Ex Parte DeCusatis et al

Patent Trial and Appeal Board

May 11, 2018

13708989 (P.T.A.B. May. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/708,989 12/08/2012
126453 7590 05/15/2018
International Business Machines Corporation - IT
Rich Lau - IPLaw Department
2455 South Road, B/008-2
Poughkeepsie, NY 12601
Casimer M. DeCusatis
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.
POU920100090US2 3485
EXAMINER
COUSINS, JOSEPH M
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
05/15/2018 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):
poiplaw2@us.ibm.com
ituchman@tuchmanlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CASIMIR M. DeCUSATIS, THOMAS A. GREGG,
RAJARAM B. KRISHNAMURTHY, and ANURADHA RA0 1
Appeal2017-004184
Application 13/708,989
Technology Center 2400
Before JASON V. MORGAN, BETH Z. SHAW, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 1-20, which are all the claims pending in the application. See
Appeal Br. 2. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants name International Business Machines Corporation as the real
party in interest. See Appeal Br. 2.
Appeal2017-004184
Application 13/708,989
STATEMENT OF THE CASE
Invention
Appellants' invention relates "to energy management of data center
networks." Spec. ,r 2. 2
Exemplary Claim
Claims 1, 8, and 15 are independent claims. Claim 8 is exemplary and
is reproduced below with the limitation at issue italicized:
8. A system comprising:
a central computer to establish an energy use policy for a
computer data center network and to collect energy costs from a
plurality of utilities provisioning energy to the computer data
center network; and
computer nodes in the computer data center network to
receive a query that obtains current draw information from the
computer nodes and that provides instructions for the energy
use policy to be implemented at the computer nodes;
wherein the central computer determines an optimal
utilities configuration for the plurality of utilities provisioning
energy to the computer data center network that yields an
optimal energy consumption for the computer data center
network based on the energy costs and the energy use policy;
wherein the central computer reallocates data traffic on
the computer data center network based on the optimal utilities
configuration.
Appeal Br. 20-21.
2 This Decision refers to: (1) Appellants' Specification filed December 8,
2012 ("Spec."); (2) the Final Office Action ("Final Act.") mailed September
14, 2015; (3) the Appeal Brief ("Appeal Br.") filed March 14, 2016; (4) the
Examiner's Answer ("Ans.") mailed November 15, 2016; and (5) the Reply
Brief ("Reply Br.") filed January 10, 2017.
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REFERENCES
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Chen et al. ("Chen")
Park et al. ("Park")
Harmon et al. ("Harmon")
US 2007/0183320 Al
US 2008/0075028 Al
US 8,886,361 Bl
REJECTI0NS 3
Aug.9,2007
Mar. 27, 2008
Nov. 11, 2014
Claims 8-14 stand rejected under 35 U.S.C. § 112, second paragraph
as indefinite. Final Act. 10-13.
Claims 1-20 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over the combination of Harmon, Park, and Chen. Final Act. 13-20.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellants. Arguments not made are waived. See
Manual of Patent Examining Procedures ("MPEP") § 1205.02; 37 C.F.R.
§ 4I.37(c)(l)(iv) (2015).
ANALYSIS
Rejection under§ 112, second paragraph of Claims 8-14
Issue: Whether the Examiner correctly determines claims 8 and 9
invoke interpretation under 35 U.S.C. § 112, sixth paragraph, and thus are
indefinite under 35 U.S.C. § 112, second paragraph for failing to clearly link
or associate the disclosed structure in the Specification to the claimed
functions.
3 The rejection of claims 15-20 under 35 U.S.C. § 101 as being directed to
nonstatutory subject matter is withdrawn. See Ans. 2.
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The Examiner determines the limitation "computer nodes in the
computer data center network to receive a query that obtains current draw
information from the computer nodes and that provides instructions for the
energy use policy to be implemented at the computer nodes," as recited in
claim 8, invokes 35 U.S.C. § 112, sixth paragraph, because the limitation
uses "a placeholder 'computer nodes' coupled with functional language 'to
receive ... ' without reciting sufficient structure to achieve the function."
