Ex Parte Herington et al

Patent Trial and Appeal Board

Mar 21, 2014

11409814 (P.T.A.B. Mar. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DANIEL E. HERINGTON and ISLOM L. CRAWFORD JR.
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Appeal 2011-009876
Application 11/409,814
Technology Center 2100
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Before KRISTEN L. DROESCH, KALYAN K. DESHPANDE, and
PATRICK M. BOUCHER, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-009964
Application 10/850,911

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STATEMENT OF CASE1
Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 54-74, the only claims pending in the application on appeal.
Claims 1-53 have been canceled. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

Appellants invented a system and method for adjusting multiple
resources across multiple workloads in a computing environment.
Specification ¶¶ 0009-0011.
An understanding of the invention can be derived from a reading of
exemplary claim 54, which is reproduced below:
54. A method of allocating resources to workloads in a
computer system, said method comprising:
determining expected-impact values for respective ones
of plural combinations of workload and resource type for plural
workloads and plural resource types each of said expected-
impact values indicating respective extents to which a
respective performance parameter associated with a respective
workload is expected to be impacted by a change in an amount
of the respective resource type; and
making adjustments in the amounts of said resource types
allocated to said workloads at least in part as a function of said
expected-impact values.
REFERENCES
The Examiner relies on the following prior art:
Hahn
Eilam
US 7,694,303 B2
US 2005/0198641 A1
Apr. 6, 2010
Sept. 8, 2005

1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,”
filed Feb. 15, 2011), Reply Brief (“Reply Br.,” filed May 28, 2011), and the
Examiner’s Answer (“Ans.,” mailed Apr. 14, 2011).
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Application 10/850,911

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REJECTION2
Claims 54-74 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hahn and Eilam. Ans. 4-10.

ISSUE
The issue of whether the Examiner erred in rejecting claims 54-74 as
being unpatentable over the cited prior art turns on (1) whether the prior art
describes the claim limitations of (a) “determining expected-impact values
for respective ones of plural combinations of workload and resource type for
plural workloads and plural resource types . . . ,” as recited in independent
claim 54, (b) “wherein said tracking, determining, and making adjustments
are performed iteratively one resource unit at a time . . . ,” as recited in claim
58, and similarly recited in claim 65, and (c) “making an adjustment in the
amount of a first resource type allocated to a first workload in part as a
function of an expected-impact value for a combination of said first
workload and a second resource type,” as recited in claim 60, and similarly
recited in claim 67, and also (2) whether a person with ordinary skill in the
art would have combined the cited prior art.

ANALYSIS
We have reviewed the Examiner’s rejections in light of the
Appellants’ contentions that the Examiner has erred.

2 The rejection of claims 54-74 under 35 U.S.C. § 112, second paragraph,
and the rejection of claims 54-60 under 35 U.S.C. § 101 have been
withdrawn. Ans. 3.
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We disagree with the Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the examiner in
the Examiner’s Answer in response to the Appellants’ Appeal Brief. We
concur with the conclusion reached by the Examiner. We highlight the
following arguments for emphasis.

