Ex Parte Benayon et al

Patent Trial and Appeal Board

Feb 26, 2016

12858695 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/858,695 08/18/2010
43168 7590 03/01/2016
LAW OFFICE OF MARCIAL. DOUBET, P. L.
PO BOX 1087
Lake Placid, FL 33862
FIRST NAMED INVENTOR
Jay W. Benayon
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.
CA920100027US 1 6410
EXAMINER
SWARTZ, STEPHENS
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
03/01/2016 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):
mld@mindspring.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY W. BENA YON, MARIYA M. KOSHKINA, WILLIAM G.
O'FARRELL, and VINCENT F. SZALOKY
Appeal2013-009548
Application 12/858,695
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
BRUCE T. WIEDER Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 2, 5-8, 11-15, 18-21, 24, and 25 which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
SUMMARY OF THE DECISION
We AFFIRM-IN-PART.
Appeal2013-009548
Application 12/858,695
THE INVENTION
The Appellants' claimed invention is directed to calculating resource
usage for process simulation in a computing system (Spec., para. 3).
Claim 1, reproduced below with the numbering in brackets added, is
representative of the subject matter on appeal.
1. A computer-implemented method of calculating resource usage
for process simulation in a computing system, comprising:
[ 1] maintaining a sorted list of all scheduled time slots of a
resource, each of the scheduled time slots representing a start time
through an end time during which a single user is scheduled to
use the resource and a number of units of the resource to be used in
the time slot, the sorted list sorted by the start time of each of the
scheduled time slots;
[2] initializing a count of simultaneous units used for the
resource and a count of simultaneous users of the resource;
[3] selecting, from the sorted list, all of the scheduled time slots
for which the start time is less than a current time; and
[ 4] for each of the selected time slots for which the end time
thereof is greater than the current time, incrementing the count of
simultaneous units used for the resource by the number of units
represented by the selected time slot and incrementing the count of
simultaneous users of the resource by one, and otherwise, deleting the
selected time slot from the sorted list.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1-12 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
2. Claim 1-25 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Schriber, Thomas J and Brunner, Daniel, 1997, Inside
Discrete-Event Simulation Software How It Works and Why it Matters in
further view of Coppinger (US 7,865,896 B2, iss. Jan. 4, 2011), Wang (US
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Appeal2013-009548
Application 12/858,695
2010/0198776 Al, pub. Aug. 5, 2010), and Babka (US 2003/0028656 Al,
pub. Feb. 6, 2003).
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 1
ANALYSIS
Re} ection under 3 5 U.S. C. § 101
The Examiner has determined that claim 1 does not meet the
requirements of 3 5 U.S. C. § 101 because it is directed to an abstract idea
(Final Rej. 4). The Examiner has also determined in the analysis that the
machine or transformation test has not been met and that the preamble is
non-limiting and that the method could be done by a person (Final Rej. 2-5,
Ans. 4, 5).
In contrast, the Appellants have argued that the method of claim 1 is
performed by a computer with the required transformation (Appeal Br. 17-
19, Reply Br. 2, 3). The Appellants have also argued that the rejection of
claim 1 is improper because the method step of calculating resource usage is
not done by a person because the preamble recites that the method is
computer-implemented (Appeal Br. 18).
We agree with the Examiner. Here, the preamble is non-limiting in
the scope of claim 1 and the claimed method steps are directed to an abstract
idea. The claimed method steps could be performed in a series of mere
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2013-009548
Application 12/858,695
mental steps and the claim is directed to an abstract idea. Even taking the
recitation of the preamble to be a limitation to the claim, the mere recitation
of performing the mental steps on a computer would fail to transform the
abstract idea into patent eligible subject matter for claim 1. For these
reasons this rejection of claim 1 is sustained. The same arguments have
been presented for claims 2-12 and the rejection of these claims is sustained
for the same reasons given above.
Rejection under 35 U.S.C. § 103(a)
The Appellants argue that the rejection of claim 1 is improper because
the cited prior art fails to disclose claim limitation [ 4] (Appeal Br. 28-30).
The Appellants also argue that even taking the argued elements to be in the
citations to Coppinger and Babka, that combination of references would not
have been obvious (Appeal Br. 24--26, 30).
In contrast, the Examiner has determined that the cited claim
limitation is found in Coppinger at Figure 152 and col. 6:14--39, and Babka
at paras. 32 and 39 (Final Rej. 8, 9, Ans. 8, 9).
We agree with the Appellants. Claim limitation [ 4] requires:
[ 4] for each of the selected time slots for which the end time thereof is
greater than the current time, incrementing the count of simultaneous
units used for the resource by the number of units represented by the
selected time slot and incrementing the count of simultaneous users of
the resource by one, and otherwise, deleting the selected time slot
from the sorted list. (Claim 1, emphasis added).
2 The Final Rejection at page 6 also refers to Coppinger at Figure 18 but this
is considered a typographical error since that reference only has 15 figures.
The Answer at pages 7 and 8 does refer to Coppinger at Figure 15.
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Application 12/858,695
Here, the cited portions of Coppinger and Babka fail to disclose that for the
claimed conditions "incrementing the count of simultaneous users of the
resource by one." For instance, Coppinger at Figure 15, step 1570,
decreases virtual resources by the job Ji's usage but not "incrementing the
count of simultaneous users of the resource by one." Regardless, the cited
combination of references to meet the cited claim limitation [ 4] in the claim
lacks articulated reasoning with rational underpinnings without
impermissible hindsight and the rejection of record for claim 1 is not
sustained. The remaining claims contain a similar claim limitation and the
rejection of these claims is not sustained for the same reasons given above.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-12 under 35 U.S.C. § 101.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1-25 under 35 U.S.C. 103(a) as listed in the Rejections
section above.
DECISION
The Examiner's rejection of claims 13-25 is reversed. The
Examiner's rejection of claims 1-12 is sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 3 7 C.F .R. § 1.13 6( a). See 3 7 C.F .R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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