Ex Parte Iyoob et alDownload PDFPatent Trial and Appeal BoardNov 15, 201713292791 (P.T.A.B. Nov. 15, 2017) Copy Citation 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. 13/292,791 11/09/2011 Ilyas Iyoob 52571-P002US 5457 61060 7590 WINSTEAD PC P.O. BOX 131851 DALLAS, TX 75313-1851 EXAMINER FADOK, MARK A ART UNIT PAPER NUMBER 3625 NOTIFICATION DATE DELIVERY MODE 11/17/2017 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): patdocket@winstead.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ILYAS IYOOB, EMRAH ZARIFOGLU, MANISH MODH, and MOHAMMED FAROOQ Appeal 2016-001912 Application 13/292,7911 Technology Center 3600 Before JASON V. MORGAN, SHARON FENICK, and MICHAEL J. ENGLE, Administrative Patent Judges. FENICK, Administrative Patent Judge. DECISION ON APPEAL Introduction This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Non- Final Rejection of claims 1—60. We have jurisdiction under 35 U.S.C. § 6(b)(1). We AFFIRM. Invention Appellants’ invention relates to selecting the optimal cloud service provider(s) to service a user’s needs. Cloud capacity to be used, along with other requirements and constraints, are used to select one or more cloud service providers from a generated list of cloud service providers. Abstract. 1 Appellants identify Gravitant, Inc. as the real party in interest. App. Br. 1. Appeal 2016-001912 Application 13/292,791 Exemplary Claim Claim 1, reproduced below, is exemplary: 1. A method for selecting the optimal cloud service provider(s) to service a user’s needs, the method comprising: converting a physical capacity of servers in a non- virtualized data center into a cloud capacity; pricing said cloud capacity based on a catalog of providers to generate a list of cloud service providers that is standardized; simulating said list of cloud service providers; receiving constraints on one or more of costs, agility and quality of service; selecting, by a processor, via an optimization algorithm one or more cloud service providers from said list of cloud service providers based on said received constraints; and recalibrating said selection of one or more cloud service providers from said list of cloud service providers. Rejections The Examiner rejects claims 1—60 under 35U.S.C. § 101 as being directed to non-statutory subject matter. Non-Final Act. 2—5; Answer IS IS.2 The Examiner rejects claims 1, 2, 19-22, 39-42, 59, and 60 under 35 U.S.C. § 103(a) as being unpatentable over Moorthi et al. (US 2012/0131591 Al; pub. May 24, 2012, “Moorthi”) and Allen et al. (US 2003/0182413 Al; pub. Sept. 25, 2003, “Allen”). Non-Final Act. 6—8. 2 Appellants appear, in the Appeal Brief, to understand the rejection to be applicable only to claim 41. Appeal Br. 4—12. The Examiner clarified in the Answer that the intent was to indicate all claims as rejected with claim 41, and provided a new ground of rejection in order to clarity which claims were rejected under this ground. Answer 13—15. 2 Appeal 2016-001912 Application 13/292,791 The Examiner rejects claims 11,31, and 51 under 35 U.S.C. § 103(a) as being unpatentable over Moorthi, Allen, and Franco et al. (US 2013/0042003 Al; pub. Feb 14, 2013, “Franco”). Non-Final Act. 9. The Examiner rejects claims 3, 16—18, 23, 36—38, 43, 56—58 under 35 U.S.C. § 103(a) as being unpatentable over Moorthi, Allen, Allam et al. (US 2013/0060945 Al; pub. Mar. 7, 2013, “Allam”), either Bates (US 2012/0016845 Al; pub. Jan. 19, 2012) or Shah (US 2011/0093847 Al; pub. Apr. 21, 2011), Petri et al. (US 2012/0215582 Al; pub. Aug. 23, 2012, “Petri”), and Venugopal et al. (US 2013/0091257 Al; pub. Apr. 11, 2013, “Venugopal”). Non-Final Act. 10—15. The Examiner rejects claims 4, 5, 24, 25, 44, and 45 under 35 U.S.C. § 103(a) as being unpatentable over Moorthi, Allen, Allam, and Baumann et al. (US 2014/0344429 Al; pub. Nov. 20, 2014, “Baumann”). Non-Final Act. 15-17.3 The Examiner rejects claims 6, 7, 12, 26, 27, 32, 45, 47, and 52 under 35 U.S.C. § 103(a) as being unpatentable over Moorthi, Allen, Allam, Baumann, and either Petri or Ferris et al. (US 2011/0295999 Al; pub. Dec. 1, 2011, “Ferris”). Non-Final Act. 17—19. The Examiner rejects claims 13—15, 33—35, and 53—55 under 35 U.S.C. § 103(a) as being unpatentable over Moorthi, Allen, Allam, Iyoob et al. (US 2013/0117157 Al; pub. May 9, 2013, “Iyoob”), and Applicant’s Admitted Prior Art (“APA”). Non-Final Act. 19—21. 