Ex Parte AGARWAL et al

Patent Trial and Appeal Board

Aug 2, 2018

13099504 (P.T.A.B. Aug. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/099,504 05/03/2011 SHIV ALI AGARWAL
79230 7590 08/06/2018
Law Office of Jim Boice
3839 Bee Cave Road
Suite 201
West Lake Hills, TX 78746
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.
END920110029US 1 1959
EXAMINER
AUSTIN, JAMIE H
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
08/06/2018 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):
J ennifer@BoiceIP.com
Emily@BoiceIP.com
Jim@BoiceIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIV ALI AGARWAL, SAEED BAGHERI, JARIR K. CHAAR,
KRISHNA C. RATAKONDA, and BIKRAM SENGUPTA
Appeal2016-005517
Application 13/099 ,504
Technology Center 3600
Before BRADLEY W. BAUMEISTER, AMBER L. HAGY, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-3, 5-7, 9-11, and 13-15, i.e., all pending claims. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as International Business
Machines Corporation. App. Br. 2.
Appeal 2016-005517
Application 13/099,504
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention "relates to sharing
resources between different systems." Spec. ,r 1. 2 The Specification
explains that: (1) a "cost of collaboration between two cells in different
service centers is defined"; (2) "the cost is a 3-Tuple that consists of a
monetary cost, a makespan cost, and a skill misalignment cost associated
with the collaboration"; (3) a "processor creates multiple collaboration
matrices based on different permutations of the 3-Tuple"; ( 4) an "optimal
collaboration function derived from the multiple collaboration matrices is
identified"; and ( 5) "the task is assigned to two optimal cells identified in the
optimal collaboration function." Abstract.
Exemplary Claims
Independent claims 1 and 9 exemplify the claims at issue and read as
follows (with formatting added for clarity):
1. A computer implemented method of facilitating optimal
collaboration between cells from different service centers for
delivering a service to a customer, the computer implemented
method comprising:
a processor defining a cost of collaboration between two
cells in different service centers,
wherein each of the two cells is a group of
resources capable of executing a task that is a same task,
2 This Decision uses the following abbreviations: "Spec." for the
Specification, filed May 3, 2011; "Final Act." for the Final Office Action,
mailed April 10, 2015; "App. Br." for the Appeal Brief, filed October 13,
2015; "Ans." for the Examiner's Answer, mailed February 29, 2016; and
"Reply Br." for the Reply Brief, filed April 29, 2016.
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wherein the group of resources comprises
hardware resources,
wherein said two cells in different service centers
collaborate by working together on a single work packet,
wherein the cost is a 3-Tuple that consists of a
monetary cost, a makespan cost, and a skill misalignment
cost associated with said collaboration,
wherein the makespan cost describes an
amount of time required to complete the task when
the two cells collaborate on the single work packet,
and
wherein the skill misalignment cost
describes how much the amount of time required
to complete the task is affected when the two cells
collaborate on the single work packet due to
different capabilities of the two groups of
hardware resources;
the processor receiving a first message from a first group
of hardware resources and a second message from a second
group of hardware resources, wherein the first message and the
second message respectively describe the first group of
hardware resources and the second group of hardware
resources; and
the processor deriving the 3-Tuple from the first and
second messages;
the processor establishing acceptable cost ranges for the
3-Tuple based on constraints defined by an enterprise policy;
the processor creating multiple collaboration matrices
based on different permutations of the 3-Tuple;
the processor identifying an optimal collaboration
function derived from one of the multiple collaboration
matrices, wherein the optimal collaboration function expends a
lower overall monetary cost, makespan cost, and skill
misalignment cost as compared to other collaboration functions
derived from the multiple collaboration matrices; and
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the processor assigning the task to two optimal cells
identified in the optimal collaboration function,
wherein assigning the task to the two optimal cells
optimizes an operation of the first group of hardware resources
and the second group of hardware resources by reducing the
makespan cost and the skill misalignment cost, such that an
amount of time that the first group of hardware resources and
the second group of hardware resources use to complete the
task is minimized.
9. A computer system comprising:
a central processing unit (CPU), a computer readable
memory, and a computer readable storage media;
first program instructions to define a cost of collaboration
between two cells in different service centers, wherein each of
the two cells is a group of resources capable of executing a
same task,
wherein the group of resources comprises
hardware resources, and
wherein the cost is a 3-Tuple that consists of a
monetary cost, a makespan cost, and a skill misalignment
cost associated with said collaboration;
second program instructions to receive a first signal from
a first group of hardware resources and a second signal from a
second group of hardware resources, wherein the first signal
and the second signal respectively describe the first group of
hardware resources and the second group of hardware
resources;
third program instructions to derive the 3-Tuple from the
first and second signal [sic];
fourth program instructions to establish acceptable cost
ranges for the 3-Tuple based on constraints defined by an
enterprise policy;
fifth program instructions to create multiple collaboration
matrices based on different permutations of the 3-Tuple;
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Application 13/099,504
sixth program instructions to identify an optimal
collaboration function derived from one of the multiple
collaboration matrices, wherein the optimal collaboration
function expends a lower overall monetary cost, makespan cost,
and skill misalignment cost as compared to other collaboration
functions derived from the multiple collaboration matrices; and
seventh program instructions to assign the task to two
optimal cells identified by the optimal collaboration function;
and
wherein the first, second, third, fourth, fifth, sixth, and
seventh program instructions are stored on the computer
readable storage media for execution by the CPU via the
computer readable memory.
