Ex Parte Kempin et al

Board of Patent Appeals and Interferences

Sep 15, 2010

10712677 (B.P.A.I. Sep. 15, 2010)

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.
10/712,677 11/13/2003 Christopher W. Kempin RSW920030198US1 9089
7590 09/16/2010
Gerald R. Woods
IBM Corporation
T81/503
PO Box 12195
Research Triangle Park, NC 27709
EXAMINER
PHAN, TUANKHANH D
ART UNIT PAPER NUMBER
2163
MAIL DATE DELIVERY MODE
09/16/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHRISTOPHER W. KEMPIN, ROBERT L. ORR, and
ROSALIND TOY ALLEN RADCLIFFE
____________________

Appeal 2009-005080
Application 10/712,6771
Technology Center 2100
____________________

Before LANCE LEONARD BARRY, ST. JOHN COURTENAY III, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed November 13, 2003. The real party in interest is
International Business Machines Corp. (App. Br. 2.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005080
Application 10/712,677

2
STATEMENT OF THE CASE
Appellants appeal from the Examiner’s rejection of claims 1-11 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a system – including a server, a gateway device,
and endpoints – and related method for monitoring the endpoints and
communication channels between the endpoints and the gateway device.
The gateway communicates with the server and the endpoints, and each
endpoint includes a monitoring application for monitoring the integrity of
the endpoint. The monitoring application sends a monitoring signal through
a particular communication channel to the gateway at predetermined time
intervals, which indicates the integrity of the endpoint. If the gateway fails
to receive the monitoring signal from the endpoint, the gateway determines
the status of the endpoint from a list, and may send a state change message
to the server. (Spec. ¶¶ [0008]-[0009].)3
Representative Claim
Independent claims 1 further illustrates the invention. It reads as
follows:
1. A system for monitoring the integrity of a plurality of
endpoints and a communication channel between the plurality
of endpoints and a gateway device, comprising:

3 We refer to Appellants’ Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed May 2, 2008; and Reply Brief (“Reply Br.”) filed September 24, 2008.
We also refer to the Examiner’s Answer (“Ans.”) mailed July 25, 2008.
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an endpoint having a monitoring application for
monitoring the integrity of the endpoint, the monitoring
application at a predetermined time sending a periodic signal
through a communication channel to the gateway device
indicating the integrity of the endpoint;
a server having a centralized database listing a status of
the endpoint; and
a gateway device in communication with the server and
with the endpoint, the gateway device including a monitored
list listing the status of the endpoint in communication with the
gateway device, the gateway device being configured to send a
state change message to the server when the gateway device
fails to receive a periodic signal from the endpoint and if the
status of the endpoint is either in a Healthy state, which
indicates the endpoint is functioning properly, or a Trouble
state, which indicates the endpoint has failed once, the gateway
device further being configured not to send the state change
message to the server upon a failure to receive the periodic
signal from the endpoint when the status of the endpoint is in a
Removed state, which indicates the endpoint has been removed
from the monitored list.

Reference
The Examiner relies on the following reference as evidence of
unpatentability:
Childress US 2004/0010716 A1 Jan. 15, 2004
(filed Jul. 11, 2002)

Rejections on Appeal
The Examiner rejects claims 1-6 and 11 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as the invention.
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Application 10/712,677

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The Examiner rejects claims 1-11 under 35 U.S.C. § 102(e) as being
anticipated by Childress.

ISSUES
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us are as follows:
1. Does the Examiner err in concluding that Appellants’ usage of
the “configured not to send” terminology renders claims 1-6 and 11
indefinite?
2. Does the Examiner err in finding the Childress reference
discloses “the gateway device further being configured not to send the state
change message to the server upon a failure to receive the periodic signal
from the endpoint when the status of the endpoint is in a Removed state” as
recited in Appellants’ claim 1?

FINDINGS OF FACT (FF)
Appellants’ Specification
1. Appellants do not explicitly define a “Removed” state in their
Specification. The Specification, however, does describe the functionality
of Appellants’ monitoring system with respect to the Removed state:
“[w]hen an endpoint’s status is Removed, the gateway device will no longer
send any additional messages regarding this endpoint to the central
server. . . . Optionally, the gateway device can remove the endpoint from its
monitored list and/or the endpoint list 200 after changing its status to
Removed.” (¶ [0023].)
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Childress Reference
2. Childress describes a system and method for monitoring the
health of networked system components, including a server, gateways and/or
managed nodes, and endpoints. (¶ [0032]; Figs. 1B, 2, 6, 7.) Childress’
system includes a gateway healthcheck engine that monitors the health of
connected endpoints. (¶¶ [0107], [0115].) The endpoints include a
monitoring application that periodically sends an upcall message to the
endpoint’s assigned gateway, indicating that the endpoint is functioning
properly. The gateway includes a table or list of all the endpoints connected
to the gateway, and the last time the endpoint checked in. The gateway
identifies any problem with an endpoint, for example, if the endpoint fails to
check in, and sends a message to the server. (¶¶ [0108]-[0112], [0114]-
[0115]; Fig. 7.)
3. Childress produces gateway messages to the server that indicate
the occurrence of an event, specifically a Trivoli Enterprise Console (TEC)
event – see ¶ [0037], in the communication between the gateway and a
particular endpoint. The TEC events indicate different levels of severity,
depending on the length of time the endpoint fails to communicate with the
gateway or how may check-ins the endpoint misses. These event severities
include: HARMLESS-indicating normal operation, WARNING-indicating a
first threshold has been exceeded, CRITICAL-indicating a second threshold
has been exceeded, and FATAL-indicating a third threshold has been
exceeded and complete failure of the endpoint. (¶¶ [0096], [0115]-[0116].)
4. Childress describes that the managed node or gateway logs an
error event and determines whether to send a TEC event message to the
server. (¶¶ [0119]-[0121]; Fig. 8.) Childress also describes determining if
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any additional healthchecks should be performed or healthcheck modules
executed. (¶¶ [0061], [0121].) For example, Childress determines if a
managed node is operating properly or has failed (“is down”). (¶¶ [0061]-
[0062].) If a managed node fails, “no additional healthcheck modules are
processed.” (¶ [0061].)

