Ex Parte Wookey et al

Board of Patent Appeals and Interferences

Jul 26, 2012

10186073 (B.P.A.I. Jul. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL J. WOOKEY,
TREVOR WATSON, and JEAN CHOUANARD
____________

Appeal 2009-011982
Application 10/186,0731
Technology Center 2400
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Before LANCE LEONARD BARRY, CAROLYN D. THOMAS, and,
CARL W. WHITEHEAD JR., Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Sun Microsystems, Inc.
Appeal 2009-011982
Application 10/186, 073

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-21, which are all the claims pending in the
application. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
The present invention relates generally to locating mid level managers
in multiple locations based upon the needs of the remote service delivery
system customer. See Spec., 1.
Claim 1 is illustrative:
1. A remote services architecture comprising:
a remote services proxy, the remote services proxy
providing communications flow management;
an intermediate mid level manager, the intermediate mid
level manager providing data queue management, transaction
integrity and redundancy, the intermediate mid level manager
being scalable to a customer location or a service provider
location based upon needs of the customer;
an applications mid level manager, the applications mid
level manager providing data normalization and integration
with a mail server data flow; and
an application server coupled to the remote services
proxy, the application server providing persistent storage of
remote services infrastructure information.

Appellants appeal the following rejection:

Claims 1-21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jones (US 6,216,173 B1, Apr. 10, 2001) and Gilles (US
6,167,431, Dec. 26, 2000).
Appeal 2009-011982
Application 10/186, 073

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ANALYSIS
Our representative claim, claim 1, recites, inter alia, “scalable to a
customer location.” Independent claims 8 and 15 recite commensurate
limitations. Thus, the scope of each of the independent claims includes
scaling the intermediate mid level manager to a customer location.

Issue: Did the Examiner err in finding that the combined teachings of
Gillies and Jones teaches and/or suggests “the intermediate mid level
manager being scalable to a customer location,” as claimed?

Appellants contend that “[l]acking from this teaching [in Jones] is any
mention of a MLM being scalable to a customer location or to a service
provider location based on the needs of the customer. Jones refers to simply
adding more routers . . .” (App. Br. 11.) We agree with Appellants.

While the Examiner agrees with Appellants that “Jones disclosed
providing scalable support by adding more routers . . .” (see Ans. 16), the
Examiner reasoned that “the specification does not provide an explicit
definition of the term. Therefore, the claim allows for multiple
interpretations.” (Ans. 15.) In other words, the Examiner appears to suggest
that “scalability” can be in any form.
We point out that “scalability,” as a property of systems, is generally
difficult to define without necessarily defining the specific requirements for
scalability that are deemed important. Here, however, we find that
Appellants have indicated “location” as a requirement for scalability (see
Claim 1; see also Spec., 2).
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Application 10/186, 073

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As a result, we find that the Examiner has not shown, and we cannot
readily find, in the cited portions of Jones any reference to the scalable
support being scalable to a customer and/or service provider location, as
claimed. For example, Jones merely discloses that “[s]calable support is
provided for processes. . . . the invention . . . generates multiple instances of
the process . . .” (Jones, col. 9, ll. 22-30.) However, Jones is silent about
location, either a customer’s or service provider’s. While the Examiner has
shown scalability in Jones as it relates to the ability of the system to
accommodate an increase in total throughput under an increased load by
adding resources, the Examiner has not specifically shown the claimed
requirement of being scalable to customer location.
We are therefore constrained by the record before us to find that the
Examiner erred in rejecting independent claim 1 and claims 2-21 for similar
reasons. Since this issue is dispositive regarding our reversal of independent
claims 1, 8, and 15, we need not address Appellants’ separate arguments
regarding these claims (App. Br. 7-10).
Thus, based on the record before us, and for the reasons set forth with
respect to claim 1, we find that the Examiner erred in concluding that the
combination of Gillies and Jones teaches and/or suggests scaling to a
customer location. Accordingly, we reverse the Examiner’s obviousness
rejection of claims 1-21.

DECISION
We reverse the Examiner’s § 103 rejection.

REVERSED

Appeal 2009-011982
Application 10/186, 073

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