Ex Parte BASH et al

Patent Trial and Appeal Board

Feb 21, 2017

13460572 (P.T.A.B. Feb. 21, 2017)

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.
13/460,572 04/30/2012 Cullen E. BASH 82833792 1299
56436 7590
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
BROCKINGTON III, WILLIAM S
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CULLEN E. BASH,
YUAN CHEN,
KIARA GROVES CORRIGAN,
DANIEL JUERGEN GMACH,
DEJAN S. MILOJICIC, and
AMIP J. SHAH
Appeal 2014-008612
Application 13/460,5721
Technology Center 3600
Before HUBERT C. LORIN, JAMES A. WORTH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Cullen E. Bash, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1—15. We have jurisdiction under 35
U.S.C. § 6(b) (2002).
1 The Appellants identify Hewlett-Packard Development Company, LP as
the real party in interest. App. Br. 3.
Appeal 2014-008612
Application 13/460,572
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for facilitating assessment of a service, said method
comprising:
a) acquiring, by a processor, values of a plurality of metrics
corresponding to the service, wherein the plurality of metrics
comprise at least two of energy consumption, resource consumption,
carbon dioxide emissions, water use, recycling, and operating cost;
b) accessing, by the processor, weights that a user has
respectively assigned to each metric of the plurality of metrics; and
c) calculating, by the processor, a service-level metric value for
the service through calculation of a function that statistically evaluates
the weights respectively assigned to the plurality of metrics and the
acquired values of the plurality of metrics.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Parker US 2004/0059628 A1 Mar. 25, 2004
Zhao US 2010/0046369 A1 Feb. 25, 2010
Abgrall US 2012/0083300 A1 Apr. 5, 2012
The following rejections are before us for review:
Claims 1—3, 8--11, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Parker.
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2. Claims 4—6, 12, and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Parker and Zhao.
3. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Parker, Zhao, and Abgrall.
ISSUES
Did the Examiner err in rejecting claims 1—3, 8—11, 14, and 15 under
35 U.S.C. § 103(a) as being unpatentable over Parker?
Did the Examiner err in rejecting claims 4—6, 12, and 13 under 35
U.S.C. § 103(a) as being unpatentable over Parker and Zhao?
Did the Examiner err in rejecting claim 7 under 35 U.S.C. § 103(a) as
being unpatentable over Parker, Zhao, and Abgrall?
FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 1—3, 8—11, 14, and 15 under 35 U.S.C. § 103(a) as
being unpatentable over Parker.
The Appellants argued these claims as a group. See App. Br. 6—13.
We select claim 1 as the representative claim for this group, and the
remaining claims 2, 3, 8, 11, 14, and 15 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
The Appellants argue that Parker does not disclose a “plurality of
metrics compris[ing] at least two of energy consumption, resource
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consumption, carbon dioxide emissions, water use, recycling, and operating
cost” (claim 1).
[Although Parker may describe an assessment system that may
be applied to a service relationship between "manufacturers and
component suppliers," it is respectfully submitted that Parker
appears simply to describe relationships, other than that between
a fund management group (FMG) and brokers, in which the
qualities of advice, timeliness, and cost of services may be
applied. As such, because qualities of advice, timeliness, and
cost of services, as applied to a manufacturers/component
supplier relationship, as well as the other relationship pairs
discussed in Parker, are not equivalent to any of the metrics
recited in the above-cited section of independent claim 1, Parker
fails to disclose each and every element recited in independent
claim 1.
App. Br. 9.
The argument is unpersuasive as to error in the rejection.
The claim step at issue is “a) acquiring, by a processor, values of a
plurality of metrics corresponding to the service, wherein the plurality of
metrics comprise at least two of energy consumption, resource consumption,
carbon dioxide emissions, water use, recycling, and operating cost” (claim
1). In other words, a processor acquires data, albeit the data represents a
certain type of information: “values of a plurality of metrics corresponding
to the service, wherein the plurality of metrics comprise at least two of
energy consumption, resource consumption, carbon dioxide emissions, water
use, recycling, and operating cost.”
The Examiner’s finding that Parker discloses a processor acquiring
data is not being disputed. See Final Act. 3. Accordingly, the dispute is over
the type of information the data represents.
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According to the Appellants, Parker is directed to “a service
relationship between ‘manufacturers and component suppliers’ ... in which
the qualities of advice, timeliness, and cost of services may be applied”
(App. Br. 9) and that this is different from the claimed “plurality of metrics
comprise at least two of energy consumption, resource consumption, carbon
dioxide emissions, water use, recycling, and operating cost” (claim 1).
However, there is insufficient evidence showing that the processor or its
data-acquiring operation is functionally affected by the data representing the
claimed metrics rather than representing Parker’s service-related
information.
Given said lack of sufficient evidence, it is thus reasonable to
characterize said claimed metrics, describing the values the processor
acquires, as nonfunctional descriptive material; that is, akin to printed
matter. Just as printed matter is not given patentable weight, similarly the
“values of a plurality of metrics corresponding to the service, wherein the
plurality of metrics comprise at least two of energy consumption, resource
consumption, carbon dioxide emissions, water use, recycling, and operating
cost” claim limitations, as a distinction over Parker’s service-related
information, are not patentably consequential. “[NJon-fimctional descriptive
material, being useful and intelligible only to the human mind, is given no
patentable weight.” Ex parte Graf, Appeal 2012-003941, 2013 WL
3873066, at *4 (PTAB July 23, 2013) (non-precedential), affd, In re Graf,
585 F. App’x. 1012 (Fed. Cir. 2014) (non-precedential); cf In re DiStefano,
808 F.3d 845 (Fed. Cir. 2015); explained in In re Xiao, 462 F. App’x. 947,
950-52 (Fed. Cir. 2011) (non-precedential):
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[T]he Board did not create a new “mental distinctions” rule in