3 Although, here and elsewhere, there are inconsistencies in the Examiner’s headings, the body of the rejection makes evident that that the listed claims are the subject of the rejection. 3 Appeal 2016-001912 Application 13/292,791 The Examiner rejects claims 8—10, 28—30, and 48—50 under 35 U.S.C. § 103(a) as being unpatentable over Moorthi, Allen, Malloy et al. (US 2013/0046887 Al; pub. Feb. 21, 2013, “Malloy”), Schardt et al. (US 2012/0179899 Al; pub. July 12, 2012, “Schardt”), Boudreau et al. (US 2013/0074189 Al; pub. Mar. 21, 2013, “Boudreau”), and Petri. Non-Final Act. 21-24. ANAFYSIS 35 U.S.C. § 101 Patent eligibility is a question of law that is reviewable de novo. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). To be statutorily patentable, the subject matter of an invention must be a “new and useful process, machine, manufacture, or composition of matter, or [a] new and useful improvement thereof.” 35 U.S.C. § 101. There are implicit exceptions to the categories of patentable subject matter identified in 35 U.S.C. § 101, including: (1) laws of nature, (2) natural phenomena, and (3) abstract ideas. Alice Corp. v. CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014). The Supreme Court has set forth a framework for distinguishing patents with claims directed to these implicit exceptions “from those that claim patent- eligible applications of those concepts.” Id. (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). The evaluation follows a two-part analysis: (1) determine whether the claim is directed to a patent-ineligible concept, e.g., an abstract idea; and (2) if a patent-ineligible concept is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the patent-ineligible concept itself. See Alice, 134 S. Ct. at 2355. 4 Appeal 2016-001912 Application 13/292,791 In rejecting claim 1 under 35 U.S.C. § 101, the Examiner concludes that (1) the claims are “directed to the abstract idea of allowing consumers to select a best fit product or service based on optimization algorithms” and (2) “do not include additional elements . . . sufficient to amount to significantly more than the judicial exception.” Answer 14; see also Non- Final Act. 3—5. Appellants contend that the Examiner erred because, Appellants aver, the claims do not describe “a basic concept of a fundamental economic practice that would be analogous to hedging risk or intermediate settlement” or “a basic concept of a mathematical formula that would be analogous to computing alarm limits in a catalytic conversion process.” Appeal Br. 5 (referring to Alice's discussion of Bilski v. Kappos, 561 U.S. 593 (2010) and Parker v. Flook, 437 U.S. 584 (1978)). Appellants additionally argue that the claims do not (A) describe a mathematical formula or algorithm, (B) do what doctors do regularly, or (C) relate to creating a contractual relationship. Reply Br. 2—7, 12—21. However, Appellants’ requirements for analogizing the present claims to the risk hedging, intermediate settlement, catalytic conversion processes, etc. of prior cases are too narrowly drawn. See Appeal Br. 5—10; Reply Br. 2—7, 12—21. With respect to claim 1, including the steps of “pricing . . . cloud capacity ... to generate a list of cloud service providers” and “selecting, by a processor, via an optimization algorithm[,] one or more cloud service providers from said list of cloud service providers based on received constraints,” we agree with the Examiner that the claims are directed to an abstract idea of allowing consumers to select a best fit product or service based on optimization algorithms. 5 Appeal 2016-001912 Application 13/292,791 We conclude that the subject matter of Appellants’ claims is similar to that considered by the court in DIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015). In that case, the Federal Circuit found claims directed to the concept of offer-based price optimization to be directed towards an abstract idea. As in that case, automating traditional methods of selecting a product (here: a service provided by a cloud service provider) based on constraints may provide cost and time efficiencies; however, “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., 788 F.3d at 1363. Beyond the abstract idea of selecting a best fit product or service based on cost or other constraints, the claims