Ex Parte Jansen et al

Patent Trial and Appeal Board

May 18, 2016

13082544 (P.T.A.B. May. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/082,544 04/08/2011 Bernhard Jansen
52023 7590 05/20/2016
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
05/20/2016 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
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
Appeal2014-007510
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 final rejection
of claims 1-19, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b).
1 The real party in interest identified by Appellants is IBM Corporation.
(App. Br. 1.)
Appeal2014-007510
Application 13/082,544
STATEMENT OF THE CASE
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. i-f 2.) Claim 1, which
is illustrative, reads as follows:
1. A method for operating a computer system,
compnsmg:
determining, for each of a plurality of electronic units
in a computer system, at least one upcoming process being
assigned to a specific electronic unit [herein the "determining
limitation"];
identifying an anticipated workload for the specific
electronic unit based upon the at least one upcoming process
[herein the "identifying limitation];
generating at least one control signal based upon a
plurality of anticipated workloads for the plurality of
electronic units [herein the "generating limitation]; and
controlling, based upon the at least one control signal, a
flow of cooling fluid to each of a plurality of cooling units in
the computer system, wherein
each of the plurality of cooling units are respectively
associated with an electronic unit of the plurality of electronic
units [herein the "controlling limitation"].
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 A 1 Feb. 5,2004
("Bash")
Gross et al. US 2005/0188263 Al Aug. 25, 2005
("Gross")
Jackson US 2011/0035072 Al Feb. 10,2011
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Application 13/082,544
Claims 1-3, 6-8, 10-12, and 14--19 stand rejected under 35 U.S.C.
§ 102(b )2 as being anticipated by Bash, incorporating Friedrich by reference
("Bash/Friedrich"). (See Final Act. 10-20.)
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bash/Friedrich and Jackson. (See Final Act. 20-22.)
Claims 5 and 13 stand rejected under 35 U.S.C. § 35 U.S.C. 103(a) as
being unpatentable over Bash/Friedrich and Gross. (See Final Act. 22-24.)
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bash/Friedrich. (See Final Act. 25.)
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed Feb. 3, 2014; "Reply Br." filed May 27, 2014) and the
Specification ("Spec." filed Apr. 8, 2011 for the positions of Appellants and
the Final Office Action ("Final Act." mailed Nov. 13, 2013) and Answer
("Ans." mailed Mar. 28, 2014) for the reasoning, findings, and conclusions
of the Examiner. Only those arguments actually made by Appellants have
been considered in this decision. Arguments that Appellants did not make in
the Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv) (2013).
ISSUE
Based on Appellants' arguments, we discuss the appeal by reference
to claim 1. The dispositive issue presented by Appellants' contentions is as
follows: Whether the Examiner errs in relying on the disclosure of Friedrich
incorporated by reference in Bash in rejecting claim 1 for anticipation under
2 The rejections are under the pre-AIA versions of 35 U.S.C. §§ 102(b) and
103(a).
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Application 13/082,544
35 U.S.C. § 102(b).
ANALYSIS
Appellants contend "Bash does not describe how the elements of
Friedrich would/could be incorporated into the teachings of Bash. Thus, any
assertion as to how Bash and Friedrich would be combined can only be
based upon speculation." (App. Br. 12:21-23). Appellants further explain
"[ w ]hile Bash refers to Friedrich within the detailed description of Bash (see
paragraphs [0029], [0036], [0084]), these references only refer to Friedrich
as teaching 'the loads may be distributed between various computer systems
to further increase energy efficiency of air conditioning resources,' which
does not correspond to the specific limitations being claimed." (App. Br.
14:6-10.) We are persuaded of error.
Our reviewing Court instructs us as follows:
Whether material is incorporated by reference into a host
document is a question of law. Advanced Display Sys., Inc. v.
Kent State Univ., 212 F.3d 1272, 1283 (Fed. Cir. 2000) .
. . . "[[M]]aterial not explicitly contained in the single, prior art
document may still be considered for purposes of anticipation if
that material is incorporated by reference into the document." Id.
[at 1282.]
