Ex Parte Grumann et al

Board of Patent Appeals and Interferences

May 29, 2012

09848713 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DOUG GRUMANN, STEVEN R. LANDHERR,
and THOMAS E. TURICCHI, JR.
____________

Appeal 2010-003315
Application 09/848,713
Technology Center 2400
____________

Before BRADLEY W. BAUMEISTER, BRUCE R. WINSOR,
and JOHN A. EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4-8, 11, 12, 14-22, and 24. We have jurisdiction
under 35 U.S.C. § 6(b). We REVERSE and enter new grounds of rejection
under 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
Appellants describe their invention as follows:
To achieve consistent health service measures of a
computer system environment, a method and an apparatus
combine various metrics from both internal sources and
external sources that relate to the service under observation.
This service health information is generated independently from
specific provider applications and performance monitoring tool
sets, thereby allowing shorter time-to-market for service
management solutions. The output of the method may be in the
form of a programmatic or scriptable interface to be used by
high level performance monitoring tools that are capable of
reporting status of many disparate computer services. The
performance monitoring tools may reside on different systems
and architectures and may be supplied by different vendors. As
a result, the programmatic or scriptable interfaces are designed
to be generic and flexible.
(Abstr.). Claim 1 is illustrative:
1. A method for dynamically determining the health of a
service resident on a host machine, comprising:
collecting service performance information from the
resident service, wherein the collected service information
relates to a plurality of performance metrics; and
translating the collected service performance information
into a generic output relating to current operational performance
of the service, wherein the generic output is one of a scriptable
interface and an application programming interface, and useable
by different performance monitoring tools,
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wherein the generic output comprises a plurality of
service health metrics, and wherein the translating step
comprises combining one or more of the plurality of
performance metrics to provide one or more of the plurality of
service health metrics, and wherein the plurality of service
health metrics comprises availability, capacity, throughput,
service time, queue length, utilization, service level violations,
and user satisfaction.

THE OBVIOUSNESS REJECTIONS
1. The Examiner rejected claims 1, 2, 4-6, 8, 11, 12, 14, 17-22, and 24
under 35 U.S.C. § 103(a) as being unpatentable over THE OPEN GROUP,
SYSTEMS MANAGEMENT: APPLICATION RESPONSE MEASUREMENT (ARM)
API (1998) [hereinafter ARM API], in view of Leymann (US 6,633,908 B1;
Oct. 14, 2003). (Ans. 3).1
2. The Examiner rejected claims 7 and 15 under 35 U.S.C. § 103(a) over
ARM API and Leymann in view of Chappelle (US 5,949,976; Sep. 7, 1999).
(Ans. 11).
3. The Examiner rejected claim 16 under 35 U.S.C. § 103(a) over ARM
API and Leymann in view of Walrand (US 6,647,413 B1; Nov. 11, 2003).
(Ans. 12).

CONTENTIONS
All of the rejections rely, at least in part, on the combination of ARM
API and Leymann. With respect to each ground of rejection, Appellants

