Ex Parte Bell et al

Patent Trial and Appeal Board

Feb 20, 2015

12343482 (P.T.A.B. Feb. 20, 2015)

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.
12/343,482 12/24/2008 Robert H. Bell JR. AUS920080066US2 4508
50170 7590 02/20/2015
IBM CORP. (WIP)
c/o WALDER INTELLECTUAL PROPERTY LAW, P.C.
17304 PRESTON ROAD
SUITE 200
DALLAS, TX 75252
EXAMINER
SUAREZ, FELIX E
ART UNIT PAPER NUMBER
2865
MAIL DATE DELIVERY MODE
02/20/2015 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 ROBERT H. BELL, JR., LUIGI BROCHARD, DONALD
ROBERT DESOTA, VENKAT R. INDUKURU, RAJENDRA D. PANDA,
and SAMEH S. SHARKAWI
____________

Appeal 2013-003263
Application 12/343,4821
Technology Center 2800
____________

Before CHARLES F. WARREN, ROMULO H. DELMENDO, and KAREN
M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1–20. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.

1 The Real Party in Interest is International Business Machines Corporation
(App. Br. 2).
Appeal 2013-003263
Application 12/343,482

2

Claim 1 is illustrative of the claimed subject matter:
1. A method of performance testing, comprising:
selecting an existing information handling system (IHS),
thus providing a selected existing IHS;
providing a user software program and first and second
surrogate software programs;
executing the user software program on the selected
existing IHS, thus producing a runtime result and a
michroarchitecture dependent data result;
executing the multiple surrogate programs on the selected
existing IHS to generate a runtime result and a
microarchitecture data dependent result;
executing the multiple surrogate programs on a future
IHS virtualization of the furture IHS, each of the multiple
surrogate programs exhibiting a respective runtime performance
result; and
determining a project runtime result for the executing of
the user software program on the future IHS from runtime
results and microarchitecture date dependent results of
executing the multiple surrogate programs on the selected
existing IHS and the runtime performance results of executing
the multiple surrogate programs on the virtualization of the
future IHS.

Appeal 2013-003263
Application 12/343,482

3
Independent claim 11 is drawn to a “performance projection system”
that corresponds to the method of claim 1 (Claims App’x).
The Examiner maintains the following grounds of rejection2:
1. Claim 1, 2, 7–15, 19 and 20 are rejected under 35 U.S.C. § 102(e)
as being anticipated by Burns (US 7,805,533 B2, issued Sept. 28, 2010).
2. Claims 3–5, 16 and 17 are rejected under 35 U.S.C. 103(a) as
being unpatentable over Burns in view of Naito (US 4,694,920 issued Sept.
22, 1987).
3. Claims 7, 8, 15, 16, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Burns in view of Jones (US 5,029,199 issued Jul. 2,
1991).

PRINCIPLES OF LAW
[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the
thing claimed and, thus, cannot anticipate under 35 U.S.C.
§ 102.

Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).

“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007), quoting In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000). See also, In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in

2 The rejection of claims 1–10 based on 35 U.S. C. § 101 as directed to non-
statutory subject matter was withdrawn (Answer 5).
Appeal 2013-003263
Application 12/343,482

4
patent applications is not determined solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction in
light of the specification as it would be interpreted by one of ordinary skill in
the art.); Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005)
(“[T]he specification ‘is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term.’” (Internal citation omitted)).
ANALYSIS
Upon consideration of the evidence on this record in light of the
arguments advanced by the Examiner and Appellants, we concur with
Appellants that the Examiner has not carried the burden of establishing that
the subject matter recited in independent claim 1, as well as corresponding
system claim 11, is identically described in Burns within the meaning of 35
U.S.C. § 102.
As explained by Appellants at pages 6 through 11 of the Appeal Brief
and pages 1 through 3 of the Reply Brief, the Examiner has not shown that
Burns describes “executing the multiple surrogate programs on a future HIS
virtualization” as recited in claim 1 (and the corresponding “future
virtualized HIS” of claim 11), or indeed how Burns describes “any other
virtualization” (Reply Br. 3). On this record, the Examiner has not supplied
any evidence or sufficient reasoning why Burns process/system
encompasses the claimed method/system of performance testing.
Therefore, we agree with Appellants that the Examiner has de facto
taken an unreasonably broad interpretation of the claim limitations when
considered in light of the Specification for the reasons explained in the
Briefs. As such, we cannot sustain the anticipation rejection based on Burns.
Appeal 2013-003263
Application 12/343,482

5
Accordingly, the Examiner’s 35 U.S.C §102 rejection is reversed.
The Examiner does not rely upon any of the other applied references
to cure this deficiency in Burns. Thus, the Examiner’s 35 U.S.C. § 103
rejections are also reversed.

DECISION

The Examiner’s decision is reversed.

ORDER

REVERSED
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