Final Act. 9. The Examiner states "[s]ince the claim limitation(s) invokes
35 U.S.C. 112(±) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 8-9
has/have been interpreted to cover the corresponding structure described in
the specification that achieves the claimed function, and equivalents
thereof." Id. The Examiner then rejects the claim under 35 U.S.C. § 112,
second paragraph, noting "the written description fails to clearly link or
associate the disclosed structure, material, or acts to the claimed function
such that one of ordinary skill in the art would recognize what structure,
material, or acts perform the claimed function." Final Act. 11.
Appellants appeal the rejection of claim 8 under 35 U.S.C. § 112,
second paragraph, and argue the "term 'computer nodes' does not invoke a
means-plus-function interpretation" under 35 U.S.C. § 112, sixth paragraph.
Appeal Br. 8, emphasis omitted.
We are unpersuaded. Special rules of claim construction allow for
claim limitations drafted in functional language and are set forth in pre-AIA
35 U.S.C. § 112, sixth paragraph, which provides
[ a ]n element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and
such claim shall be construed to cover the corresponding
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Application 13/708,989
structure, material, or acts described in the specification and
equivalents thereof.
35 U.S.C. § 112, sixth paragraph (emphasis added). While this provision
permits a claim limitation to be set forth using solely functional language, it
operates to restrict such claim limitations to those structures, materials, or
acts disclosed in the specification ( or their equivalents) that perform the
claimed function. Personalized Media Commc 'ns, LLC v. Int 'l Trade
Comm 'n, 161 F.3d 696, 703 (Fed. Cir. 1998).
The Federal Circuit has established that use of the term "means" is
central to the analysis of whether a claim limitation should be interpreted in
accordance with 35 U.S.C. § 112, sixth paragraph: use of the word "means"
creates a rebuttable presumption that the inventor intended to invoke § 112,
sixth paragraph, whereas failure to use the word "means" creates a
rebuttable presumption that the inventor did not intend the claims to be
governed by§ 112, sixth paragraph. Id. at 703---04. However, this
presumption against its invocation can be overcome, and therefore § 112,
sixth paragraph will apply, despite failure to use the word "means," if the
"claim term fails to 'recite[] sufficiently definite structure' or else recites
'function without reciting sufficient structure for performing that function."'
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en
bane) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).
Generic terms such as "mechanism," "element," "device," and other
"nonce words" used in a claim can also be considered as a substitute for the
"means-plus-function" limitation and, as such, may invoke the application of
35 U.S.C. § 112, sixth paragraph, even without reciting the term "means,"
because these generic terms or nonce words "'typically do not connote
sufficiently definite structure."' Williamson, 792 F.3d at 1350.
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35 U.S.C. § 112, sixth paragraph is, therefore, invoked to interpret a
claim when there is a "means-plus-function" limitation recited therein in
order to determine whether that claim is indefinite under 35 U.S.C. § 112,
second paragraph. Should the terms of the claim be limited entirely to the
structure disclosed in the Specification, then to be definite under 35 U.S.C.
§ 112, second paragraph, the Specification must clearly describe the
structure that performs the claimed function. See In re Donaldson Co., 16
F.3d 1189, 1195 (Fed. Cir. 1994). If the "means-plus-function" limitation
recited in the claim does not have adequate supporting disclosure in the
Specification, then the claim fails to particularly point out and distinctly
claim the invention as required under 35 U.S.C. § 112, second paragraph.
See In re Donaldson, 16 F.3d at 1195 ("[I]f one employs means-plus-
function language in a claim, one must set forth in the specification an
adequate disclosure showing what is meant . . . . If an applicant fails to set
forth an adequate disclosure, the applicant has in effect failed to particularly
point out and distinctly claim the invention as required by the second
paragraph of section 112.").
Thus, the correct analysis of Appellants' claim 8 under 35 U.S.C.
§ 112, second paragraph, involves two questions: (1) whether the term
"computer node" recited in claim 8 is used as a substitute for the "means-
plus-function" limitation and, as such, invokes the application of 35 U.S.C.