Claims 54-74 rejected under 35 U.S.C. § 103(a) as being
unpatentable over the cited Hahn and Eilam
A. Independent claim 54
Appellants contend that the combination of Hahn and Eilam fails
teach or suggest the limitation to “determine expected-impact values for
respective ones of plural combinations of workload and resource type for
plural workloads and plural resource types . . . ,” as recited by independent
claim 54. App. Br. 9. Appellants specifically argue that Hahn fails to
disclose “plural resource types,” and the Examiner has failed to establish a
prima facie case of obviousness. Id. However, the Examiner relied upon
Eilam, not Hahn, to teach plural resource types. Ans. 5 (emphasis added)
(citing Eilam, ¶ 0003, ll. 15-17, ¶ 0048, ll. 1-5, and ¶ 0095, ll. 1-15).
Specifically, the Examiner has acknowledged that Hahn does not disclose
plural resource types and accordingly submits Eilam to describe this
limitation. Id. As discussed below, the Examiner further articulates a
reasoning with a rationale underpinning for combining Hahn and Eilam.
Ans. 6. As such, the Examiner has established a prima facie case of
obviousness and Appellants do not to present any persuasive argument or
evidence to rebut the Examiner’s findings and conclusion. Furthermore,
Appellants’ contention that Hahn fails to describe plural resource types does
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not persuade us of error on the part of the Examiner because this argument is
tantamount to responding to the rejection by attacking the references
separately, even though the rejection is based on the combined teachings of
the references. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
Additionally, Appellants argue that there is no motivation to combine
Hahn and Eilam. We disagree with Appellants. The Examiner determined
that a person with ordinary skill in the art would have combined Hahn and
Eilam “in order to ensure that the allocations provided to Hahn would be
optimized based on a set of heterogeneous resources to ensure that
computing tasks were solved in the most efficient manner possible.” Ans. 6,
see Eilam ¶ 0004. Thus, the Examiner provided a reasoning with rationale
underpinning for combining the prior art references. Appellants do not
provide sufficient persuasive argument or evidence to rebut this finding and
conclusion by the Examiner. Accordingly, we are not persuaded that the
Examiner erred in determining that the claimed invention would have been
obvious over Hahn and Eilam.
Appellants also present arguments in the Reply Brief that Hahn and
Eilam do not disclose “expected-impact values.” Reply Br. 6-8. However,
Appellants have failed to show any cause as to why such evidence and
arguments were not presented prior to the Reply Brief. As such, these
arguments are untimely. See Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (Informative) (“the reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
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rebut the Examiner's rejections, but were not.”). Thus, for the reasons set
forth above, we are not persuaded that the Examiner has erred in rejecting
independent claim 54.

B. Dependent claims 58 and 65
Appellants assert that the combination of Hahn and Eilam fails to
disclose the limitation “wherein said tracking, determining and making
adjustments are performed iteratively one resource unit at a time . . . ,” as per
claim 58 and as similarly recited in claim 65. App. Br. 11, 13. Appellants
merely recite the rejection set forth by the Examiner, quote the cited prior art
referred to by the Examiner, and state that the prior art does not describe the
disputed limitation. Id. However, we do not find these statements to be
tantamount to arguments. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”); In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”). Accordingly,
we are not persuaded that the Examiner erred in rejecting claims 58 and 65.
Moreover, Hahn discloses that the reallocation of resources “is refined
over time as the results of resource movements are monitored and each
resource partition is evaluated for responsiveness.” Ans. 13 (citing Hahn,
col. 8, ll. 51-53). We find that the broadest reasonable construction of the
claimed iterative process encompasses the refinement process disclosed by
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Hahn. Appellants do not rebut this finding by the Examiner. Thus, we are
not persuaded by Appellants.

C. Dependent claims 60 and 67
Appellants also assert that the combination of Hahn and Eilam fails to
disclose the limitation “making an adjustment in the amount of a first
resource type allocated to a first workload in part as a function of an
expected-impact value for a combination of said first workload and a second
resource type,” as per claims 60 and 67. App. Br. 11-12, 13.
Again, Appellants merely recite the rejection set forth by the
Examiner, quote the cited prior art referred by the Examiner, and state that
the prior art does not describe the disputed limitation. App. Br. 11-12.
However, we do not find these statements to be tantamount to arguments and
we are accordingly not persuaded. See 37 C.F.R. § 41.37(c)(1)(vii) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior
art.”). Accordingly, we do not agree that the Examiner erred in rejecting
claims 60 and 67.
Moreover, Eilam discloses calculating the amount of a first resource
type based on the number of resources of each resource type allocated to a
workload in a computing environment. Eilam, ¶ 0048. The disclosed
computation adjusts the amount of a first resource type, R, as a function of
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said first workload, x, (i.e., the computing environment) and at least a
second resource type, rx1, rx2, . .. rxn (where rxi is the number of a resources of
type i allocated to a computing environment, and wherein the number of
resources types is denoted by N). Eilam, ¶¶ 0044-0048. Appellants do not
provide any persuasive argument or rationale to distinguish the claimed
adjustment from Eilam’s computation. Accordingly, we are not persuaded
that the Examiner’s finding is in error.

CONCLUSION
The Examiner did not err in rejection claims 54-74 under 35 U.S.C. §
103(a) as unpatentable over Hahn and Eilam.

DECISION
To summarize, our decision is as follows:
 The rejection of claims 54-74 under 35 U.S.C. § 103(a) as
unpatentable over Hahn and Eilam is sustained.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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