Ex Parte Iqbal et al

Patent Trial and Appeal Board

Feb 21, 2017

12955560 (P.T.A.B. Feb. 21, 2017)

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.
12/955,560 11/29/2010 Mickey Iqbal END920060187US2 7710
37945 7590 02/23/2017
DTTKFW YFF
EXAMINER
YEE AND ASSOCIATES, P.C. FEENEY, BRETT A
P.O. BOX 802333
DALLAS, TX 75380 ART UNIT PAPER NUMBER
2822
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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):
ptonotifs @yeeiplaw.com
mgamez @ yeeiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICKEY IQBAL and FRANCES F. WAND
Appeal 2014-0079801
Application 12/955,5602
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—16 and 25—27. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Throughout this opinion, we refer to the Appellants’ Supplemental Appeal
Brief (“Appeal Br.,” filed May 21, 2014), Reply Brief (“Reply Br.,” filed
July 11, 2014), and Specification (“Spec.,” filed Nov. 29, 2010), and to the
Examiner’s Answer (“Ans.,” mailed June 12, 2014), and Final Office Action
(“Final Act.,” mailed Nov. 29, 2013).
2 According to the Appellants, the real party in interest is “International
Business Machines Corporation of Armonk, New York.” Appeal Br. 2.
Appeal 2014-007980
Application 12/955,560
STATEMENT OF THE CASE
The Appellants’ invention “relates to a method, system and computer
program product for determining an optimal configuration and operational
costs for executing an application or operating a business.” Spec. 11.
Claims 1, 9, and 25 are the independent claims on appeal. Claims 1
and 25 are illustrative of the subject matter on appeal and are reproduced
below (bracketing and paragraphing added for reference):
1. A method of determining a configuration for a
computer system, the method comprising the steps of:
[(a)] a computer receiving user selection of a plurality of
different priority levels for a respective plurality of different
computer system specifications to indicate a plurality of different
respective importances of meeting the respective different
computer system specifications in the configuration of the
computer system, wherein there are a plurality of different user-
selectable priority levels for each of the computer system
specifications, and one of the computer system specifications
comprises a go-live date for the computer system;
[(b)] the computer changing the user-selected priority
level for the go-live date specification to reduce an inconsistency
with the user-selected priority level for another of the plurality
of computer system specifications; and
[(c)] the computer determining and making an electronic
record of a configuration for the computer system based in part
on (a) the changed priority level for the go-live date specification
and (b) the other user-selected priority levels for the other
computer system specifications.
25. A method of determining a hardware configuration for
a computer, the method comprising the steps of:
a processor receiving user specifications of
(a) a minimum CPU power for the computer,
(b) an optimal CPU power for the computer,
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Application 12/955,560
(c) a minimum memory size for the computer,
(d) an optimal memory size for the computer, and
(e) anticipated usage peak to average ratio of usage
for an application that will execute on the computer, and
in response,
the processor changing at least one but not all of the
specifications that is inconsistent with another of the
specifications and configuring the computer based on the
at least one changed specification and one or more of the
specifications that are not changed, and
determining a cost of the computer configured
based on the at least one changed specification and the one
or more unchanged specifications.
Appeal Br. 29, 30-31, 33 (Claims App.).
REJECTIONS
Claims 1—16 and 25—27 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 3.
Claims 1—3, 5—11, and 13—16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kelley (US 2002/0013895 Al, pub. Jan. 31,
2002), Smirnov (US 7,188,075 Bl, iss. Mar. 6, 2007), and Roehrle
(US 2007/0027934 Al, pub. Feb. 1, 2007). Id. at 7.
Claims 4 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kelley, Smirnov, Roehrle, and Lubrecht (US
2006/0161884 Al, pub. July 20, 2006). Id. at22.3
3 Although the heading for the rejection states that claims 1—3, 5—11, and
13—16 are rejected over Kelley, Smirnov, Roehrle, and Lubrecht, the body of
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Application 12/955,560
Claims 25—27 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Lubrecht. Id. at 24.
FINDINGS OF FACT
The findings of fact in the Analysis section below are supported at
least by a preponderance of the evidence.* * * 4
ANALYSIS
35 U.S.C. § 112 — Written Description
Claims 1—16
The Examiner rejects claim 1 as failing to comply with the written
description because the Specification does not reveal the manner in which
the user-selected priority level is changed, as recited in independent claims 1
and 9, i.e., “the computer changing the user-selected priority level for the
go-live date specification to reduce an inconsistency with the user-selected
priority level for another of the plurality of computer system specifications,”
in such a way as to reasonably convey to one skilled in the art that the
Appellants had possession of the claimed invention at the time the
the rejection only discusses claims 4 and 12. Final Act. 22—24.
