Ex Parte Dan et al

Patent Trial and Appeal Board

Jun 30, 2016

12136215 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/136,215 06/10/2008 Asit Dan
48063 7590 07/05/2016
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
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.
YOR9200505 l 7US2 5176
EXAMINER
BOSWELL, BETH V
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
nyoffice@rml-law.com
wel@rml-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASIT DAN, RENNER GIMPEL, and REIKO LUDWIG
Appeal2014-005380 1
Application 12/13 6,2152
Technology Center 3600
Before ANTON W. PETTING, JAMES A. WORTH, and
BRUCE T. WIEDER, Administrative Patent Judges.
WORTH, 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 1-19. We have jurisdiction under 35 U.S.C. §§ 134
and 6(b).
We AFFIRM-IN-PART.
1 Our decision refers to the Appellants' Appeal Brief ("Br.," filed Mar. 21,
2011), and the Examiner's Final Office Action ("Final Act.," mailed June
18, 2010) and Answer ("Ans.," mailed June 8, 2011).
2 According to Appellants, the real party in interest is International Business
Machines Corporation (Br. 2).
Appeal2014-005380
Application 12/13 6,215
Introduction
Appellants' disclosure relates to "service environments and, more
particularly, to the allocation of resources under the control of distributed
heterogeneous resource managers and the choice and coordination of
resource acquisition protocols to communicate with these resource
managers." (Spec. 1, 11. 11-14).
Claims 1, 13, 14, 15, and 18 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the subject matter on appeal:
1. A method for use by a service provider for allocating one
or more resources from multiple resources associated with
multiple resource managers comprising the steps of:
obtaining at least one service agreement offer from a
service client; and
automatically determining a resource allocation based on
the obtained service agreement offer, wherein the automated
step of determining the resource allocation comprises:
coordinating selection of a resource acquisition protocol from
among multiple resource acquisition protocols associated with
the multiple resource managers to acquire one or more
resources associated with at least one of the resource managers,
wherein at least one of the multiple resource acquisition
protocols utilizes a different type of resource acquisition
methodology from at least another of the multiple resource
acquisition protocols; and evaluating a performance associated
with one or more of the multiple resource acquisition protocols,
wherein the steps of obtaining the at least one service
agreement offer and automatically determining a resource
allocation are implemented via a processor device.
(Br., Claims App.)
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Rejections on Appeal
The Examiner maintains, and the Appellants appeal, the following
rejections:
1. Claims 1-9 and 13-17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Jankelewitz (US
7,035,816 B2, iss. Apr. 25, 2006) and Official Notice.
2. Claims 10-12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jankelewitz, Baseman (US
6,671,673 Bl, iss. Dec. 30, 2003), and Official Notice.
3. Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jankelewitz, Gottlieb (US
2004/0107110 Al, pub. June 3, 2004), and Official Notice.
ANALYSIS
Independent claim 1 and dependent claims 2-12
We are unpersuaded by Appellants' argument that the combination of
Jankelewitz and the noticed facts fails to disclose "coordinating selection of
a resource acquisition protocol from among multiple resource acquisition
protocols associated with the multiple resource managers," as recited by
independent claim 1 (see Br. 11 ). Appellants assert that Jankelewitz (col. 2,
11. 46-52), relied on by the Examiner, discloses only a single protocol, rather
than a "selection" thereof (Br. 11-12). Appellants point to the Specification
in support of their argument that a resource acquisition protocol uses
multiple performance criteria and selection methods (see id.).
However, the Examiner relied on Office Notice of the fact that
multiple resource acquisition protocols which utilize various different
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Application 12/13 6,215
methodologies were known in the art (Final Act. 7-8). We agree with the
Examiner that it would have been obvious for a person of ordinary skill to
select among known options for resource acquisition protocols.
To the extent Appellants challenge the Examiner's taking of Official
Notice as unsupported, we disagree. Appellants have not specifically
pointed out the supposed errors in the Examiner's action, which would
include stating why the noticed fact is not considered to be common
knowledge or well-known in the art. 37 C.F.R. § 1.104(d)(2), Manual of
Patent Examining Procedure (MPEP) § 707.07(a) (9th Ed., Mar. 2014); In re
Boon, 439 F.2d 724, 728 (CCPA 1971) (an adequate traverse must contain
adequate information or argument to create on its face a reasonable doubt
regarding the circumstances justifying Examiner's notice of what is well
known to one of ordinary skill in the art). Further, the Examiner's rejection
points to document evidence, i.e., Xue (US 2007/0226121 Al, pub. Sept. 27,
2007) and Hardwick (US 2006/0064409, pub. Mar. 23, 2006) in support of
the taking of Official Notice (Final Act. 7).
Appellants next argue that Jankelewitz's protocol discloses only
acquisition based on price and therefore does not meet the recited "resource
acquisition protocol" (Br. 12). However, the Examiner takes Official Notice
that other methodologies of resource acquisition were known besides price
(Final Act. 7). For example, in support of the taking of Official Notice, the
Examiner relies on Hardwick, which discloses a bartering system (id.).
Indeed, Hardwick discloses a system in which each party to a trade is in
need of an item possessed by the other, and in which a match is made based
on reciprocal need (see Hardwick, Abstr., Fig. 1 ). In any event, we sustain
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Application 12/13 6,215
the Examiner's finding that it was known to take into account additional
considerations besides price in making a purchase.
For these reasons, we sustain the Examiner's rejection under 35
U.S.C. 103(a) of independent claim 1. Appellants do not argue the
patentability of claims 2-12 separately from that of independent claim 1,
from which they each depend. We sustain the Examiner's rejection under 35
U.S.C. 103(a) of claims 2-12, for similar reasons as for independent claim 1.
Independent claims 13, 14, and 15 and dependent claims 16 and 17
Appellants do not argue the patentability of independent claims 13,
14, and 15 separately from that of independent claim 1. We sustain the
Examiner's rejection under 35 U.S.C. 103(a) of independent claims 13, 14,
and 15, for similar reasons as for independent claim 1.
Appellants do not argue the patentability of claims 16 and 17
separately from that of independent claim 15, from which they depend. We
sustain the Examiner's rejection under 35 U.S.C. 103(a) of claims 16 and 17,
for the same reason as for independent claim 15.
Independent claim 18 and dependent claim 19
Appellants argue that Gottlieb (i-fi-f 2-10) fails to disclose optimizing
allocation of resources based on execution of resource allocation protocols
as recited by independent claim 18, i.e., "coordinating execution of the one
or more resource allocation protocols to yield an optimal allocation; wherein
at least one of the resource allocation protocols utilizes a different type of
resource acquisition methodology from at least another of the resource
allocation protocols." Appellants argue that Gottlieb relates to
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transportation and delivery of products using multiple vehicles, and that the
Examiner does not explain how this relates to a resource allocation protocol
(Br. 14). We are persuaded by this argument.
The Examiner determines that it would have been obvious to modify
the resource allocation protocol of Jankelewitz with the optimization method
of Gottlieb such that the execution of selected protocol are optimized in the
manner disclosed in Gottlieb (Final Act. 16). The Examiner reasons that the
combination of the protocol of Jankelewitz and the optimization method of
Gottlieb would have been a predictable combination of elements that
perform the same function in combination as separately (see Final Act. 16-
17; Ans. 22). However, the Examiner does not state a reason as to why one
would have looked to Gottlieb for an optimization protocol, nor does the
Examiner adequately describe the nature of the combination of elements.
Therefore, we do not sustain the Examiner's rejection under 35 U.S.C.
103(a) of independent claim 18, and claim 19, which depends therefrom.
DECISION
The Examiner's decision to reject claims 1-17 under 35 U.S.C.
§ 103(a) is affirmed.
The Examiner's decision to reject claims 18 and 19 under 35 U.S.C.
§ 103(a) is reversed.
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-IN-PART
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