Ex Parte Aydin et al

Patent Trial and Appeal Board

Sep 21, 2016

13282714 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/282,714 10/27/2011 Burcu Aydin
56436 7590 09/23/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82748347 3047
EXAMINER
VIZV ARY, GERALD C
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
09/23/2016 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):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BURCU AYDIN, KEMAL GULER,
and MEHMET OGUZ SAY AL
Appeal2014-006109
Application 13/282,7141
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-15. We have jurisdiction under 35 U.S.C.
§ 6(b ).
1 "The real party in interest is Hewlett-Packard Development Company, LP,
a limited partnership established under the laws of the State of Texas and
having a principal place of business at 11445 Compaq Center West Drive,
Houston, TX 77070, U.S.A. (hereinafter 'HPDC'). HPDC is a Texas limited
partnership and is a wholly-owned affiliate of Hewlett-Packard Company, a
Delaware Corporation, headquartered in Palo Alto, CA. The general or
managing partner ofHPDC is HPQ Holdings, LLC." Appeal Br. 2.
Appeal2014-006109
Application 13/282,714
We AFFIRM.
ILLUSTRATIVE CLAIM
1. A method performed by at least one processing
system, the method comprising:
comparing at least first and second contracts having
different lengths of time using uncertainty information
corresponding to a non-overlap period between the first and the
second contracts using the processing system; and
providing an output that represents a comparison between
the first and the second contract based on the uncertainty
information using the processing system.
REJECTIONS
I. Claims 1-7 are rejected under 35 U.S.C. § 101 as failing to
comply with the utility requirement. Answer 3--4.
II. Claims 1-7 are rejected under 35 U.S.C. § 112, first paragraph,2
as failing to enable one of ordinary skill in the art to use the claimed
invention. Id. at 4.
III. Claims 1-7 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement. Id. at 3.
IV. Claims 1-15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Chen-Ritzo et al. (US 2008/0177615 Al, pub. July 24,
2008) ("Chen-Ritzo") and Baldwin et al. (US 2008/0126171 Al, pub.
May 29, 2008) ("Baldwin"). Final Action 4--15.
2 The Examiner sets forth rejections under 35 U.S.C. § 112 as alternatively
based upon either the pre-AIA or AIA version of the statute. Answer 3--4.
Because the Appellants' application was filed before September 16, 2012,
the pre-AIA version of the statute is applied herein.
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Application 13/282,714
FINDINGS OF FACT
We rely upon and adopt the Examiner's findings stated in the Final
Office Action at pages 2-15 and the Answer at pages 5-9, except as stated
otherwise in the Analysis below. Additional findings of fact may appear in
the Analysis below.
ANALYSIS
Rejection I
The Answer sets forth a new ground of rejection for claims 1-7 under
35 U.S.C. § 101, as lacking either a specific and substantial asserted utility
or a well-established utility. Answer 3. According to the Examiner, the
recitation in the Specification that "[a] processing device may be a laptop"
(Spec. 11: 15) is insufficient to define the processing device as hardware, but
merely indicates that it "may be" a device. Id. at 4.
As the Federal Circuit has stated, to violate the utility requirement of
35 U.S.C. § 101, "the claimed device must be totally incapable of achieving
a useful result." Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d
1555, 1571 (Fed. Cir. 1992).
We agree with the Appellants that providing an example, in the
Specification, describing a processing device as a laptop computer does not
deprive the claims of utility. Reply Br. 12.
Accordingly, the rejection of claims 1-7 under 35 U.S.C. § 101, as
lacking utility, is not sustained.
Rejection II
The Answer sets forth a new ground of rejection for claims 1-7 under
35 U.S.C. § 112, first paragraph, stating that- in view of the rejection
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under 35 U.S.C. § 101 for a lack of utility- "one skilled in the art clearly
would not know how to use the claimed invention." Answer 4.
"The questions of whether a specification provides an enabling
disclosure under § 112, i-f 1, and whether an application satisfies the utility
requirement of§ 101 are closely related." In re Swartz, 232 F.3d 862, 863
(Fed. Cir. 2000). The utility requirement of 35 U.S.C. § 101 requires that
the claimed invention be operable to achieve a useful result. Id. Where the
invention is inoperative, the claims also fail to satisfy the enablement
requirement of 35 U.S.C. § 112, first paragraph, because a skilled artisan
cannot practice the invention. Id.
As explained above, the rejection under 35 U.S.C. § 101 for a lack of
utility is not sustained. Further, as the Appellants contend, the Specification
describes how to use the claimed subject matter. See Reply Br. 11-12
(citing Spec. 5: 28 - 6: 14, Fig. 5). Accordingly, we do not sustain the
rejection of claims 1-7 under 35 U.S.C. § 112, first paragraph, as failing to
enable one of ordinary skill in the art to use the claimed invention.
Rejection III
The Answer sets forth a new ground of rejection for claims 1-7 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Answer 3. According to the Answer, the claims
contain subject matter that was not described in the Specification in a way
that would reasonably convey to one skilled in the relevant art that the
Appellants, at the time the application was filed, had possession of the
claimed invention because independent claim 1 and dependent claims 3 and
6 recite "using the processing system," which could be software only. Id.
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In response, the Appellants contend that a person of ordinary skill in