App. Br. 28-29, 31-32 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence ofunpatentability under 35 U.S.C. § I03(a), the
Examiner relies on the following prior art:
Maloney et al. ("Maloney")
Riley et al. ("Riley")
Wu et al. ("Wu")
Huh
us 5,684,870
US 2002/0123983 Al
US 7,023,979 Bl
US 2011/0022697 Al
Nov. 4, 1997
Sept. 5, 2002
Apr. 4, 2006
Jan. 27, 2011
J. Alberto Espinosa & Erran Carmel, The Impact of Time Separation on
Coordination in Global Software Teams: A Conceptual Foundation,
SOFTWARE PROCESS IMPROVEMENT & PRACTICE 1-19 (2004) ("Espinosa")
Mehmet Tolga Cezik & Pierre L'Ecuyer, Staffing Multiskill Call Centers via
Linear Programming and Simulation, 54 MANAGEMENT SCIENCE 310-23
(2008) ("Cezik")
0. Zeynep Aksin et al., Call Center Outsourcing Contract Analysis and
Choice, 54 MANAGEMENT SCIENCE 354---68 (2008) ("Aksin")
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Production Operations Management, ZeePedia.com (2009) ("ZeePedia"),
http://www.zeepedia.com/read. php? sequencing_assumptions_to_priority _
rules_scheduling_service_operations_production_operations_
management&b=5 5&c=4 2
Operations Scheduling Supplement J (2010) ("Operations Scheduling"),
http://wps.prenhall.com/wps/media/objects/7117 /7288732/krm9e_SuppJ.pdf
The Rejections on Appeal
Claims 1-3, 5-7, 9-11, and 13-15 stand rejected under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter. Final Act. 9-10;
Ans. 2.
Claims 1-3 and 13-15 stand rejected under 35 U.S.C. § 112 ,r 1 as
failing to comply with the written-description requirement. 3 Final
Act. 10-12; Ans. 2.
Claims 1-3, 5-7, 9-11, and 13-15 stand rejected under 35 U.S.C.
§ 112 ,r 2 as indefinite for failing to particularly point out and distinctly
claim the subject matter regarded as the invention. Final Act. 12; Ans. 2.
Claims 1 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wu, Cezik, Maloney, Operations Scheduling, ZeePedia,
and Huh. Final Act. 13-19; Ans. 3.
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wu, Cezik, Maloney, Operations Scheduling, ZeePedia,
Huh, and Aksin. Final Act. 19-21; Ans. 3.
3 The Leahy-Smith America Invents Act ("AIA"), Pub. L. No. 112-29,
125 Stat. 284 (2011), amended 35 U.S.C. § 112, e.g., to rename§ 112's
subsections. Because Application 13/099,504 was filed before the AIA's
effective date for applications, this Decision refers to the pre-AIA version of
§ 112.
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Claims 5 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wu, Cezik, Huh, Operations Scheduling, and ZeePedia.
Final Act. 21-23; Ans. 3.
Claims 6, 7, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wu, Cezik, Huh, Operations Scheduling, ZeePedia, and
Aksin. Final Act. 23-26; Ans. 3.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Wu, Cezik, Maloney, Operations Scheduling, ZeePedia, Huh, and
Riley. Final Act. 26-27; Ans. 3--4.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Wu, Cezik, Maloney, Operations Scheduling, ZeePedia, Huh, and
Espinosa. Final Act. 27-29; Ans. 5.
ANALYSIS
We have reviewed the rejections in light of Appellants' arguments
that the Examiner erred. For the reasons explained below, we concur with
the Examiner's conclusions concerning ineligibility under§ 101 and
unpatentability under§ 103(a). But we disagree with the Examiner's
determinations under§ 112 ,r 1 and§ 112 ,r 2. We adopt the Examiner's
findings and reasoning in the Final Office Action and Answer that relate to
the§ 101 and§ 103(a) rejections. We add the following to address and
emphasize specific findings and arguments.
The§ 1 OJ Rejection of Claims 1-3, 5-7, 9-11, and 13-15
INTRODUCTION
The Patent Act defines patent-eligible subject matter broadly:
"Whoever invents or discovers any new and useful process, machine,
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manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. In Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice
Corp. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014), the Supreme
Court explained that § 101 "contains an important implicit exception" for
laws of nature, natural phenomena, and abstract ideas. See Diamond v.
Diehr, 450 U.S. 175, 185 (1981 ). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter:
First, "determine whether the claims at issue are directed to" a patent-
ineligible concept, such as an abstract idea. Alice, 134 S. Ct. at 2355. If so,
"consider the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements" add enough to
transform the "nature of the claim" into "significantly more" than a patent-
ineligible concept. Id. at 2355, 2357 (quoting Mayo, 566 U.S. at 79); see
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257
(Fed. Cir. 2016).
Step one in the Mayol Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Step two involves
the search for an "inventive concept." Alice, 134 S. Ct. at 2355; Elec. Power
Grp., 830 F.3d at 1353. An "inventive concept" requires more than "well-
understood, routine, conventional activity already engaged in" by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F .3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80). But "an
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inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces." BASCOM Global Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
Under step two, "an inventive concept must be evident in the claims."
