Ex Parte Shwartz et al

Patent Trial and Appeal Board

Jun 7, 2013

11424901 (P.T.A.B. Jun. 7, 2013)

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.
11/424,901 06/19/2006 Larisa Shwartz RSW920050216US1 (225) 8359
46320 7590 06/10/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
ROSTAMI, MOHAMMAD S
ART UNIT PAPER NUMBER
2156
MAIL DATE DELIVERY MODE
06/10/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LARISA SHWARTZ, MAHESWARAN SURENDRA,
NAGA A. AYACHITULA, GENADY GRABAMIK,
and JAMES S. LIPSCOMB
____________________

Appeal 2010-0122831
Application 11/424,901
Technology Center 2100
____________________

Before JEAN R. HOMERE, KALYAN K. DESHPANDE, and JASON V.
MORGAN, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines Corp.
(App. Br. 1.)
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-7 and 12-18. (App. Br. 2.) Claims 8-11 have been
canceled. (Id.) We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of the rejection against claims 12-
18 under 35 U.S.C. § 101.
Appellants’ Invention
Appellants invented a server provisioning method and system for
coordinating the installation of an application across one or more computing
platforms in a repeatable fashion. (Spec. [0004].) In particular, upon
establishing a grouping criteria according to which target computing nodes
are clustered into different groups, the application is installed at the root
node of each computing group to thereby install the requisite application
components to the computing nodes below the root node. (Id. at [0026],
[0027].)
Illustrative Claims
Independent claims 1 and 12 further illustrate the invention as
follows:
1. A server provisioning method comprising:
establishing grouping criteria;
grouping different target computing nodes into different
groups of target computing nodes according to the established
grouping criteria;
server provisioning a root node in each of the different
groups of target computing nodes; and,
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relying upon the root node in each of the different groups
to peer-to-peer server provision remaining nodes in each of the
different groups.

12. A computer program product comprising a computer-
readable storage medium having stored thereon computer
usable program code for server provisioning, the computer
usable program code, when executed on a computer hardware
system, causing the computer hardware system to perform the
following operations:
establishing grouping criteria;
grouping different target computing nodes into different
groups of target computing nodes according to the established
grouping criteria;
server provisioning a root node in each of the different
groups of target computing nodes; and,
relying upon the root node in each of the different groups
to peer-to-peer server provision remaining nodes in each of the
different groups.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Lehikoinen US 2004/0260701 A1 Dec. 23, 2004
Saleh US 2005/0047327 A1 Mar. 3, 2005

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Rejection2 on Appeal
The Examiner rejects the claims 1-7 and 12-18 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Lehikoinen and
Saleh.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 4-23, and the Reply Brief, pages 2-14.

Obviousness Rejection
Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in
finding that the combination of Lehikoinen and Saleh teaches or suggests
server provisioning a root node in each of a plurality of different groups of
target computing nodes, as recited claim 1?
Appellants argue that the Examiner erred in finding that proffered
combination teaches or suggests the disputed limitations emphasized above.
(App. Br. 11-23; Reply Br. 2-14.) In particular, Appellants argue that while
Lehikoinen discloses grouping different nodes into different groups based
upon a predetermined criterion to thereby facilitate provisioning of services
in a peer to peer environment, Lehikoinen does not perform such grouping
for the purpose of performing server provisioning as defined in the
Specification. (App. Br. 15, 18; Reply Br. 8-9.)
In response, the Examiner finds that because Lehikoinen
discloses a peer-to-peer environment wherein various nodes are grouped

2 The Examiner withdrew the nonstatutory rejection previously entered
against claims 12-18. (Ans. 3.) However, we have re-instated that rejection
herein. See new ground of rejection infra.
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according to a predetermined criterion to thereby facilitate the provisioning
of services via a representative node thereof as taught by Saleh, the proffered
combination teaches the disputed limitations. (Ans. 18, 23.)
Based upon our review of the record before us, we find error with the
Examiner’s conclusion of obviousness regarding claim 1. We begin our
analysis by first considering the scope and meaning of the claim limitation
“server provisioning” which must be given the broadest reasonable
interpretation consistent with Appellants’ disclosure, as explained in In re
Morris:
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in
the applicant’s specification.