To incorporate matter by reference, a host document must
contain language "clearly identifying the subject matter which is
incorporated and where it is to be found"; a "mere reference to
another application, or patent, or publication is not an
incorporation of anything therein .... " In re De Seversky, 474 F.2d
671, 67 4 (CCP A 1973). Put differently, "the host document must
identify with detailed particularity what specific material it
incorporates and clearly indicate where that material is found in
the various documents." Adv. Display Sys., 212 F.3d at 1282.
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Application 13/082,544
Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1346 (Fed. Cir. 2009).
Although a host document must "identify with detailed particularity what
specific material it incorporates and clearly indicate where that material is
found in the various documents," see Adv. Display Sys., 212 F.3d at 1282,
our reviewing Court has found this requirement is satisfied by the clear and
unambiguous identification of the application or patent to be incorporated by
reference. Compare Fifth Generation Computer Corp. v. Int 'l Bus. Mach.
Corp., 416 F.App'x 74, 79-80 (Fed. Cir. 2011) (finding incorporation of the
entire disclosure of a patent by a clear incorporation by reference), with
Hollmer v. Harari, 681F.3d1351, 1358 (Fed. Cir. 2012) (finding no
incorporation by reference of applications that were ambiguously
identified). Here, Bash correctly and unambiguously identifies Friedrich by
application number, filing date, title, and first named inventor, and states that
Friedrich "[is] incorporated by reference [in Bash] in [its] entiret[y]." (Bash
i-f 1; see also id. i-fi-129, 36, 84.) Accordingly, we conclude the Examiner
properly treated Bash and Friedrich as though they were a single document.
That said, however, we agree with Appellants that, considering Bash
and Friedrich as a single document, Bash/Friedrich does not disclose "each
and every element as set forth in [claim 1] ... , either expressly or inherently
described," Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987), "arranged as in [claim 1]," In re Bond, 910 F.2d 831,
832 (Fed. Cir. 1990), and "in as complete detail as is contained in [claim 1 ],"
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). (See
App. Br. 12-14; Reply Br. 2.)
Bash's paragraph 36 states the following:
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Alternatively, or additionally to the above, because
usage of the computer systems contained in the racks U may
vary at different times of the day, instead of varying the
position of the HEU's 22, the load placed on the computer
systems may be varied. For instance, as described in co-
pending U.S. application Ser. No. 10/122,010 [i.e., Friedrich],
the work load on some of the computer systems may be
performed by other computer systems to substantially
maximize energy efficiency of the cooling system. In this
regard, the load may be transferred, for example, to one
location in the room 10 if it is determined that such a load
transfer is more energy efficient than under normal operating
conditions. Moreover, the load transfer may occur at different
times of the day and as load requirements vary.
(Italicized emphases added.) Bash's paragraphs 29 and 84 are similar.
We find that the wording ofBash's paragraphs 29, 36, and 84
describes an embodiment that incorporates Friedrich's disclosed technique
for distribution of work loads to various computers into Bash's disclosed
cooling method. Further, the embodiment described by Bash's paragraphs
29, 36, and 84 incorporates Friedrich's disclosed technique for distributing
work loads to achieve an optimal workload-to-cooling arrangement.
Therefore, we conclude the Examiner's reliance on Friedrich's disclosure of
work load distribution and varying work load distribution to optimize energy
efficiency (see Final Act 10-11 (citing Friedrich i-fi-f 17, 21-22, Fig. IA); see
also Friedrich i-fi-124--25, 27), is not misplaced.
However, the Examiner also relies on Friedrich's disclosure of
determining optimal workload-to-cooling arrangements and varying cooling
distribution accordingly. (See Final Act. 11 (citing Friedrich i-fi-f 17, 28, 30-
31, 34--35); see also Friedrich i-fi-124--26.) Although Bash states that
Friedrich is "incorporated by reference herein in [its] entiret[y]" (Bashi-fl),
we find nothing in Bash/Friedrich that describes an embodiment
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Application 13/082,544
incorporating Friedrich's disclosure of varying the cooling distribution into
the cooling method described by Bash. In an anticipation rejection, "it is not
enough that the prior art reference ... includes multiple, distinct teachings
that [an ordinary] artisan might somehow combine to achieve the claimed
invention." Net l'vfoney!N, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed.
Cir. 2008). Rather, the reference must "clearly and unequivocally disclose
the claimed [invention] or direct those skilled in the art to the [invention]
without any need for picking, choosing, and combining various disclosures
not directly related to each other by the teachings of the cited reference." Id.
(quoting In re Arkley, 455 F.2d 586, 587 (CCP A 1972)). Thus, while
"[s]uch picking and choosing may be entirely proper in the making of a 103,
obviousness rejection ... it has no place in the making of a 102, anticipation
rejection." Arkley, 455 F.2d at 587----88. Therefore, we conclude the
Examiner's reliance on Friedrich's disclosure of varying the cooling
distribution in accordance with an optimal workload-to-cooling (Final Act.
11 (citing Friedrich i-fi-f 17, 28, 30-31, 34-3 5); see also Friedrich i-fi-124-26)
determination is misplaced in the context of a rejection under 35 U.S.C.
§ 102(b).
For the foregoing reason, the Examiner has not demonstrated that
Bash/Friedrich anticipates independent claim 1. Independent claims 6, 11,
14, and 17, are rejected on substantially the same bases as claim 1 (compare
Final Act. 12-13, 14-15, 16-17, & 18-19 with id. at 10-11). Claims 2-5,
7-10, 12, 13, 15, 16, 18, and 19 variously depend, directly or indirectly,
from claim 1, 6, 11, 14, or 17. Accordingly, we do not sustain the rejection
of claims 1-19.
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Application 13/082,544
NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Claims 1, 6, 11, 14, and 17 are rejected on a new ground of rejection
under 35 U.S.C. § 103(a) as unpatentable over Bash/Friedrich.
Claim 1
Regarding independent claim 1, we adopt as our own the Examiner's
findings that Bash/Friedrich, in the embodiment described in Bash' s
paragraphs 29, 36, and 84, teaches the determining and identifying
limitations of claim 1. (See Final Act 10-11.)
Appellants contend Bash/Friedrich does not teach or suggests the
determining limitation of claim 1. (See App. Br. 14.) Appellants argue
"[t]he ... cited passages [(Friedrich i-fi-121-22)] do not refer to an 'upcoming
process.' Instead, the ... cited passages refer[] to a process as it is assigned
to a particular electronic package (i.e., a current process)." (App. Br. 15.)
We disagree. Work being distributed among a plurality of computer racks
(Friedrich i121) (i.e., the recited "electronic units") comprises processes that
are not yet being executed by the computer racks, i.e. they are encompassed
by the broadest reasonable interpretation of "upcoming process[ es] being
assigned to a specific electronic unit."
Appellants contend Bash/Friedrich does not teach the identifying
limitation because "[ n ]one of the . . . cited passages refers to the claimed
'anticipated workloads.' Instead, ... Friedrich teaches 'monitoring the
workloads of the servers' (i.e., the current workloads of the servers)." (App.
Br. 17-18 (citing Friedrich i131).) We disagree. Friedrich teaches the
following:
In operation, the system controller 130, via the associated
software, may monitor the electronic packages 112a-112p. This
may be accomplished by monitoring the workload as it enters the
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Application 13/082,544
system and is assigned to a particular electronic package 112a-
112p. The system controller 130 may index the workload of each
electronic package 112a-112p. Based on the information
pertaining to the workload of each electronic package 112a-
112p, the system controller 130 may determine the energy
utilization of each working electronic package. Controller
software may include an algorithm that calculates energy
utilization as a function of the workload.
(Friedrich i-f 22 (italicized emphasis added).) Thus, Bash/Friedrich teaches
monitoring workload of electronic packages as it is assigned to particular
electronic packages, which is before the workload is processed, i.e., "based
upon the ... upcoming process[ es]" as recited in the identifying limitation
of claim 1.
Appellants additionally contend the Examiner's findings fail to give
weight to the separate recitations of "upcoming process" and "anticipated
workload." (App. Br. 19.) We disagree. The passages of Bash/Friedrich
relied on by the Examiner clearly teach both "an upcoming process," i.e.,
work to be distributed among a plurality of computer racks (see Friedrich
i-f 21 ), and "anticipated workload," i.e., the workload of each electronic
package monitored as it is assigned to an electronic package and used, e.g.,
to calculate the expected energy utilization of each electronic package (see
id. i-f 22). (See Spec. i-f 43 ("[T]he workload of the particular electronic unit
may, for example, be represented by ... [a current] being required for
executing the upcoming process which is assigned to the particular
electronic unit.").)