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
MAYO/ALICE STEP ONE
The Examiner determines that the claims are directed to an abstract
idea, i.e., "facilitating collaboration." Final Act. 7; Ans. 5, 14. The
Examiner explains that the abstract idea constitutes "methods of organizing
human activity" and an "idea of itself." Ans. 5, 14; see Final Act. 7, 10.
Appellants argue that the "present invention" is not directed to an
abstract idea because "it is inextricably tied to computer technology." See
App. Br. 9--10. In particular, Appellants contend that the "present
invention" requires a "processor" that "receives 'a first message from a first
group of hardware resources and a second message from a second group of
hardware resources' that 'respectively describe the first group of hardware
resources and the second group of hardware resources'." Id. at 10. Further,
Appellants assert that "exemplary Claim 1 utilizes a skill misalignment cost
that 'describes how much the amount of time required to complete the task is
affected when the two cells collaborate on the single work packet due to
different capabilities of the two groups of hardware resources'." Id. at 9--10.
Appellants' arguments do not persuade us of Examiner error because
"not every claim that recites concrete, tangible components escapes the
reach of the abstract-idea inquiry." In re TL! Commc'ns LLC Patent Litig.,
823 F.3d 607, 611 (Fed. Cir. 2016). Simply implementing an abstract idea
using a "physical machine" does not impart patent eligibility. See Mayo,
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566 U.S. at 84. In Alice, for example, "[a]ll of the claims [we]re
implemented using a computer." 134 S. Ct. at 2353, 2360.
In addition, the claims at issue cover data collection, communication,
and processing. App. Br. 28-33 (Claims App.); see Ans. 5-7, 9. The
Federal Circuit has ruled that claims covering data collection,
communication, and processing were directed to abstract ideas. See, e.g.,
Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 907---08,
910-11 (Fed. Cir. 2017); Credit Acceptance Corp. v. Westlake Servs.,
859 F.3d 1044, 1047, 1054--56 & n.6 (Fed. Cir. 2017); Intellectual Ventures
I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1339-41 (Fed. Cir. 2017);
Elec. Power Grp., 830 F.3d at 1351-54. Relying on a "processor" to
"perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible." OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1363 (Fed. Cir. 2015).
Moreover, the claims recite a series of steps for reducing collaboration
costs based on a "model of optimized use of resources during collaboration."
App. Br. 28-33 (Claims App.); see Spec. ,r,r 3, 48-54, Fig. 2. The claimed
series of steps resembles the claimed "series of steps instructing how to
hedge risk" in a commodities market in Bilski v. Kappas, 561 U.S. 593, 599
(2010). In Alice, the Supreme Court explained that the claims in Bilski
concerned a method of organizing human activity. Alice, 134 S. Ct. at 2356;
see also Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1367 (Fed. Cir. 2015) (deeming the claim at issue "not meaningfully
different from the ideas found to be abstract in other cases before the
Supreme Court and our court involving methods of organizing human
activity").
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Appellants argue that the "present invention" reduces costs by
minimizing usage of hardware resources and "optimizes the usage of
hardware resources based on their different capabilities." App. Br. 10;
Reply Br. 2. But a claim for a beneficial abstract idea is still an abstract
idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379--80 (Fed. Cir. 2015). The claims here use computer-system
components in their ordinary capacities to achieve an economic objective-
cost reduction. That does not suffice for patent eligibility under Mayo/Alice
step one. See Secured Mail, 873 F.3d at 910-11.
MAYO/ALICE STEP Two
The Examiner determines that the additional elements in the claims
individually and in combination amount to "no more than: mere instructions
to implement the idea on a computer." Final Act. 10; see Ans. 7-8, 11-14.
The Examiner finds that the claims "implement the abstract idea with a
general purpose computer (e.g., a computer processor)" and "require nothing
more than a generic computer system ( e.g. a computer system comprising a
generic processor and a generic associated server) to carry out the abstract
idea." Final Act. 8; Ans. 13. Accordingly, the Examiner reasons that the
claims lack an "inventive concept" sufficient to transform them into
significantly more than a patent-ineligible abstract idea. Final Act. 10;
Ans. 7-8, 11-14.
Appellants argue that the "present invention" provides "significantly
more" to the art because the invention "results in an improvement of the
functioning/operation of the hardware resources." App. Br. 10; Reply Br. 2.
Appellants describe the alleged improvement as follows:
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operations of the first group of hardware resources and the
second group of hardware resources are optimized/improved by
reducing the makespan cost and the skill misalignment cost
associated with the collaboration of the two groups of hardware
resources, such that the amount of time that the first group of
hardware resources and the second group of hardware resources
use to complete the task is minimized.
App. Br. 10.
Appellants' arguments do not persuade us of Examiner error.
Although claim 1 requires "reducing the makespan cost and the skill
misalignment cost, such that an amount of time that the first group of
hardware resources and the second group of hardware resources use to
complete the task is minimized," independent claims 5 and 9 do not include
that requirement. App. Br. 28-32 (Claims App.). In addition, the claims at
issue do not recite an advance in hardware that, for example, causes a
computer itself to operate faster or more efficiently. Instead, the alleged
improvement permits cost reduction by evaluating various costs when
making a business decision concerning collaboration. Further, Appellants
do not direct us to any evidence refuting the Examiner's findings. See App.