§ 112, sixth paragraph; and (2) once the term "computer node" is treated as a
"means-plus-function" limitation, whether Appellants' Specification
discloses sufficient corresponding structure, i.e., an algorithm for performing
the functions recited in the "computer node" limitation. See Ex parte
Rodriguez, 92 USPQ2d 1395 (BP AI 2009) (precedential); Williamson, 792
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F.3d at 1339. In other words, if 35 U.S.C. § 112, sixth paragraph is invoked,
an indefiniteness rejection under§ 112, second paragraph, is appropriate if
Appellants' Specification discloses no corresponding algorithm associated
with a computer. Aristocrat Techs. Australia Pty Ltd. v. Int 'l Game Tech.,
521 F.3d 1328, 1337-38 (Fed. Cir. 2008). However, mere reference to a
general purpose computer or processor with appropriate programming
without providing an explanation of the appropriate programming, or to
"software" without providing detail about the means to accomplish the
software functions, is not an adequate disclosure. Id. at 1334; Finisar, 523
F .3d at 1340-41. Likewise, simply reciting the claimed functions in the
Specification, while saying nothing about how the computer or processor
ensures that those functions are performed, is not a sufficient disclosure for
an algorithm that, by definition, must contain a sequence of steps.
Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir.
2009). As an example, an algorithm is defined as a "finite sequence of steps
for solving a logical or mathematical problem or performing a task."
MICROSOFT COMPUTER DICTIONARY 23 (5th ed. 2002). An applicant may
express the algorithm in the specification in any understandable terms
including as a mathematical formula, in prose, in a flow chart, or "in any
other manner that provides sufficient structure." Finisar Corp. v. DirecTV
Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008).
Claim 8 is directed, in part, to "[a] system, comprising:
computer nodes in the computer data center network to receive
a query that obtains current draw information from the
computer nodes and that provides instructions for the energy
use policy to be implemented at the computer nodes.
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Appellants' election not to use the word "means" in the "computer
nodes" limitation creates a rebuttable presumption that the inventor did not
intend this claim limitation to be governed by§ 112, sixth paragraph.
Personalized Media, 161 F.3d at 703-704. This presumption, however, may
be overcome if the "computer nodes" limitation "recites 'function without
reciting sufficient structure for performing that function'." Williamson, 792
F.3d at 1348 (quoting Watts, 232 F.3d at 880).
That is the case here. The limitation recites functions including
receiving a query "without reciting sufficient structure for performing that
function." Williamson, 792 F.3d at 1348 (citation and internal quotation
marks omitted). A computer node per se cannot normally accomplish the
recited functions without means for doing so; in fact, the limitation
"computer nodes" to receive a query seems little more than a synonym for
"means for" receiving a query. See, e.g., id. at 1350 (explaining that "nonce
words that reflect nothing more than verbal constructs may be used in a
claim in a manner that is tantamount to using the word 'means' because they
'typically do not connote sufficiently definite structure' and therefore may
invoke§ 112, para 6." (citation omitted)).
Appellants argue "the broadest reasonable interpretation [ of] the term,
'computer node"' is a computer acting as a node on a larger network, and
thus the term has "a sufficiently definite meaning as a name for structure."
Appeal Br. 9.
We disagree computer node discloses sufficient structure. In the
context of software, the disclosed structure is a general purpose computer
programmed to perform a disclosed algorithm. WMS Gaming, Inc. v. Int 'l
Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999) ("In a means-plus-
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function claim in which the disclosed structure is a computer, or
microprocessor, programmed to carry out an algorithm, the disclosed
structure is not the general purpose computer, but rather the special purpose
computer programmed to perform the disclosed algorithm."). A general
purpose computer alone is insufficient if the Specification fails to disclose an
algorithm for performing the claimed functions. Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008).
For example, in Ex parte Lakkala (Appeal 2011-001526 (PTAB
March 13, 2013) (informative)), we concluded that the term "processor" is
used as merely a substitute (i.e., "nonce word") for the "means-plus-
function" limitation and thus invokes the application of§ 112, sixth
paragraph. In addition, we also concluded because the specification fails to
disclose an algorithm for performing the functions recited in the "processor"
limitation, the claim fails to describe sufficient corresponding structure as
required for a limitation interpreted under 35 U.S.C. § 112, sixth paragraph,
and, as such, is indefinite under 35 U.S.C. § 112, second paragraph.
We, thus, agree with the Examiner that the term "computer node" is a
nonce word and thus the limitation is treated as a "means-plus-function"
limitation that invokes 35 U.S.C. § 112, sixth paragraph.
Once the term "computer node" is treated as a "means-plus-function"
limitation, we determine whether Appellants' Specification discloses
sufficient corresponding structure. We note that the Specification discloses
the "system may also include a software agent at each computer node and/or
the central computer node to collect the query data" and the "central
computer node may transmit the packet." Spec. ,r 6. Appellants, however,
fail to indicate where the Specification provides instructions on how the
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claimed computer node, which could be code (i.e., software agent)
implemented by a general purpose computer, is actually capable of
performing the claimed functions. Despite providing several general
references to "instructions" for carrying out the claimed functions (Spec.
,r,r 8, 12), the Specification is silent regarding the algorithm, or sequence of
steps, specifying precisely how to carry out the claimed functions. Rather,
the Specification simply recites the claimed functions and provides no
guidance about how the claimed computer nodes ensures that those
functions are performed. See Advanced Ground Info. Sys. v. Life360, Inc.,
830 F.3d 1341, 1349 (Fed. Cir. 2016) ("A patentee cannot claim a means for
performing a specific function and subsequently disclose a 'general purpose
computer as the structure designed to perform that function' because this
'amounts to purely functional claiming."' ( quoting Aristocrat, 521 F .3d at
1333)).
We, therefore, conclude that the indefiniteness rejection under§ 112,
second paragraph, of claim 8 is appropriate because Appellants fail to
indicate where the Specification discloses a corresponding algorithm
associated with the functions performed by the claimed computer node.
Aristocrat, 521 F.3d at 1337-38. Claims 10-14 are not argued separately
and are therefore rejected for similar reasons.
Claim 9 depends from claim 8 and is further directed to the "system of
claim 8 further comprising a load balancer to at least one of prioritize the
data traffic and provide fairness in the reallocated data traffic."
Appellants' failure to use the word "means" in the "load balancer"
limitation creates a rebuttable presumption that the inventor did not intend
this claim limitation to be governed by § 112, sixth paragraph. Personalized
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Media, 161 F .3d at 703-704. However, this presumption may be overcome
if the "load balancer" limitation "recites 'function without reciting sufficient
structure for performing that function'." Williamson, 792 F .3d at 1348
(quoting Watts, 232 F.3d at 880).
We conclude the presumption against invoking§ 112, sixth paragraph
has been overcome, and thus§ 112, sixth paragraph does apply, because the
claimed limitation recites specific functions without reciting sufficient
structure for performing those functions. Here, as in claim 8, we determine
load balancer is a nonce phrase and, thus, little more than a synonym for
means for "prioritiz[ing] the data traffic and provid[ing] fairness in the
reallocated data traffic."
Because "load balancer" is treated as a "means-plus-function"
limitation, we determine whether the Specification discloses sufficient
corresponding structure. Appellants, however, do not point us to where the
Specification provides instructions for how the claimed load balancer, which
could be code implemented by a general purpose computer, is capable of
performing the claimed functions. Although the Specification generally
discloses that "computer readable program codes may additionally use a
load balancer to prioritize the data traffic and/or provide fairness in the
reallocated data traffic." (Spec. ,r 13), the Specification is silent regarding
the algorithm, or sequence of steps, specifying precisely how to carry out the
various claimed functions of the load balancer. Rather, the Specification
simply recites the claimed functions and provides no guidance about how the
claimed load balancer ensures that those functions are performed. See
Advanced Ground, 830 F.3d 1341, 1349 ("A patentee cannot claim a means
for performing a specific function and subsequently disclose a 'general
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purpose computer as the structure designed to perform that function'
because this 'amounts to purely functional claiming."' ( quoting Aristocrat,
521 F.3d at 1333)).
We, therefore, conclude that the indefiniteness rejection under§ 112,
second paragraph, of claim 9 is appropriate because Appellants fail to
indicate where the Specification discloses a corresponding algorithm
associated with the functions performed by the claimed load balancer.
