Ex Parte Araujo et al

Patent Trial and Appeal Board

Feb 2, 2016

11548307 (P.T.A.B. Feb. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111548,307 10/11/2006 Aaron Ortiz Araujo
46429 7590 02/04/2016
CANTOR COLBURN LLP-IBM POUGHKEEPSIE
20 Church Street
22nd Floor
Hartford, CT 06103
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.
POU920060137US 1 5187
EXAMINER
ADE, OGER GARCIA
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
02/04/2016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON ORTIZ ARAUJO, KARL J. DUVALSAINT,
TERENCE A. FORD, GARY M. KING, and
CLARISSE A. TAAFFE-HEDGLIN
Appeal2013-005715 1
Application 11/548,3072
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 8, 10, 11, and 13-16. We have jurisdiction under
35 U.S.C. § 6(b).
1 Our decision references Appellants' Appeal Brief ("Br.," filed Sept. 24,
2012), and the Examiner's Answer ("Ans.," mailed Dec. 28, 2012) and Final
Office Action ("Final Act.," mailed Apr. 18, 2012).
2 Appellants identify International Business Machines Corporation as the
real party in interest. Br. 1.
Appeal2013-005715
Application 11/548,307
We REVERSE.
CLAIMED INVENTION
Appellants' claimed invention "relates in general to computer and
processor architecture, and more particularly, to a method for client
workload characterization [in a zSeries benchmark center environment]."
Spec. i-f 2; see also id. i-f 9.
Claim 1, reproduced below with added bracketed notations, is the only
independent claim and is illustrative of the subject matter on appeal:
1. A method for client workload characterization,
compnsmg:
[(a)] performing a plurality of transactions on a processor
in a zSeries benchmark center environment, the performing the
plurality of transactions generating client characterization data;
[ (b)] collecting client characterization data ( CCCD) in a
central data repository, the CCCD characterizing performance of
the processor;
[ ( c)] calibrating a large system performance reference
(LSPR) relative to the client characterization data;
[(d)] selecting LSPR workloads qualitatively;
[ ( e)] measuring LSPR workloads; and
[(f)] characterizing the LSPR workloads;
[ (g)] wherein the calibrating, selecting, measuring and
characterizing are arranged in a feedback loop to collect client
data in an automated way from the benchmark center, the client
data compared to LSPR data to provide correlation between
software counters in System Management Facilities records and
instrumentation data collected on client workloads from the
zSeries benchmark center;
[ (h)] wherein the CCCD includes identifying a client
benchmark request;
[(i)] wherein the identified benchmark request is in one of
the following forms, (i) a client benchmark request to prove at
least one of, (a) the client's workload performance and, (b) the
client's scaling capability, (ii) a request to provide a performance
2
Appeal2013-005715
Application 11/548,307
proof point on an independent software vendor (ISV) product
and, (iii) a request to evaluate internal technology options;
[(j)] wherein the CCCD further includes describing the
request environment;
[(k)] wherein the CCCD further includes describing the
measurement environment, the measurement environment
including (i) software fields including operating system,
middleware, third party software vendors, application software,
and levels, (ii) hardware fields including server product name,
system size, processor clock speed, memory, cache sizes,
firmware level for every system in the configuration, controllers,
capacity, disk types, data protection level, firmware, physical
layout and (iii) network fields including switches, interconnect
types and speeds
[(l)] wherein the CCCD further includes determining
whether the request meets the criteria for characterization, the
criteria being based upon, (i) whether the request environment
and measurement environment of interest, (ii) whether the
resources and timeframe available for the characterization, and
(iii) whether the approvals in place to collect client workload data
in the benchmark center;
[(m)] wherein the CCCD further includes initiating a
request for data collection to an instrumenter provided the
requests meets criteria for characterization, the initiating the
request for data collection to the instrumenter being via an e-mail
to the instrumenter, which contains the request to collect
instrumentation data for the client along with instructions of how
to collect the data;
[(n)] wherein the CCCD further includes collecting raw
instrumentation data in the central data repository by supplying
executables to the instrumenter, the executables used to drive
start, stop, reset and dump functions, wherein an instrumentation
run begins when a start instrumentation function is submitted via
a special job that invokes a TIA/GIA application, the start
instrumentation job control language including user specified
parameters that are specific to the nature of the configuration and
workload to be instrumented;
