Ex Parte Nathoo et al

Patent Trial and Appeal Board

Nov 7, 2013

10559016 (P.T.A.B. Nov. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte AMIR NATHOO and
GRAHAM DEREK WALLIS
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Appeal 2011-002403
Application 10/559,016
Technology Center 2100
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Before JEAN R. HOMERE, CAROLYN D. THOMAS,
and JOHNNY A. KUMAR, Administrative Patent Judges. 

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002403
Application 10/559,016

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-14 and 17-20. Claims 15 and 16 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Exemplary Claim on Appeal
An understanding of the invention can be derived from a reading of
exemplary claim 1 that reads as follows:
1. A resource manager apparatus for coordinating
application logic hosted by an Application Service Provider
(ASP) with a resource managed by a resource manager,
comprising:
a first computer system including the resource manager
for receiving application logic and an associated instruction id
from the ASP, both the application logic and the id being sent
to the resource manager as a result of a request for a service
received at an application that is included in and being executed
by the ASP from a client computer system, wherein the ASP is
included within a second computer system, and further wherein
the resource is included solely within the first computer system,
and still further wherein the application in the ASP and the
resource are kept in separate computer systems;
the client computer system sending a request to the
resource manager including the instruction id, the instruction id
having been generated by the ASP and having been returned to
the client for forwarding to the resource manager;
means for matching the instruction id received from the
ASP with the instruction id received from the client in order to
identify the associated application logic;
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means for using the identified application logic to
execute the client request by accessing and using the resource in
conjunction with the application logic; and
means for providing the result of the client request to the
client, wherein the application logic is received via a
communications channel between the ASP and the resource
manager and the result is provided to the client via a separate
communications channel between the resource manager and the
client.

Rejection on Appeal
The Examiner rejected claims 1-14 and 17-20 under 35 U.S.C.
§ 103(a) as being unpatentable over Cheng (US 7,096,491 B2, Aug. 22,
2006), in view of Flurry (US 2003/0061512 A1, Mar. 27, 2003). Ans. 3-23.1

ISSUE
Appellants argue on pages 12 through 15 of the Brief that the
Examiner’s rejection under 35 U.S.C. § 103(a) is in error.2 This argument
presents us with the issue: Did the Examiner err in finding the combination
of Cheng in view of Flurry teaches a resource being included solely within
the first computer system, and wherein the application in the ASP and the
resource are kept in separate computer systems, as recited in independent
claims 1, 10, 13, and 17?

1 Throughout this opinion we refer to the Answer (“Ans.”) mailed August
18, 2010.
2 Throughout this opinion we refer to the Appeal Brief (“Br.”) filed June 4,
2010.
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Application 10/559,016

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions.
Appellants argue that the proffered combination does not teach or
suggest the disputed limitations emphasized above. Br. 14-15. According to
Appellants, the present “claims describe the resource being included in a
first computer system and the ASP being included in a second computer
system.” Id. at 15 (emphasis omitted). In response, the Examiner finds that
Cheng teaches that provider 230 and ASP 210 are in two separate systems
such that ASP 210, which includes local resources 218, corresponds to the
first computer and application provider 230, which is separate from ASP
210, corresponds to the second computer. Ans. 24. Consequently, the
Examiner finds that the cited disclosure of Cheng teaches the disputed
limitations. Id. We agree with the Examiner. See also Cheng, Fig. 1.
Additionally, the disputed limitation, “wherein the resource is
included solely within the first computer system, and still further wherein
the application in the ASP and the resource are kept in separate computer
systems” (claim 1), is essentially non-functional descriptive material in that
the limitation simply fails to define a functional characteristic within the
structure of the claims. In other words, the resource being included solely
within the first computer system and the application in the ASP and the
resource being kept in separate computer systems, are not expressly utilized
in the claim to do anything.
Thus, we find that there is no claimed functional relationship between
the disputed limitation and the claimed resource manager apparatus. As
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non-functional descriptive material, the limitation will not differentiate the
invention from the prior art.3
Regarding Appellants’ arguments that “Flurry does not teach or
suggest ‘application logic’ because authentication information sent to a user
does not execute a client request” (Br. 16), we agree with the Examiner that
in Flurry, the “aggregator token that is returned to the client/user by the ASP
aggregator service in response to a successful, initial, authentication
operation, and Para [0068], line 1-20” meets the application logic limitation.
Ans. 25 (quoting Flurry ¶ [0067]) (internal quotation marks omitted).
Accordingly, we sustain the Examiner’s rejection of claims 1, 10, 13,
and 17 under 35 U.S.C. § 103(a).
Appellants have not provided separate arguments for the remaining
claims which depend upon claims 1, 10, 13, and 17. Accordingly, we
similarity sustain the rejection of these claims.

CONCLUSION
The Examiner did not err in rejecting claims 1-14 and 17-20 under
35 U.S.C. § 103(a) as being unpatentable over Cheng in view of Flurry.

DECISION
The Examiner’s rejections of claims 1-14 and 17-20 are affirmed.

3 The Examiner need not give patentable weight to descriptive material
absent a new and unobvious functional relationship between the descriptive
material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84 (Fed.
Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004) and our
decision in Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative
opinion), aff’d No. 06-1003 (Fed. Cir. Jun. 12, 2006) (Rule 36).
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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