merely recite well-understood, conventional activities or routine data gathering. See id. Our reviewing court has noted that an abstract idea may be found where conventional or generic technology is used “in a nascent but well- known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two.” In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016). We agree that this is the case here. The Examiner notes that the steps performed in claim 1 are all “generic functions that can be accomplished on a generic computer” (Answer 18) and cites to the Specification to support this. Id. at 17—18. We agree. Turning to the second part of the two-part analysis, Appellants additionally argue that the claims “include meaningful limitations so as to quality as ‘significantly more’” and become statutory subject matter. Reply Br. 7—9, 22—26; Appeal Br. 11—12. Appellants argue that the claims amount 6 Appeal 2016-001912 Application 13/292,791 to significantly more than the identified abstract idea because “the claimed solution is necessarily rooted in considering the utilization of the resources as well as the services in the cloud as well as utilizing a standardized comparison among the various cloud providers.” Appeal Br. 11. However, these ideas, to the extent they are reflected in the claims, are not significantly more that the abstract idea of the selection of a best fit product or service based on optimization algorithms. Although the subject of certain steps may be inter alia concerned with the utilization and comparison of aspects of “a non-virtualized data center,” limiting the claim “to a particular technological environment” does not confer patent eligibility. See Alice, 134 S. Ct. at 2350. With respect to the steps of the claims, the Examiner correctly notes that mere use of an online environment does not save abstract claims from ineligibility. Answer 15 (citing Ultramercial Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Circ. 2014) (finding that “invocation of the internet adds no inventive concept”)). Appellants argue, with respect to certain claim limitations, that “[i]f such limitations are within the most basic functions of a computer, then the Examiner should not need to cite so many references to reject the claims.” Reply Br. 25. However, “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the [35 U.S.C.] § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188—89 (1981). “[Ujnder the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility.” Genetic Techs. Ltd. v. Merial 7 Appeal 2016-001912 Application 13/292,791 L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). Thus, we find this argument unpersuasive. Additionally, the claim requires “pricing said cloud capacity based on a catalog of providers to generate a list of cloud service providers that is standardized” and “selecting . . . via an optimization algorithm one or more cloud service providers . . . based on said received constraints.” These elements “do not go beyond requiring the collection, analysis, and display of available information in a particular field” without specificity or limitation to technical means for performing the functions, and thus additionally do not define patentable subject matter. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351, 53-55 (Fed. Cir. 2016) For these reasons, we sustain the Examiner’s 35 U.S.C. § 101 rejection of claim 1, and claims 2—60, which Appellants do not argue separately with respect to this issue. 35 U.S.C. § 103(a)—rationale to combine With respect to the 35 U.S.C. § 103 rejections of claims 1, 3—18, 21, 23—38, 41, and 43—58, Appellants argue that the Examiner has not identified the proper elements of what Appellants call “rationale ‘B.’” Appeal Br. 12— 14, 23—25, 30-35, 48—51, 57—60, 70-73, 74—85. We understand Appellants to be referring to item B in the non-exclusive list of exemplary rationales to support a condition of obviousness provided in the Manual of Patent Examining Procedure (MPEP) § 2143. With respect to the 35 U.S.C. § 103 rejections of claims 2, 19, 20, 22, 39, 40, 42, 59, and 60, Appellants assert that the Examiner has not provided any rationale to combine Moorthi with Allen. Appeal Br. 22—23. 