1 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the following documents for their respective
details: the Appeal Brief (App. Br.) filed August 5, 2009, the Examiner’s
Answer (Ans.) mailed October 22, 2009, and the Reply Brief (Reply) filed
December 14, 2009.
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argue that the combination of ARM API and Leymann does not teach or
suggest the claimed limitation relating to translating information into a
generic output. In each of the rejections, the Examiner relies on the
Leymann for teaching this limitation. In view thereof, we analyze all of the
claims on appeal as a group.
The Examiner finds the ARM API reference to disclose each claim
limitation, except that it does not explicitly recite the translation of the
performance information into a generic output. (Ans. 4). The Examiner
concludes that Leymann’s “invocation agent” effectively is the translation
modality because it interacts with the ARM API and with various
application programs. (See id.).
Appellants argue that Leymann does not disclose or suggest use of a
generic output because Leymann’s output is ARM-specific. (App. Br. 11).
[T]he output of Leymann’s “generic” invocation agent 202
hardly is “generic.” As Leymann specifically points out, the
output must be specific to the ARM API - which certainly is not
a generic output. Thus, Leymann specifically invokes use of the
ARM standard, and because Leymann’s system outputs data
specific to the ARM standard, Leymann does not disclose or
suggest use of a generic output. Instead, Leymann’s output is
ARM-specific.
(Id.).
Appellants argue that the feature of the “generic output” is defined in
the Specification:
Referring to Figure 3 and its accompanying description
starting at page 9, line 20, a system 100 includes a health
generator 10 that provides an output of service health data 14 to
performance monitoring tools 13. The service health metrics
may be directly measured or derived from applications,
processes and thread instrumentation, for example. The method
is independent of specific provider applications and
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management tool sets, thereby allowing for shorter time-to-
market for service management solutions. The output 14 of the
method may be either in the form of a programmatic or
scriptable interface 108 to be used by the monitoring tools 13,
which are capable of reporting status of many disparate
computer services. The tools 13 may reside on different
systems and architectures and may be supplied by different
vendors. To accommodate different performance monitoring
tools, the interfaces are generic and flexible.
(App. Br. 7).
The Examiner finds that Leymann teaches the utilization of an
application response measurement API (Fig. 1, 106) in communication with
an API sub-agent (Fig. 1, 107) over a network wherein an agent is utilized
for data handling and is deemed generic in order to be independent from a
specific application and therefore the data is available for all applications
requesting the data (col. 8, ll. 3-13). (Ans. 4). The Examiner concludes that
thus making data available to all requesting applications is effectively
translating an output into a generic form. (See id.).
Appellants argue that Leymann discloses instrumenting an
“invocation agent” to collect the desired information from an ARM API
system. Furthermore, Appellants argue that the output of the invocation
agent is not generic; rather, it is specific to a specific management system:
As acknowledged on page 4 of the Examiner’s Answer,
ARM API does not disclose or suggest the translation of the
performance information into a generic output. Regarding
Leymann, as noted on pages 10-11 of the Corrective Appeal
Brief, Leymann instruments invocation agents 202 and uses
these invocation agents to collect the desired performance
information. See column 8, lines 1 - 23. “The present invention
contemplates instrumenting the invocation agents instead . . . .”
See column 7, line 67 - column 8, line 1. In other words, some
specific instrumentation has to take place to ensure
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compatibility with the ARM standard because the invocation
agent 202 has to make “the appropriate ARM calls”. See
column 8 lines 7 - 8. Furthermore, as Leymann specifically
points out, the output must be specific to the ARM API - which
certainly is not a generic output. Thus, Leymann specifically
invokes use of the ARM standard, and because Leymann’s
system outputs data specific to the ARM standard, Leymann
does not disclose or suggest use of a generic output. Instead,
Leymann’s output is ARM-specific.
(Reply 2-3).

ANALYSIS
We agree with Appellants. In Figure 1 of Leymann, cited by the
Examiner, numerals 106 and 107 refer to the ARM API, the output of which
is inputted to the Tivoli Applications Management Specification (AMS)
system. The Tivoli approach is recognized as an industry standard:
There are mainly three approaches to systems management on
the market, based on standards from Tivoli, Computer
Associates and Microsoft. While all of these approaches can be
perceived as defining an industry standard, the Tivoli approach
is partially a de jure standard too (i.e. the systems management
framework of Object Management Group (OMG)). Many
systems management vendors support the Tivoli framework
(called TME10) and its Application Management Specification
(AMS). This specification enables a consistent development of
management-ready applications.
AMS is complemented by the so-called Application
Response Measurement (ARM) technique together with its
application programming interface (API).
(Leymann, col. 1, ll. 21-34).
Because Leymann outputs to the Tivoli standard, the Examiner has
not demonstrated a basis for concluding that Leymann’s output may be
interpreted as being a generic output. We, therefore, do not sustain the
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rejection of claims 1, 2, 4-6, 8, 11, 12, 14, 17-22, and 24 under 35 U.S.C. §
103(a).
The Examiner rejected dependent claims 7 and 15 under 35 U.S.C.
§ 103(a) over ARM API and Leymann in view of Chappelle (Ans. 11) and
rejected dependent claim 16 under 35 U.S.C. § 103(a) over ARM API and
Leymann in view of Walrand (Ans. 12). The Examiner did not cite either
Chappelle or Walrand as teaching the disputed limitation. For the same
reasons set forth above, we, therefore, do not sustain the rejections of claims
7, 15, and 16 under 35 U.S.C. § 103(a).

NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b)
PATENT-INELIGIBLE SUBJECT MATTER UNDER 35 U.S.C. § 101
Pursuant to our authority under 37 C.F.R. § 41.50(b) we enter a new
ground of rejection for independent claim 1 under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter.
Section 101 of the Patent Act defines patentable subject matter:
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. The Supreme Court’s precedents
provide three specific exceptions to § 101’s broad patent-eligibility
principles: “laws of nature, natural phenomena, and abstract ideas” are not
patentable.” (Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) (citation
omitted)). We are instructed to resolve cases narrowly on the basis of the
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Court’s decisions in Benson,2 Flook,3 and Diehr,4 which show that
Appellants’ claims are not patentable processes because they are attempts to
patent abstract ideas. (See Bilski at 3229-30).
The method of claim 1 recites two steps: 1) collecting information;
and 2) translating information. The machine-or-transformation test is “a
useful and important [] investigative tool for determining whether some
claimed inventions are processes under § 101. (See id. at 3227). Neither of
the collecting and translating steps, nor the information putatively acted
upon, is required be tied to a particular machine. Nor does claim 1 require
the collecting and translating steps to transform a particular physical article
to a different state or thing. We therefore determine that claim 1 fails the
machine-or-transformation test.
Claim 1, instead, merely recites the abstract ideas of collecting and
translating information. Each step of claim 1 is broad enough to read on a
mental organization of these subjectively designated attributes. That is,
claim 1 recites abstract thought-processes that may be performed either
entirely in the head of an artisan or with paper and pencil. One may not
patent an abstract idea, but that would be the result were the algorithm for
collecting and translating information to be patented in this case. (See id. at
3230).
However, we are mindful that the machine-or-transformation test is
not the sole test for determining whether an invention is a patent-eligible
process. (See id. at 3227). As such we additionally inquire whether any

2 Gottschalk v. Benson, 409 U.S. 63 (1972).
3 Parker v. Flook, 437 U.S. 584 (1978).
4 Diamond v. Diehr, 450 U.S. 175 (1981).
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additional factors weigh toward the patent eligibility of claim 1. However,
our inquiry identifies no factors in this record weighing toward patent
eligibility.5
For the foregoing reasons, we conclude that claim 1 is directed to
patent-ineligible subject matter under 35 U.S.C. § 101. Although we decline
to reject every claim under our discretionary authority under 37 C.F.R.
§ 41.50(b), we emphasize that our decision does not mean the remaining
claims are patentable. Rather, we leave the patentability determination of
these claims to the Examiner. See MPEP § 1213.02.
INDEFINITENESS UNDER 35 U.S.C. § 112, ¶ 2
Pursuant to our authority under 37 C.F.R. § 41.50(b) we enter a new
ground of rejection of independent claim 21 under 35 U.S.C. § 112, ¶ 2, as
indefinite for being directed to “means-plus-function” limitations for which
the Specification lacks adequate disclosure of corresponding structure.
CLAIM CONSTRUCTION
Claim 21 sets forth three limitations or elements: (1) a collection
module that receives performance information related to the service, (2) a
translation health generator module that applies a rule set to the received
performance information and derives generic health metrics therefrom, and
(3) an output module that outputs' the generic health metrics relating to
current operational performance of the service. We first analyze
independent claim 21 to determine whether any of these elements invoke the
provisions of 35 U.S.C. § 112, ¶ 6.

5 See Interim Guidance for Determining Subject Matter Eligibility for
Process Claims in View of Bilski v. Kappos, 75 Fed. Reg. 43,922 (July 27,
2010).
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As a threshold matter, these claim elements do not use the term
“means” verbatim, and the absence of the term “means” triggers a rebuttable
presumption that § 112, ¶ 6, does not apply. Furthermore, Appellants have
not identified in the Appeal Brief that any of these limitations is a “means
plus function.” Such identification is required by 37 C.F.R. § 41.37(c)(1)(v).
Thus, Appellants have, in effect, indicated that claim 21 is not intended to
contain any “means plus function” elements. (See Ex Parte Rodriguez, 92
U.S.P.Q.2d 1395, 1403-4 (BPAI Oct. 1, 2009) (precedential)).
However, this does not end our claim construction analysis. Each of
the claim elements begins with a term – i.e., “collection module,”
“translation health generator module,” and “output module” – followed by
functional language. We must therefore determine “whether [each] term is
one that is understood to describe structure, as opposed to a term that is
simply a nonce word or a verbal construct that is not recognized as the name
of structure and is simply a substitute for the term ‘means for.”’ (See
Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1360 (Fed.
Cir. 2004)). The Federal Circuit and the Board of Patent Appeals and
Interferences have referred to general and technical dictionaries to determine
whether “a disputed term has achieved recognition as a noun denoting
structure, even if the noun is derived from the function performed.” (See
Rodriguez, 92 U.S.P.Q.2d at 1404). We have looked to both general and
subject matter specific dictionaries,6 and we find no persuasive evidence that
any of these terms have achieved recognition as a noun denoting structure.

