Ex Parte Reilly et al

Patent Trial and Appeal Board

Oct 30, 2013

11929954 (P.T.A.B. Oct. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHN R. REILLY and ROBERT L. FAULK JR.1
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Appeal 2011-005258
Application 11/929,954
Technology Center 2400
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Before ST. JOHN COURTENAY III, CAROLYN D. THOMAS, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 21-40. Appellants have previously canceled
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Parties-in-Interest are Hewlett-Packard Company and Hewlett-
Packard Development Company, LP. App. Br. 3.
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STATEMENT OF THE CASE 2
The Invention
Appellants’ invention relates to a network switch having a device
manager that uses authoritative process relations for conforming state data
upon failover. Spec. ¶¶ [02] and [12].
Exemplary Claim
Claim 21 is an exemplary claim representing an aspect of the
invention which we reproduce below (emphasis added):
21. A method comprising:
running a first instance of a device manager for a device
in an active mode so as to react to external events by running a
first authoritative process so as to change first authoritative
state data and running a first conforming process so as to
change first conforming state data;
said first instance, while in said active mode, forwarding
changes to said first authoritative state data and said first
conforming state data to a second instance of said device
manager for said device in a tracking standby mode so as to
update second authoritative state data corresponding to said
first authoritative state data and to update second conforming
state data corresponding to said first conforming state data;
said second instance transitioning from said tracking
standby mode to said active mode, said transitioning involving
a supervisor process of said second instance activating a second
authoritative process of said second instance and a second

2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
Jul. 10, 2010); Reply Brief (“Reply Br.,” filed Dec. 9, 2010); Examiner’s
Answer (“Ans.,” mailed Oct. 6, 2010); Final Office Action (“FOA,” mailed
May 11, 2010); and the original Specification (“Spec.,” filed Oct. 30, 2007).
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conforming process of said second instance so that at least
some of said second conforming state data is conformed to said
second authoritative state data; and
running said second instance in said active mode so as to
react to external events so that said second authoritative process
changes said second authoritative state data and said second
conforming process changes said second conforming state data.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Constant U.S. 6,226,694 B1 May 1, 2001
Allen U.S. 2002/0162010 A1 Oct. 31, 2002
Zhou U.S. 7,194,652 B2 Mar. 20, 2007
Rejection on Appeal3
Claims 21 -40 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Zhou and Constant. Ans. 4.
ISSUES
Appellants argue (App. Br. 14-19; Reply Br. 2-9) that the Examiner’s
rejection of claims 21-40 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Zhou and Constant is in error. These contentions
present us with the following issues:

3 We note that the Examiner has withdrawn the statutory subject matter
rejection of claims 28-40 under 35 U.S.C. § 101, and the written description
rejection of claim 34 under 35 U.S.C. § 112, first paragraph. Ans. 4.
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Issue (a)
Did the Examiner err in finding that the combination of Zhou and
Constant teaches or suggests the use of “conforming state data,” as recited in
all claims on appeal?
Issue (b)
Did the Examiner err by not providing articulated reasoning with a
rational underpinning for combining Zhou and Constant in the manner
suggested?
ANALYSIS
Only those arguments actually made by Appellants have been
considered in this decision. Arguments which Appellants could have made
but chose not to make in the Briefs have not been considered and are
deemed to be waived. 37 C.F.R. § 41.37(c)(1)(vii).
Issue (a)
Appellants state that “[a]ll claims require conforming state data,”
(App. Br. 14) and, similarly, “[a]ll claims require ‘conforming’ of data.”
Reply Br. 2. Accordingly, we find that all claims 21-40 on appeal stand or
fall with independent claim 21, which recites “first conforming state data.”
We disagree with Appellants’ conclusions with respect to claim 21,
and we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
and rebuttals set forth by the Examiner in the Examiner’s Answer in
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response to Appellants’ Arguments. However, we highlight and address
specific findings and arguments regarding claim 21 for emphasis as follows.
Appellants contend the Examiner’s reliance upon Constant as teaching
or suggesting “conforming state data” is erroneous because “Constant
teaches a method for preventing consistent data from becoming
inconsistent.” App. Br. 14. “Since Constant’s data never becomes
inconsistent, there is no need to conform or otherwise change any data. The
Examiner has erred in confusing Constant’s ‘ensuring consistency’ with the
claimed ‘conforming.’” Id.
Further in this regard, Appellants contend:
Constant discloses a method in which processes are
paused and resumed to avoid race conditions that might
otherwise lead to temporary inconsistencies in data. Constant’s
pausing and resuming prevents consistent data from becoming
inconsistent; Constant’s pausing and resuming does not make
inconsistent data consistent. Constant’s method does not
conform or otherwise change any state data. In short, Constant
ensures conformity . . . but does not conform state data.
App. Br. 15. Appellants summarize their argument by stating, “Constant
prevents state data from being inconsistent and thus does not need to and
does not conform or otherwise change state data . . . [such that] neither Zhou
nor Constant teaches the claimed conforming of state data.” App. Br. 16.
In response, the Examiner finds Constant’s teaching of achievement
of data consistency implies that there once was inconsistency or non-
conformity of the state data. Ans. 25-26. The Examiner further points out
that Constant teaches an exemplary embodiment related to a network
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management system having different processes in which the state data of
some processes depend on the state data of other processes. Ans. 26 (citing
Constant Fig. 5; col 8:1-51). Constant teaches that, as a high level operation
(HLO) proceeds to completion, various data stores may be inconsistent with
each other. Ans. 26 (citing Constant col. 8:66 through col. 9:3).
Further, the Examiner finds Constant’s teaching of a method of
pausing and resuming processes can provide a consistent state such that the
data stores can be backed up. Ans. 26 (citing Constant col. 9:4-15). The
Examiner concludes by finding that Appellants’ contention is incorrect by its
reliance on the argument that Constant’s data never becomes inconsistent,
because Constant does teach that data of interdependent processes can
become inconsistent, and also teaches a method which achieves consistency
of the data. Ans. 26.
We agree with the Examiner’s characterization of the prior art. In
particular, we agree with the Examiner’s finding that Constant teaches that
its data may become inconsistent (see Constant col. 5:23-28) and that, after
Constant’s process is complete, “each of the multiple data stores is
synchronized and the data is in a consistent state. The invention operates to
guarantee consistency in any similarly modeled system regardless of its
number of input data sources, different data flow paths, and process
dependencies.” Constant col. 6:11-16. We find that at least this portion of
Constant teaches or suggests ensuring conformance of data, as variously
claimed.
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Issue (b)
With respect to the Examiner’s stated basis of motivation to combine
Zhou and Constant, Appellants contend, “the Examiner’s articulated
reasoning in the rejection does not possess a rational underpinning to support
the legal conclusion of obviousness.” App. Br. 18 (emphasis omitted)
(citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
The Examiner’s stated basis for motivation to combine Zhou and
Constant in the manner suggested is that
[I]t would have been obvious to one of ordinary skill in the art
at the time of the invention to use the teachings of Constant to
conform the state data of a dependent process to the state data
of an authoritative process because Zhou suggests that
interdependent processes rely on the state of other processes,
and consistency checks are needed in the case when some data
states may not be current, and the teaching lies in Constant that
by providing a method to make the state data of interdependent
processes consistent, the loss of time and the services provided
to users can be minimized.
Ans. 8-9. We agree with the Examiner, and find that Appellants’ contention
(cited above) that the Examiner’s basis for motivation does not have a
rational underpinning is without merit. The relevant inquiry is whether the
Examiner has set forth “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at
418). We find that the Examiner has met his burden under KSR, and we
further find that Appellants have merely alleged deficient motivation,
without providing any persuasive argument or evidence in support of their
contention. App. Br. 18.
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Accordingly, we agree with the Examiner’s finding that the
combination of Zhou and Constant teaches or suggests Appellants’ claimed
method of claim 21, and we also agree with the Examiner’s legal
conclusions of obviousness, cited above.
Further, while Appellants raised secondary arguments for patentability
of independent claim 21, we find that the Examiner has rebutted, in the
Answer, each of those arguments4 by a preponderance of the evidence.
Ans. 27-30. Therefore, we adopt the Examiner’s findings and underlying
reasoning, which we incorporate herein by reference. Consequently, we
have found no error in the Examiner’s rejections of claims 21-40.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s
characterization of the cited art, related claim construction, and legal
conclusions of obviousness. Therefore, we sustain the Examiner’s
obviousness rejection of independent claim 21. As claims 22-40 variously
recite “conforming state data,” the patentability of these claims turns on the
same issue as with independent claim 21. Accordingly, we similarly sustain
the Examiner’s rejection of these claims under 35 U.S.C. § 103(a).

4 Appellants additionally argue “the conforming occur during ‘transitioning
from said tracking standby mode to said active mode’” (App. Br. 16);
“[c]laim 21 requires authoritative and conforming processes for first and
second instances of a device manager” (App. Br. 17); and “[s]ince
Constant’s method would be applied before rather than during transitioning
. . . [and] would not involve conforming state data, and . . . [s]ince Zhou
does not disclose the claimed authoritative relations among processes in
active (as opposed to recovery) mode . . . the Examiner has not established a
factual basis to support the legal conclusion of obviousness.” App.
Br. 17-18 (emphasis omitted).
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CONCLUSION
The Examiner did not err with respect to the unpatentability rejection
of claims 21-40 under 35 U.S.C. § 103(a) over the combination of Zhou and
Constant, and the rejection is sustained.
DECISION
The decision of the Examiner to reject claims 21-40 is affirmed.5
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) (2011).
AFFIRMED

msc

5 If further prosecution should ensue, we direct the Examiner’s attention to
independent claim 35, which recites “[a] product comprising computer-
readable storage media.” Under our jurisprudence, the scope of the recited
“computer readable storage medium” appears to encompass transitory media
such as signals or carrier waves, where, as here, the Specification does not
limit the computer readable storage to non-transitory forms. Accord Ex
parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential) (holding
recited machine-readable storage medium ineligible under § 101 since it
encompasses transitory media). Here, the recited “computer readable
storage media” is not claimed as non-transitory, and the disclosure does not
expressly and unambiguously limit that medium to solely non-transitory
forms via a definition or similar limiting language. Therefore, the medium
encompasses transitory forms and appears ineligible under § 101.