We also adopt as our own the Examiner's findings that Bash/Friedrich
teaches or suggests the generating and controlling limitations of claim 1 (see
Final Act. 11. ), except that, as discussed supra, we find that the teachings
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Application 13/082,544
relied on by the Examiner are not explicitly taught or suggested by the
embodiment described in Bash's paragraphs 29, 36, and 84.
Appellants contend Bash/Friedrich does not teach or suggest the
generating limitation for the same reason as posited by Appellants regarding
the identifying limitation. We disagree for the same reasons as stated supra
regarding the identifying limitation.
It would have been obvious to a person of ordinary skill in the art to
combine Bash/Friedrich's teaching of workload-to-cooling optimization
(Friedrich i-fi-1 26-28) with the embodiment taught by Bash/Friedrich at
Bash's paragraphs 29, 36, and 84. Bash/Friedrich teaches a finite number of
predictable optimization calculations, i.e., (1) optimizing "based on a
constant workload distribution and a variable cooling arrangement"
(Friedrich i126); (2) optimizing "based on a variable workload distribution
and a constant cooling arrangement" (id. i127); (3) optimizing "based on a
variable workload distribution and a variable cooling arrangement" (id.
i128); and (4) implementing Bash's control techniques without the
optimization taught by Friedrich (see Bash Figs. 9. 10, 12, 13 ). The
embodiment taught by Bash's paragraphs 29, 36, and 84 teaches
optimization based on a variable workload distribution (Friedrich i-fi-127-28),
but is silent as to optimization based on a variable cooling arrangement.
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
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Application 13/082,544
We conclude that in view of the finite number of optimization
solutions taught by Bash/Friedrich, it would have been obvious to try
optimizing based on variable cooling arrangements, i.e., "controlling, based
upon the at least one control signal, a flow of cooling fluid to each of a
plurality of cooling units in the computer system," as recited in claim 1,
instead of (Friedrich i-f 26) or in addition to (id. i-f 28) the variable workload
distribution taught by Bash/Friedrich (Bash i-fi-129, 36, 84; Friedrich i-fi-121-
22, 27-28.)
Claims 6, 11, 14, and 17
Similar to our discussion supra regarding claim 1, we adopt as our
own the Examiner's findings that Bash/Friedrich teaches the recited
limitations of independent claims 6 (see Final Act. 12-13), 11 (see id. 14--
15), 14 (see id. 16-17), and 17 (see id. 18-19), except we find
Bash/Friedrich does not disclose all of the recited limitations in a single
embodiment, i.e., the embodiment taught by Bash/Friedrich at Bash's
paragraphs 29, 36, and 84. We conclude it would have been obvious to a
person of ordinary skill in the art to combine Bash/Friedrich's teaching of
workload-to-cooling optimization (Friedrich i-fi-126-28) with the embodiment
taught by Bash/Friedrich at Bash's paragraphs 29, 36, and 84 for the reasons
discussed supra regarding claim 1.
Claims 2-5, 7-10, 12, 13, 15, 16, 18, and 19
We have entered a new ground of rejection for independent claims 1,
6, 11, 14, and 17. We leave to the Examiner to consider the patentability of
dependent claims 2-5, 7-10, 12, 13, 15, 16, 18, and 19 in light of our
findings and conclusions supra regarding the independent claims. The fact
that we did not enter new grounds of rejection for the dependent claims
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should not be construed to mean that we consider the dependent claims to be
patentable over the prior art of record.
DECISION
The decision of the Examiner to reject claims 1-19 is reversed.
We enter a new ground of rejection for claims 1, 6, 11, 14, and 17
under 35 U.S.C. § 103(a).
Section 41.50(b) provides that "[a] new ground of rejection ... shall
not be considered final for judicial review."
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record.
37 C.F.R. § 41.50(b).
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.
§ 1.136(a)(l )(iv).
REVERSED
37 C.F.R. § 41.50(b)
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