Ex Parte Liu et al

Patent Trials and Appeals Board

Jul 17, 2018

14520916 - (D) (P.T.A.B. Jul. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/520,916 10/22/2014 Xiao Liu
80812 7590 07/19/2018
Trellis IP Law Group/Oracle
1900 Embarcadero Road
Suite 109
Palo Alto, CA 94303
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. CONFIRMATION NO.
ORACP0113 5945
EXAMINER
BROPHY, MATTHEW J
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
07/19/2018 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):
docket@trellislaw.com
megan@trellislaw.com
ann@trellislaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIAO LIU, KHUSHBOO BHATIA,
JEFFREY DOERING, and YING GAO
Appeal2017-011428
Application 14/520,916
Technology Center 2100
BEFORE JOHNNY A. KUMAR, JENNIFER S. BISK, and NORMAN H.
BEAMER, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Representative Claim
Representative claim 1 under appeal read as follows:
1. A method for facilitating matching computing resources, the
method comprising:
applying a first header tag to a first resource, wherein the first header
tag indicates a type of the first resource;
Appeal2017-011428
Application 14/520,916
associating a first sub-tag with the first header tag, wherein the first
sub-tag includes an attribute tag;
comparing respective tags that have been applied to the first resource
and a second resource; and
determining if the first and second resources can communicate with
each other over a network based on the comparing.
Rejection
Claims 1-20 are rejected under 35 U.S.C. § 103 as being unpatentable
over (US 2008/0133486 Al; published June 5, 2008) to Fitzgerald et al.
hereinafter Fitzgerald in view of (US 9,110, 7 56 B 1; issued Aug. 18, 2015)
to Guo et al. hereinafter Guo and further in view of(US 2014/0282395 Al;
published Sept. 18, 2014) to Wang et al. hereinafter Wang.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
Regarding independent claims 1, 19, and 20, Appellants have
presented several arguments (App. Br. 8-12) that "there is no motivation to
combine Fitzgerald and Guo because they teach away from Claim 1 and
from each other."
We disagree with Appellants' conclusions. We adopt as our own
( 1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Final Act. 2-21 ), and (2) the reasons set forth by
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Application 14/520,916
the Examiner in the Examiner's Answer in response to Appellants' Appeal
Brief (Ans. 22-35). We concur with the conclusions reached by the
Examiner. We highlight and address specific findings and arguments
regarding the rejection of claim 1, for emphasis, as follows.
We find Appellants' teaching-away arguments unpersuasive. As the
United States Court of Appeals for the Federal Circuit has counseled:
A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.
... [I]n general, a reference will teach away if it suggests that the
line of development flowing from the reference's disclosure is
unlikely to be productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). "A reference does not teach
away, however, if it merely expresses a general preference for an alternative
invention but does not criticize, discredit, or otherwise discourage
investigation into the invention claimed." DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citation and
quotation marks omitted).
In this regard, we have reviewed the Examiner's response to
Appellants' arguments. We agree with the Examiner as our interpretation of
the disclosure of Fitzgerald and Guo coincides with that of the Examiner.
See Ans. 2-7 and 22-28. The Examiner has provided on pages 22-28 of the
Answer a comprehensive response to each argument presented by the
Appellants. We have reviewed this response and concur with the
Examiner's findings and conclusions. With respect to this argument, we
adopt as our own: ( 1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken (Final Act. 2-6; 19-20); and
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Application 14/520,916
(2) the reasons set forth by the Examiner in the Examiner's Answer in
response to Appellants' Appeal Brief. Ans. 22-28. In particular, we agree
with the Examiner that "both references teach a tag matching system that
matches one element per hierarchical level, but Appellant[s'] conflates the
different hierarchical tag levels with different values to be matched at those
levels." Ans. 22 (emphasis added).
As to Appellants' contentions that "modifying the teachings of Wang
with Guo or vice versa would render them inoperable for their intended
purposes" (Reply Br. 3); and "they would require substantially [sic]
reconstruction and redesign of each other's principal of operation as well as
rendering each other inoperable for each other's principal of operation when
those modifications to their respective teachings are made" (Id.), we
disagree with Appellants' characterization of the prior art, but, as explained
above, we agree with the Examiner's findings.
As to Appellants' various contentions regarding combinability of
Fitzgerald, Guo, and Wang, we agree with the Examiner's provided
rationales for the combinations (see Final Act. 4---6). In addition, we note
Appellants have not directed us to evidence sufficient to show that
combining the prior art was "uniquely challenging or difficult for one of
ordinary skill in the art" or "represented an unobvious step over the prior
art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418-19
(2007)). Nor have Appellants directed us to evidence that any of their
incorporations of known limitations yielded more than expected results. In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984).
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Application 14/520,916
Regarding claims 2-11 and 13-18 although Appellants raise
additional arguments for patentability (App. Br. 13-16; Reply Br. 4--6), we
find that the Examiner has established the references teach or suggest their
claim limitations by a preponderance of the evidence and sufficiently
rebutted in the Answer each of the arguments. Final Act. 6-19; Ans. 28-35.
We adopt the Examiner's findings and underlying reasoning, which are
incorporated herein by reference. Appellants do not raise additional
arguments for claim 12. See App. Br.; Reply Br. Consequently, Appellants
have failed to show error in the Examiner's rejections of claims 1-20.
DECISION
The Examiner's rejections of claims 1-20 as being unpatentable under
35 U.S.C. § 103(a) are affirmed.
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).
AFFIRMED
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