Ex Parte Dunne et al

Patent Trial and Appeal Board

Jan 25, 2017

13471685 (P.T.A.B. Jan. 25, 2017)

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
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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.
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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