Avaya Inc.

Patent Trials and Appeals Board

Jun 24, 2021

2019006297 (P.T.A.B. Jun. 24, 2021)

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.
14/670,296 03/26/2015 Kurt Haserodt 4366-697 6552
48500 7590 06/24/2021
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
CHANG, JULIAN
ART UNIT PAPER NUMBER
2455
NOTIFICATION DATE DELIVERY MODE
06/24/2021 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):
cjacquet@sheridanross.com
edocket@sheridanross.com
pair_Avaya@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte KURT HASERODT, WILLIAM T. WALKER,
and BENNY ELLIS
________________

Appeal 2019-006297
Application 14/670,296
Technology Center 2400
________________

Before ALLEN R. MACDONALD, BARBARA A. BENOIT, and
RUSSELL E. CASS, Administrative Patent Judges.

CASS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
The present panel of the Board previously affirmed the Examiner’s
final rejection of claims 1–20 under 35 U.S.C. § 103. See Ex parte
Haserodt, Appeal No. 2019-006297 (PTAB Apr. 7, 2021) (“Decision”).
Appellant1 now files a Request for Rehearing (dated May 20, 2021) (“Req.
Reh’g”) under 37 C.F.R. § 41.52 requesting that the Board reconsider the
decision affirming the rejection of the noted claims.
We deny Appellant’s request for rehearing.

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant lists Avaya, Inc. as the real party in interest. Appeal Brief
filed February 3, 2019 (“Appeal Br.”) 2.
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BACKGROUND
In the Decision, we affirmed the Examiner’s rejection of claims 1–16
and 19 under 35 U.S.C. § 103 as being unpatentable over Goin2 in view of
Arigaya3, claims 17 and 20 under 35 U.S.C. § 103 as being unpatentable
over Goin and Arigaya further in view of Saha4 and Saletore5, and claim 18
under 35 U.S.C. § 103 as being unpatentable over Goin and Arigaya in view
of Davis.6 Decision 11.
ANALYSIS
Appellant raises seven arguments in its Request for Rehearing. We
consider each of these arguments below.
Appellant’s Argument 1 – Application of the BRI Standard
Appellant first argues that the Decision improperly applies the
broadest reasonable interpretation (BRI) standard in interpreting the claims,
and should instead have applied the claim construction standard set forth in
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Req.
Reh’g 2–3. To support its argument, Appellant cites to the Final Rule
published in the Federal Register at 2018-22006, Vol. 8, No. 197, dated
October 11, 2018 (the “Final Rule”). Id. at 2; see Changes to the Claim
Construction Standard for Interpreting Claims in Trial Proceedings Before
the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
(amending 37 C.F.R. § 42.100(b) effective November 13, 2018). The Final
Rule, however, explains that its replacement of the BRI standard with the

2 US 2005/0289071 A1, published Dec. 29, 2005.
3 US 2016/0277316 A1, published Sept. 22, 2016.
4 US 2006/0037016 A1, published Feb. 16, 2006.
5 US 2005/0188055 A1, published Aug. 25, 2005.
6 US 2012/0117571 A1, published May 10, 2012.
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Phillips standard applies to “inter partes review (‘IPR’), post-grant review
(‘PGR’), and the transitional program for covered business method patents
(‘CBM’) proceedings before the Patent Trial and Appeal Board (‘PTAB’ or
‘Board’).” Id. at 51,340. The Final Rule does not alter the claim
construction standard for ex parte appeals from Examiner actions, like the
present case. Id. Consequently, we do not agree with Appellant’s argument
that the Decision applies an improper claim construction standard.
Appellant’s Arguments 2 and 3 – Construction of the Term “an
Identical Set of Attributes for Each Member Server of the First
Cluster”
In the Decision, we found that Goin teaches a cluster having “an
identical set of attributes for each member server of the first cluster”
because, inter alia, Goin provides an example of a first cluster that requires
all of its severs to have the Oracle and SAP business database software
programs installed, and another cluster that requires all of its servers to have
the software development programs Java and C++ installed, as shown in
Figure 3, reproduced below:

Decision 4–5.
In our Decision, we rejected Appellant’s argument that Cluster 1 in
Figure 3 did not have “an identical set of attributes for each member server”
because Server B included SQL in addition to the common set of Oracle and
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SAP. Decision 7–8. Instead, we agreed with the Examiner that a reasonable
interpretation of the claim language was that the “identical set of attributes”
merely sets forth the attributes a server must possess in order to be a member
of the group, and does not require that every attribute of every server must
be identical. Id. at 7. We also determined that this interpretation was
supported by Appellant’s Specification, which allows a cluster to be “open”
so that applications beyond the ones required by the cluster may be installed.
Id. at 7–8 (citing Spec. 2:31–37 (“A cluster can be defined by many different
attributes, including . . . whether or not additional applications beyond the
listed and optional applications can be installed (e.g., whether the cluster is
'open' (or any application permitted) or 'closed' (or blocked from installing
non-listed applications.”))).
Appellant makes two arguments in the Rehearing Request relating to
this issue. First, Appellant argues that “the ordinary and customary meaning
(see, Phillips) of ‘identical’ does not mean that the set of A and B is
‘identical’ to the set of A, B, and C.” Req. Reh’g 3. We do not find this
argument persuasive. As discussed above, the BRI standard, rather than the
Phillips standard, applies to the present ex parte proceeding. Appellant
provides no explanation in its Request for why our interpretation of the
claim language at issue is incorrect under the proper BRI standard. See id. at
3–4.
Second, Appellant argues that we “misapprehended the law in
applying the language from Katz Interactive Call Processing Patent Litig.,
639 F.3d 1303, 1324 (Fed. Cir. 2011)” that “there is a strong presumption
against a claim construction that excludes a disclosed embodiment.” Req.
Reh’g 5. Appellant asserts that Katz and a decision upon which it relies
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involved claim terms that were ambiguous, and “the Board Decision does
not proffer that the meaning of the term ‘identical applications’ of the
‘identical attributes’ is ambiguous or has multiple definitions, as was the
case in In re Katz.” Id. at 8. Appellant additionally alleges that our
interpretation is not “logically sound” because “permitting an application to
be installed does not equate to actually having the application installed” or
“installing the application on some, but less than all, servers.” Id. at 8.
We do not agree with Appellant’s argument. Based on the intrinsic
evidence, the claim language “an identical set of attributes for each member
server of the first cluster” has at least two possible interpretations: (1) the
members of the cluster must have a common set of identical applications,
but individual servers may include one or more additional applications
beyond the common set (which includes the “open” and “closed”
embodiments); and (2) the members of the cluster have a common set of
identical applications, and individual servers cannot include any additional
applications beyond the common set (which includes the “closed”
embodiment but excludes the “open” embodiment). See Spec. 2:31–3:7;
Examiner’s Answer mailed June 24, 2019 (“Ans.”) 5. Because the claim
language has multiple interpretations, the principle in Katz that “there is a
strong presumption against a claim construction that excludes a disclosed
embodiment” is relevant here. See Katz at 324.
Additionally, we disagree with Appellant that interpreting the claims
to encompass both the “open” and “closed” embodiments is not reasonable
or “logically sound.” See Req. Reh’g 8. Appellant does not point to an
express definition of “identical” in the Specification, much less one that
would exclude the “open” embodiment described in the Specification.
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Appellant also does not dispute that the Specification describes the “open”
embodiment as one in which a cluster can have additional applications
installed beyond the applications listed in the attributes. Moreover,
Appellant does not point to anything in the Specification suggesting that the
invention of using of member servers of a cluster with “an identical set of
attributes” does not apply to the “open” embodiment. Id. at 4–8. We are not
persuaded that the interpretation of the claim applied by the Examiner and
relied on in our Decision is improper under the BRI standard which applies
here.7
Appellant’s Argument 4 – The Board’s Reliance on the “Comprising”
Language in the Claims
In our Decision, we determined that Arigaya taught first and second
clusters (Cluster 1 and Cluster n in Figure 5) “wherein the first and second
sets of cluster attributes are different,” as recited in claim 1. Decision 8. We
rejected Appellant’s argument that the presence of another cluster (Cluster 2
in Figure 5) that includes applications that overlap with those of Cluster 1
takes Arigaya out of the claims. Id. As we explained, claim 1 uses the
transitional phrase “comprising,” and therefore does not preclude the
presence of additional clusters in the system which may have similar or
overlapping applications. Id.
In its rehearing request, Appellant disagrees with the Board’s reliance
on the transitional phrase “comprising” in claim 1, and argues that, “if such a
rationale were true, there would be only one patent ever granted and it would

7 We further note that even if we agreed with Appellant’s construction of
“identical” as excluding “open” embodiments which allowed the installation
of additional applications, this limitation is taught by Arigaya, as discussed
below and on pages 9–10 of the Decision.
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be the first patent that recited a claim using ‘comprising.’” Req. Reh’g 9–
10.
We disagree. It is well-settled that the transitional term “comprising”
is open-ended and does not exclude additional, unrecited elements. CIAS,
Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007)
(“‘comprising’ is open-ended and does not exclude additional, unrecited
elements or method steps”); MPEP § 2111.03 (9th ed. rev. 10.2019 Jun.
2020) (“The transitional term ‘comprising’ . . . is inclusive or open-ended
and does not exclude additional, unrecited elements or method steps.”). The
Decision therefore properly applied this principle in interpreting the claims.
Appellant’s Arguments 5 and 6 – Enablement of Arigaya
In our Decision, we rejected Appellant’s argument that “Arigaya fails
to enable that which is proffered to maintain the rejection,” finding that
Appellant failed to sufficiently show that Arigaya’s disclosure is non-
enabling and, in any event, enablement is not necessary for a § 103 rejection.
Decision 8.
In its rehearing request, Appellant makes two arguments concerning
this issue. Req. Reh’g 10–12. First, Appellant argues that Arigaya is not
enabled because Arigaya “provided examples that both do, and do not,
disclose server clusters with different attributes and running different
applications,” but “the examples were without explanation or reasoning that
would lead a practitioner to cho[o]se one over the other.” Id. at 10. Thus,
according to Appellant, “no teaching is provided and, at most, the
practitioner is left to undue experimentation.” Id. Second, Appellant
disagrees with the proposition that enablement is not necessary for a § 103
rejection. Id. at 11–12.
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We disagree on both counts. First, enablement does not require that a
disclosure must weigh the pros and cons of different alternative approaches,
as Appellant suggests, but rather merely requires that the reference “teach
one of ordinary skill in the art to make or carry out the claimed invention
without undue experimentation.” Elan Pharm., Inc. v. Mayo Found. For
Med. Educ. and Res., 346 F.3d 1051, 1054 (Fed. Cir. 2003). Second, our
reviewing court has make clear that “[u]nder § 103 . . . a reference need not
be enabled,” and “qualifies as prior art, regardless, for whatever is disclosed
therein.” Amgen Inc. v. Hoeschst Marion Roussel, Inc., 314 F.3d 1313, 1357
(Fed. Cir. 2003). Therefore, we do not find Appellant’s arguments
persuasive.
Appellant’s Argument 7 – Teaching of Arigaya
Appellant also argues that Arigaya fails to teach identically installed
applications on member servers of a cluster. Req. Reh’g 12–15. We
disagree.
In our Decision, we found that Arigaya discloses clusters each made
up of “calculation nodes,” which the Examiner and Appellant agreed are
“member servers.” Arigaya Fig. 1, ¶ 42; Appeal Br. 9 (referring to “each
member server (Arigaya’s ‘node’)”); Ans. 4 (“Arigaya discloses a cluster of
calculation nodes (i.e., servers)”). We also found that Arigaya would have
suggested to one of ordinary skill the use of a cluster with each member
server (Arigaya’s calculation nodes 22 in Figure 1) having an identical
installed application, based on: (1) its disclosure of the cluster’s
“application ID” as “the identification information of the application
implemented in the cluster” (Arigaya ¶ 57); (2) its statement that “[t]he
application ID may be information indicative of a process which can be
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executed by the cluster” (id.), and (3) its disclosure that “the calculation
nodes 22 [(member servers)] belonging to one of the clusters 20 can execute
a process related to a common function common to these calculation nodes
22” (id. ¶ 42). We also pointed to Figure 5 as depicting Cluster 1 with each
calculation node (member server) running the “scan server” application, and
Cluster n with each calculation node (member server) running the “web
server” application. Arigaya Fig. 5, ¶¶ 42, 57.
Appellant makes several arguments in this portion of its rehearing
request. We do not find any of them persuasive, as discussed further below.
Appellant first argues that Arigaya does not expressly state that
servers within a cluster have identical installed applications. Id. at 13. The
question under § 103, however, is not whether a prior art reference expressly
discloses a claim element, but rather is what the reference would have taught
to one of ordinary skill in the art. Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807–08 (Fed. Cir. 1989) (Unlike anticipation, “which requires that
a single reference describe each and every element of a claimed invention,
the question under 35 [U.S.C. §] 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art” at the time of the invention. (quoting In re Lamberti, 545 F.2d
747, 750 (CCPA 1976)). Therefore, we are not persuaded by this argument.
Appellant next argues that the rejection is deficient because Arigaya’s
Figure 5 discloses “values to be stored in ‘memory unit 13’” rather than
“identification information of the application implemented in the cluster.”
Id. at 13–14. We do not agree. Although Figure 5 discloses the contents of
a memory unit, we find that one of ordinary skill would have understood that
the “application ID” in this memory unit would have indicated an
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application that can be executed by all of the member servers of the cluster,
and therefore would have suggested having the same application installed in
each member server of the cluster. See Arigaya ¶ 57 (disclosing the cluster’s
“application ID” as “the identification information of the application
implemented in the cluster,” and explaining that “[t]he application ID may
be information indicative of a process which can be executed by the
cluster”).
Next, Appellant argues that Arigaya does not teach that the
“Application ID” in Figure 5 “is an all-exclusive list of applications installed
on each server,” but rather simply provides information that “‘may’ indicate
applications that can be executed.” Req. Reh’g 14; see id (“knowing which
applications may be executed similarly fails to disclose any teaching that the
installed applications within the cluster are identical”). We do not find this
argument persuasive. Arigaya discloses the “application ID” as “the
identification information of the application implemented in the cluster.”
Arigaya ¶ 57. Appellant has not pointed to anything in Arigaya that
discourages use of the application specified by the “application ID” or
suggests other applications besides those identified by the “application ID”
are implemented in a cluster.
Finally, Appellant argues that “the fact that a node may execute a
‘common function’ fails to disclose” that “the installed applications within
the cluster are identical.” Req. Reh’g 14. Our Decision, however, did not
rely on this statement alone, but rather considered it in combination with
other portions of Arigaya’s disclosure, including that each cluster includes
an application ID that “may be information indicative of a process which can
be executed by the cluster.” See Arigaya ¶ 57, Fig. 5. Appellant’s
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argument, therefore, does not persuade us that we erred in our original
Decision.
CONCLUSION
For the foregoing reasons, Appellant’s request for rehearing is denied.
DECISION SUMMARY
Outcome of Decision on Rehearing:
Claims 35 U.S.C. § Reference(s)/Basis Denied Granted
1–16, 19 103 Goin, Arigaya 1–16, 19
17, 20 103 Goin, Arigaya,
Saha, Saletor
17, 20
18 103 Goin, Arigaya,
Davis
18
Overall
Outcome
1–20

Final Outcome of Appeal after Rehearing:
Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–16, 19 103 Goin, Arigaya 1–16, 19
17, 20 103 Goin, Arigaya,
Saha, Saletor
17, 20
18 103 Goin, Arigaya,
Davis
18
Overall
Outcome
1–20

DENIED