8 Appeal 2016-001912 Application 13/292,791 With respect to the use of “Rationale B” (i.e., “[sjimple substitution of one known element for another to obtain predictable results”), the Answer notes that the Examiner has instead used “Rationale A” (i.e., “[cjombining prior art elements according to known methods to yield predictable results”) and “Rationale G” (i.e., “[s]ome teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention”). Answer 21—22, 24—26, 28—30, 35—36; MPEP § 2143. Thus Appellants’ arguments regarding the sufficiency of the rejection under rationale B are moot. With respect to Appellants’ argument that no motivation to combine the references is provided for claims 2, 19, 20, 22, 39, 40, 42, 59, and 60, the rejection of these dependent claims is based on the rejection of independent claims 1,21, and 41, on which these claims variously depend (Non-Final Act. 6—8; Answer 21—22), and the Examiner’s statements with respect to the rationale for combination of Moorthi and Allen provided in the rejection of the independent claims apply to these dependent claims. With respect to claims 3, 8—10, 16—18, 23, 28—30, 36—38, 43, 48—50, and 56—58, Appellants additionally argue that the number of references combined “is an unusually high number of references.” Appeal Br. 30, 73. The Examiner’s reliance on many references in a rejection does not itself weigh against the combination. See In re Gorman, 933 F.2d 982 (Fed. Cir. 1991) (affirming obviousness rejection over 13 references, and explaining that “[t]he criterion, however, is not the number of references, but what they would have meant to a person of ordinary skill in the field of the invention”). 9 Appeal 2016-001912 Application 13/292,791 With respect to claims 11,31, and 51, Appellants additionally discuss the Examiner’s statement (Non-Final Act. 9) that the use of virtual machines and processing units taught by Franco would be combined with the teachings of Moorthi and Allen to “create a more optimized fit since the calculation involves more customer criteria.” Appeal Br. 25. Appellants argue that “[cjlaims 11,31, and 51 recite more than virtual machines and processor units.” Id. With respect to this additional motivation to combine, we note that Franco concerns cost control on a cloud computing system configured and run on a virtual machine topology. Franco, Abstract, 126. Although the claims do, of course, recite more than “virtual machines and processor units,” given Franco’s teachings and the combination applied by the Examiner of those teachings with other prior art, without additional argument from Appellants we find no error in the Examiner’s rejection. Appellants make similar arguments with respect to claims 3, 23, and 43 “reciting more” than discussed by the Examiner in addressing one reference; similarly we are not convinced of error in the Examiner’s rationale by this argument. Appeal Br. 33; see In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[0]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.”). With respect to claims 16, 36, and 56, Appellants argue that, because there are many ways to provide the advantage the Examiner notes would result from the combination of references, the Examiner must show why one skilled in the art would use the Examiner’s applied combination to achieve the advantage. Appeal Br. 34. However, we note that in the presence of several possible ways to provide an advantage, the proper question is whether one of ordinary skill would see the benefit of the combination. Par 10 Appeal 2016-001912 Application 13/292,791 Pharm., Inc. v. TWIPharms., Inc., 773 F.3d 1186, 1197-98 (Fed. Cir. 2014) (“Our precedent. . . does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away”); In reMouttet, 686 F.3d 1322, 1333—34 (Fed. Cir. 2012). For example, in KSR, the Supreme Court found the district court and appeals court had drawn their consideration “too narrowly” by attempting to determine whether a designer faced with a problem would have chosen the specific references used, and rather should consider whether one of ordinary skill would have seen a benefit to “upgrading” one reference with the teachings of another. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 425 (2007). Although we remain cautious to avoid hindsight, we are guided by the principle that when a person of ordinary skill is faced with “a finite number of identified, predictable solutions” to a problem and pursues “the known options within his or her technical grasp,” the resulting discovery “is likely the product not of innovation but of ordinary skill and common sense.” KSR, 550 U.S. at 421. Appellants make similar arguments with respect to claims 18, 38, and 58 (Appeal Br. 35) and in each we are not convinced by these arguments of error in the Examiner’s combination. With respect to claims 4, 5, 24, 25, 44, and 45, Appellants argue that the Examiner’s discussed motivation to combine Allam and Bauman’s teachings “appears to have been gleaned only from Appellants’ disclosure.” Appeal Br. 51. However, this motivation—“add[ing] further selection criteria to assure that the best suited providers are selected from presentation to the user” (Non-Final Act. 16—17)—is found (A) in Moorthi’s teaching that “consumer specified parameters” and “compute provider requirements” may be provided to a user to allow only eligible providers to be provided 11 Appeal 2016-001912 Application 13/292,791 and (B) in Allam’s and Baumann’s “plethora of constraints” used to make decisions regarding services. Moorthi | 80; Non-Final Act. 16—17; Answer 28—29. Thus we are not persuaded on this question of error in the Examiner’s rejection. Appellants present similar arguments with respect to claims 8—10, 28—30, and 48—50 (Appeal Br. 74—84) and we similarly find that the Examiner has provided sufficient discussion of a motivation to combine the references for these claims (Non-Final Act. 21—24; Answer 35— 36). Appellants also repeatedly argue with respect to numerous claims that “if the Examiner is relying upon ‘common sense and ordinary ingenuity,’ then the Examiner needs to clearly state that the Examiner is relying on common sense and ordinary ingenuity as well as [to] clearly identify the findings of fact that support the finding of ‘common sense and ordinary ingenuity.’” Appeal Br. 26, 33—35, 51, 60, 73, 79, 83. In determining obviousness, a factfinder may use common sense in addition to record evidence, and such recourse may not necessarily require explication in any reference or expert opinion. Perfect Web Techs., Inc. v InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). We acknowledge that a finding that a combination of prior art would have been “common sense” with nothing more may be a conclusory assertion inadequate to support a motivation to combine. In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017). In this case, however, we do not find that the Examiner has failed to identify a rationale to support the combination, or that the Examiner has used common sense in findings and then failed in some way to properly identify or explain such use of common sense. 12 Appeal 2016-001912 Application 13/292,791 35 U.S.C. § 103(a) — Claims 1, 2, 19—22, 39—42, 59, and 60 With respect to claim 1, Appellants argue that the Examiner has erred in finding that the combination of Moorthi and Allen teaches or suggests the claim limitations of “converting a physical capacity of servers in a non- virtualized data center into a cloud capacity,” “pricing said cloud capacity based on a catalog of providers to generate a list of cloud service providers that is standardized,” “simulating said list of cloud service providers,” or “recalibrating said selection of one or more cloud service providers from said list of cloud service providers.” Appeal Br. 15—20. In each of these cases, the Examiner has specifically discussed the teachings of the prior art. For example, with respect to “converting a physical capacity of servers in a non-virtualized data center into a cloud capacity,” the Examiner notes that Moorthi’s paragraphs 229 and 230 discuss how capacity for a cloud is “determined from determining what physical capacity is available for use by others in a virtual cloud network.” Non-Final Act. 6. Appellants’ argument consists of a detailed paraphrasing of these two paragraphs of Moorthi. Appeal Br. 15—16. Appellants then state: There is no language in the cited passages that teaches converting a physical capacity of servers. There is no language in the cited passages that teaches the concept of converting a physical capacity. Instead, Moorthi simply teaches managing provider interaction with an exchange. Neither is there any language in the cited passages that teaches converting a physical capacity of servers in a non- virtualized data center. Neither is there any language in the cited passages that teaches converting a physical capacity of servers in a non-virtualized data center into a cloud capacity. Appeal Br. 16. 