Aristocrat, 521 F.3d at 1337-38.
Rejection under§ 103 (a) of Claims 1-20
Issue: Whether the Examiner errs in finding the combination of
Harmon, Park, and Chen teaches or suggests "wherein the central computer
reallocates data traffic on the computer data center network based on the
optimal utilities configuration," as recited in claim 8.
In rejecting claim 8, the Examiner indicates "Park fails to disclose
wherein the central computer reallocates data traffic on the computer data
center network as claimed in claim 8. However, Chen ... discloses wherein
the central computer reallocates data traffic on the computer data center
network." Final Act. 16 (citing Chen ,r,r 8, 29).
Appellants argue the combination of Chen and Harmon fails to teach
the limitation at issue. See Appeal Br. 16-17.
In response to Appellants' argument, the Examiner finds "Harmon
teaches controlling systems and nodes operational on and off times to
maximize energy efficiency" and "Park teaches reallocating and routing
traffic based on the energy levels at each node. Thus the combination
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teaches reallocating data traffic based on the optimal utilities configuration."
Ans. 7-8.
Appellants respond:
In the Final Office Action, the Office states, "However, Park
fails to disclose wherein the central computer reallocates data
traffic on the computer data center network as claimed in claim
8." FOA, p. 16. The Office now contradicts itself, arguing,
without any supporting evidence, that "Park teaches
reallocating and routing traffic based on the energy levels at
each node."
Reply Br. 13. Appellants further argue "Park does not contemplate or
suggest reallocating network traffic based on the energy levels at each node"
and "the Office does not provide any evidence supporting its interpretation
of the alleged teaching in Park." Reply Br. 13.
We find Appellants' arguments persuasive. In changing the rejection
to rely on Park rather than Chen, the Examiner does not designate any
specific teachings from Park that teach the limitation at issue. Thus, the
rejection fails to meet the required standard set forth at 35 U.S.C. § 132 for
an informative rejection. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011); Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132
"is violated when a rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection.").
Furthermore, while the Examiner indicates that "Park fails to disclose
wherein the central computer reallocates data traffic on the computer data
center network as claimed in claim 8," the Examiner inconsistently cites to
Park's paragraph 81 as teaching that very feature the Examiner indicates
Park fails to disclose. See Final Act. 16. We have reviewed Park's
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paragraph 81, and although it discloses a base station receiving "a route
request message including energy-aware information, from nodes" we
disagree that the paragraph teaches "reallocating and routing traffic based on
the energy levels at each node." Ans. 7-8. Accordingly, on this record, the
Examiner has not shown how the combination of Harmon, Park, and Chen
teaches or suggests "wherein the central computer reallocates data traffic on
the computer data center network based on the optimal utilities
configuration," as recited in claim 8. Because Appellants have shown at
least one reversible error in the Examiner's rejection of claim 8, we need not
reach Appellants' remaining arguments.
Because we are persuaded of Examiner error, we do not sustain the
Examiner's 35 U.S.C. § 103 rejection of independent claim 8 and
independent claims 1 and 15, which include a limitation similar to that of the
limitation at issue for claim 8. We also do not sustain the Examiner's
35 U.S.C. § 103 rejection of dependent claims 2-7, 9-14, and 16-20, which
are argued with claim 8 and include similar limitations.
We do not decide the issue of whether other teachings of Harmon,
Park, and Chen may be combined to teach or suggest the limitation at issue,
because that issue is not before us.
DECISION
We affirm the Examiner's decision rejecting claims 8-14 under
35 U.S.C. § 112, second paragraph.
We reverse the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 103(a).
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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-IN-PART
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