Ex Parte Dunne et alDownload PDFPatent Trial and Appeal BoardJan 25, 201713471685 (P.T.A.B. Jan. 25, 2017) Copy Citation 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. 13/471,685 05/15/2012 JONATHAN DUNNE CAM920120015US1_8150-0106 1133 52021 7590 01/27/2017 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, EL 33498 EXAMINER LEIBOVICH, YAIR ART UNIT PAPER NUMBER 2114 NOTIFICATION DATE DELIVERY MODE 01/27/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONATHAN DUNNE and JEFFREY B. SLOYER Appeal 2015-007266 Application 13/471,685 Technology Center 2100 Before CARLA M. KRIVAK, IRVIN E. BRANCH, and JOHN R. KENNY, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge IRVIN E. BRANCH. Opinion Dissenting filed by Administrative Patent Judge JOHN R. KENNY. BRANCH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 34^48. Claims 1—33 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. CLAIMED SUBJECT MATTER The claims are directed to reliability testing of software systems. Spec. 11; Abstract. Claim 34, reproduced below, is illustrative of the claimed subject matter: 34. A system comprising: a processor configured to initiate executable operations comprising: determining a transaction time for each of a plurality of transactions to a system under test during a reliability test, wherein the plurality of transactions are of a same transaction type; calculating a forecast of transaction times for the transaction type; comparing the forecast with a threshold time; and implementing a remedial action responsive to the forecast exceeding the threshold. RELATED PROCEEDINGS We are informed that this appeal is related to Appeal No. 2015- 007281 (U.S. Application No. 13/893,650). App. Br. 1. REFERENCE AND REJECTION Claims 34-48 stand rejected under 35 U.S.C. § 102(b) as anticipated by Fraenkel (US 2003/0065986 Al; published Apr. 3, 2003). Final Act. 5— 8. ANALYSIS We have reviewed the Examiner’s rejection in light of Appellants’ arguments that the Examiner erred. We disagree with Appellants that the Appeal 2015-007266 Application 13/471,685 Examiner erred and adopt as our own the findings and conclusions set forth by the Examiner in the Final Action and the Examiner’s Answer. We highlight and address specific findings and arguments for emphasis as follows. Regarding claim 34, Appellants argue that Fraenkel does not describe “determining a transaction time for each of a plurality of transactions to a system under test during a reliability test, wherein the plurality of transactions are of a same transaction type.” App. Br. 9-11; Reply Br. 2—3. Appellants’ arguments overlook the Examiner’s findings with respect to Fraenkel, Fig. 13; Ans. 8 (“in figure 13 and other locations, the figure shows multiple graphs, each is an average of a type; for example, ‘update account’ is a type, and since each point in the graph is an average, it is an average of multiple values of a same type”). Appellants argue that Fraenkel does not describe “calculating a forecast of transaction times . . . [and] comparing the forecast with a threshold.” App. Br. 11—14; Reply Br. 3—6. Appellants’ arguments are unpersuasive in view of the Examiner’s citation to Fraenkel, paragraph 16, which discloses comparing an average response time to a threshold. Ans. 9— 10. Although the Examiner finds that Fraenkel’s threshold is a calculated “forecast” of when action should be taken {id. 9), the Examiner’s additional finding does not negate the fact that Fraenkel’s calculated average (“average response time,” 116) also describes claim 34’s calculated forecast, which is compared to a threshold. Appellants’ arguments that Fraenkel does not describe “implementing a remedial action” (App. Br. 14—16; Reply Br. 7—8) also are unpersuasive of error because they overlook the Examiner’s citation to Fraenkel, paragraph 3 Appeal 2015-007266 Application 13/471,685 244 (Ans. 10-11), which discloses “a corrective action is automatically performed according to a set of predefined rules” (Fraenkel 1244). Fraenkel’s “corrective action” describes the claimed “remedial action.” Appellants additional arguments with respect to claims 36, 38, and 39 (App. Br. 16—18; Reply Br. 8—10) are unpersuasive for the reasons stated by the Examiner (Final Act. 7; Ans. 11). Appellants do not separately argue the remaining claims. DECISION In view of the foregoing, we sustain the Examiner’s decision to reject claims 34-48.1 1 In the event of any further prosecution, we leave it to the Examiner to consider whether at least independent claim 34 (and associated dependent claims) should also be rejected for being a single means claim (See In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983)) and thus indefinite under 35 U.S.C. § 112 (a)) as only a processor is claimed; or under 35 U.S.C. § 112 (b) (Pre-AIA § 112, second paragraph). Our reviewing court guides that a claim directed to a system and a method for using that system is indefinite. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005); see also Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim . . . indefinite.”). See also Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331 (Fed. Cir. 2011) (“reciting both an apparatus and a method of using that apparatus renders a claim indefinite under section 112, paragraph 2”). While the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. 4 Appeal 2015-007266 Application 13/471,685 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. § 1.136(a)(l)(iv). AFFIRMED 5 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JONATHAN DUNNE and JEFFREY B. SLOYER Appeal 2015-007266 Application 13/471,685 Technology Center 2100 Before CARLA M. KRIVAK, IRVIN E. BRANCH, and JOHN R. KENNY, Administrative Patent Judges. KENNY, Administrative Patent Judge, dissenting. I do not join my colleagues in affirming the Examiner’s decision to reject claims 34-48 under 35 U.S.C. § 102(b) as anticipated by Fraenkel. As noted by my colleagues, claim 34 recites “calculating a forecast of transaction times . . . [and] comparing the forecast with a threshold.” The Examiner maps FraenkeTs disclosed threshold to the recited forecast. Ans. 9. That mapping is unavailing, however, because the involved limitations compare the forecast to the threshold, and if Fraenkel’s threshold is both the recited forecast and the threshold, the comparison does not make sense. Reply Br. 6. My colleagues correctly note that Frankel discloses comparing an average response time to a threshold. Fraenkel 116. The Specification, however, distinguishes actual time measurements from forecasts. Spec., Fig. 4,1140-43. Accordingly, I would not find Frankel’s average response time Appeal 2015-007266 Application 13/471,685 to be a forecast and would not affirm the Examiner’s anticipation rejection of claims 34-48. Therefore, I respectfully, dissent. 2 Copy with citationCopy as parenthetical citation