the art would understand that the claimed system comprises physical
devices, such that the Specification reveals possession of the claimed
embodiments. Reply Br. 11.
Indeed, claims 1-7 recite a method that would involve implementation
with physical devices, as the Appellants contend, which would be required
to provide the "output" of claim 1.
Accordingly, we do not sustain the rejection of claims 1-7 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Rejection IV
The Appellants identify three limitations of independent claim 1 as
being absent from the prior art references, Chen-Ritzo and Baldwin:
"comparing at least first and second contracts"; the contracts having
"different lengths of time" with a "non-overlap period"; and the comparison
"using uncertainty information." Appeal Br. 9-13.
As explained in tum below, the Appellants' arguments are not
persuasive of error in the rejection of claim 1.
The Appellants rely upon the same arguments, with regard to the other
independent claims (claims 8 and 12). See Appeal Br. 13-20. For the same
or similar reasons that apply to claim 1, the Appellants' arguments are not
persuasive of error in the rejection of claims 8 and 12.
Accordingly, the rejection of independent claims 1, 8, and 12, as well
as their respective independent claims 2-7, 9-11, and 13-15, as unpatentable
under 35 U.S.C. § 103(a), is sustained.
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1. "comparing at least first and second contracts"
The Appellants dispute the Examiner's finding that Chen-Ritzo
teaches comparing at least two contracts, arguing that Chen-Ritzo merely
"rep lac[ es] a set of terms in a contract and provid[ es] a profitability potential
for each of the alternative sets of terms" and thus does not involve at least
two contracts "with terms already set within those individual contracts."
Reply Br. 5.
The Appellants' argument is unpersuasive.
To begin with, as a matter of claim interpretation, claim 1 does not
limit the claimed "contracts" to ones with pre-set terms, as the Appellants
contend, nor does claim 1 exclude hypothetical contracts. Thus, the
Appellants' argument is not commensurate with the scope of claim 1. See In
re Self, 671F.2d1344, 1350 (CCPA 1982).
Moreover, as a factual matter, Chen-Ritzo discloses an embodiment
that "receives a range and/or alternative set of terms," which is said to stand
"[i]n stark contrast" to "conventional methods and systems" that "simulate
potential profitability for a single instance of contract terms," such that
Chen-Ritzo does not require using only a single contract only. Chen-Ritzo
i-f 24 (emphasis added).
2. "different lengths of time" I "non-overlap period''
The Examiner finds that the "different lengths of time" and "non-
overlap period" feature of the contracts recited in claim 1 is taught by
Baldwin, which describes a "planning and logistics integration module" that
"perform[ s] profitability analyses on repair, replace, and overhaul
decisions," as well as a "longevity estimator" that estimates the duration of a
component, and thus entails contracts for new parts that do not overlap with
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the contract time of parts being discarded. Answer 5---6 (quoting Baldwin
iTiT 55, 77).
The Appellants dispute this finding, arguing that "[ m ]erely planning
ahead for 'profitability analyses on repair, replace, and overhaul decisions'
does not suggest that this is either done before a contract for equipment is
signed or that this equipment is the actual subject of a contract," but rather
"[i]t merely suggests that a person may decide whether to repair, replace, or
overhaul certain equipment based on the analysis described in Baldwin."
Reply Br. 6.
To the contrary, however, Baldwin discloses the use of such
"profitability analyses on repair, replace, and overhaul decisions" (Baldwin
iT 55) in the context of the contracting process - describing "a management
model 601 to assist an organization to prepare for a PBL [performance-based
logistics] contract" (id. iT 42; see also id. iTiT 50, 55, Fig. 11 ).
Thus, the Appellants' argument is not persuasive.
3. "using uncertainty information"
The Examiner finds that Chen-Ritzo teaches claim 1 's "using
uncertainty information." Final Action 4; Answer 7-9.
The Appellants do not dispute this particular finding, but instead
argue that neither Chen-Ritzo (Appeal Br. 12-13) nor Baldwin (Reply Br. 7)
alone teaches or suggests "using uncertainty information" that is also
"corresponding to a non-overlap period between the first and the second
contracts," per claim 1.
The Appellants' argument is unpersuasive because the Examiner's
analysis does not conflate these two features of claim 1. As explained
above, the Examiner relies upon Baldwin for the feature of a "non-overlap
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period" (Final Action 5; Answer 5---6) and relies upon Chen-Ritzo for the
feature of "using uncertainty information" (Final Action 4; Answer 7-9).
The Appellants offer no reason why these two features may not be taught by
separate references in an obviousness analysis.
Accordingly, the Appellants' argument is unpersuasive.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-7 for
violating the utility requirement under 35 U.S.C. § 101.
We REVERSE the Examiner's decision rejecting claims 1-7 under
35 U.S.C. § 112, first paragraph, as failing to enable one of ordinary skill in
the art to use the claimed invention.
We REVERSE the Examiner's decision rejecting claims 1-7 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We AFFIRM the Examiner's decision rejecting claims 1-15 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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