13 Appeal 2016-001912 Application 13/292,791 Although Appellants contend that “Moorthi simply teaches managing provider interaction with an exchange,” the providers in Moorthi are analogized by the Examiner to the claimed servers, and as Appellants note Moorthi teaches that an exchange “optionally discovers attributes” including capacity of resources being offered by a provider. Id. at 15—16. Thus, Appellants’ conclusory contention that “Moorthi simply teaches managing provider interaction with an exchange” does not address the teachings and suggestions regarding details of this interaction or dispute the particulars of the Examiner’s findings with respect to the teaching or suggestion of these particulars regarding the claim limitations. Id. at 16. The Examiner refers to Moorthi paragraph 90 to the rejection in the Answer (Answer 22); this is addressed in the same conclusory way by Appellants in the Reply (Reply Br. 26-27). The other three claim limitations addressed by Appellants are similarly treated. Appeal Br. 16—20. Generally, these arguments (and the argument with respect to the first claim limitation addressed) are unpersuasive because Appellants do not challenge, with particularity, the specific findings and reasoning set forth by the Examiner. Rather, Appellants’ arguments comprise generalized descriptions of the prior art and paraphrasing of the claim elements; Appellants assert the paraphrased claim elements are not found in the cited references, but do not provide a persuasive explanation to support the assertion. Such arguments are not persuasive of reversible error in the Examiner’s findings. Cf. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding the Board reasonably interpreted 37 C.F.R. § 41.37 (c)(l)(vii) as requiring “more substantive arguments in an appeal brief than a mere recitation of the claim elements and 14 Appeal 2016-001912 Application 13/292,791 a naked assertion that the corresponding elements were not found in the prior art”); Ex parte Belinne, No. 2009-004693, slip op. at 7—8, 2009 WL 2477843, at *3^4 (BPAI Aug. 10, 2009) (informative) (holding that merely restating elements of claim and arguing that elements are missing from the reference, without further explanation, is not persuasive to show error in an examiner’s specific fact finding). Thus, with respect to claim 1, we are not persuaded of Examiner error. Claims 2, 19—22, and 39-42, 59, and 60 are argued with claim 1 (Appeal Br. 14—21), and we are similarly not persuaded of Examiner error with respect to the rejection of these claims. 35 U.S.C. § 103(a)—Claims 3-7, 11, 12, 16-18, 23-27, 31, 32, 36-38, 43- 4 7, 51, 52, and 56—58 With respect to claims 3—7, 11, 12, 16—18, 23—27, 31, 32, 36—38, 43— 47, 51, 52, and 56—58, the arguments presented by Appellants (Appeal Br. 39-48, 54—56, and 63—69) are similar to those for claim 1, and are insufficient for similar reasons to that addressed with respect to claim 1. 35 U.S.C. § 103(a)—Claims 13-15, 33-35, and53-55 With respect to claims 13—15, 33—35, and 53—55, Appellants make arguments (Appeal Br. 73—85) similar to those addressed above, which do not convince us of error for the reasons discussed above. Additionally, Appellants argue that the Examiner’s reliance on disclosures in the Appellants’ Specification (discussed in the action appealed from and the briefs as “Iyoob” or “APA”) is improper. Appeal Br. 69-70; Reply Br. 30- 31. The Examiner has cited paragraphs 86 to 89 of the published application, corresponding to page 19, line 13 through page 20, line 19 of 15 Appeal 2016-001912 Application 13/292,791 the Specification as filed. Non-Final Act. 19—21. The Examiner finds that these paragraphs teach it “was well-known that provider[]s use and have available[] compute pricing models and storage pricing models and that these models include package based pricing, component based pricing, and virtual machine based pricing.” Id. at 20. Appellants argue “the Examiner cannot cite Appellants’ [Specification in rejecting the claims in the same [Specification.” Appeal Br. 69-70. However, we note that an admission by an appellant can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise quality as