Br. 7-10; Reply Br. 2.
As additional elements, the claims recite a "processor" or "central
processing unit," a "memory," "hardware resources," and "storage media."
App. Br. 28-32 (Claims App.). The Specification describes those computer-
system components generically. See Spec. ,r,r 6-13. For example, the
Specification explains that a "storage medium may be ... an electronic,
magnetic, optical, electromagnetic, infrared, or semiconductor system,
apparatus, or device, or any suitable combination" and may include "a
portable computer diskette, a hard disk, a random access memory (RAM),
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a read-only memory (ROM), an erasable programmable read-only memory
(EPROM or Flash memory), an optical fiber, a portable compact disc read-
only memory (CD-ROM), an optical storage device, a magnetic storage
device, or any suitable combination." Id. ,r 7.
Court decisions have recognized that generic computer-system
components operating to collect, communicate, and process data are well
understood, routine, and conventional to a skilled artisan. See, e.g., Alice,
134 S. Ct. at 2360; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
1307, 1318-20 (Fed. Cir. 2016); Versata Dev. Grp., Inc. v. SAP Am.,
Inc.,793 F.3d 1306, 1334 (Fed. Cir. 2015); Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715-16 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014); Cyberfone Sys., LLC v. CNN
Interactive Grp., Inc., 558 F. App'x 988, 993 (Fed. Cir. 2014).
Appellants contend that the "present invention" parallels DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). See
App. Br. 9-10. Appellants misplace their reliance on DDR Holdings.
In DDR Holdings, the Federal Circuit determined that certain claims
satisfied Mayo/Alice step two because "the claimed solution amount[ ed] to
an inventive concept for resolving [a] particular Internet-centric problem,"
i.e., a challenge unique to the Internet. DDR Holdings, 773 F.3d at 1257-59;
see Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (noting that "[i]n DDR Holdings, we held that claims 'directed to
systems and methods of generating a composite web page that combines
certain visual elements of a 'host' website with content of a third-party
merchant' contained the requisite inventive concept"). In DDR Holdings,
the Federal Circuit explained that the patent-eligible claims specified "how
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interactions with the Internet are manipulated to yield a desired result ...
that overrides the routine and conventional sequence of events ordinarily
triggered by the click of a hyperlink." DDR Holdings, 773 F.3d at 1258.
The court reasoned that those claims recited a technological solution
"necessarily rooted in computer technology" that addressed a "problem
specifically arising in the realm of computer networks." Id. at 1257.
According to the Federal Circuit, "DDR Holdings does not apply
when ... the asserted claims do not 'attempt to solve a challenge particular
to the Internet."' Smart Sys. Innovations, LLC v. Chi. Transit Auth.,
873 F.3d 1364, 1375 (Fed. Cir. 2017) (quoting TL! Commc 'ns, 823 F.3d
at 613). The claims here do not attempt to solve a challenge particular to the
Internet and do not contain a similar inventive concept as the patent-eligible
claims in DDR Holdings.
SUMMARY
For the reasons discussed above, Appellants' arguments have not
persuaded us of any error in the Examiner's findings or conclusions under
Mayo/Alice step one or step two. Hence, we sustain the§ 101 rejection of
claims 1-3, 5-7, 9-11, and 13-15.
The§ 112 f 1 Rejection of Claims 1-3 and 13-15
INTRODUCTION
Section 112's written-description requirement serves to "clearly allow
persons of ordinary skill in the art to recognize that [the inventor] invented
what is claimed." Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en bane) (alteration in original) (quoting Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)); see Blue Calypso,
LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016). "[T]he test for
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sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Ariad,
598 F.3d at 1351; Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275,
1296 (Fed. Cir. 2017). The "test requires an objective inquiry into the four
comers of the specification from the perspective of a person of ordinary skill
in the art." Ariad, 598 F.3d at 1351. The written-description requirement
does not, however, "demand any particular form of disclosure" or require
that "the specification recite the claimed invention in haec verba." Id.
at 1352. The analysis for sufficiency of disclosure may consider "such
descriptive means as words, structures, figures, diagrams, formulas, etc."
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
THE EXAMINER'S POSITION
The Examiner determines that the Specification fails to support the
following limitations in claim 1: ( 1) "such that an amount of time that the
first group of hardware resources and the second group of hardware
resources use to complete the task is minimized"; (2) "the processor
receiving a first message from a first group of hardware resources and a
second message from a second group of hardware resources"; and (3) "the
skill misalignment cost describes how much the amount of time required to
complete the task is affected when the two cells collaborate on the single
work packet due to different capabilities of the two groups of hardware
resources." Final Act. 11-12; Ans. 14--17.
DISCUSSION
In the Appeal Brief, i.e., the Summary of Claimed Subject Matter
section and the Arguments section, Appellants cite various portions of the
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Specification as support for limitations (1), (2), and (3) above. See, e.g.,
App. Br. 2-3, 11-12. Based on an analysis of the Specification, we agree
with Appellants that it reasonably conveys to those skilled in the art that
Appellants had possession of limitations (1 ), (2), and (3) above as of the
filing date. See, e.g., Spec. ,r,r 14, 20, 27-31, 44--45, 48, 50-51, 55, Fig. 1.