Furthermore, the Appellants understand that only claims 4 and 12 are
included in this rejection. See Appeal Br. 24. Thus, we consider the
heading to be harmless error and the rejection to apply to claims 4 and 12.
4 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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application was filed.5 Final Act. 3. The Examiner finds that the
Specification does not provide
any generic or specific algorithms, steps, or code/rules described
in the instant specification that shows that [Appellants were] in
possession of a computer system that changes user-selected
priority levels of computer system specifications. Further, there
is no description that provides for how one of ordinary skill in
the art would practice the instant invention with any conventional
or novel algorithm or technique.
Id. at 3^4. The Examiner further finds that because the particular steps for
identifying an inconsistency, performing a harmonization, and the changes
made to harmonize the inconsistencies are not disclosed, “the claims are
directed to a ‘black box’ computer that produces some ethereal result that
minimizes inconsistencies, determines an optimal configuration, and
associated costs.” Id. at 4.
The Appellants contend the rejection is in error because the
Specification provides “explicit support” for the limitation. Appeal Br. 6.
The Appellants direct attention to paragraphs 3, 16, 17, 19, and 20 of the
Specification for “stat[ing] that if the priority levels assigned to different
‘requirements’, including ‘go-live date’ date, are inconsistent with each
other, the computer adjusts one or both of them to be consistent with each
other.” Id. at 7; see also id. at 8—10.
We first note that the claims do not require identifying an
inconsistency but rather changing the priority level for the go-live data
specification for the purpose of reducing an inconsistency. The cited
paragraphs of the Specification provide for a user selecting and adjusting a
5 We note that the rejection is one of possession, not enablement. Cf.
Appeal Br. 6; Reply Br. 3.
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priority level of business-technical variables, harmonizing the selected
priority level “in order to minimize any inconsistencies among the priority
level selected” and “determining the optimal configuration and associated
operating costs.” Spec. Tflf 3, 17. The CMS costing tool “is configured to
automatically adjust the priority level assigned by an end user/owner to
minimize inconsistencies among the business-technical variables or input
data.” Id. 119. The decision and sensitivity analysis tool “creates a decision
hierarchy based on all known criteria and identifies the various alternatives
based on its interaction with other sub-components of the CMS costing
tool.” Id. 120.
We find the Specification provides adequate support to reasonably
convey to one of skill in the art that the Appellants had, at the time the
invention was filed, possession for changing a priority level of the date
specification for the purpose of reducing an inconsistency.
Therefore, we do not sustain the Examiner’s rejection under § 112,
first paragraph, of independent claims 1 and 9, and of claims 2—8 and 10-16
which depend therefrom.
Claims 25—27
The Examiner rejects independent claim 25 and dependent claims 26
and 276 for a similar reason as for claims 1 and 9, i.e., that the Specification
does not reveal the manner in which the specification is changed, as recited
in independent claim 25, i.e., “the processor changing at least one but not all
6 Although the heading for the rejection includes claim 24, we note that
claim 24 has been cancelled, and consider the inclusion of claim 24 as
harmless error.
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of the specifications that is inconsistent with another of the specifications,”
in such a way as to reasonably convey to one skilled in the art that the
Appellants had possession of the claimed invention at the time the
application was filed.7 Final Act. 5.
The Appellants similarly direct attention to paragraphs 3, 16, 17, 19,
and 20 for providing adequate support. Appeal Br. 11—16. As discussed
above, the cited paragraphs provide for harmonizing and adjusting the
priority level to minimize inconsistencies and to create a hierarchy. See
Spec. 3, 17, 19. The Specification also provides for determining an
optimal configuration using the inputted variables, factual data, and business
rules (id. 13) and for processing input data against facts and rules to
calculate costs (id. 119).
We note that the Specification does not specifically discuss or define
what would make a specification “inconsistent” with another specification.
However, the ordinary and customary meaning of “inconsistent” is being
incompatible with or disagreeing with another element. See Inconsistent,
Merriam-Webster Dictionary.com, https://www.merriam-
webster.com/dictionary/inconsistent. As such, the limitation requires
changing a specification that is incompatible with or that disagrees with
another specification, for example by violating a business rule. See Spec.
13. What makes a specification incompatible or in disagreement with
another is a matter of breadth.
Thus, we find that, similar to claim 1 above, the Specification
provides adequate support to reasonably convey to one of skill in the art that
7 As with claim 1, we note that the rejection is one of possession, not
enablement. Cf. Appeal Br. 6; Reply Br. 3.
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the Appellants had, at the time the invention was filed, possession for
changing a specification that is inconsistent, i.e., incompatible or disagrees,
with another specification for any reason.
Therefore, we do not sustain the Examiner’s rejection under § 112,
first paragraph, of claim 25 and of claims 26 and 27, which depend from
claim 25.