ANALYSIS
Issue 1: Rejection of claims 1-6 and 11 under 35 U.S.C. § 112,
Second Paragraph
The Examiner rejects claims 1-6 and 11 for being indefinite for failing
to particularly point out and distinctly claim the invention; specifically, that
the terminology “‘capable of not’ sending state change” in claims 1 and 11 is
indefinite. (Ans. 3, 6-7.) Appellants contend that the claimed limitation is
proper. (App. Br. 5-6; Reply Br. 1-2.)
After reviewing the record on appeal, we agree with Appellants and
we conclude that those skilled in the art would understand the claim
terminology in light of the Specification. Initially, we note that the
Appellants amended claims 1 and 11 to remove the “capable of not sending”
language and replace it with “configured not to send,” in the Amendment
dated December 3, 2007, entered by the Examiner in the Advisory Action
mailed December 31, 2007. The Examiner does not even address the
amended claim language. The Examiner appears to construe the claim
limitation so broadly as to be meaningless – in that “[a]ll gateway devices
are ‘capable of not’ sending state change” messages. (Ans. 3.) We find that
that the terminology “configured not to send” means arranged to function in
a particular way – to conditionally not to send a message under particular
circumstances. Accordingly, we construe the claimed feature of “the
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gateway device further being configured not to send the state change
message to the server upon a failure to receive the periodic signal from the
endpoint when the status of the endpoint is in a Removed state” to mean that
the gateway is arranged to function in a particular way – to not send the state
change message to the server – upon a failure to receive the periodic signal
from the endpoint when the status of the endpoint is in a Removed state.
While we construe claim limitations by giving the limitations “their broadest
reasonable interpretation,” this interpretation is made “in light of the
[S]pecification as it would be interpreted by one of ordinary skill in the art.”
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted). In the context of the disclosure of Appellants’
Specification (FF 1) and the knowledge of those skilled in the art, the
terminology is not indefinite. Thus, we reverse the Examiner’s rejection of
claims 1-6 and 11 under 35 U.S.C. § 112, second paragraph.
Issue 2: Rejection of claims 1-11 under 35 U.S.C. § 102(e)
The Appellants contend that the Childress reference fails to disclose
each feature of the rejected claims, in particular “the gateway device further
being configured not to send the state change message to the server upon a
failure to receive the periodic signal from the endpoint when the status of the
endpoint is in a Removed state” as recited in Appellants’ claim 1. (See App.
Br. 6-9; Reply Br. 2-3.) The Examiner finds that the Childress reference
discloses each feature of Appellants’ claim 1, and provides a detailed
explanation as to why Appellants’ arguments fail to overcome the
Examiner’s anticipation rejection. (Ans. 4-5, 7-9.) Specifically, the
Examiner finds that Childress discloses the disputed feature of not sending
messages to the server when the endpoint status is in the Removed state, in
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that Childress’ gateway device is capable of selectively sending or not
sending a state change message to the server when the gateway device fails
to receive a periodic signal from the endpoint, and the status of the endpoint
is “in a Removed state (¶ 096, ‘Fatal’)” (Ans. 5). (See Ans. 4-5). Based on
these contentions, we decide the question of whether the Examiner erred in
finding the Childress reference discloses a gateway device configured not to
send a state change message to a server upon a failure to receive a periodic
signal from an endpoint when the status of the endpoint is in a Removed
state.
After reviewing the record on appeal, we agree with the Examiner that
the Childress reference discloses the disputed feature. We begin our
analysis by construing Appellants’ disputed claim limitation.
We note that Appellants explicitly define the Healthy state and
Trouble state in claim 1: “a Healthy state . . . indicates the endpoint is
functioning properly,” and “a Trouble state . . . indicates the endpoint has
failed once.” Appellants, however, do not positively recite in claim 1 how
the Removed state is reached. Cf. Claim 7. Rather, Appellants describe the
Removed state as indicating “the endpoint has been removed from the
monitored list,” without specifying, in the claim, the process of removing the
endpoint from the gateway monitored list. We understand this language to
mean that the server database status indicates “Removed,” and the gateway
does not list the endpoint. Consequently, we are unsure how the gateway
makes a determination to send a message with respect to an unlisted (non-
existent) endpoint. In other words, while the gateway may be configured not
to send a message to the server when it fails to receive a periodic signal from
an unlisted endpoint, such functionality does not differentiate the gateway
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over the prior art because the gateway is not positively recited in claim 1 as
