Ex Parte Shah et al

Patent Trial and Appeal BoardApr 25, 2016

13007125 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/007, 125 01114/2011 AmipJ. Shah 56436 7590 04/27/2016 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 82467413 5985 EXAMINER PARK, GRACE A ART UNIT PAPER NUMBER 2157 NOTIFICATION DATE DELIVERY MODE 04/27/2016 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): hpe.ip.mail@hpe.com mkraft@hpe.com chris.mania@hpe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AMIP J. SHAH and MANISH MARWAH Appeal2014-004047 Application 13/007, 125 Technology Center 2100 Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and MELISSA A. RAAP ALA, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. STATEMENT OF THE CASE Appellants' invention creates system trees with nodes representing a desired range of component characteristics. In one aspect, the tree's nodes are replaced with nodes from other trees that satisfy the desired range. See generally Abstract. Claim 1 is illustrative: Appeal2014-004047 Application 13/007, 125 1. A tree creation method, the method carried out by program code stored on non-transient computer-readable medium and executed by a processor, the method comprising: building a system tree in computer-readable medium, the system tree having a plurality of nodes, each node in the system tree representing a desired range of characteristics of a component of a system under consideration; identifying a hierarchy of offending nodes in the system tree, the hierarchy including an ordering of offending nodes from highest to lowest; identifying probable nodes in other trees that satisfy the desired range of characteristics of the component of the system under consideration, the probable nodes in other trees identified in order according to the hierarchy from highest to lowest, to replace offending nodes in the system tree with better rated nodes from the other trees; and creating in computer-readable medium at least one new tree for the system under consideration by replacing at least one of the nodes in the system tree with at least one of the probable nodes from the other trees. RELATED APPEALS On page 2 of the Brief, Appellants identify appeals filed in three related applications, namely i\.pplication Numbers (1) 13/007,175; (2) 13/007,073; and (3) 13/007,152. The first two applications are currently on appeal to this Board, 1 but no decision has been rendered in either case. The third application was allowed after appeal without a Board decision, and is now U.S. Patent 8,730,843. The issues in all three related cases are not germane to the issues before us in this appeal. 1 The Appeal Numbers for the '175 and '073 applications are 2015-005825 and 2014-006316, respectively. 2 Appeal2014-004047 Application 13/007, 125 THE REJECTION The Examiner rejected claims 1-20 under 35 U.S.C. Â§ 103(a) as unpatentable over Akatsu (US 2010/0332444 Al; Dec. 30, 2010) and Freeman (US 2002/0116161 Al; Aug. 22, 2002). Final Act. 4--9. 2 CONTENTIONS The Examiner finds that Akatsu ( 1) builds a system tree with nodes representing a desired range of characteristics in Figure 3; (2) identifies probable nodes in other trees satisfying the desired range by matching a variable node to a partial graph based on a rewrite rule; and (3) creates at least one new tree by replacing at least one node with at least one probable node from the other trees, namely by replacing a variable node with a partial graph. Final Act. 4--5. Although the Examiner acknowledges that Akatsu does not identify (1) a hierarchy of offending nodes in the system tree, where the hierarchy includes the recited ordering of offending nodes, and (2) probable nodes in order according to the hierarchy, the Examiner cites Freeman as teaching these features and concludes that the claim would have been obvious. Final Act. 5-6; Ans. 2--4. Appellants argue that neither Akatsu nor Freeman identify an offending-node hierarchy, let alone identify probable nodes in other trees in order according to the hierarchy, as claimed. Br. 6-8. According to 2 Throughout this opinion, we refer to (1) the Final Rejection mailed April 26, 2013 ("Final Act."); (2) the Appeal Brief filed August 24, 2013 ("Br."); and (3) the Examiner's Answer mailed September 19, 2013 ("Ans."). 3 Appeal2014-004047 Application 13/007, 125 Appellants, Freeman assigns relative scores to each component in a database. Br. 8. ISSUE UnderÂ§ 103, has the Examiner erred in rejecting claim 1 by finding that Akatsu and Freeman collectively would have taught or suggested a tree- creation method including identifying (1) a hierarchy of offending nodes in the system tree, where the hierarchy includes the recited ordering of offending nodes, and (2) probable nodes in order according to the hierarchy from highest to lowest to replace offending nodes in the system tree with better-rated nodes from other trees? ANALYSIS As noted above, the Examiner finds that Akatsu not only builds a system tree as shown in Figure 3, but also creates a new system tree by replacing at least one of its nodes with "probable nodes" from other trees, namely by replacing a variable node with a partial graph according to a rewrite rule. Final Act. 4; see also Akatsu, Abstract (describing this functionality in connection with a "rule application unit"). The Examiner acknowledges, however, that to facilitate the replacement, Akatsu does not identify the probable nodes in order according to an identified hierarchy of "offending nodes" ordered from highest to lowest, but nevertheless concludes that this feature would have been obvious in light of Freeman's ranked design alternatives. Final Act. 5; Ans. 2--4. In reaching this conclusion, the Examiner finds that Freeman uses relative scores to rank all design alternatives from highest to lowest, but only 4 Appeal2014-004047 Application 13/007, 125 selects one such alternative-the highest-ranking alternative. Ans. 3 (citing Freeman i-f 22, 28-30). According to the Examiner, the non-selected alternatives are equivalent to "offending nodes," and are included in this rank-based hierarchy. Ans. 3. We see no error in the Examiner's position given the cited references' collective teachings. First, the term "offending nodes" is not defined in Appellants' Specification, unlike other terms. 3 Rather, the Specification discusses the term "offending nodes" somewhat generally with respect to candidates for replacement. See Spec. i-fi-135, 40. In one example, the node associated with an "offending" processor of a laptop computer is replaced with a node from a processor with a lower environmental footprint. See Spec. ,-r 40. Given this non-limiting and exemplary description, we see no error in the Examiner's reliance on Akatsu for at least suggesting replacing certain "offending" variable nodes with partial node-based graphs. See Akatsu, Abstract. Nor do we find error in the Examiner's position that identifying a hierarchy of such nodes ordered from highest to lowest would have been obvious in light of Freeman's ranked, unselected design alternatives that are a subset of all components in the database, and that using such a ranking as a basis for replacing nodes in Akatsu would have been obvious. Final Act. 5- 6; Ans. 2--4. In short, using Freeman's functional, rank-based criteria to identify probable nodes in other trees for replacement in Akatsu as the Examiner proposes would have been obvious over the cited references' collective 3 See, e.g., Spec. i-fi-115-16 (defining the terms "system," "includes," and "based on"). 5 Appeal2014-004047 Application 13/007, 125 teachings. Final Act. 5---6. Appellants' arguments regarding Freeman's individual shortcomings in this regard (Br. 8) do not show nonobviousness where, as here, the rejection is based on the cited references' collective teachings. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Therefore, we are not persuaded that the Examiner erred in rejecting claim 1, and claims 2-20 not argued separately with particularity. 4 CONCLUSION The Examiner did not err in rejecting claims 1-20 underÂ§ 103. DECISION The Examiner's decision rejecting claims 1-20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 4 Should prosecution reopen after this decision, we leave to the Examiner to determine whether claim 1 recites patent-eligible subject matter under Â§ 101 under the framework in Alice Corp. v. CLS Bank Int'!, 134 S.Ct. 2347, 2355-56 (2014). We also leave to the Examiner to consider whether the subjective term "desired range of characteristics" in claim 1 renders the claim indefinite. See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) ("The scope of claim language cannot depend solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention .... Some objective standard must be provided in order to allow the public to determine the scope of the claimed invention."). 6