Ex Parte Antani et alDownload PDFPatent Trial and Appeal BoardSep 2, 201612982806 (P.T.A.B. Sep. 2, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/982,806 12/30/2010 46320 7590 09/07/2016 CRGOLAW STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, FL 33434 FIRST NAMED INVENTOR Snehal S. ANTANI 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. RSW920090093US 1 (490CIP) 9089 EXAMINER WOO, ANDREW M ART UNIT PAPER NUMBER 2441 NOTIFICATION DATE DELIVERY MODE 09/07/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): docketing@crgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte SNEHAL S. ANTANI, ERIKJ. BURCKART, and ROHIT D. KELAPURE Appeal2014-009252 Application 12/982,806 Technology Center 2400 Before ERIC S. FRAHM, JEFFREY A. STEPHENS, and NATHAN A. ENGELS, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants requested rehearing under 37 C.F.R. § 41.52 on July 26, 2016 ("Request"), from our Decision on Appeal mailed May 26, 2016 ("Decision"), 1 wherein we affirmed the obviousness rejection of claims 8- 19. See Decision 2 and 9. 1 A request for rehearing "'must state with particularity the points believed to have been misapprehended or overlooked by the Board'" and "must specifically recite 'the points of law or fact which appellant feels were overlooked or misapprehended by the Board."' Ex parte Quist, 95 USPQ2d 1140, 1141(BPAI2010) (precedential) (quoting MPEP § 1214.03). Appeal2014-009252 Application 12/982,806 Specifically, the original panel atlirmed the Examiner's Final Rejection of (i) claims 13-19 under 35 U.S.C. § 101 as being directed to non-statutory subject matter (Decision 2 and 9); and (ii) claims 8-19 under 35 U.S.C. § 103(a) as being unpatentable over the combination of de Bonet and Hartsell.2 Id. Notably, Appellants only request rehearing as to our affirmance of the Examiner's obviousness rejection of claims 8-19 over de Bonet and Hartsell (see Request 2-3), and do not request rehearing of the Decision of the original panel affirming the rejection of claims 13-19 under 35 U.S.C. § 101 as being directed to non-statutory subject matter (Request 3 ("[i]t is in connection only with the [rejection under 35 U.S.C. § 103(a)] that Appellants seek rehearing")). Accordingly, this decision on rehearing addresses only the errors alleged in the Request with respect to the obviousness rejection. And, in this regard, since (i) Appellants argued claims 9-19 in the Appeal Brief on the same basis presented as to claim 8 (App. Br. 7-10); and (ii) in our original Decision we selected claim 8 as representative of claims 9-19 rejected as being obvious over the combination of de Bonet and Hartsell (Decision 4, fn. 1 ), this decision only reconsiders our original Decision affirming the obviousness rejection of independent claim 8. 2 The Examiner rejected claims 8-19 as being unpatentable under 35 U.S.C. § 103(a) over de Bonet (US 2006/0253461 Al; published Nov. 9, 2006) and Hartsell (US 2002/0049608 Al; published Apr. 25, 2002). Final Act. 5-15; Ans. 4--5. 2 Appeal2014-005866 Application 13/049,429 Exemplary Claim Exemplary independent claim 8 reads as follows (emphasis added): 8. A data processing system configured with an n-Tier distributed cache, the system comprising: a plurality of cache resources in respective tier nodes arranged in an n-Tier distributed cache; an application server with processor and memory configured to host execution of application logic and coupled to the n-Tier distributed cache; a cache server with processor and memory providing access to the n-Tier distributed cache; and, dynamic distributed cache hierarchy management logic coupled to the n-Tier distributed cache, the logic comprising computer usable program code executable in the memory of the cache server by the processor of the cache server, the computer usable program code when executed establishing a communicative connection to the cache servers, collecting performance metrics for each of the cache resources in the respective tier nodes of the n-Tier distributed cache, identifying a characteristic of a specific cache resource in a corresponding one of the tier nodes of the n-Tier distributed cache crossing a threshold, and dynamically structuring a set of cache resources including the specific cache resource to account for the identified characteristic. Appellants ' Contentions on Rehearing Appellants have requested rehearing of the Decision of the original panel affirming the obviousness rejections of claims 8-19 over the combination of de Bonet and Hartsell (Request 2-8), primarily arguing that 3 Appeal2014-005866 Application 13/049,429 the Board made the following errors and misapprehended the following points of law: ( 1) overlooking arguments presented by Appellants in the Appeal Brief that the "Examiner has accounted only for the more general idea of dynamically structuring computing resources without any relationship to any identified characteristic of a cache resource in a node of a distributed cache that has crossed a threshold" (App. Br. 9-10; Request 4); (2) the "Examiner [sic, Board] also [overlooked] the arguments of the Reply Brief at pages 6 through 8 that the Examiner improperly equated an adjustment of service level agreement (SLA) performance levels with the claimed restructuring of a set of cache resources" because [t]he identification of service level objectives for allocating system resources ... cannot be said to be equivalent to the claimed dynamically structuring of a set of cache resources including the specific cache resource in order to account for an identified characteristic of a specific cache resource in a corresponding tier node of an n= Tier distributed cache that has crossed a threshold (Request 4, 5); (3) "The Board has provided no evidence-not even a reference to any portion of Hartsell to support the findings of the Board" (Request 5-6), as required by (a) the notice requirement of the Administrative Procedure Act ("APA"), and (b) the standard set forth in Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997) (holding that the Board must set forth specific findings of fact and conclusions of law in its opinions adequate to form a basis for judicial review, including findings for each contested limitation accompanied with satisfactory explanations) (see Request 6, fn. 1 ); 4 Appeal2014-005866 Application 13/049,429 ( 4) "the Honorable Board has not articulated a single sentence explaining how any one claim element of any one rejected claim reflects a teaching found in the cited art based upon which the Honorable Board has affirmed [the] Examiner's rejections [sic] on the art" (Request 7-8); and (5) nor has the Board "expressly nor implicitly set forth a single claim construction for a single claim term of a single rejected claim" (Request 8) as required by Ex parte Hyatt, Appeal No. 2002-0652, 2002 WL 33948281 (BPAI Oct. 22, 2002) (see Request 7, fn. 4). Analysis We have carefully reconsidered our Decision of May 26, 2016, in light of Appellants' contentions in the Request (see Request 2-8). In our original Decision, the Board concluded that (i) the Examiner established a prima facie case of obviousness for claim 8 based on the combined teachings of de Bonet and Hartsell (Decision 7; see Final Act. 6-9 and Ans. 4--5); and (ii) Appellants failed to successfully rebut the Examiner's prima facie case of obviousness with Appellants' arguments in the Appeal Brief and Reply Brief that the Examiner mischaracterized Hartsell, or that the teachings of Hartsell failed to teach or suggest the disputed limitation of claim 8 (Decision 8). The Board specifically directed Appellants' attention in this regard to the Examiner's findings and reasons as to claim 8 (i) set forth in the Final Office Action (Final Act. 6-9), and (ii) as further explained by the Examiner in the Answer (4--5). Decision 7. More specifically, the Board cited the Examiner's findings (see Decision 8 (citing Ans. 4); see also Final Act. 7-8 (also setting forth findings regarding the teaching and suggestions of Hartsell)) that Hartsell's paragraphs 52, 92, and 238 taught or would have suggested the disputed limitation of claim 8 of "dynamically 5 Appeal2014-005866 Application 13/049,429 structuring a set of cache resources including the specific cache resource to account for the identified characteristic". For at least the reasons set forth in the original Decision with respect to the obviousness rejection of claim 8 (Decision 7-8), and the reasons that follow, Appellants have not demonstrated the Board erred and/or misapprehended any points of law or fact in affirming the Examiner's obviousness rejection of claim 8. Therefore, we decline to change our prior decision with respect to our affirmance of the obviousness rejection of claim 8. We address Appellants' five contentions listed supra as follows. Appellants' First Contention: Appellants' contention that the Board overlooked Appellants' arguments in the Appeal Brief that the Examiner only made findings as to the general idea of dynamically structuring computing resources without any relationship to any identified characteristic of a cache resource that has crossed a threshold (see Request 4 (citing App. Br. 9-10)), is unfounded. First, as pointed out by the Examiner (Final Act. 7-8; Ans. 4) and the Board in the original Decision (Decision 7 (citing Hartsell i-f 52)), Hartsell discloses processing "[ d]ynamic content" (i-f 52, 1. 8) such as cached content from storage devices 1090 using a content delivery system 1010 (i-f 52). Second, as also pointed out by the Examiner (Final Act. 7-8; Ans. 4) and the Board in its original Decision (Decision 7-8 (citing Hartsell i-f 92)), Hartsell discloses a storage management engine 1040 for caching data using "any suitable method" such as suitable "caching algorithms" that "employ multi- level ordering" or "function based calculation" using "a layered multiple LRU (LMLRU) algorithm that uses an integrated block/buffer management structure including at least two layers of ... queues" and a caching 6 Appeal2014-005866 Application 13/049,429 algorithm "to reflect the relative priorities ... in terms of both recency and frequency" (i-f 92). Third, and most importantly, as pointed out by the Examiner (Final Act. 7-8; Ans. 4) and the Board in its original Decision (Decision 7 (citing Hartsell i1238); see also Decision 8 (addressing Appellants' arguments found at App. Br. 9 and Reply Br. 6-8)), during periods of high demand (see i1238, 11. 