Ex Parte Harrison et al

Patent Trial and Appeal Board

Dec 15, 2016

13915707 (P.T.A.B. Dec. 15, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/915,707 06/12/2013 Jim A. Harrison GB920120085US2 1014
(780CON)
46320 7590
CRGO LAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
12/19/2016 EXAMINER
MASKULINSKI, MICHAEL C
ART UNIT PAPER NUMBER
2113
NOTIFICATION DATE DELIVERY MODE
12/19/2016 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIM A. HARRISON, ROB C. JONES,
PHIL R. LEE, and ANDY WRIGHT
Appeal 2015-005756
Application 13/915,7071
Technology Center 2100
Before CATHERINE SHIANG, MELISSA A. HAAPALA, and
KAMRAN JIVANI, Administrative Patent Judges.
JIVANI, Administrative Patent Judge.
REQUEST FOR REHEARING
On November 14, 2016, Appellants filed a Request for Rehearing
under 37 C.F.R. § 41.52 (“Req. Reh’g”) requesting reconsideration of our
Decision on Appeal of September 14, 2016 (“Decision” or “Dec.”). In our
Decision, we affirmed, inter alia, the rejection of claims 1—6 under
35 U.S.C. § 103(a). We have reconsidered our Decision in light of
Appellants’ Request for Rehearing, but Appellants have not persuaded us
that we misapprehended or overlooked any matters in our Decision.
Therefore, we deny Appellants’ Request for Rehearing.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
Appeal 2015-005756
Application 13/915,707
ANALYSIS
At issue is the following limitation in independent claim 1: “the
performance metric falling outside a threshold variance from the
benchmark.” App. Br. 4; Reply Br. 3. Appellants contend, “The proactive
prevention of failure based upon memory usage exceeding a threshold on a
SQL Server, however, is not equivalent to the claimed ‘benchmark’ defined
by the Board to mean a ‘standard against which measurement or
comparisons are to be made.’” Req. Reh’g 4. Appellants further contend,
“the ‘metrics’ of Dickerson, are not related to the performance of a synthetic
transaction—but to the performance of ‘components.’” Id. at 5 (emphasis
omitted).
We find Appellants’ arguments unpersuasive for the reasons given in
our prior Decision. More specifically, we remain unpersuaded by
Appellants’ argument that Smith’s “proactive prevention of failure based
upon memory usage exceeding a threshold on a SQL Server, however, is not
equivalent to the claimed ‘benchmark’” because it is not responsive to the
Examiner’s findings as adopted by the Board. In our Decision, we construed
“the term benchmark to encompass, inter alia, a standard against which
measurements or comparisons can be made,” and stated:
In light of the above construction, we are not persuaded by
Appellants’ argument that the cited references fail to meet
limitation LI. Rather, we agree with the Examiner that
Dickerson’s monitoring of performance data produced in
response to execution of a synthetic transaction (i.e., the
performance metric) and the synthetic transaction itself (i.e., the
benchmark) in combination with Smith’s use of proactive
failover when a monitored event exceeds a threshold (i.e., the
metric falling outside a threshold variance from the benchmark)
2
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Application 13/915,707
at minimum suggests limitation LI. Ans. 6—7; Dickerson 6:21—
24.
Dec. 4. Thus, we agreed with and adopted the Examiner’s finding that
Dickerson’s synthetic transactions meet the claimed benchmark, not Smith’s
“proactive prevention of failure based upon memory usage exceeding a
threshold on a SQL Server,” as Appellants assert.2 Compare id. with Req.
Reh’g 4. Appellants’ argument regarding Smith’s use of proactive failover
amounts to merely arguing the references individually. Where, as here, a
rejection is based on a combination of references, one cannot show non­
obviousness by attacking references individually. In re Keller, 642 F.2d
413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). The relevant inquiry is whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of the references. Keller, 642 F.2d at 425. Appellants
fail to explain why one of ordinary skill in the art would not understand
Dickerson’s synthetic transactions as meeting the claimed benchmark. We
observe Dickerson describes using synthetic transactions as standards
against which measurements or comparisons can be made. See, e.g.,
Dickerson 2:36—39 (“The method further comprises monitoring results of
successive synthetic transactions carried out by the agents, in order to detect
any errors or failures associated with the successive transactions.”).
We are similarly not persuaded by Appellants’ argument that the
“metrics” of Dickerson are not related to the performance of a synthetic
2 We subsequently referred, in a single instance, to “Smith’s synthetic
transactions,” and hereby amend that statement to refer to “Dickerson’s
synthetic transactions.” Dec. 5.
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Appeal 2015-005756
Application 13/915,707
transaction and thus do not teach the claimed performance metrics. Req.
Reh’g 5. The Examiner’s findings, with which we agreed in our Decision
and reproduced above, rely on Dickerson’s performance data as meeting the
claimed performance metric. Dec. 4. Dickerson teaches this performance
data is produced in response to execution of a synthetic transaction. Id.
(citing Ans. 6—7; Dickerson 6:21—24). Specifically, Dickerson recites,
“Moreover, the agent monitors performance data produced in response to
execution of the synthetic transaction, and sends such performance data to
monitoring server 316.” Dickerson 6:21—24. Finally, to the extent
Appellants contend Dickerson fails to teach or suggest the performance data
(i.e., metric) “falling outside a threshold variance” as claimed, the Examiner
found and we agreed that Smith teaches or suggests using proactive failover
when a monitored event exceeds a threshold (i.e., the metric falling outside a
threshold variance from the benchmark). Dec. 4.
Accordingly, Appellants fail to show that we misapprehended or
overlooked arguments and evidence in rendering our Decision. We,
therefore, deny Appellant’s Request for Rehearing.
CONCLUSION
We have granted Appellants’ Request for Rehearing to the extent that
we have reconsidered our Decision dated September 14, 2016. Appellants
have not shown that we misapprehended or overlooked any issue of law or
fact in reaching our Decision. Accordingly, we deny Appellants’ Request
for Rehearing.
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Appeal 2015-005756
Application 13/915,707
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).
REHEARING DENIED
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