35 U.S. C. § 103 — Obviousness
Each of the independent claims 1 and 9 requires that a computer
changes “the user-selected priority level for the go-live date specification to
reduce an inconsistency with the user-selected priority level for another of
the plurality of computer system specifications,” as recited in limitation (b)
of claim 1. We are persuaded by the Appellants’ argument that the prior art
does not disclose this limitation. See Appeal Br. 21—22; see also Reply
Br. 5.
The Examiner relies on Smirnov and Roehrle for disclosing this
limitation of claims 1 and 9. See Final Act. 10—12. The Examiner finds that
Smirnov discloses the computer changing the user-selected priority level for
the specification of the delivery date to reduce an inconsistency as claimed.
See id. at 11. The Examiner further finds Smirnov does not “explicitly recite
a go-live date per se,” and relies on Roehrle for “teaching] creating rules
and priorities including a go live date.” Id. at 12; see also Ans. 45.
Smirnov discloses that a user is able to apply constraints on a product
configuration such as desired price or availability date (referred to by the
Examiner as the delivery date (Final Act. 11)). Smirnov, col. 3,11. 7—11.
The user can “specify in advance limitations and constraints on parameters
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considered critical to the customer . . . [and] specify in advance that other
parameters are less critical.” Id. at col. 3,11. 29—33. “This prioritizing of
product features and parameters allows the needs of the respective parties to
be identified so that the chance of a sale that is satisfactory to all parties is
optimized.” Id. at col. 3,11. 34—39. The priority for a specification such as
color can be changed in order to meet the specified date and price, and the
priority for price can be changed in order to meet the specified date and
color. Id. at col. 3,11. 40-45. The availability date of the configured product
is determined at the end of the configuration process and then fed back to the
user. Id. at col. 4,11. 45—55. If the date is not acceptable to the user, the user
may change the configuration or sales parameters or not buy the product. Id.
at col. 4,11. 55—60.
As such, Smirnov discloses that if the user specifies the availability
date in advance, then the priority of other specifications may be changed.
Otherwise, the availability date is provided at the end of the configuration
process and would change only upon changes to other specifications. In
both situations, the availability date specification is not changed. Thus, we
do not agree with the Examiner’s finding that Smirnov discloses the
computer changing the selected priority level for the availability/delivery
date for the purpose of reducing an inconsistency, but find that Smirnov
discloses changing the priority level of another specification for the purposes
of reducing an inconsistency with the availability/delivery date.
Roehrle does not cure this deficiency. Roehrle at paragraph 53
discloses creating rules for such situations as large software applications
going live on the same day and enforcing priorities so that low-priority
projects are not started until higher-priority projects are completed. Roehrle
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does not teach changing the priority of the go-live day specification for the
purpose of reducing an inconsistency with another specification or rule.
Based on the foregoing, we are persuaded that the Examiner’s
rejection of independent claims 1 and 9 under § 103(a) is in error. Thus, we
do not sustain the rejection of independent claims 1 and 9 and claims 2, 3, 5—
8, 10, 11, and 13—16, which depend therefrom. Because the Examiner relies
on the same inadequately supported finding for the rejection of claims 4 and
12, which depend from claims 1 and 9, respectively, we also do not sustain
the rejection of those claims.
35 U.S.C. § 102 — Anticipation
We are persuaded by the Appellants’ argument that Lubrecht does not
disclose “the processor changing at least one but not all of the specifications
that is inconsistent with another of the specifications,” as recited in
independent claim 25.
The Examiner cites to paragraphs 48, 53, 54, and 102—105 of
Lubrecht for disclosing this limitation. Final Act. 27—28; Ans. 48 49.
However, we agree with the Appellants that Lubrecht’s translating of
business requirements into a consistent terminology does not meet the
claimed changing of at least one but not all of the specifications that is
inconsistent or incompatible with another specification. See Appeal Br. 27;
see also Reply Br. 6—7. We further agree with the Appellants that
Lubrecht’s “what-if ’ scenarios for the modeling technique also do not teach
changing one but not all of the specifications that is inconsistent or
incompatible with another of the specifications, as required. See Reply
Br. 7.
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Based on the foregoing, we are persuaded that the Examiner’s
rejection of independent claim 25 under § 102(e) is in error. Thus, we do
not sustain the rejection of independent claim 25 and claims 26 and 27,
which depend therefrom.
DECISION
The Examiner’s rejection of claims 1—16 and 25—27 under 35 U.S.C.
§112, first paragraph, are REVERSED.
The Examiner’s rejections of Claims 1—16 under 35 U.S.C. § 103(a)
are REVERSED.
The Examiner’s rejection of claims 25—27 under 35 U.S.C. § 102(e) is
REVERSED.
REVERSED
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