For instance, for limitation (1) the Specification discusses the time
needed "to complete a job/task/project when two cells collaborate on that
job/task/project" and "minimiz[ing] the time taken to complete the tasks
with respect to" certain cells. Id. ,r,r 31, 48. For limitation (2) the
Specification explains that computer 102 shown in Figure 1 can (a) serve as
a resource center computer, (b) "send and receive network messages" to
communicate with another computer, and ( c) supply signals concerning
hardware "features, availability, cost, etc." Id. ,r,r 14, 20, 55, Fig. 1. Further,
for limitation (3) the Specification notes that the skill misalignment cost may
account for "delay in job completion" when hardware resources with
different capabilities collaborate to complete a task. Id. ,r,r 28, 31, 44,
51, 55.
Because the Specification reasonably conveys to those skilled in the
art that Appellants had possession of claim 1 's subject matter as of the filing
date, we do not sustain the § 112 ,r 1 rejection of claim 1 and its dependent
claims 2, 3, and 13-15.
The§ 112 f 2 Rejection of Claims 1-3, 5-7, 9-11, and 13-15
INTRODUCTION
Section 112's second paragraph requires that the specification
"conclude with one or more claims particularly pointing out and distinctly
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claiming the subject matter which the applicant regards as his invention."
35 U.S.C. § 112 if 2.
Due to the need for "particular[ity ]" and "distinct[ ness ]," claim
language that "is ambiguous, vague, incoherent, opaque, or otherwise
unclear in describing and defining the claimed invention" warrants a
rejection under§ 112 ,r 2. In re Packard, 751 F.3d 1307, 1311, 1313
(Fed. Cir. 2014); see Ex parte McAward, Appeal 2015-006416, 2017 WL
3669566, at *5 (PTAB Aug. 25, 2017) (precedential); see also In re
Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994) (explaining that "[t]he
legal standard for definiteness is whether a claim reasonably apprises those
of skill in the art of its scope"); In re Moore, 439 F.2d 1232, 1235
(CCP A 1971) (requiring "a reasonable degree of precision and particularity"
in claims). Similarly, the Supreme Court has held in a litigation context that
§ 112 ,r 2 "require[s] that a patent's claims, viewed in light of the
specification and prosecution history, inform those skilled in the art about
the scope of the invention with reasonable certainty." Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). Section 112's
definiteness requirement "strikes a 'delicate balance' between 'the inherent
limitations of language' and providing 'clear notice of what is claimed."'
Sonix Tech. Co. v. Publ'ns Int'!, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017)
(quoting Nautilus, 134 S. Ct. at 2129).
THE EXAMINER'S POSITION
The Examiner determines that "the phrase 'skill misalignment cost'
renders the claim[ s] indefinite because it is unclear whether the applicant is
claiming a human skill misalignment cost as described in the specification."
Final Act. 12; see Ans. 17-18. Based on the statement in Specification
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paragraph 31 that "[t]he skill misalignment cost describes how much
compromise must be made on skill level preferences," the Examiner reasons
that "[i]t is unclear how a group of physical resources can include 'a value
that describes how much compromise must be made on skill level
preferences."' Final Act. 12; Ans. 17; see Spec. ,r 31. The Examiner
explains that Specification paragraph 45 "merely states that the hardware
can determine the skill misalignment cost" and "does not clarify how a piece
of hardware can possess a skill." Ans. 18.
DISCUSSION
Specification paragraph 45 states that "[ t ]he skill misalignment cost is
determined by the skill that is wanted and the skill level possessed by a
resource/person/hardware." Spec. ,r 45. Appellants assert that the "skill
level possessed by ... hardware" relates to "the capability of the hardware."
App. Br. 12. Appellants point out that Specification paragraph 55 discloses
that hardware has associated "features, availability, cost, etc." Reply Br. 3;
see Spec. ,r 55. Appellants also assert that "'skill level' is another term for
'ability', such as the resources" features. Reply Br. 3 ( citing Spec. ,r 55).
We agree with Appellants that the claims viewed in light of the
Specification satisfy § 112 's definiteness requirement. The Specification
discloses that ( 1) "each of the two cells is a group of resources, human
and/or hardware/software, capable of executing a same task"; (2) "[t]he skill
misalignment cost is the level of misalignment between which skill capacity
is specified for a job/task/project versus what is actually used during the cell
collaboration"; (3) two cells may have "different types of resources"
including "different operating system platforms" and "different software";
( 4) "hardware/ computer resources ... [may] have different capabilities/
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availability/software/etc."; and (5) "shared/collaborative resources may be
hardware resources" corresponding to two cells with a 3-Tuple associated
with the two cells for "sharing their resources to accomplish/execute a
certain job/task/project." Spec. ,r,r 28, 50, 54--55. Further, the Specification
explains that "computers without certain software loaded thereon" may
correspond to "unqualified resources" when determining the skill
misalignment cost. Id. ,r 51.
In light of the Specification, those skilled in the art would understand
that the skill misalignment cost encompasses differences in computer
capabilities, as well as human skills. See Spec. ,r,r 28, 45, 50-51, 54--55.
Hence, we do not sustain the§ 112 ,r 2 rejection of claims 1-3, 5-7, 9-11,
and 13-15.
The§ 103(a) Rejections of Claims 1, 13, and 14
INDEPENDENT CLAIM 1
Appellants argue that the Examiner erred in rejecting claim 1 because
"no combination of the cited art teaches/suggests defining how much it
would cost for two different service centers to work in collaboration,
particularly where this cost includes a skill misalignment cost." App. Br. 14;
see Reply Br. 3--4. More specifically, Appellants assert that Wu's assigning
multiple calls to multiple agents simultaneously "does not teach or suggest
that two agents are collaborating with one another (as presently claimed)."
App. Br. 17. In addition, Appellants contend that Maloney does not teach or
suggest "two cells in different service centers collaborat[ing] by working
together on a single work packet," as required by claim 1. Id. at 18.
Appellants' arguments do not persuade us of Examiner error because
they attack the references individually, while the Examiner relies on the
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combination of disclosures in the references to reject claim 1. See Final
Act. 3--4, 13-16; Ans. 18-22. Where a rejection rests on a combination of
references, an appellant cannot establish nonobviousness by attacking the
references individually. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Here, the combination of disclosures in Wu and Maloney
teaches or suggests cells in different service centers collaborating by
working together on a single packet.
Wu discloses multi-location call centers and routing multiple calls to
multiple agents simultaneously when necessary to handle call volume, and
thus teaches or suggest collaboration among call centers. Wu 8:60-9:20,
61 :3-5, 65:28-30, 65:65---66:2, 81 :30-85:5 (Examples 4--5); see Final
Act. 3--4, 6; Ans. 21; see also Wu 72:47---65. Maloney discloses different
customer-service representatives at different call centers handling different
products during a single call from a single customer to a single company,
and thus teaches or suggests collaboration on a single work packet. Maloney
8:60-10:49, Fig. 5; see Final Act. 3--4, 6, 15; Ans. 19-21, 24--25.
Appellants urge that "[ w ]orking on 'different aspects' of a 'same
order' is not working together on a 'single work packet'." App. Br. 18. We
disagree. "[D]uring examination proceedings, claims are given their
broadest reasonable interpretation consistent with the specification." In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). Here, the Specification
explains that a "work packet" has "constituent tasks" and "resources are
used" to accomplish "related tasks." Spec. ,r,r 24, 26. A single call from a
single customer to a single company about purchasing different products
from the company involves "related tasks" in a "single work packet."
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Appellants assert that "the first service center and the second service
center in Maloney are not 'capable of executing a same task"' because "the
'call needs to be transferred to the ... food product division call center'
from the company's apparel division in order to handle the grocery item
order." App. Br. 18. But the Examiner relies on Wu, not Maloney, to teach
or suggest different cells "capable of executing a same task." Final Act. 4,
7, 13-17; Ans. 23; see Wu 72:47---65, 81:30-85:5 (Examples 4--5).
Appellants contend that combining Maloney's collaboration with Wu
changes Wu's principle of operation. App. Br. 18. But Maloney's
collaboration complements Wu's collaboration and enhances Wu's
capabilities. As the Examiner finds, the combination results "in an improved
system that would minimize the skill and knowledge needed thus also the
cost of running the business thus allowing for cost saving measures." Final
Act. 15. Consequently, the combination does not change Wu's principle of
operation.
Although Appellants concede that Wu "teaches that 'makespan cost'
(time spent per call) and 'monetary cost' (agent cost) can be minimized,"
Appellants contend that Wu does not "teach or suggest establishing/defining
the cost of collaboration due to skill misalignment." App. Br. 17; see Reply
Br. 3--4. We disagree. Wu instructs that "an agent highly skilled in some
areas may be relatively unskilled in others" and "an unskilled trainee may be
selected over a highly skilled agent, for a given call." Wu 65: 12-18. "Each
agent is classified with respect to 10 skills, and each skill can have a weight
of Oto 127 ." Id. at 79:24--25. Wu discloses normalizing "disparate factors"
into "a common metric, 'cost', which is then subject to numeric analysis."
Id. at 65:23-25. When routing multiple calls to multiple agents
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simultaneously, Wu compares the "cost functions" for all calls in the queue
with respect to all permissible call-agent pairings and then selects the
"optimal pairing" of respective calls with respective agents. Id. at
65:65---66:2. In addition, Wu discloses quantifying agent skill levels and
determining the "agent cost" for optimization purposes when routing
multiple calls to multiple agents simultaneously. Id. at 81:30-85:5
(Examples 4--5). Consequently, Wu teaches or suggests defining a cost of
collaboration including a skill misalignment cost. See Final Act. 4, 6-7,
13-16, 18-19; Ans. 18-22.
Appellants argue that "no combination of the cited art teaches/
suggests ... 'identifying an optimal collaboration' between two call centers
based on which collaboration has the lowest skill misalignment." App.
Br. 18. That argument does not persuade us of Examiner error because it
rests on a misinterpretation of claim 1. Claim 1 does not require a
"collaboration [that] has the lowest skill misalignment." Instead, claim 1
requires a "collaboration function [that] expends a lower overall monetary
cost, makespan cost, and skill misalignment cost as compared to other
collaboration functions." App. Br. 28-29 (Claims App.).
