International Business Machines Corporation

Patent Trials and Appeals Board

Jan 19, 2022

2020004769 (P.T.A.B. Jan. 19, 2022)

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. 15/471,526 03/28/2017 Francoise Alabiso GB920110067US2_8134-0167 2891 112978 7590 01/19/2022 Cuenot, Forsythe & Kim, LLC 20283 State Road 7, Suite 300 Boca Raton, FL 33498 EXAMINER WOLDEMARIAM, AYELE F ART UNIT PAPER NUMBER 2447 NOTIFICATION DATE DELIVERY MODE 01/19/2022 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 FRANCOISE ALABISO, OLIVIER BOEHLER, MICHAEL C. BUZZETTI, FRANK J. DE GILIO, and SEBASTIEN LLAURENCY _____________ Appeal 2020-004769 Application 15/471,526 Technology Center 2400 ____________ Before ST. JOHN COURTENAY III, ERIC S. FRAHM, and CATHERINE SHIANG, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant filed a Request for Rehearing (“Request”) under 37 C.F.R. § 41.52(a)(1) for reconsideration of our Decision on Appeal, mailed October 26, 2021 (“Decision”). The Decision affirmed the Examiner’s rejection of claims 21-35 under 35 U.S.C. § 103 over the cited Takano and Pruyne references. See Final Act. 7-9. We have reconsidered our Decision in light of Appellant’s arguments in the Request, but are not persuaded that we misapprehended or overlooked any points in rendering our Decision. We decline to change or modify the reasoning in our prior Decision for the reasons discussed infra. Appeal 2020-004769 Application 15/471,526 2 We reproduce independent claim 21 below: 1 Representative Claim 21 21. A computer-implemented method for reservation of resources for implementing a service within a distributed networking system, comprising: receiving a request, indicating a project duration having a start time and an end time, for a resource; determining, using a hardware processor, that the requested resource is available for the project duration; determining a utilization level, during a provisioning time prior to the start time of the project, of at least one resource provisioning component; determining that the at least one resource provisioning component has capacity, prior to the start time of the project, to handle provisioning the resource for the request; and reserving, for a provisioning time prior to the start time of the project, the at least one resource provisioning component. Appeal Br. 15. Claims App. (disputed claim terms “resource” and “resource provisioning component” emphasized). In the Request (3-4), Appellant urges that the Board has relied upon a claim construction analysis not presented by the Examiner, which purportedly constitutes a new ground of rejection. See Request 2-3. Appellant further asserts that the Board concluded its analysis “without presenting any claim construction.” Request 4. As noted in our Decision, “we find this appeal turns upon the claim construction accorded to the claim 21 terms: ‘resource’ and ‘resource 1 We note that our Decision contained a typographical error in that claim 1 on page 2 of our Decision should have been correctly labeled as claim 21. Appeal 2020-004769 Application 15/471,526 3 provisioning component.’” Decision 6. We further found that “Appellant has not provided definitions in the claims, or in the Specification, that provide an artisan with notice of a special or uncommon meaning for the disputed claim terms ‘resource’ and ‘resource provisioning component.’ Claim 21.” Decision 8. We find Appellant’s contentions in the Request are misplaced, because it is the Appellant’s burden to precisely define the invention, not the PTO’s. See In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). The erroneous premise of Appellant’s Request is best summarized by the last paragraph on page 4: Despite spending nearly all of pages 5-9 presenting a claim constructions analysis, the Board concludes without presenting any claim constructions for the terms “resources” and “resource provisioning component.” Without the Board presenting what the Board believes to be proper claim constructions, the Board cannot conclude that “the Examiner's interpretation ... is not overly broad, unreasonable, or inconsistent with the Specification.” Moreover, even if the Board presented such claim constructions, the Board still could not make the same conclusion since, as noted above, the Examiner has not presented, in the written record, any claim constructions as to these terms. In other words, the Board would be merely speculating as to “the Examiner’s interpretation of the claim terms” since no claim interpretation was presented in either the appealed Second Office Action or the Examiner’s Answer. Request 4. But see Morris at 1056: We decline to attempt to harmonize the applicants’ interpretation with the application and prior art. Such an approach puts the burden in the wrong place. It is the applicants’ burden to precisely define the invention, not Appeal 2020-004769 Application 15/471,526 4 the PTO’s. See 35 U.S.C. § 112 ¶ 2 (“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”). While it is true that the claims were not rejected on the ground of indefiniteness, this section puts the burden of precise claim drafting squarely on the applicant. (emphasis added). Although a patent applicant is entitled to be his or her own lexicographer of patent claim terms, in Ex parte prosecution it must be within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such definitions in the Specification with sufficient clarity to provide a person of ordinary skill in the art with clear and precise notice of the meaning that is to be construed. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (“Although an inventor is indeed free to define the specific terms used to describe his or her invention, this must be done with reasonable clarity, deliberateness, and precision. ‘Where an inventor chooses to be his own lexicographer and to give terms uncommon meanings, he must set out his uncommon definition in some manner within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change.”) (quoting Intellicall, Inc., v. Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992)). As noted in our Decision (pp. 6-9), we consulted Appellant’s Specification and Appellant’s “Summary of Claimed Subject Matter” in the Appeal Brief (p. 2) for context and support as to the intended meanings of the disputed claim terms. See Appeal Br. 2. The “Summary of Claimed Subject Matter” in the Appeal Brief directed us to paragraphs 40, 41, and Appeal 2020-004769 Application 15/471,526 5 43-46 for written description support for the disputed claim 21 terms “resource” and resource provisioning component.” See Appeal Br. 2. As we stated in our Decision: our review of paragraphs 40, 41, and 43-46 of the Specification finds the term “resource” is mentioned only in paragraph 40, and is not expressly defined: “A resource request may be received 301. The method may determine 302 whether requested resources are available at the requested time. If the requested resources are not available, the request will be denied 303.” Spec. ¶ 40 (emphasis added). From this description (id.), we find no limiting definition of the disputed claim term “resources.” Claim 21. We find paragraphs 40-46 of the Specification are silent regarding any mention[] of the disputed claim term “resource provisioning component.” Nor are Figures 2-4 helpful regarding any definitions of the disputed claim terms. Although Figure 3 mentions receiving a resource request (301) and determining if resources are available (302), there is no definition of what a “resource” actually is. Decision 7. As also noted in our Decision (p. 8, n.5) “The burden of directing us to sufficient written description support for claimed subject matter is Appellant’s burden, not ours. See 37 C.F.R. § 41.37(c)(1)(iii) (‘Summary of claimed subject matter.’).” Nevertheless, we searched Appellant’s Specification and sua sponte found support for the claim 21 term “resource provisioning component” in paragraph 21 of the Specification, as indicated in our Decision: Because Appellant’s Specification (e.g., paragraph 21) qualifies that “[r]esource provisioning components are referred to generally as Managed Through Servers (MTS)” (emphasis added), we conclude the claimed “resource provisioning component” does not have to be an MTS. Nor does the Appeal 2020-004769 Application 15/471,526 6 language of claim 21 (or any other claim) require that the recited “resource provisioning component” must be implemented in hardware, so as to exclude a reading on a virtual machine, as found by the Examiner. See Ans. 8. Accordingly, we find the description of a “resource provisioning component” in paragraph 21 of the Specification is not a limiting definition, per se, but rather is a description of various non-limiting, preferred exemplary embodiments (such as an MTS). In the alternative, Appellant has not established in the record a common or plain meaning for the claim terms “resource” and “resource provisioning component,” for example, by providing a dictionary definition that is consistent with the Specification. In addition, there is no declaration of record to consider as evidence regarding the intended metes and bounds of the claimed “resources” and “at least one resource provisioning component.” Claim 21 (emphasis added). Decision 9. Although we have considered Appellant’s arguments in the Request, we decline to modify the basis for our Decision: Therefore, on this record, and based upon a preponderance of the evidence, we conclude that the Examiner’s interpretation of the claim terms “resources” and “at least one resource provisioning component” is not overly broad, unreasonable, or inconsistent with the Specification, given the lack of clarity in the record regarding the specific characteristics that would distinguish these terms over the cited prior art. See Ans. 8. Decision 9. We also disagree with Appellant’s contention in the Request that our claim analysis in our Decision rises to the level of a new ground of rejection, because claim interpretation is the first step in any meaningful analysis, consistent with our statutory responsibility as a Board to “review adverse decisions of examiners upon applications for patents pursuant to section 134(a)” 35 U.S.C. § 6(b)(1). Appeal 2020-004769 Application 15/471,526 7 Our review necessarily requires reading the claim limitations that are disputed by Appellant on the corresponding features found by the Examiner in the cited prior art. We then determine whether the Examiner’s claim interpretation is reasonable, in light of any limiting definitions found in the claims, or in the Specification, and consistent with any corresponding context provided by Appellant in the Specification. To require claim analysis by the Board to be designated a new ground of rejection would frustrate the purpose of the Administrative Procedure Act (APA), and any meaningful PTAB administrative review of the claim terms disputed by Appellant on appeal. Further, Appellant does not specifically explain in the Request how the Board’s claim analysis changed the thrust of the rejection based upon the prior art teachings cited by the Examiner.2 The Board reviews appealed rejections for reversible error based upon the arguments and evidence Appellant provides for each issue identified by Appellant. See 37 C.F.R. § 41.37(c)(1)(iv) (2013); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). [A]ll that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection 2 The thrust of the Board’s rejection changes when “it finds facts not found by the examiner . . . and these facts are the principal evidence upon which the Board’s rejection was based . . . Accordingly, fairness dictates that the applicant . . . should be afforded an opportunity to respond to the Board’s new rejection.” In re Leithem, 661 F.3d 1316, 1320 (Fed. Cir. 2011) citing Kumar, 418 F.3d at 1368. Appeal 2020-004769 Application 15/471,526 8 and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of [35 U.S.C.] § 132. Jung, 637 F.3d at 1363. Based upon our review of the record, we find the Examiner met the the notice requirement for a prima facie case, pursuant to 35 U.S.C. § 132(a). If this initial burden is met, the burden of coming forward with evidence or argument shifts to Appellant. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Obviousness is then determined on the basis of the evidence as a whole and the relative persuasiveness of the arguments. Id. The Board reviews the fact finding by the Examiner using a preponderance of the evidence (more likely than not) standard. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985). In reaching our Decision, we need only determine whether the Examiner’s reading of the disputed claim terms on the corresponding features found in the cited references is reasonable,3 and is supported by a preponderance of the evidence. We again emphasize that it is the Appellant’s burden to precisely define the invention, not the PTO’s. See Morris, 127 F.3d at 1056. Our reviewing court recognizes that the Board need not recite and agree with the Examiner’s rejection in haec verba to avoid issuing a new ground of rejection: Under the Act [APA], an applicant for a patent who appeals a rejection to the Board is entitled to notice of the factual and legal bases upon which the rejection was based. 5 U.S.C. § 554(b)(3). The Board’s rules are in accord and provide that when the Board relies upon a new ground of rejection not relied upon by the 3 See Morris, 127 F.3d at 1055 (“The question then is whether the PTO’s interpretation of the disputed claim language is ‘reasonable.’”). Appeal 2020-004769 Application 15/471,526 9 examiner, the applicant is entitled to reopen prosecution or to request a rehearing. See 37 C.F.R. § 41.50(b). The Board need not recite and agree with the examiner’s rejection in haec verba to avoid issuing a new ground of rejection. “[T]he ultimate criterion of whether a rejection is considered ‘new’ in a decision by the [B]oard is whether [applicants] have had fair opportunity to react to the thrust of the rejection.” In re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976) (holding no new ground of rejection when the Board relied on the same statutory basis and the same reasoning advanced by the examiner). In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011). On this record, we have agreed with the Examiner’s broader reading of the disputed claim 21 terms “resource” and “resource provisioning component,” versus the narrower construction Appellant attempts to impute by Attorney argument.4 Thus, we have adopted the Examiner’s broader interpretation of the claim terms in dispute. Moreover, our reviewing court has specifically “held that the Board may adopt a claim construction of a disputed term that neither party proposes without running afoul of the APA.”5 Qualcomm Incorporated v. Intel Corporation, 6 F.4th 1256, 1262 (Fed. Cir. 2021) (citing Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1034 (Fed. Cir. 2018) (rejecting argument that Board violated patent owner’s “procedural rights by adopting a claim construction that neither party proposed”)); see also WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1328 (Fed. Cir. 2018) (“[T]he Board is 4 For example, Appellant argues that that a “resource provisioning component is a hardware component that deploys a particular service.” Appeal Br. 9 (emphasis added); see also Decision 5. 5 See the Administrative Procedure Act (APA), 5 U.S.C. § 551 et seq. (1946). Appeal 2020-004769 Application 15/471,526 10 not bound to adopt either party’s preferred articulated construction of a disputed claim term.”). This legal guidance is applicable here, even though an Ex parte proceeding is a single party before the Office, and the Examiner (who represents the Office) is not a “party” to any proceeding. As also stated in our Decision (p. 10): To the extent that the scope of any claims on appeal is being construed broader by the Examiner or the Board than the interpretation imputed by Appellant’s arguments in the Briefs, we emphasize that, because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). See also Morris, 127 F.3d at 1057 (“when the examiner renewed the rejection the applicants had an obligation to either demonstrate that the examiner’s interpretation of the claim language was unreasonable or amend their claim to distinguish the prior art. This they did not do.”) (emphasis added). For at least the aforementioned reasons, we find unavailing Appellant’s’ arguments in the Request that our claim analysis in our Decision rises to the level of a new ground of rejection. Accordingly, on this record, and based upon a preponderance of the evidence, we are not persuaded of error regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness for all claims 21-35 on appeal, as rejected under § 103 over the cited Takano and Pruyne references. Appeal 2020-004769 Application 15/471,526 11 CONCLUSION We have considered all of the arguments raised by Appellant in the Request, but Appellant has not persuaded us that we misapprehended or overlooked any points in rendering our Decision. We have granted Appellant’s request to the extent that we have reconsidered our Decision, but we deny the Request with respect to making any changes therein, except that we modify our Decision only to correct certain Errata listed below: Errata (1) We modify and correct the typographical error on page 2 of our Decision in which we change the heading “Representative Claim 1” to read “Representative Claim 21” and we likewise change the claim number “1” on the first line of the claim to read “21.” (2) On page 7, second paragraph, second line, of our Decision, we modify and correct the typographical error and change the word “mentioned” to read “mention.” Outcome of Decision on Rehearing: Claims 35 U.S.C. § References/Basis Denied Granted 21-35 103 Takano, Pruyne 21-35 Appeal 2020-004769 Application 15/471,526 12 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C. § References/Basis Affirmed Reversed 21-35 103 Takano, Pruyne 21-35 See 37 C.F.R. § 41.52(b) (no time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)). DENIED