actually determining whether to send a message.
Appellants’ also do not explicitly define “a Removed state” in their
Specification, but do explain that the gateway device will not send additional
messages to a server concerning an endpoint when the endpoint has a
Removed status, and that a gateway may remove the endpoint listing from
its endpoint list entirely after changing the endpoint status to Removed. (FF
1.) Accordingly, as we explain supra, we broadly but reasonably construe
Appellants’ disputed claim limitation to mean the gateway is arranged not to
send (is capable of not sending) the state change message to the server upon
a failure to receive the periodic signal from the endpoint, when the endpoint
status is in a particular state (a Removed state). This construction is
consistent with the cited references, Appellants’ Specification, and the
knowledge of those skilled in the art at the time of Appellants’ invention.
As detailed in the Findings of Fact section supra, the Childress
reference describes a system for monitoring networked system components,
including a server, gateways, and endpoints. Childress’ endpoints
periodically send an upcall message (a signal) to their respective assigned
gateway. The gateway stores a time stamp of the messages in a table that
lists the endpoints connected to the gateway, and utilizes the information to
determine if an endpoint fails to check in. If an endpoint does not check in,
the gateway may selectively send a message to the server, i.e., may
alternately determine to send or not send a message. The messages indicate
differing levels of severity (events), including CRITICAL events (where
first and second time period thresholds have been exceeded) and FATAL
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events (indicating complete failure of the endpoint where a third time period
threshold has been exceeded). (FF 2-4.)
Thus, we find Childress discloses a gateway that selectively sends or
does not send (i.e., arranged not to send, or capable of not sending) a state
change message to a server upon a failure to receive the periodic signal from
the endpoint, when the endpoint status is in a particular state (either a critical
or fatal state). Therefore, a broad but reasonable interpretation of
Appellants’ claim 1 reads on at least one embodiment of Childress. (Id.).
We find Appellants’ contrary arguments unpersuasive. Specifically,
Appellants mischaracterize Childress as failing to describe a gateway that
selectively sends state change messages to a server (Reply Br. 2-3), or the
gateway not sending (suppressing) a state change message. (App. Br. 8-9.)
We find (supra) that Childress discloses not sending a state change message.
Further, Appellants’ arguments are not commensurate with the scope of their
recited claim limitations. Appellants’ argue that Childress fails to disclose
the gateway not sending the state change message to the server “when the
status of the endpoint is in the Removed state.” (App. Br. 8.) Appellants
also argue that Childress does not describe removing an endpoint from a
monitored list:
the gateway device removes the endpoint from the monitored
list and sends a second state change signal to the server
indicating the removal of the endpoint. These claims recited a
system that changes the state of an endpoint based on both the
current state of the endpoint and the non-occurrence of an event
relative to the endpoint.
(Reply Br. 3; see Reply Br. 2-3.) As we explain supra, Appellants’ disputed
claim limitation merely requires a gateway capable of not sending a message
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when an endpoint has a particular state, and/or is not listed in gateway list.
Childress’ gateway has this capability.
Thus, we find the Childress reference discloses Appellants’ disputed
claim limitation as recited in Appellants’ independent claim 1. Appellants
do not separately argue independent claims 7, 10, and 11, or dependent
claims 2-6 (dependent on claim 1), or 8 and 9 (dependent on claim 7).
Accordingly, we select independent claim 1 as representative of claims 2-11,
and we find the Childress reference anticipates these claims for the reasons
set forth with respect to representative claim 1. It follows that Appellants do
not persuade us of error in the Examiner’s anticipation rejection of claims 1-
11, and we affirm the Examiner’s rejection of these claims.

CONCLUSIONS OF LAW
Appellants have shown that the Examiner erred in rejecting claims 1-6
and 11 under 35 U.S.C. § 112, second paragraph.
Appellants have not shown that the Examiner erred in rejecting claims
1-11 under 35 U.S.C. § 102(e).

DECISION
We reverse the Examiner’s rejection of claims 1-6 and 11 under 35
U.S.C. § 112, second paragraph.
We affirm the Examiner’s rejection of claims 1-11 under 35 U.S.C.
§ 102(e).
Because we have sustained the rejection of each claim on appeal with
respect to at least one ground of rejection, we affirm the Examiner’s decision
rejecting claims 1-11.
Appeal 2009-005080
Application 10/712,677

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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

msc

Gerald R. Woods
IBM Corporation
T81/503
PO Box 12195
Research Triangle Park, NC 27709