Ex Parte O et al

Patent Trial and Appeal BoardOct 16, 2012

11139152 (P.T.A.B. Oct. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte PETER M. O’NEILL and AJAY KHOCHE ________________ Appeal 2010-002576 Application 11/139,152 Technology Center 2100 ________________ Before ERIC S. FRAHM, DAVID M. KOHUT, and JASON V. MORGAN, Administrative Patent Judges. MORGAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-002576 Application 11/139,152 2 STATEMENT OF THE CASE Introduction This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1 – 22. We have jurisdiction under 35 U.S.C. § 6(b)(1). We affirm. Invention The invention relates to a method of making a multi-component production device by receiving component behavior models of the production device’s production components, combining the component behavioral models to form a device behavioral model, and, prior to assembling the production device, simulating tests on the device behavioral model and predicting performance metrics for the production device. See Abstract. Exemplary Claim (Emphasis Added) 1. A method of making a multi-component production device in accordance with a device design having performance specifications, the method comprising: receiving respective component behavioral models of production components constituting the multi-component production device; combining the component behavioral models in accordance with the device design to form a device behavioral model; and prior to assembling the multi-component production device, predicting performance metrics for the multi-component Appeal 2010-002576 Application 11/139,152 3 production device by performing simulated tests on the device behavioral model. Rejection The Examiner rejects claims 1 – 22 under 35 U.S.C. § 102(b) as being anticipated by Hughes (US 2003/0177018 A1; Sept. 18, 2003). Ans. 3 – 8. ISSUE Did the Examiner err in finding that Hughes discloses “receiving respective component behavioral models of production components constituting the multi-component production device,” as recited in claim 1? ANALYSIS Appellants contend that the Examiner erred in rejecting claim 1 because it is directed to receiving “component behavior models of actual ‘production component’ (i.e., not theoretical models, but models of actual components that have been produced).” App. Br. 9. Appellants argue that Hughes merely discloses combining design elements “prior to constructing any hardware or software of a production device.” App. Br. 10. The Examiner correctly finds that the tools and techniques of Hughes are targeted to “an experienced software or hardware engineer, who has been charged with designing a new product, or substantially modifying an existing one.” Ans. 11 (citing Hughes ¶ [0043]) (emphasis added by Examiner). The Examiner also correctly finds that Hughes discloses providing the designer with “a large library of existing hardware and software component libraries.” Ans. 11 (citing Hughes ¶ [0069]) (emphasis added by Examiner). In modifying an existing product or using component behavior models in a library of existing hardware and software component Appeal 2010-002576 Application 11/139,152 4 libraries, component behavior models received would be of actual production components (e.g., components of the existing product that is being modified or existing components in the library). Furthermore, Hughes makes clear that its disclosed invention “makes good estimates of hardware and software performance for conventional, off-the-shelf components that are included in the models.” Hughes ¶ [0053] (emphasis added). Models of conventional, off-the-shelf components are models of production components, not mere theoretical models. Therefore, we agree with the Examiner that Hughes discloses receiving respective component behavior models of production components constituting the multi-component production device, as recited in claim 1. Accordingly, we sustain the Examiner’s 35 U.S.C. § 102(b) rejection of claim 1, and of claims 2 – 22, which Appellants do not argue separately with sufficient specificity. See App. Br. 11. DECISION The Examiner’s decision to reject claims 1 – 22 is affirmed. 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 ELD