In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). See also In re
Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (stating that “claims must be
interpreted as broadly as their terms reasonably allow.”). Our reviewing
court further states, “the ‘ordinary meaning’ of a claim term is its meaning to
the ordinary artisan after reading the entire patent.” Phillips v. AWH Corp.,
415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc).
In particular, Appellants’ Specification states the following:
[T]he coordinated installation of an application across one or
more server computing platforms in a repeatable fashion has come to
be known as “server provisioning” borrowing a term from the field of
telecommunications. Server provisioning literally implies the
deployment of an application onto a host computing platform in a
coordinated and repeatable fashion. In the simplified provisioning
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exercise, an operator installs and configures the various applications
in the host computing platform according to a pre-defined installation
plan ordinarily specified by an application manufacturer or systems
integrator.

(Spec. [0004] (emphasis added).)

We note that the relevant portion of Appellants’ Specification cited
above expressly defines “server provisioning,” as coordinating the
installation of an application onto a host computing platform in a repeatable
manner. As admitted by Appellants, Lehikoinen discloses grouping a
plurality of nodes into different groups of nodes based upon a predetermined
criterion. (App. Br. 15.) Lehikoinen further discloses selecting the lowest
level node (i.e., the root node) in a peer-to-peer network for deciding how to
internally route a received message to the groups of nodes. ([0037].)
Additionally, Lehikoinen discloses provisioning various services in the peer-
to-peer environment. ([0029], [0077].) We find that Lehikoinen at best
discloses selecting root nodes to provision services to corresponding groups
of nodes based upon predetermined criteria. However, the disclosed service
provisioning does not entail the root node coordinating the installation of an
application onto the node computers in a repeatable manner (i.e., server
provisioning). While the ordinarily skilled artisan could conceivably
employ the disclosed root nodes to perform installation of an application
onto the different node groups in the peer-to-peer network, the Examiner has
not made such findings, nor is there any indication on this record that such
installation can somehow be a part of the services being provisioned by the
node. Additionally, we agree with Appellants that Saleh’s disclosure does
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not cure the noted deficiencies of Lehikoinen. Because Appellants have
shown at least one error in the Examiner’s rejection of claim 1, we need not
reach the merits of Appellants’ remaining arguments. Accordingly, the
Examiner erred in rejecting claim 1 as being unpatentable over Lehikoinen
and Saleh.
Because claims 2-7 and 12-18 recite the disputed limitations discussed
above, and the additional citations relied upon by the Examiner do not cure
the noted deficiencies, we similarly find error in the Examiner’s rejection of
claims 2-7 and 12-18 for the foregoing reasons.
New Ground of Rejection
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
12-18 as being directed to nonstatutory subject matter under 35 U.S.C. § 101
because the program product recited therein consists of a computer-readable
storage medium, which encompasses a transitory medium. In particular,
Appellants’ Specification states that
[A] computer-usable or computer-readable medium can be any
apparatus that can contain, store, communicate or propagate or
transport for use by or in connection with the instruction
execution system, apparatus, or device. The medium can be an
electronic, magnetic, optical, electromagnetic, infrared or
semiconductor system (or apparatus or device) or a propagation
medium.

(Spec. [0032].)

Appellants’ Specification indicates that a computer-readable medium
can, inter alia, propagate data thereby implicating a carrier wave. While the
Specification indicates that the medium can also store data, it fails to define
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a computer-readable storage medium, let alone providing a definition of
such a medium that excludes transitory media.3 Therefore, the broadest
reasonable construction of a computer-readable storage medium, according
to its ordinary and customary meanings to a person of ordinary skill in the
art, encompasses both non-transitory and transitory media.4 In assessing the
ordinary and customary meanings attributed to the term computer-readable
storage medium, the ordinary skilled artisan needs to consider several
factors5 including intrinsic evidence as provided in Appellants’

