived from answers used to
define the HA data processing system. (Id. at 19-22.) The client computer
(115/215) uses predefined high availability rules in a knowledge database
(311) to analyze the parameters in the project database (315) and to
subsequently configure the data processing system for high availability.
(Spec. 11, l. 23- spec. 12, l. 32.)
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Illustrative Claim
Independent claim 19 further illustrates the invention. It reads as
follows:
A system for configuring a highly-available data processing system,
comprising:

an inspection agent adapted to:

automatically explore and inspect a production server;

identify and collect a plurality of production server computer
parameters;

generate a production server computer parameter database of
the production server computer parameters necessary to configure the
production server to be the highly-available data processing system;

an expert-system module adapted to:

read the production server computer parameter database;

generate a project database comprising the production server
computer parameters, a plurality of default questions and a plurality of
additional questions, if any, and the respective production server computer
parameters derived from the answers used to define the highly-available data
processing system;

select from a plurality of predefined rules those rules pertinent
to analyze the project database; and

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define the highly-available data processing system from the
production server computer parameter database.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:

Han 2002/0052807 May 2, 2002

Bottom 2003/0069953 Apr. 10, 2003

Rejections on Appeal2
The Examiner rejects the claims on appeal as follows:
1. Claims 19 through 25, 27 through 30, 33 through 42, and 45 through
53 stand rejected as being anticipated by Bottom.
2. Claim 26, 31, 32, 43 and 44 stand rejected as being unpatentable over
the combination of Bottom and Han.

2 Claims 19-53 were also rejected as being directed to non statutory subject
matter under 35 USC 101. (Final Action 2-3.) However, the Examiner
indicates that Appellants’ arguments in the Appeal Brief are persuasive, and
consequently withdrew the rejection in the Examiner’s Answer. (Ans. 11.)
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Appellants’ Contentions
Appellants contend that Bottom does not teach an inspection agent
that generates a parameter database to configure a production server of a
highly available system as recited in independent claim 19. (App. Br. 10.)
According to Appellants, while Bottom discloses extracting health and
performance metrics, they are not the type of parameters that can be used to
configure a production server for a highly available data processing system.
(Id.) Further, Appellants argue that Bottom does not disclose a knowledge
database having a plurality of default questions to be answered to define the
highly available data processing environment. (Id.) Thus, Appellants argue
that Bottom neither anticipates the claims on appeal nor does it render them
unpatentable alone or in combination with other references. (App. Br. 10-
11.)
Examiner’s Findings
The Examiner finds that Bottom’s disclosure of storing in a local
database extracted health and performance metrics, which are made
available to other applications, teaches the parameter database. (Ans. 4, 12-
13.) Further, the Examiner finds that Bottom’s disclosure of a database that
stores parameters, questions, and answers related to the parameters along
with a determination of whether predetermined thresholds are being violated
teaches the knowledge database with default questions to define the highly
available DP system. (Id at 14.)

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II. ISSUE
Have Appellants shown that the Examiner erred in finding that
Bottom teaches or suggests an inspection agent that generates a parameter
database and a knowledge database with default questions to configure a
highly available system?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Bottom
1. Bottom discloses a high availability (HA) management system
wherein the modular architecture in various servers in the chassis is
continually monitored in order to perform hot swap of modular system
components thereby rendering the system highly available. (Abstract.)
2. As shown in Figure 1A, upon electing a server in the chassis as
an active manager server (105) to host system management, the elected
server (105) runs services for all servers in the chassis. (Para. 0019.)
3. The manager server extracts health performance and metrics for
each server in the chassis and stores them in a local database. The extracted
health and performance metrics are made available to various applications
such as graphical user interface (GUI) and web-server interface. (Para.
0020.)
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4. The extracted parameters pertain to the CPU, physical or virtual
memory, disk, network IO, storage capacity. (Para. 0028.) They include
health, power, and temperature of the devices. The extracted parameters are
also shared with other servers in the chassis. (Para. 0021, 0050, 0055.)
5. The HA management system (100) provides health and
performance detection, fault detection, and failure recovery. (Para. 0029,
0031.)
6. The HA management system (100) allows users to define
certain metrics and health performance thresholds, upon which boundaries
being exceeded, cause a middleware to trigger an alert to the corresponding
user. (Para. 0034.)
7. As shown in Figure 5, the middleware (535) may store
extracted health metrics and performance information (e.g. temperature
level, power level, CPU utilization) in the memory database (525) to provide
information to a user at the web server (520). The extracted information
helps determine whether a predetermined threshold has been violated due to
a faulty device which is hot swapped. (Para. 0055-0056.)
8. In the event of failure of the active manager server, another
server is elected to replace the managing server thereby preserving
continuity in the HA management system. (Para. 0032.)

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Han
9. Han discloses that web-enabled and IP based architectures
generally involve a database schema comprising of rows and columns
(relational databases) for storing database/ file systems. (Para. 0015.)
10. Han discloses an XML data structure schema as an embodiment
of the web-based architecture. (Para. 0067.)