Appellants argue that Huh "never addresses or suggests deriving the
cost (in terms of money, time, and particularly skill misalignment) of
collaboration between two cells of hardware resources groupings." App.
Br. 19. That argument does not persuade us of Examiner error because the
Examiner relies not Wu, not Huh, to teach or suggest cost derivation in
terms of a monetary cost, a makespan cost, and a skill misalignment cost.
See Final Act. 4, 6-7, 13-16, 18-19; Ans. 18-22.
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Because the combination of disclosures in the references teaches or
suggests claim 1 's subject matter, we sustain the§ I03(a) rejection of
claim 1.
DEPENDENT CLAIMS 13 AND 14
Claims 13 and 14 depend from claim 1. Appellants do not argue
patentability separately for these dependent claims. See In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (explaining that the applicable rules
"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"); App. Br. 13-19; Reply Br. 3-5.
Because Appellants do not argue the claims separately, we sustain the
§ I03(a) rejections of claims 13 and 14 for the same reasons as claim 1. See
37 C.F.R. § 4I.37(c)(l)(iv). Further, the Examiner relies on Riley to reject
claim 14, and Appellants fail to address Riley. See Final Act. 26; App.
Br. 13-19; Ans. 3--4, 20-21; Reply Br. 3-5.
The§ 103(a) Rejection of Claims 2 and 3
DEPENDENT CLAIM 2
Claim 2 depends from claim 1 and requires "assigning the task to the
local cell" only when "the local cell execution cost is less than the
collaboration execution cost." App. Br. 29 (Claims App.). Appellants argue
that the Examiner erred in rejecting claim 2 because: (1) "Wu does not
address the issue of the cost of collaboration"; and (2) cosourcing according
to Aksin "is not collaboration." App. Br. 20. Appellants also argue that
"there is no teaching in Aksin of evaluating the cost of collaboration between
local/remote cells in different calls centers, and then deciding to execute a
task locally." Reply Br. 4.
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Appellants' arguments do not persuade us of Examiner error because
they attack the references individually, whereas the Examiner relies on the
combination of disclosures in the references to reject claim 2. See Final
Act. 19--20; Ans. 22. As explained above for claim 1, the combination of
disclosures in the references teaches or suggests "defining a cost of
collaboration between two cells in different service centers." See Final
Act. 6-7, 13-17; Ans. 18-22. In addition, Aksin discloses "executing the
task solely within the local cell without collaborating with the foreign cell"
and "assigning based on a lower cost." Final Act. 20; Ans. 22. For instance,
Aksin explains that cosourcing "keeps some calls in house and outsources
others." Aksin 354. Further, the Examiner finds that "[e]ach contract cost
[in Aksin] is based on in house and sending a call out of house." Ans. 22.
Appellants' arguments do not persuasively establish error in the Examiner's
findings.
Because the combination of disclosures in the references teaches or
suggests claim 2's subject matter, we sustain the§ 103(a) rejection of
claim 2. 4
DEPENDENT CLAIM 3
Claim 3 depends from claim 2 and requires "normalizing the different
permutations of the 3-Tuple by assigning predetermined weighting factors to
4 Claim 1 requires the processor to "assign[] the task to two optimal cells"
( emphasis added). But claim 2 permits the processor to "assign[] the task to
the local cell" only "without collaborating." That is, claim 2 is broader than
claim 1 because claim 2 allows the task to be assigned to only a single cell.
Consequently, in the event of continued prosecution, the Examiner should
consider whether to reject claim 2, as well as similar claims 6 and 10, under
35 U.S.C. § 112 if 4.
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each of the monetary cost, makespan cost, and skill misalignment cost in the
3-Tuple." App. Br. 29 (Claims App.). Appellants argue that the Examiner
erred in rejecting claim 3 because "Wu teaches that, for any given task, the
skill of a particular agent can be weighted," but "[t]here is never a teaching
or suggestion of assigning weighting factors to 'monetary cost, makespan
cost, and skill misalignment cost' that would result from two cells
collaborating." App. Br. 21; see Reply Br. 4.
Appellants' arguments do not persuade us of Examiner error because,
as the Examiner finds, "Wu teaches normalizing the different permutations
of the 3-Tuple by assigning predetermined weighting factors to each of the
costs related to the resources." Final Act. 20-21 ( citing Wu 61: 1-10,
64:45---65:6, 65:28---66: 12, 83: 17-85:5 (Example 5)); Ans. 23 (citing Wu
64:45---65:6, cols. 79-85). For example, when routing multiple calls to
multiple agents simultaneously, Wu employs weighting factors relating to
cost, time, and skill. Wu 61:12-14, 65:65---66:6, 79:24--25, 80:4--11,
81:30-82:32, 83:19-84:21; see generally id. at 81:30-85:5 (Examples 4--5).
Because the combination of disclosures in the references teaches or
suggests claim 3 's subject matter, we sustain the § 103(a) rejection of
claim 3.
The§ 103(a) Rejection of Claims 5 and 9
For independent claims 5 and 9, Appellants repeat arguments made
for claim 1. Compare App. Br. 22-23, with id. at 14--18. For the reasons
discussed above, we consider Appellants' arguments unpersuasive. Hence,
we sustain the§ 103(a) rejection of claims 5 and 9.