6. IEEE 100 THE AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS
703-704 (7th ed. 2000); MICROSOFT COMPUTER DICTIONARY 346 (5th ed.
2002); MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 748 (10th ed. 1999).

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Nor does Appellants’ Specification provide a description sufficient to inform
one of ordinary skill in the art the meaning of these terms. Therefore, we
have no basis for concluding that these terms evoke for one of ordinary skill
in the art either a particular structure or a variety of structures. Rather, they
could mean every conceivable means of performing the function.
Therefore, we conclude there is no structural context for determining
the characteristics of these claim elements other than to describe the function
of each element. The presumption that § 112, ¶ 6, does not apply is
overcome when there is “no structural context for determining the
characteristics of the [claim element] other than to describe its function.”
Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008). We
further conclude that the recited claim elements are verbal constructs that are
not recognized as the name of a structure and are simply a substitute for the
term “means for.” (See Rodriguez, 92 U.S.P.Q.2d at 1404).
We therefore conclude that the limitations of claims 21 relating to the
“collection module,” “translation health generator module,” and “output
module” are “means plus function” elements under 35 U.S.C. § 112, ¶ 6.
REJECTION UNDER § 112, ¶ 2
Once a court concludes that a claim limitation is a means-plus-
function limitation, two steps of claim construction remain: 1) the court must
first identify the function of the limitation; and 2) the court must then look to
the Specification and identify the corresponding structure for that function.
Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,
1210 (Fed. Cir. 2003). “If there is no structure in the specification
corresponding to the means-plus-function limitation in the claims, the claim
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will be found invalid as indefinite.” Biomedino, LLC v. Waters Technologies
Corp., 490 F.3d 946, 950 (Fed. Cir. 2007).
In a means-plus-function claim “in which the disclosed structure is a
computer, or microprocessor, programmed to carry out an algorithm, the
disclosed structure is not the general purpose computer, but rather the
special purpose computer programmed to perform the disclosed algorithm.”
Id. (citing WMS Gaming, Inc. v. International Game Technology, 184 F.3d
1339, 1349 (Fed. Cir. 1999)). Thus, “the corresponding structure for a § 112
¶ 6 claim for a computer-implemented function is the algorithm disclosed in
the specification.” Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed.
Cir. 2005).
We have thoroughly reviewed the Appellants' Specification and have
not been able to locate an adequate disclosure of structure, material, or acts
corresponding to a “collection module,” a “translation health generator
module,” or an “output module,” as recited in claim 21. In particular, the
Specification does not disclose any specific algorithm, code, or flowchart
that could be implemented on a general purpose computer to provide the
functions corresponding to these recited “modules.”
Appellants have failed to disclose any algorithm, and thus have
failed to adequately describe sufficient structure, for performing the
functions recited in the means elements contained in claim 21 so as to render
the claim definite. Accordingly, claim 21 is unpatentable under 35 U.S.C.
§ 112, second paragraph, as indefinite.
Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does
not mean the remaining claims are patentable. Rather, we leave the
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patentability determination of these claims to the Examiner. See MPEP
§ 1213.02.

DECISION
The Examiner’s decision rejecting claims 1, 2, 4-8, 11, 12, 14-22, and
24 under 35 U.S.C. § 103 is reversed.
Pursuant to 37 C.F.R. § 41.50(b), claim 1 is rejected under 35 U.S.C.
§ 101 as being directed to patentable-ineligible subject matter.
Pursuant to 37 C.F.R. § 41.50(b), claim 21 is rejected under 35 U.S.C.
§ 112, ¶ 2 as indefinite.
Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Furthermore, 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 proceeding
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. . . .

REVERSED
37 C.F.R. § 41.50(b)

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