IV. PRINCIPLES OF LAW
Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.

Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(internal citations omitted).
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Obviousness
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art" and discussed circumstances in which a patent might be determined to
be obvious. Id. at 401 (citing Graham v. John Deere Co., 383 U.S. 1, 13-14
(1966)) (citation omitted). The Court reaffirmed principles based on its
precedent that "[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." Id. at 416. The operative question in this "functional approach" is
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thus "whether the improvement is more than the predictable use of prior art
elements according to their established functions." Id. at 415, 417.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 416).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art." Id. at 1162 (citing KSR, 550 U.S. at 417-
418).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See
Kahn, 441 F.3d at 987-988; In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991);
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, in evaluating such
references it is proper to take into account “not only the specific teachings of
the reference but also the inferences which one skilled in the art would
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reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826
(CCPA 1968) (citation omitted).

V. CLAIM GROUPING
Appellants argue the patentability of claims 19, 33, and 39 in
conjunction with the rejection of claims 19-53. In accordance with 37
C.F.R. § 41.37(c)(1)(vii), we will consider the claims on appeal as standing
and falling with representative claims 19, 33, and 39.

VI. ANALYSIS
Anticipation
Independent claim 19 requires in relevant part:
(1) an inspection agent adapted to . . . generate a production
server computer parameter database of the production server computer
parameters necessary to configure the production server to be the
highly available data processing system . . . (Emphasis added.)

As set forth in the Findings of Facts section, Bottom discloses an HA
management system that elects a managing server to monitor the
performance of fellow servers in a chassis by extracting the health,
performance, and metrics of the servers and thereafter store them in a local
database. (FF. 1-3.) Further, Bottom discloses that the extracted parameters
are shared with all the servers and various applications in the HA system to
enable a hot swap of a defective server module thereby rendering the system
highly available. (FF. 1, 4-5.) We find that the extracted health
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performance and metrics are parameters that are used to generate the local
database. We further find that since these parameters are propagated to
other servers in the chassis as well as other applications to enable high
availability in case of a failure, the parameters in the local database are used
to configure a server as the highly available system. We therefore agree
with the Examiner that the Bottom’s extracted parameters are used to
generate a parameters database, which is used to configure the server as the
highly available data processing system. We further agree with the
Examiner that the claim only requires parameters in general without
specifying a particular type of parameters to configure the server as a highly
available system. Therefore, Appellants’ argument that Bottom’s disclosed
parameters are not of the same type as the claimed parameters is not
commensurate with the scope of the claim. It is therefore not persuasive.
Next, independent claim 19 further requires in relevant part:
(2) an expert-system module adapted to . . . generate a project
database comprising the production server computer parameters, a
plurality of default questions and a plurality of additional questions, if
any, and the respective production server computer parameters
derived from the answers used to define the highly available data
processing system. (Emphasis added.)

As set forth in the Findings of Facts, Bottom discloses a middleware
that stores the extracted server parameters in a memory database, and
automatically determines whether the extracted parameters exceed certain
user-predefined thresholds to thereby alert the user of possible violations.
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(FF. 6-7.) We find that Bottom’s middleware to be an expert module that
generates the memory database by transferring therein the extracted server
parameters. We further find that the determination of whether the
parameters exceed a predefined threshold teaches various questions that are
evaluated by applying predefined rules on the extracted parameters.
Additionally, we find that the determination of whether a violation occurred
teaches a plurality of answers to the questions used to define the high
availability of a data processing system. We therefore agree with the
Examiner that Bottom does disclose a knowledge database with default
questions to define the highly available DP system. It follows that
Appellants have not shown that the Examiner erred in finding that Bottom
anticipates claims 19, 33, and 39.

Obviousness
Regarding claims 26, 31, 32, 43, and 44, Appellants reiterate that
Bottom does not teach the limitations of base claims 19, 33, and 39 argued
above, and therefore cannot render these dependent claims unpatentable.
(App. Br. 11.) Further, Appellants argue that Han does not remedy the
deficiencies of Bottom as previously argued. (Id.) We do not agree. As
discussed above, we find no such deficiencies in Bottom for Han to cure.
Additionally, we find that Han’s disclosure of using file structures as XML
files (FF. 10) or that web based applications generally involve relational
databases that stores a plurality of file systems (FF. 9) complements
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Bottom’s teachings. We thus find that both Bottom and Han disclose prior
art elements that perform their ordinary functions to predictably result in a
highly available and flexible modular server architecture. Therefore,
Appellants’ argument that there is insufficient rationale to combine Bottom
and Han is not persuasive. It follows that Appellants have not shown that the
Examiner erred in concluding that the combination of Bottom and Han
renders the cited claims unpatentable.

VII. CONCLUSIONS OF LAW
1. Appellants have not established that the Examiner erred in
rejecting claims 19-25, 27-30, 33-42, and 45-53 as being anticipated under
35 U.S.C. § 102(e).
2. Appellants have not established that the Examiner erred in
rejecting claims 26, 31, 32, 43, and 44 as being unpatentable under
35 U.S.C. § 103(a).

VIII. DECISION
We affirm the Examiner's rejection of claims 19 through 53.

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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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