denying patentable weight .... On the contrary, the Board
simply expressed the above-described functional relationship
standard in an alternative formulation—consistent with our
precedents—when it concluded that any given position label’s
function ... is a distinction “discemable only to the human
mind.” Board Decision at 6; sqq In re Lowry, 32F.3d 1579, 1583
(Fed. Cir. 1994) (describing printed matter as “useful and
intelligible only to the human mind”) (quoting In re Bernhart, 57
C.C.P.A. 737, 417 F.2d 1395, 1399 (CCPA 1969)).
“The rationale behind this line of cases is preventing the indefinite patenting
of known products by the simple inclusion of novel, yet functionally
unrelated limitations.” King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010
There being no other argument challenging the rejection of claim 1,
the rejection of claim 1 is affirmed for the foregoing reasons. Because
claims 2, 3, 8, 11, 14, and 15 stand or fall with claim 1, their rejection is also
sustained.
Claims 9 and 10
These claims are separately argued at Appeal Brief 11—12. Regarding
claim 9, the Appellants do not say much except to argue that the claim
limitation “determining a class-level metric value from the plurality of
service-level metric values of the plurality of services in the class of
services” is not disclosed in Parker as the Examiner alleges. App. Br. 11—
12. Specifically,
Appellants respectfully submit that a single business area rating,
or a single score for each broker [as Parker discloses at para. 45],
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are not equivalent to a class-level metric. Indeed, neither a single
business area rating nor a broker can reasonably be considered
either a class-level service or a service-level metric.
App. Br. 11—12. A similar argument is made against the rejection of claim
10 which depends from claim 9 and where the limitation at issue calls for
“determining a superset-level metric value from the plurality of class-level
metric values.”
Claims 9 and 10 depend from claim 8 which in turn depends from
claim 1. Claim 1 describes a method related to “service-level metric value.”
Claim 8 further limits claim 1 by adding steps related to “service-level
metric values.” Claims 9 and 10 further limit the method by adding a step to
determine a “class-level metric value” and a “superset-level metric value”,
respectively. Claims 1, 8, 9, and 10 correspond to a hierarchy of values —
as depicted in Figure 5.
The Examiner relies on para. 45 of Parker as evidence that said claim
9 and 10 limitations at issue are disclosed in the prior art. Final Act. 6—7.
Para. 45 describes generating a weighted aggregate rating from sub-area
ratings and weightings. It also describes generating a single score from all
ratings data supplied by applying all weightings in the weightings hierarchy
to the ratings data. In relying on para. 45, the Examiner is in effect taking
the position that in generating a rating from sub-area ratings or generating a
score from all ratings data, as Parker discloses, Parker necessarily
determines a class-level rating value based on values in the class. We agree.
To one of ordinary skill in the art, para. 45 of Parker discloses a hierarchy of
values. Given this, we do not see and the Appellants do not explain why,
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one of ordinary skill in the art would be led contrariwise; that is, not to
determine a hierarchy of values.
In emphasizing the term “metric” in the argument, it would appear
that the Appellants are challenging Parker more on the ground that it fails to
disclose the term “metric” than that it fails to disclose determining a
hierarchy of values. In that regard, it should be pointed out that the claim
steps at issue are not directed to determining metrics. Rather, they
determine “values.” The term “metric” is descriptive of the value. There is
insufficient evidence on record to show that the descriptive term “metric”
functionally affects the value or its determination. There appears to be no
difference between the claimed class-level value determination and the
manner in which Parker generates a rating or score. If there is a difference,
it resides in the type of information they represent; that is, in contrast to the
claimed metric, Parker generates a weighted aggregate ratings or scores for
brokers. However, there is insufficient evidence showing that claimed
determination step is functionally affected by the value representing a
“class-level metric value” (claim 9) or a “superset-level metric value” (claim
10) rather than representing a rating or score as Parker discloses.
Accordingly, it is reasonable to characterize the claim term “metric” as
nonfunctional descriptive material. As a distinction over Parker, the term
“metric” in claims 9 and 10 are not patentably consequential. See the
discussion above summarizing the case law on printed matter. Thus, the
Appellants’ apparent challenge to Parker on the ground that it fails to
disclose the term “metric” is not persuasive as to error in the rejection.
For the foregoing reasons, the rejection is sustained.
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The rejection of claims 4—6, 12, and 13 under 35 U.S.C. § 103(a) as being
unpatentable over Parker and Zhao.
The rejection of claim 7 under 35 U.S.C. § 103(a) as being unpatentable
over Parker, Zhao, and Abgrall.
These rejections are comprehensively explained at Final Act. 9—14.
There are no detailed arguments challenging any of the findings or the
rationale leading to the conclusions of obviousness set out in these
rejections. Rather, the Appellants make general statements that the
Examiner “has not and cannot reasonably assert” that the cited prior art
discloses what is claimed and nevertheless “the proposed combination would
still fail to result in each and every element recited” in the claims. App. Br.
13—14. We are unpersuaded by these general statements that the rejections
are in error.
For the foregoing reasons, the rejections are sustained.
CONCLUSIONS
The rejection of claims 1—3, 8—11, 14, and 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Parker is affirmed.
The rejection of claims 4—6, 12, and 13 under 35 U.S.C. § 103(a) as
being unpatentable over Parker and Zhao is affirmed.
The rejection of claim 7 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Parker, Zhao, and Abgrall is affirmed.
DECISION
The decision of the Examiner to reject claims 1—15 is affirmed.
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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).
AFFIRMED
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