1-3), Hartsell discloses adaptively or dynamically allocating or re- allocating system resources like bandwidth and memory/storage capacity using service level objectives (i.e., an "identified characteristic" as recited in claim 8) in the following manner: according to service level objectives, enabling proactive SLA management by preserving or allocating more resources for a given customer when service levels are approaching SLA thresholds or when system resource utilization is approaching threshold levels, thus assuring SLA performance and generating substantial savings in SLA violation penalties. (Hartsell i1238, 11. 6-16 (emphases added)). The Board and the Examiner relied upon Hartsell's service level objectives as teaching or suggesting the "identified characteristic" recited in claim 8, and not Hartsell's service level agreement as alleged by Appellants (Request 4). In view of the findings the Examiner and Board previously made as to Hartsell's paragraphs 52, 92, and 238, one of ordinary skill in the art would understand that Hartsell re- allocates resources using a dynamic cache management logic such as a cache algorithm based on priorities such as bandwidth and storage capacity when either service levels or system resource utilization approaches and/ or crosses threshold levels (i.e., based on performance metrics as claimed). Cf Spec. i-fi-f l 0, 19 ("In response to detecting a threshold characteristic such as a 7 Appeal2014-005866 Application 13/049,429 particular degree of utilization or a particular proximity to other caching resources, the structure of the caching resources can be adapted according to the threshold characteristic."). Setting thresholds is a relative operation, and choosing whether to dynamically re-allocate resources upon reaching, crossing, or approaching a threshold level would be within the skill of a person of ordinary skill in the art of dynamic cache management based on identified characteristics and system needs/priorities. In other words, choosing a priority, service level objective, threshold level, and/or whether levels should be crossed or not before re-allocating resources is within the level of skill of a person of ordinary skill in the art of memory and distributed cache management. As reasoned by the Examiner, such dynamic re-allocation modifications to de Bonet' s n-Tier distributed cache structure would have been obvious "in order to increase[] performance and improve[] predictability of such computing systems in the performance of designed tasks across a wide range of loads" (Ans. 5). Appellants have not shown otherwise. Appellants ' Second Contention: Appellants' contention (see Request 4--5) that the Board overlooked the arguments of the Reply Brief (Reply Br. 6-8) that the Examiner improperly equated Hartsell's adjustment of service level agreement (SLA) performance levels with the claimed restructuring of cache resources is not persuasive in light of the lack of a difference between using service level objectives such as bandwidth and/or storage capacity for dynamically allocating system/cache resources (as taught/suggested by Hartsell) to the claimed dynamically structuring of a set of cache resources based on performance metrics (see claim 8). The Board's original Decision (Decision 8 Appeal2014-005866 Application 13/049,429 7-8) stated agreement with the Examiner's findings (Final Act. 7-8; Ans. 4) that Hartsell teaches or suggests dynamically structuring computing/caching resources based on an identified characteristic of a cache resource such as bandwidth and/or storage capacity (see supra Appellants' First Contention, discussing Hartsell's i-fi-152, 92, and 238). As to accounting for identified characteristics in a tier node of an n-Tier distributed cache, the Examiner relied upon de Bonet (Final Act. 6) as disclosing cache resources arranged in an n-Tier distributed cache, and not Hartsell. Appellants' Third Contention: Appellants' contention (Request 5---6) that the Board has provided no evidence or reference to any portion of Hartsell to support the findings of the Board is unfounded in view of the Board's (i) findings (Decision 7, agreeing with the Examiner's findings as to Hartsell's paragraphs 52, 92, and 238, inter alia, found at pages 7-8 of the Final Office Action and page 4 of the Answer); and (ii) conclusion of obviousness (Decision 7-8). The Final Office Action set forth a prima facie case of obviousness as to claim 8 at pages 6-9, as supplemented by the findings and reasoning found at pages 4--5 of the Answer. The original Board Decision referred to these documents and set forth sufficient explanation for Appellants to have notice of the findings and conclusions of