Ex Parte Andreev et al

Patent Trial and Appeal Board

Feb 14, 2013

11452181 (P.T.A.B. Feb. 14, 2013)

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.
11/452,181 06/13/2006 Dmitry Andreev END920060075US1 2623
30449 7590 02/15/2013
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
FAN, HUA
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
02/15/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DMITRY ANDREEV, PAUL GREGORY GREENSTEIN, and
GREGORY VILSHANSKY

Appeal 2010-009467
1

Application 11/452,181
Technology Center 2400
____________________

Before JEAN R. HOMERE, JASON V. MORGAN, and JOHN G. NEW,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1
The real party in interest is International Business Machines, Inc. (App.
Br. 1.)
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-7, 10, and 13-34. Claims 8, 9, 11, and 12 have
been canceled. (App. Br. 1.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for porting an information
technology (IT) structure from one IT environment to another. In particular,
an abstract IT structure in the first IT environment is translated into a virtual
IT structure by using a prioritized list of optimization classes upon which an
optimization function is applied. The virtual IT structure is subsequently
translated into a real IT structure in a second environment. (Abstr.)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method for porting an abstract Information Technology
(IT) structure into an IT delivery environment, said method
comprising:
translating, by a processor of a computer system, an
abstract IT structure A that is currently within an IT delivery
environment X, said translating generating a virtual IT structure
V from the abstract IT structure A through specification of an
IT delivery environment Y;
delivery binding the virtual IT structure V to the IT
delivery environment Y to generate a delivery-bound virtual IT
structure D; and
deploying the delivery-bound virtual IT structure D in the
IT delivery environment Y, resulting in a real IT structure
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instance R capable of operating in the IT delivery environment
Y,
wherein said translating comprises optimizing the virtual
IT structure V by using a specified prioritized list of
optimization classes and applying each optimization function of
an associated optimization class from the specified prioritized
list of optimization classes to the virtual IT structure V, and
wherein said applying each optimization function
comprises applying in tum each optimization function, starting
with a lowest and ending with a highest priority of optimization
classes comprising each optimization function which results in
said applying the highest priority of optimization classes
overriding said applying the optimization classes whose priority
is lower than the priority of the highest priority of optimization
classes.

Prior Art Relied Upon
Nguyen US 2003/0172145 A1 Sep. 11, 2003
Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 31-34 stand rejected under 35 U.S.C. § 112, second
paragraph as being indefinite for failing to particularly point out
and distinctly claim the subject matter Appellants regard as the
invention.
2

2. Claims 1-7, 10, and 31-34 stand provisionally rejected on the
ground of non-statutory obviousness-type double patenting as

2
In the Final action of 5/18/2009, the Examiner also rejected claims 31-34
as being indefinite because the recitation “the total cost of ownership”
rendered the claim indefinite. However, the Examiner withdrew the
rejection in light of Appellants’ arguments. (Ans. 19-20.)
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being unpatentable over the combination of co-pending application
No. 11/011,449 (claim 4), Nguyen, and Official notice.
3. Claims 1-7, 10, and 13-34 stand under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Nguyen and Official notice.

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 18-44, and the Reply Brief, pages 3-35.
Indefiniteness Rejection
Dispositive Issue 1: Have Appellants shown that the Examiner erred
in concluding that the recitations “higher priority” and “lower priority” as
recited in claim 1 render the claim indefinite?
Appellants argue that because the recitations “higher priority” and
“lower priority” are relative terms that are compared with each other in
claim 31, they do not render the claim indefinite. (App. Br. 20, Reply Br. 4-
5.) Further, Appellants argue that, when fully read in context, the recitation
of applying the higher priority optimization function after applying the lower
priority optimization function simply means that the higher priority
optimization function overrides the lower priority function when the higher
priority function is applied after the lower priority function. (Id. at 5.)
In response, the Examiner finds the fact that the cited terms are in the
same claim does not necessarily cause them to be compared with each other.
(Ans. 20.) Further, the Examiner finds that the recitation of “applying the
higher priority optimization function” after “applying the lower priority
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optimization function” indicates that the higher priority function is applied
in a lower priority (after) than the latter. (Id. at 20-21.) Consequently, the
Examiner submits that such language is conflicting, and therefore renders
the claim indefinite. (Id. at 21.)
On the record before us, we find error in the Examiner’s
indefiniteness rejection because one of ordinary skill in the art having read
Appellants’ Specification would have been apprised of the scope of the
claimed subject matter. In particular, we find that the ordinarily skilled
artisan would have been readily apprised that the recitations of a “higher
priority” a “lower priority” optimization functions simply imply a plurality
of functions that are sorted as some having a higher priority, and others as
having a “lower priority.” Therefore, we agree with Appellants that the
ordinarily skilled artisan would have readily recognized that these functions
are compared with one another. Further, we agree with Appellants that the
recitation that higher priority functions are applied after lower priority
functions results in the higher priority functions overriding the lower priority
functions simply set forth a condition precedent for the higher priority
function to override the lower priority function. Because the ordinarily
skilled artisan would have not found any of the alleged ambiguities or
conflicts in the claim, as raised by the Examiner, we find Appellants have
shown error in the Examiner’s rejection of claim 31, and the claims
depending therefrom.

