Ex Parte Reynolds et al

Patent Trial and Appeal Board

Mar 11, 2015

11148482 (P.T.A.B. Mar. 11, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PATRICK A. REYNOLDS, JANET L. WIENER,
MARCOS K. AGUILERA and JEFFREY C. MOGUL
____________

Appeal 2012-003312
Application 11/148,482
Technology Center 2400
____________

Before ANTON W. FETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1–60, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM-IN-PART.

Appeal 2012-003312
Application 11/148,482

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THE INVENTION
The Appellants’ claimed invention is directed to systems and methods
for inferring casual paths from messages communicated between nodes in a
distributed computing environment (Spec. para. 1). Claim 1, reproduced
below with the numbering in brackets added, is representative of the subject
matter on appeal.

1. A method comprising:
[1] evaluating messages between pairs of nodes of a distributed
computing environment;
[2] based on timing relationships of said messages, determining
probability of a causal link between two or more of said messages;
[3] based on said determined probability, inferring at least one
causal path comprising a plurality of causal links; [4] and
determining an overall probability that the inferred causal path
is accurate.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 1–27 and 51–60 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
2. Claims 1–50 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
3. Claims 1–60 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Przytula (US 2005/0091177 A1, pub. Apr. 28, 2005) and
Papaefstathiou (US 6,925,431 B1, iss. Aug. 2, 2005).

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Application 11/148,482

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FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.
1

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellants argue that the rejection of claims 1–27 and 51–60 is
improper (Br. 1–13, Reply Br. 4–6).
In contrast the Examiner has determined that the rejection is proper
(Ans. 5–6, 15–16).
We agree with the Examiner. In claim 1, the recited method steps can
be performed essentially in a series of mere mental steps, i.e., claim 1 recites
a mental process, which is patent-ineligible subject matter. See, e.g.,
Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature,
though just discovered, mental processes, and abstract intellectual concepts
are not patentable, as they are the basic tools of scientific and technological
work.”). None of the elements of the claim, individually or as an ordered
combination, transforms the claim into patent-eligible subject matter.
Claim 51 and claim 55 similarly recite method steps, e.g., estimating
an average causal delay, or standard delay, between nodes, that can be
performed in a series of mere mental steps. Further in both of claims 51 and
55, none of the elements of either respective claim, individually or as an
ordered combination, transforms the claim into patent-eligible subject
matter.

1
See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 11/148,482

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For these above reasons these rejections are sustained.

Rejection under 35 U.S.C. § 112, second paragraph
The Examiner has rejected claims 1 and 28–30 as indefinite (Ans. 6).
Specifically, the phrase “the inferred causal path is accurate” or similar
phrases have been held indefinite because it is unclear how it is determined
that the casual path is accurate (Ans. 6). The Examiner has also determined
that the phrase “forming the causal path” in claims 42, 51, and 55 is
indefinite because it is unclear how the system or software does this (Ans. 6,
17).
In contrast, the Appellant has determined that the cited rejections are
improper (App. Br. 13–16, Reply Br. 6–9).
We agree with the Appellants. Here, in the instances cited above the
claim limitations for both determining that “the inferred causal path is
accurate” and “forming the causal path” are directed to issues of breadth,
and not indefiniteness, and these rejections are not sustained.

Rejection under 35 U.S.C. § 103(a)
The Appellants argue that the rejection of claim 1 is improper because
the prior art does not disclose claim limitation [2] (App. Br. 17–22, Reply
Br. 10–13).
In contrast, the Examiner has determined that claim limitation [2] is
shown by Przytula at Figs. 4–5 and paras. 54, 56, and 57 (Ans. 7–8, 18).
We agree with the Appellants. Claim limitation [2] requires “based
on timing relationships of said messages, determining probability of a causal
link between two or more of said messages.” Here, the above citations to
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Przytula disclose neither any specific relation to two or more messages or
the timing relationships of those messages and the rejection of claim 1 and
its dependent claims is not sustained. Claims 28, 42, 51, and 55 contain a
similar limitation and the rejection of these claims and their dependent
claims is not sustained for the same reasons given above.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims as listed above under 35 U.S.C. § 101.
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims as listed above under 35 U.S.C. § 112, second paragraph
and 35 U.S.C. § 103.
DECISION
The Examiner’s rejection of claims 28–50 is reversed. The
Examiner’s rejection of claims 1–27 and 51–60 is sustained.

AFFIRMED-IN-PART

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