obviousness made by the US PTO regarding the limitations of claim 8 at issue (see Decision 7-9). "Under the [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." In re Leithem, 661F.3d1316, 1319 (Fed. Cir. 2011) (citing 5 U.S.C. § 554(b)(3)). Appellants' contentions (see Request 5-8) that the Board's original Decision failed to meet (a) the notice requirement 9 Appeal2014-005866 Application 13/049,429 of the Administrative Procedure Act ("AP A"), and (b) the standard set forth in Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997), are wholly unpersuasive. See Request, 6, fn. 1 (citing Gechter v. Davidson). In addition, In re Jung, 637 F.3d 1356 (Fed. Cir. 2011) set forth the appropriate standard for notice to Appellants of the grounds of rejection: [T]he PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in "notify[ing] the applicant ... by stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.' In re Jung, 637 F.3d at 1362. The Board's original Decision provided sufficient reasons for affirming the Examiner's obviousness rejection of claim 8, including explanation and information pertaining to obviousness and motivation to combine, as well as references to the disclosures of de Bonet and Hartsell applied by the Examiner against claim 8 (see Decision 3 and 6-9). Furthermore, In re Jung set forth the proposition that Section 132 "is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for the rejection." 637 F.3d at 1362 (internal quotation and citation omitted). In the instant case, no such violation has occurred because Appellants have received sufficient information and notice as to the grounds of rejection levied against claim 8 based on obviousness over the combination of de Bonet and Hartsell (see Decision 7-8; see also Decision 7 (citing Final Act. 6-9); Ans. 4--5). Indeed, Appellants' contentions in the Request for Rehearing evidence that Appellants received appropriate notice of the grounds of rejection, as Appellants argue that the combination, and 10 Appeal2014-005866 Application 13/049,429 specifically Hartsell, fails to teach or suggest (i) identifying the characteristic of a cache in a distributed cache that has crossed a threshold as recited in claim 8 (Request 4); (ii) identifying a characteristic of a specific cache resource in a node of the n-Tier distributed cache crossing a threshold as recited in claim 8 (Request 4--5); and (iii) dynamic structuring of cache resources to account for an identified characteristic as recited in claim 8 (Request 3-5). Appellants' understanding of the bases for the obviousness rejection of claim 8 is manifest in the responses to the Final Office Action, Answer, and Board Decision presenting arguments as the merits of the USPTO's position. See In re Jung, 637 F.3d at 1356. For example, Appellants have been adequately (and repeatedly) informed of the portions of the references and reasoning being applied against claim 8 (see Final Act. 6-9; Ans. 4; Decision 7-8). And Appellants' arguments in the briefs (see App. Br. 7-10; Reply Br. 5-8) have been repeated in the Rehearing Request (compare Request 3-5 with App. Br. 7-10 and Reply Br. 5-8). In fact, Appellants (i) make specific arguments as to paragraph 238 of Hartsell in the briefs (see App. Br. 8-9; Reply Br. 7-8) but fail to develop this line of reasoning in the Rehearing Request (Request 4--5); and (ii) fail to contest the Examiner's application of (a) Hartsell's paragraphs 47, 52, 92, 313, and 314, including the motivation to make the combination with de Bonet (see Final Act. 7-8; see also Ans. 4), and (b) de Bonet's paragraphs 40-43 (see Final Act. 6) against claim 8 in the Final Office Action affirmed by the Board in the original Decision. Appellants' arguments (Request 5-8) that Gechter v. Davidson and/or Ex parte Hyatt requires the Board to construe additional claim limitations is not well taken. In point of fact, and law, our reviewing court in Gechter v. 11 Appeal2014-005866 Application 13/049,429 Davidson held simply that the Board must explain the basis for its rulings sufficiently to enable meaningful judicial review. Ex parte Hyatt, Appeal No. 2002-0652, 2002 WL 33948281, p. 5 (BPAI Oct. 22, 2002). In the instant case, this has been done. As stated in Ex parte Hyatt: Gechter does not require that claims always be construed. Express claim construction is only required where the scope and meaning of limitations are in question. It is unnecessary and impractical to expressly interpret every claim limitation in every claim when there is no question as to what is meant. The examiner did not err by giving the claim limitations their ordinary meaning and by not expressly construing each claim limitation. 