3 See Ex parte Mewherter, Appeal No. 2012-007692 (PTAB May 08, 2013),
wherein an expanded panel dealt with the same issue and involving the same
real party in interest.
4 See id. at 6 n.4 (stating “[a]lthough not binding on this Board, we do find
noteworthy that the Office recently mandated in training to its examiners
that, in such cases, a claim reciting computer-readable storage media must
be construed under the broadest reasonable interpretation as encompassing a
signal per se unless amended to avoid such language. U.S. Patent &
Trademark Office, Evaluating Subject Matter Eligibility Under 35 USC
§ 101 (Aug. 2012 Update); pp. 11-14, available at http://www.uspto.gov/
patents/law/exam/101_training_aug2012.pdf.”).
5 Id. at 7-8 n.5 (stating “there are several factors to consider when
determining whether a ‘computer readable storage medium’ type claim
avoids encompassing a non-statutory signal:
(1) Extrinsic evidence relevant to the meaning as would be understood by
one skilled in the art at the time of the effective filing date of the patent
application. As opposed to the voluminous extrinsic evidence dated 2002
and thereafter which is discussed in this decision, before 2002 there is little
evidence that the ordinary and customary meaning of such ‘storage medium’
terms encompassed a signal.
(2) Whether there is express intent in applicant’s specification to limit the
term, i.e., applicant’s specification is not silent as to the meaning of such
terms.
(3) Whether the claim expressly limits the medium to ‘non-transitory’
embodiments.
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Specification, as well extrinsic evidence (e.g., dictionary definitions, prior
uses of the term or equivalents thereof by Appellants and other industry
participants). (Id. at 9-12.) In particular, we held that:
[T]hose of ordinary skill in the art would understand the claim
term “machine-readable storage medium” would include signals
per se. Further, where, as here, the broadest reasonable
interpretations of all the claims each covers a signal per se, the
claims must be rejected under 35 U.S.C. § 101 as covering non-
statutory subject matter. See In re Nuijten, 500 F.3d 1346,
1356-57 (Fed. Cir. 2007) (transitory embodiments are not
directed to statutory subject matter); Subject Matter Eligibility
of Computer-Readable Media, supra; U.S. Patent & Trademark
Office, Interim Examination Instructions for Evaluating Subject
Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2,
available at http://www.uspto.gov/web/offices/pac/dapp/opla/
2009-08-25_interim_101_instructions.pdf; U.S. Patent &
Trademark Office, Evaluating Subject Matter Eligibility Under
35 USC § 101 (August 2012 Update); pp. 11-14, available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.
pdf.
We note that Appellants are not precluded from
amending these claims to overcome this rejection. Guidance on
this point is provided in U.S. Patent & Trademark Office,
Subject Matter Eligibility of Computer Readable Media, 1351
Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (“A claim drawn to
such a computer readable medium that covers both transitory
and non-transitory embodiments may be amended to narrow the
claim to cover only statutory embodiments to avoid a rejection
under 35 U.S.C. § 101 by adding the limitation ‘non-transitory’

(4) Whether the claim implicitly limits the medium to ‘non-transitory’
embodiments. The most common form of this is the use of ‘means plus
function’ elements in the claim (i.e., a true Beauregard type claim). Such
means plus function elements are limited by statute to the corresponding
structure in the specification and equivalents thereof. Such a structure
requirement limits the claim to non-transitory embodiments.”).
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to the claim.”). See also U.S. Patent & Trademark Office,
Evaluating Subject Matter Eligibility Under 35 USC § 101
(August 2012 Update) (pp. 11-14), available at
http://www.uspto.gov/patents/law/exam/101_training_aug2012.
pdf (noting that while the recitation “non-transitory” is a viable
option for overcoming the presumption that those media
encompass signals or carrier waves, merely indicating that such
media are “physical” or tangible” will not overcome such
presumption).

(Id. at 13-14.)

In this case, our construction of a computer-readable storage
medium as encompassing transitory media is appropriate because: (1)
there was voluminous extrinsic evidence at the time of the effective
filing date of Appellants’ patent application that a “storage medium”
encompasses a signal; (2) Appellants’ Specification fails to expressly
limit a “computer-readable storage medium” to non-transitory media;
and (3) the claim does not include recitations either expressly or
implicitly limiting the “computer-readable storage medium” to non-
transitory media. Thus, we conclude that claim 12 encompasses a
transitory medium and is, therefore, directed to non-statutory subject
matter. Accordingly, we conclude that claims 12-18 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
DECISION
We reverse the Examiner’s rejection of claims 1-7 and 12-18 as set
forth above. However, we enter a new ground of rejection against claims 12-
18.
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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). See 37 C.F.R.
§ 41.50(f).

REVERSED
37 C.F.R. § 41.50(b)

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