prior art under the statutory categories of 35 U.S.C. § 102. See Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a patent that something is in the prior art is binding on the applicant and patentee for determinations of anticipation and obviousness.”); In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (holding information that an applicant admits is in the prior art “may be considered ‘prior art’ for any purpose, including use as evidence of obviousness under § 103”). Appellants further argue that, to the extent the Examiner is using Official Notice, such notice is traversed.4 Appeal Br. 70. However, the Examiner is not utilizing Official Notice. Rather, the Examiner finds that the Specification contains admissions regarding prior art, namely regarding existing price models available from providers. Non-Final Act. 19—21; Answer 32—34. Claim 13 recites the method of claim 1, further comprising “determining a compute pricing model for providers listed in said list of 4 We note Appellants do not dispute that the supposedly noticed fact is common knowledge or well-known in the art. See MPEP § 2144.03(C). 16 Appeal 2016-001912 Application 13/292,791 cloud service providers” and “determining a storage pricing model” for those providers. Appeal Br. 95. Claim 14 further specifies that the compute pricing model may be “packaged based pricing, component based pricing, and virtual machine based pricing”; claim 15 further specifies that the storage pricing model comprises “packaged based pricing and component based pricing.” Id. at 95—96. The Examiner finds that the combination of Moorthi, Allen, and Allam teach determining pricing models for the providers, but not specifically that the provider models are storage pricing models or compute pricing models, or what those pricing models may be. Non-Final Act. 19— 20. For these limitations, the Examiner uses paragraphs 86 through 89 of the Specification as an admission that compute pricing and storage pricing models were well known and that such models included the recited packaged based pricing, component based pricing, and virtual machine based pricing. Id. at 20. In the Specification, Appellants describe the compute pricing and list three pricing models, and state that “[s]ince various cloud service providers sell cloud services in terms of different pricing models” a module determines which pricing model is used by a provider. Spec. 19,11. 13—28. Additionally the Specification discloses that a determination is made of the storage pricing model of the provider, and that a module determines which model a provider is using. Id. at 20,11. 9—19. Therefore, we agree that, in combination with the other cited prior art, the Examiner properly found that the disputed claim limitations would have been obvious to one of ordinary skill in the art. Although we do not rely on it, we further note that the Specification also describes elsewhere that 17 Appeal 2016-001912 Application 13/292,791 different cloud service providers use these disparate pricing models. Spec. 10,1. 28-11 1.3. Thus, we find no error in the Examiner’s rejection of claims 13—15, 33—35, and 53—55. 35 U.S.C. § 103(a)—Claims 8—10, 28—30, and 48—50 With respect to claims 8—10, 28—30, and 48—50, Appellants make arguments (Appeal Br. 73—85) similar to those addressed above which do not convince us of error for the reasons discussed above. Additionally, Appellants argue that “there is no language in the cited passages of Moorthi, Schart and Boudreau that teaches receiving a buffer capacity that exceeds the cloud capacity.” Appeal Br. 87; see also id. at 89, 90. However, Appellants do not address the finding of the Examiner that “although Schardt does not specifically state that the buffer requirement exceeds the capacity, the scope of Schardt’s buffer requirement includes any buffer processing requirement which may include a buffer that exceeds what is available.” Non-Final Act. 21. Thus, we are not persuaded by this argument of error in the Examiner’s rejection of claims 8—10, 28—30, and 48—50. 18 Appeal 2016-001912 Application 13/292,791 DECISION We affirm the Examiner’s decision rejecting claims 1—60 under 35 U.S.C. § 101. We affirm the Examiner’s decision rejecting claims 1—60 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 19 Copy with citationCopy as parenthetical citation