2002 WL 33948281, p. 5. Here, like in Ex parte Hyatt, Appellants "merely allege[] that the claims have to be construed without saying how the claim construction would affect the rejection[ of claim 8]. Clearly, this is a 'boilerplate' procedural attack that is not tied to the actual rejection[]." Id. Furthermore, the Board's original Decision (Decision 7) noted agreement with the Examiner's findings regarding Hartsell's paragraphs 52, 92, and 238 (see Final Act. 7-8; Ans. 4). See supra (discussion of Hartsell's teachings and suggestions relevant to claim 8 with respect to Appellant's First Contention). Again, the Examiner met the required burden of establishing a prima facie case of obviousness by clearly conveying that the broadest reasonable interpretation of claim 8 encompasses the elements of the combined teachings and suggestions of the prior art, including citing to specific paragraphs in de Bonet and Hartsell. See In re Jung, 637 F.3d at 1356. Appellants' Fourth Contention: 12 Appeal2014-005866 Application 13/049,429 Appellants' contention that the Board did not explain how any claim element of a rejected claim reflects a teaching found in the cited art (Request 7-8), in unpersuasive in light of our explanations regarding the elements of claim 8 as to at least (i) Appellants' Second Contention supra; and (ii) Appellants' Fifth Contention infra. Appellants' Fifth Contention: Appellants' contentions (Request 6-8) that the Board "neither expressly nor implicitly set forth a single claim construction for a single claim term of a single rejected claim" as required by Ex parte Hyatt (Request 8), are unpersuasive for at least the following three reasons. First, our Decision (Decision 6-7) thoroughly set out the process for Appellants to produce evidence and/or otherwise meet their burden to rebut the Examiner's prima facie case of obviousness. Second, the Examiner made findings, reasoning, and an ultimate determination of obviousness of claim 8 (Final Act. 6-9; Ans. 4--5) with regard to the teachings and/or suggestions of the combination of de Bonet and Hartsell that implicitly interpret at least certain terms recited in claim 8, such as "performance metrics," "identified characteristic," "dynamically structuring," and "cache resources." For example, our original Decision stated our agreement with the Examiner's interpretations (Final Act. 7-8; Ans. 4) that Hartsell's paragraph 238 teaches or suggests "dynamically structuring" of "cache resources" (see, e.g., ,-r 52, storage capacity in storage devices 1090) using techniques like (i) performing allocation and re- allocation using cache algorithms that can assign priorities for storage resources based on recency and/or frequency; and (ii) accounting for function-based replacement calculations (see ,-r 92). Our original Decision 13 Appeal2014-005866 Application 13/049,429 also stated agreement with the Examiner's interpretation (see Ans. 4) that Hartsell's identification of service level objectives (e.g., bandwidth and storage capacity, use of resources, preserving more resources for certain customers) teaches and/or suggests the "identified characteristics" recited in claim 8 (Decision 8). Service level objectives can be goals for certain parameters like (i) the amount of storage for a particular customer, (ii) bandwidth and/or capacity values, (iii) threshold amounts, and (iv) any/all identified cache resource characteristics used to dynamically allocate resources. See Hartsell i-fi-192, 238. Therefore, identifying service level objectives is similar to and/or suggests identifying a characteristic of a specific cache resource as recited in claim 8. Third and lastly, Appellants have not pointed to any specific lexicography in the Specification that supports a more narrow interpretation of the terms than was construed by the Examiner in the obviousness rejection of claim 8 (see Decision 8 (noting Appellants' failed to rebut the Examiner's prima facie case of obviousness with evidence, a declaration, or persuasive arguments in the briefs)). Nor have Appellants submitted a declaration or other evidence to rebut the Examiner's interpretations of certain elements of Hartsell as being encompassed by the recited terms found in claim 8. The plain and ordinary meaning for "identified characteristics," for example, is implicit from the Examiner's rejection reading Hartsell' s bandwidth and/ or storage capacity under the broadest reasonable interpretation of the term in light of the Specification's disclosed field of art relating to cache/memory storage and allocation management. Summary 14 Appeal2014-005866 Application 13/049,429 In view of our agreement with the Examiner's findings and conclusions with regard to the obviousness rejection of claim 8 (Decision 7 (citing Final Act. 6-9); Ans. 4--5), we conclude that the Board's original Decision did not overlook or misapprehend Appellants' contentions, or any findings and/or points of law. Appellants' Request for Rehearing has been granted to the extent that our decision has been reconsidered. However, such request is denied with respect to making any modifications to the original Decision, which affirmed the Examiner's obviousness rejection of claim 8, as well as claims 9-19 grouped therewith. 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). See 37 C.F.R. §§ 41.50(f), 41.52(b) (2013). REQUEST FOR REHEARING DENIED 15 Copy with citationCopy as parenthetical citation