[ ( o)] wherein the CCCD further includes initiating a
request for data reduction which includes notifying a data
3
Appeal2013-005715
Application 11/548,307
reducer running on a service machine that files are ready to be
reduced with instruction of which report is to be generated and
transferring dump job files to a pre-defined user id.
REJECTIONS
Claims 1, 8, 10, 11, and 13-16 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1, 8, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dinker (US 2007/0011330 Al, pub. Jan. 11, 2007), Berg
(US 2009/0055594 Al, pub. Feb. 26, 2009), Gabryjelski (US 7,475,189 B2,
iss. Jan. 6, 2009), Ulrich (US 2004/0002839 Al, pub. Jan. 1, 2004), and
Bantz (US 2006/0155608 Al, pub. July 13, 2006).
Claims 13-16 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Dinker, Berg, Gabryjelski, Ulrich, Bantz, and Anderson
(US 2001/0027467 Al, pub. Oct. 4, 2001).
ANALYSIS
Non-Statutory Subject Matter
In rejecting claims 1, 8, 10, 11, and 13-16 under 35 U.S.C. § 101, the
Examiner concludes that the claims, considered as a whole, are directed to
an abstract idea. Final Act. 2-5. In this regard, the Examiner reasons that
there is a weighing against patent eligibility, because the claims do not recite
a machine or transformation and are "a mere statement of a concept 'general
concepts' (e.g., mental activity (e.g., measuring and characterizing)[)]." Id.
at 3.
Appellants argue that claim 1 ties the process to a particular machine,
i.e., a processor in a zSeries benchmark center environment. Br. 4--5.
4
Appeal2013-005715
Application 11/548,307
Appellants assert that claim 1 "relates to providing a client workload
characterization for the claimed 'processor in a zSeries benchmark center
environment"' (Br. 4), and "the claimed processor is the device being
evaluated" (id. at 5) and "is key to the entire method" (id.).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "laws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is directed to a patent-ineligible abstract idea. If so, we then consider
the elements of the claim - both individually and as an ordered
combination - to assess whether the additional elements transform the
nature of the claim into a patent-eligible application of the abstract idea. Id.
Here, we agree with Appellants (Br. 4) that claim 1 relates to
providing a workload characterization for a processor in a zSeries
benchmark center environment (i.e., a physical object). As such, claim 1 is
inextricably tied to the processor and is not directed to an abstract idea.
Therefore, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 101 of independent claim 1 and claims 8, 10, 11, and 13-16, which depend
therefrom.
5
Appeal2013-005715
Application 11/548,307
Obviousness
Independent claim 1 and dependent claims 8, 10, and 11
We are persuaded by Appellants' argument that the Examiner has
failed to address specific limitations of independent claim 1 and, thus, has
failed to establish a prima facie case of unpatentability with respect to claim
1 and claims 8, 10, and 11, which depend therefrom. Br. 5-7.
Here, neither the Examiner's stated rejection nor the Examiner's
responsive arguments show how the combination of Dinker, Berg,
Gabryjelski, Ulrich and Bantz discloses or suggests at least limitations (g),
(n) and ( o) of claim 1. For example, limitations (n) and ( o) in claim 1 are
not addressed in either the Final Office Action or the Examiner's Answer.
With respect to limitation (g) in claim 1, the Examiner relies on Ulrich
for disclosing implementing feedback algorithms for controlling a
simulation model. Final Act. 9 (citing Ulrich i-fi-f l-2). But the rejection
does not otherwise show how the combination discloses or suggests the
language recited in limitation (g) of claim 1. Nor does the rejection explain
why it would have been readily apparent to one of ordinary skill to arrive at
limitation (g), as recited in claim 1, in view of Ulrich's disclosure of a
feedback loop.
As such, the Examiner has failed to provide the necessary factual
basis to establish a prima facie case of unpatentability. Therefore, we do not
sustain the Examiner's rejection of independent claim 1under35 U.S.C.
§ 103(a). For the same reasons, we also do not sustain the Examiner's
rejection of dependent claims 8, 10, and 11.
6
Appeal2013-005715
Application 11/548,307
Dependent claims 13-16
Claims 13-16 depend from independent claim 1. The rejection of
these claims based on Anderson, in combination with Dinker, Berg,
Gabryjelski, Ulrich and Bantz, does not cure the deficiency in the
Examiner's rejection of claim 1. Therefore, we do not sustain the
Examiner's rejection of claims 13-16 under 35 U.S.C. § 103(a) for the same
reasons set forth above with respect to independent claim 1.
DECISION
The Examiner's rejection of claims 1, 8, 10, 11, and 13-16 under
35 U.S.C. § 101 is reversed.
The Examiner's rejections of claims 1, 8, 10, 11, and 13-16 under
35 U.S.C. § 103(a) are reversed.
REVERSED
7