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The§ 103(a) Rejection of Claims 6, 7, 10, and 11
Claim 6 depends from claim 5 and requires "assign[ing] the task to the
local cell" only when "the local cell execution cost is less than the
collaboration execution cost." App. Br. 30 (Claims App.). For claim 6,
Appellants repeat arguments made for claims 1 and 2. Compare App.
Br. 24, with id. at 15-17, 20. For the reasons discussed above, we consider
Appellants' arguments unpersuasive. Hence, we sustain the§ 103(a)
rejection of claim 6.
Appellants do not argue patentability separately for dependent
claims 7, 10, and 11. App. Br. 23-24; Reply Br. 4--5. Thus, we sustain the
§ 103(a) rejection of these dependent claims for the same reasons as the
independent claims. See 37 C.F.R. § 4I.37(c)(l)(iv).
The§ 103 (a) Rejection of Claim 15
Claim 15 reads as follows (with formatting added for clarity):
15. The computer implemented method of claim 1,
wherein the cost of collaboration further comprises
collaboration costs that result from extra time that is taken
when the two cells in different service centers collaborate, and
wherein [the] computer implemented method further
comprises: calculating, by one or more processors, the
collaboration costs that result from the extra time that is taken
by tracking delays obtained from historical data in which other
cells from the different service centers have previously
collaborated,
wherein the extra time includes time spent in clarification
of issues due to different time zones between the other cells,
and
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wherein the historical data is from the other cells having
used a same hardware resource for a same project as currently
being contemplated for collaboration between said two cells in
different service centers.
App. Br. 33 (Claims App.).
Appellants assert that the Examiner erred in rejecting claim 15
because "there is no teaching/suggestion in Espinosa of the claimed 'extra
time', which 'includes time spent in clarification of issues due to different
time zones between the other cells'." App. Br. 26; see Reply Br. 5.
According to Appellants, "Espinosa teaches that working in different time
zones either 1) results in shorter time delays or 2) results in no difference in
time delays." App. Br. 26; Reply Br. 5.
Appellants' assertions do not persuade us of Examiner error because
they rest on Espinosa's disclosure of two special circumstances for delay
costs: (1) a Producer accomplishing a task during a Requestor's off hours
(zero Td) and (2) a Producer accomplishing a task during overlapping work
hours (identical Td). See Espinosa 9 ("Delay Costs (De)"). Espinosa
describes other circumstances involving delay costs that vary when
collaboration occurs across different time zones. Id. at 8-10, 12-13
(Table 4), 15. For instance, Espinosa notes for offshore-outsourcing
arrangements that "delay cost can be substantial if task request[ s] are made
several hours before the overlap time." Id. at 13 (Table 4). Further,
Espinosa notes for follow-the-sun arrangements that "[ fJailure to make
timely task requests can bring prohibitive delay" and accompanying delay
costs. Id. at 12 (Table 4).
In addition, the Examiner finds that Espinosa discloses (1) different
costs for virtual teams in different locations; and (2) a time separation model
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that "discloses the effect of time separation on coordination costs" and
"takes into account communication, clarification, delay, and rework [costs]
when analyzing an effect on a virtual team (multiple resources in various
locations)." Ans. 26 (citing Espinosa 9--14); see Final Act. 27-29 (citing
Espinosa 9--10, 12-14). Consistent with the Examiner's findings, Espinosa
explains that (1) the model "involves individual production costs (Pc)
necessary to carry out individual software development task activities and a
coordination cost (Co) necessary to manage the dependencies among
different task activities"; and (2) coordination costs "are composed of
communication costs (Cc), delay costs (De), clarification costs ( Cf), and
rework costs (Re)." Espinosa 10; see id. at 8-10. Appellants' assertions do
not persuasively establish error in the Examiner's findings.
Appellants contend that ( 1) "there is no teaching/ suggestion in
Espinosa or any combination of the cited art of historical data taken from
'the other cells having used a same hardware resource for a same project as
currently being contemplated for collaboration between said two cells in
different service centers'"; and (2) "none of the cited art teaches/suggests
comparing past use of a particular hardware resource with contemplated use
of that same hardware resource, as presently claimed." App. Br. 26.
Appellants' contentions do not persuade us of Examiner error because
Espinosa discloses using a same hardware resource, e.g., a configuration-
management system, for a same project, e.g., a software-development
project. Espinosa 4, 6-10, 13 (Table 4), 16; see Final Act. 27-28;
Ans. 25-26.
Because the references' combined disclosures teach or suggest
claim 15's subject matter, we sustain the§ 103(a) rejection of claim 15.
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DECISION
We affirm the rejection of claims 1-3, 5-7, 9-11, and 13-15 under
35 U.S.C. § 101.
We reverse the rejection of claims 1-3 and 13-15 under 35 U.S.C.
We reverse the rejection of claims 1-3, 5-7, 9-11, and 13-15 under
35 U.S.C. § 112 if 2.
We affirm the rejections of claims 1-3, 5-7, 9-11, and 13-15 under
35 U.S.C. § 103(a).
Because we affirm at least one ground of rejection for each claim on
appeal, we affirm the Examiner's decision to reject all of the claims on
appeal. See 37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
29