Ex Parte Jansen et al

Patent Trial and Appeal Board

Aug 21, 2018

13082544 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/082,544 04/08/2011 Bernhard Jansen
73109 7590 08/23/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
CH920100009US 1
8152-0013
CONFIRMATION NO.
6287
EXAMINER
NORTON, JENNIFER L
ART UNIT PAPER NUMBER
2126
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNHARD JANSEN and GERHARD I. MEIJER
Appeal 2017-011171
Application 13/082,544
Technology Center 2100
Before BRUCE R. WINSOR, JOHN F. HORVATH, and
MICHAEL M. BARRY, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the non-final
rejection of claims 20-39, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b). Claims 1-19 are
cancelled. App. Br. 2.
We affirm.
1 The real party in interest identified by Appellants is IBM Corporation.
App. Br. 1.
Appeal 2017-011171
Application 13/082,544
RELATED PROCEEDINGS
The instant application was the subject of Appeal 2014-007510,
decided May 20, 2016, in which the Examiner's rejection of claims 1-19
was reversed and a new ground of rejection entered for claims 1, 6, 11, 14,
and 17. App. Br. 1, 34 et seq. (attaching '510 Dec'n).
STATEMENT OF THE CASE
The Invention
Appellants' disclosed "invention relates to computer control of a
cooling system, and more specifically, to the control of coolant flow to
multiple cooling units in a computer system." (Spec. ,r 2.) Claim 20, which
is illustrative, reads as follows:
20. A computer-implemented method for operating a
computer hardware system including a plurality of electronic
units and respectively associated plurality of cooling units,
compnsmg:
identifying, for a first electronic unit of the plurality of
electronic units, a first set of processes assigned to be
operational using the first electronic unit;
identifying, for a second electronic unit of the plurality of
electronic units, a second set of processes assigned to be
operational using the second electronic unit;
calculating, after the first set of processes has been
assigned to the first electronic unit before the first set of
processes being operational and using the first set of processes,
an anticipated change to a first workload generated by the first
set of processes upon the first set of processes being operational
using the first electronic unit;
calculating, after the second set of processes has been
assigned to the second electronic unit before the second set of
processes being operational and using the second set of
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Application 13/082,544
processes, an anticipated change to a second workload
generated by the second set of processes upon the second set of
processes being operational using the second electronic unit;
and
varying, using the anticipated changes to the first and
second workloads and prior to the first and second set of
processes being operational, a flow of cooling fluid to each of
the plurality of cooling units, wherein
the first and second set of processes implement a
plurality of computer programs.
The References
The Examiner relies on the following prior art in rejecting the claims:
Friedrich et al. US 2003/0193777 Al Oct. 16, 2003
("Friedrich")
Bash et al. US 2004/0020224 Al Feb. 5,2004
("Bash")
Farkas et al. US 2004/0215987 Al Oct. 28, 2004
("Farkas").
Janakiraman et al. US 2005/0028017 Al Feb.3,2005
("J anakiraman")
Gross et al. US 2005/0188263 Al Aug. 25, 2005
("Gross")
Gee et al. US 2008/0244227 Al Oct. 2, 2008
("Gee")
Brey et al. US 2009/0006901 Al Jan. 1,2009
("Brey")
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Application 13/082,544
The Rejections2
Claims 20, 24, 27, 31, 34, and 38 stand rejected under 35 U.S.C.
§ 103(a)3 as being unpatentable over Friedrich and Bash. See Non-Final
Act. 12-25.
Claims 21, 22, 28, 29, 35, and 36 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Friedrich, Bash, and Gross. See Non-
Final Act. 25-34
Claims 25, 26, 32, 33, and 39 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Friedrich, Bash, and Gee. See Non-Final Act.
34--41.
Claims 23, 30, and 37 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Friedrich, Bash, Janakiraman, Brey, and Farkas.
See Non-Final Act. 41--48.
The Record
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed May 11, 2017; "Reply Br." filed Aug. 29, 2017) for the positions
of Appellants; the Non-Final Office Action ("Non-Final Act." mailed Dec.
2 In the Non-Final Office Action the Examiner rejected certain claims under
35 U.S.C. § 112, first and second paragraphs. Non-Final Act. 9-12.
Although the Examiner confusingly repeats the § 112 rejections verbatim in
the Answer, including a sentence that appears to limit the scope of the
withdrawal, it appears the Examiner intended to withdraw all of the then
standing rejections under§ 112. See Ans. 38--41. Accordingly, the
rejections under 35 U.S.C. § 112, first and second paragraphs, is not before
us on appeal.
3 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Leahy-Smith America Invents Act of 2011 ("pre-AIA").
Non-Final Act 2.
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Application 13/082,544
14, 2016) and Examiner's Answer ("Ans." mailed June 28, 2017) for the
reasoning, findings, and conclusions of the Examiner; and the Specification
("Spec." filed Apr. 8, 2011). Arguments that Appellants did not make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 4I.37(c)(l)(iv) (2016).
ISSUES
Appellants have limited their arguments to independent claim 20,
stipulating that claims 21-39 stand or fall with claim 20. App. Br. 14, 21-
23. Accordingly, we discuss the appeal by reference to claim 20. A
threshold issue presented by Appellants' arguments is whether the Examiner
errs in concluding that the Board's findings and conclusions set forth in the
'510 Decision are binding in the present appeal. The pivotal issue presented
by Appellants' arguments is whether the Examiner errs in finding the
combination of Friedrich and Bash teaches or suggests
calculating, after the first set of processes has been
assigned to the first electronic unit before the first set of
processes being operational and using the first set of processes,
an anticipated change to a first workload generated by the first
set of processes upon the first set of processes being operational
using the first electronic unit;
calculating, after the second set of processes has been
assigned to the second electronic unit before the second set of
processes being operational and using the second set of
processes, an anticipated change to a second workload generated
by the second set of processes upon the second set of processes
being operational using the second electronic unit; and
varying, using the anticipated changes to the first and
second workloads and prior to the first and second set of
processes being operational, a flow of cooling fluid to each of
the plurality of cooling units,
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Application 13/082,544
( emphases added) ( the "anticipated change limitation"), as recited in claim
1. 4
ANALYSIS
Binding Effect of the '510 Decision
In the prior '510 Decision the Board entered a new ground of rejection
for claim 1, making certain findings regarding the disclosures of Friedrich
and Bash. See '510 Dec 'n 8-11. As pointed out in the '510 Decision,
Appellants had two paths available to respond to the new ground of
rejection. '510 Dec'n 12. Appellants could have challenged the Board's
findings and conclusions in a timely-filed request for rehearing under 35
U.S.C. § 41.52. '510 Dec'n 12 (citing 37 C.F.R. § 4I.50(b)(2)). A request
for rehearing is appropriate when the Appellants believe the Board has
"misapprehended or overlooked" certain points in reaching its findings and
conclusions. 37 C.F.R. § 4I.52(a)(l). The opportunity to file a request for
rehearing provided Appellants a full and fair opportunity to respond to the
Board's findings and conclusions in the '510 Dec'n. Alternatively,
Appellants could amend the rejected claims or submit new evidence, or both,
and reopen prosecution before the Examiner. '510 Dec 'n 12 ( citing 3 7
C.F .R. § 41. 50(b )( 1) ). Appellants chose to reopen prosecution as provided
by 37 C.F.R. § 4I.50(b)(l), thereby waiving the right to request rehearing.
4 Appellants' arguments present additional issues. However, because the
identified issue is dispositive of the Appeal, we do not address the additional
issues.
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In re-opened prosecution, "[t]he new ground of rejection is binding
upon the examiner unless an amendment or new Evidence not previously of
Record is made which, in the opinion of the examiner, overcomes the new
ground of rejection designated in the decision." 37 C.F.R. § 4I.50(b)(l)
( emphases added); see also Manual of Patent Examining Procedure (MPEP)
§ 706.07(h) XI. A. (9th ed. Rev. 08.2017, Jan. 2018) ("[A] Board decision in
an application is the 'law of the case: and is thus controlling in that
application and any subsequent, related application."). In other words,
although it is more precisely a matter of issue preclusion rather than res
judicata, as to the actual findings and conclusions of the Board in the '510
Decision, Appellants may not now assert that the Board "misapprehended or
overlooked" certain points in its findings and conclusions, a challenge that
should have been made, if at all, in a timely-filed request for rehearing.
Accordingly, despite Appellants' untimely arguments to the contrary (see
App. Br. 14--16, 18-19), we decline to revisit our findings and conclusions
set forth in the '510 Decision.
Rather, in the present appeal we look to the amendments to the claims,
any new evidence, and Appellants' contentions and arguments regarding the
effect of the amendments and evidence, to ascertain whether the Examiner
errs in rejecting the now pending claims. In other words, in accordance with
the holding in In re Ackermann, 444 F .2d 11 72 ( CCP A 1971) we consider
Appellants' arguments as they relate to how the patentability issues were
altered by the amendments made and evidence, if any, submitted during re-
opened prosecution. See Ackermann, 444 F .2d at 117 6. We are mindful that
the originally rejected claim 1 is no longer pending, and the claim now
before us, claim 20, was not pending at the time of the '510 Decision.
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Nevertheless, the preclusive effect of our findings and conclusions regarding
now cancelled claim 1 apply to new claim 20, and we look to differences
between claim 20 and claim 1 to ascertain if the Examiner errs.
The Anticipated Change Limitation
The Examiner relies on Friedrich when combined with Bash, to teach
the anticipated change limitation as recited in claim 1. Non-Final Act. 13-
14 (citing Friedrich ,r,r 22, 28, Fig. 1 (items 112a-112p, 120a-120p); Bash
,r,r 2, 27-28, 33-34, Fig. 1 (items 12, 22); '510 Dec'n 9). In particular, the
Examiner relies on Friedrich for the calculation and varying aspects for the
anticipated change limitation; the Examiner relies on Bash to teach certain
aspects of the physical arrangement of the electronic units and cooling units.
Appellants contend "neither Bash nor Friedrich contemplate varying
the cooling using anticipated changes to the workloads, as claimed." App.
Br. 18. We do not agree with Appellants.
The language of now pending claim 20 differs from that of claim 1,
considered in the '510 Dec'n. Compare App. Br. 25, with '510 Dec'n 2. In
particular, claim 20 recites additional limitations on "an anticipated change
to a ... workload" than did claim 1. Claim 20 defines "an anticipated
change to a ... workload" as a calculated change in the workload due to a
"set of processes" that is "calculate[ ed]" "after the ... set of processes has
been assigned to the ... electronic unit [but] before the ... set of processes
[is] operational." Claim 20 further recites that the varying of the flow of
cooling fluids occurs "prior to the first and second set of processes being
operational."
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Application 13/082,544
The cited passages of Friedrich teach that workload is monitored "as it
enters the system and is assigned to a particular electronic package 112a-
112p." Friedrich ,r 22. Friedrich then teaches that,
the optimizing calculations may be based on a variable workload
distribution and a variable cooling arrangement. For example,
the calculations may involve permutations of possible workload-
to-cooling arrangements that vary the workload distribution
among the electronic packages 112a-112p. The calculations may
also involve variations in the cooling arrangement, which may
include varying the distribution of cooling fluids among the vents
120a-120p.
Id. ,r 28 (emphasis added). Friedrich's teaching of performing calculations
involving "permutations of possible workload-to-cooling arrangements" at
least suggests that the calculations are done, and the cooling flow varied,
after processes are assigned to electronic units but before the processes are
operational. See, e.g., id. ,r,r 35-38 (shifting workload from servers 112a,
112e, 112h, and 112m to servers 112f, 112g, 112j, and 112k based on
calculations optimizing permutations of sample workload-to-cooling
arrangements).
For the foregoing reasons, Appellants have not established that the
Examiner errs in rejecting claim 20. Accordingly, we sustain the rejection
of claim 20 and claims 21-39, which, Appellants stipulate, stand or fall with
claim 20 (App. Br. 14, 21-23).
DECISION
The decision of the Examiner to reject claims 20-39 is affirmed.
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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). See 37 C.F.R.
§§ 41.50(±), 4I.52(b).
AFFIRMED
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