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Obviousness Rejection
Dispositive Issue 2: Have Appellants shown that the Examiner erred in
finding that the combination of Nguyen and Official Notice teaches or
suggests translating an abstract IT structure in a first delivery environment
to a virtual IT structure that is optimized to thereby yield a real IT structure
in a second delivery environment, as recited in claim 1?

Appellants argue that the combination of Nguyen and Official Notice
does not teach or suggest the disputed limitations emphasized above. (App.
Br. 24-32, Reply Br. 11-19.) In particular, Appellants argue that Nguyen’s
disclosure of a list of questions for customers during the formulation of
design requirements does not teach a translation from an abstract IT
structure to a virtual IT structure. (App. Br. 25-26.) Further, Appellants
argue that while Nguyen discloses optimizing a design, the reference does
not teach or suggest applying an associated optimization function to a
prioritized list of optimization classes in a virtual structure. (Id. at 30.)
Additionally, Appellants argue that the Examiner’s Official Notice
does not cure the noted deficiencies because the supporting prior art
(Pouwelse) relied upon by the Examiner for the official notice does not
satisfy the legal standard set forth in the MPEP§ 2144. 03(A) whereby facts
stated therein are capable of instant and unquestionable demonstration of
facts as to defy dispute. (Reply Br. 18-19.)
In response, the Examiner finds that Nguyen’s disclosure of gathering
design requirements to create an optimized architectural model for
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subsequently creating a logical design therefor, taken in combination with
the well-known fact of starting performance on a highest priority task, and
ending with the lowest priority task and vice-versa, teaches the disputed
limitations. (Ans. 11, 21-28.)
Based upon our review of the record before, we agree with the
Examiner’s underlying factual findings and ultimate conclusion of
obviousness regarding claim 1. We note at the outset that Appellants’
arguments in the Appeal Brief and the Reply Brief failed to address the
specific findings made by the Examiner in the Answer. In particular, the
Examiner relies upon the following teachings of Nguyen:
1. Paragraphs [0142], [0143] to teach translating an abstract
structure into a virtual structure, which is used to
subsequently implement a real structure. (Ans. 21-22.)
2. Paragraphs [0232]-[0234] to teach the design
requirements within a first environment. (Ans. 22.)
3. Paragraphs [0623], [0624] to create an IP address
schema, creating a physical network design. (Ans. 24.)
4. Paragraphs [0580], [0391] to teach optimizing a virtual
IT structure by using a prioritized list of optimization
classes and applying an optimization function thereupon.
(Ans. 26.)
While Appellants address the Examiner’s findings with regards to
paragraphs [0232]-[0240], [580] (App. Br. 24-30), Appellants’ arguments
fail to discuss the specific findings with respect to paragraphs [0142]-[0144],
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which form the thrust of the Examiner’s rejection. In our view, Appellants’
failure to specifically address in the Briefs the portions of the references
mainly relied upon in the rejection is not responsive to the Examiner’s
specific findings made in the Answer. Further, we find that Nguyen’s
disclosure of identifying service flows for each service to optimize the
implementation of an architectural design [0580] teaches that such service
flows or classes are optimized by a function of some kind to thereby yield
the optimal architectural design. Therefore, we find no error in the
Examiner’s finding that Nguyen teaches optimizing a prioritized list of
classes.
Additionally, to support the taking of Official Notice, the Examiner
cited to Pouwelse as evidence that starting performance on the lowest
priority task and ending with the highest priority task is well known in the
art. (Ans. 28.) In response, Appellants merely allege that the Official
Notice does not satisfy the legal standard set forth in section 2144.03 of the
MPEP, whereby the facts asserted are unquestionably and undisputedly
well-known. Appellants also argue that because the Examiner has taken
official notice more than once for different facts, the Examiner violated the
spirit of rarely invoking official notice as mandated by the MPEP. (Reply
Br. 18-19.) We find Appellants’ arguments unavailing. In particular,
Appellants failed to explain why the facts provided in the Pouwelse
reference are not indisputably and unquestionably well-known according to
the legal standard set forth in the MPEP. In fact, Appellants have provided
no analysis of Pouwelse at all, nor have Appellants provided any evidence as
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to why the noticed fact is not considered to be common knowledge or well-
known in the art in accordance with MPEP § 2144.03(C).
3
Consequently,
we find that Appellants have failed to adequately traverse the Examiner's
taking of Official Notice that the use of a driver conversion file is well-
known in the art for the purpose of starting performance on the lowest
priority task and ending with the highest priority task. We also find
untimely Appellants’ arguments in the Reply Brief that the Examiner’s
taking of official notice for a second time violates the MPEP requirement of
rarely invoking official notice. We note that this new line of argument was
raised by Appellants for the first time in the Reply Brief, and such new
argument is not in response to a new issue brought up by the Examiner in the
Answer. We therefore find these new arguments unavailing.
4
Appellants
are reminded that:

3
Our reviewing court has held that an Appellant adequately traverses a
finding of Official Notice where the Appellant’s argument “contain[s]
adequate information or argument” to create on its face “a reasonable doubt
regarding the circumstances justifying the … notice” of what is well known
to an ordinarily skilled artisan. In re Boon, 439 F.2d 724, 728 (CCPA
1971). “To adequately traverse such a finding [of Official Notice], an
applicant must specifically point out the supposed errors in the [E]xaminer’s
action, which would include stating why the noticed fact is not considered to
be common knowledge or well-known in the art.” Manual of Patent
Examining Procedure (“MPEP”) § 2144.03(C) (Rev. 9, Aug. 2012).
4
“[I]t is inappropriate for appellants to discuss in their reply brief matters
not raised in … the principal brief[ ]. Reply briefs are to be used to reply to
matter[s] raised in the brief of the appellee.” Kaufman Co. v. Lantech, Inc.,
807 F.2d 970, 973 n.* (Fed. Cir. 1986).
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[T]he purpose of a reply brief is to ensure the Appellant the
opportunity to have the last word on an issue raised by the Examiner.
The reply brief enables the Appellant to address any new grounds of
rejection the Examiner may have raised in the answer, or to address
changes or developments in the law that may have occurred after the
principal brief was filed. The reply brief is not an opportunity to
make arguments that could have been made during prosecution, but
were not. Nor is the reply brief an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner’s rejections, but were not.
Giving cognizance to belated arguments in a reply would vitiate
the force of the requirement in Board Rule 37(c)(1)(vii) that “[a]ny
arguments or authorities not included in the brief . . . will be refused
consideration by the Board, unless good cause is shown.” The
reference in that section to the “reply brief filed pursuant to § 41.41”
does not create a right for the Appellant to raise an argument in the
reply brief that could have been raised in the principal brief but was
not. Rather, that reference merely puts Appellants on notice that
arguments that could be made in the reply brief, but are not, are
waived.
See Ex Parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative).
For at least the aforementioned reasons, we find Appellants have not
sustained the requisite burden on appeal of providing arguments or evidence
persuasive of error in the Examiner’s rejection of representative claim 1. It
therefore follows that Appellants have not shown that the Examiner erred in
finding that the combination of Nguyen and Official Notice renders claim 1
unpatentable.
Regarding claims 2-7, 10, and 13-34, Appellants reiterate
substantially the same arguments submitted for patentability of claim 1
above. (App. Br. 32-43, Reply Br. 19-36.) As discussed above, these
arguments are not persuasive. See 37 C.F.R. § 1.37(c)(1)(vii). Further,
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while Appellants raised additional arguments for patentability of the cited
claims, we find that the Examiner has rebutted in the Answer each and every
one of those arguments by a preponderance of the evidence. (Ans. 28-38.)
Therefore, we adopt the Examiner’s findings and underlying
reasoning, which are incorporated herein by reference. Consequently,
Appellants have failed to show error in the Examiner’s rejections of claims
2-7, 10, and 13-34.
Obviousness- Double Patenting Rejection
Dispositive Issue 3: Have Appellants shown that the Examiner erred
in finding that the combination of the co-pending application (claim 4),
Nguyen, and Official Notice teaches or suggests generating a virtual IT
structure from an abstract IT structure, as recited in claim 1?

Appellants argue that while claim 4 of the co-pending application
recites “translating a virtual IT structure X into a delivery-bound virtual IT
structure XDB, it does not teach translating an abstract IT structure into a
virtual IT structure.” (App. Br. 21-23.) In response, the Examiner finds that
because dependent claim 4 incorporates the limitation of claim 1, which
recites, inter alia, transforming each virtual abstract into a corresponding
virtual entity, claim 4 teaches the claimed limitation. (Ans. 39.) We agree
with the Examiner’s findings, which we incorporate herein by reference.
Further, Appellants argue that Nguyen and Official Notice does not cure the
noted deficiencies of co-pending claim 4. (App. Br. 23.) We have already
addressed those arguments above, and we find them unavailing as previously
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discussed, and for the same reasons detailed at pages 39-40 in the Answer.
It follows Appellants have not shown error in the Examiner’s rejection of
claims 1-7, 10, and 13-34.

DECISION
We affirm the Examiner’s provisional obviousness double patenting
rejection and the obviousness rejection of claims 1-7, 10, and 13-34 as set
forth above. However, we reverse the indefiniteness Examiner’s rejection of
claims 31-34.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD