Ex Parte McCune et al

Patent Trial and Appeal Board

Feb 27, 2017

13743749 (P.T.A.B. Feb. 27, 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.
13/743,749 01/17/2013 Franklin E. McCune TUC920120129US1 5601
65384 7590 03/01/2017
TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP
IBM Tucson
P.O. BOX 203518
AUSTIN, TX 78720
EXAMINER
MATIN, TASNIMA
ART UNIT PAPER NUMBER
2135
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
tmunoz @ tcchlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANKLIN E. McCUNE, DAVID C. REED, KEITH R. SMITH,
and MAX D. SMITH
Appeal 2016-006915
Application 13/743,7491
Technology Center 2100
Before MAHSHID D. SAADAT, LARRY J. HUME, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3-7, 9-13, and 15-18, which are all the claims pending
in this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is International Business
Machine Corporation. Br. 1.
2 Claims 2, 8, and 14 are canceled. Final Act. 2.
Appeal 2016-006915
Application 13/743,749
STATEMENT OF THE CASE
Introduction
Appellants’ application relates to predicting times when the cost of
catalog caching is not efficient and deactivating catalog caching for the
catalog during the predicted times. Spec. 1 5. Claim 1 is illustrative of the
appealed subject matter and reads as follows:
1. A method for optimizing catalog system operations
comprising:
predicting times where a cost of catalog caching is not
efficient, the predicting times comprising conducting historical
analysis on catalog usage via catalog statistical data; and,
deactivating catalog caching for a catalog during times
where the cost of catalog caching is not efficient.
The Examiner’s Rejections
Claims 1, 3-5, 7, 9-11, and 13-17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Mu (US 7,856,530 Bl; Dec. 21, 2010),
Coronado et al. (US 2011/0173350 Al; July 14, 2011), and Hwang et al.
(US 7,426,696 Bl; Sept. 16, 2008). Final Act. 3-6.
Claims 6, 12, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mu, Coronado, Hwang, and Brown et al. (US 5,134,696;
July 28, 1992). Final Act. 6-7.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions the Examiner has erred. We disagree with Appellants’
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
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Appeal 2016-006915
Application 13/743,749
Answer in response to Appellants’ Appeal Brief. We concur with the
conclusions reached by the Examiner. We highlight the following additional
points.
Appellants argue the Examiner erred because Mu does not teach or
suggest “predicting times where a cost of catalog caching is not efficient,” as
recited in claim 1. Br. 3. In particular, Appellants argue Mu teaches a time
interval provided in a caching definition instead of the claimed prediction.
Id.
Appellants have not persuaded us of Examiner error. The Examiner
finds, and we agree, Mu teaches dynamic caching with a caching policy that
provides caching definitions. Ans. 9 (citing Mu, Fig. 2b, Fig. 6, 11:14-30,
13:42-67, 18:15-21). Mu further teaches enabling or disabling the cache
based on comparing the response time to the time specified in the caching
definition. Id. (citing Mu 14:1-16). In other words, Mu teaches predicting
whether accessing a cache is efficient based on how the response time of the
cache compares to the time specified in the caching definition.
Appellants also argue the Examiner erred because neither Mu nor
Coronado teaches or suggests “the predicting times comprising conducting
historical analysis on catalog usage via catalog statistical data.” Br. 3. In
particular, Appellants argue Coronado teaches analyzing historical
configuration records and analyzing the amount of usable space in a cache,
but does not teach predicting times where a cost of catalog caching is not
efficient including conducting historical analysis on catalog usage via
catalog statistical data. Id.
Appellants have not persuaded us of Examiner error. The Examiner
finds, and we agree, Coronado teaches analyzing input/ouput (I/O)
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Application 13/743,749
performance based on analysis of historical records using a resource
measurement facility tool. Ans. 9 (citing Coronado, Fig. 4, Fig. 5, 8, 37,
45). Coronado teaches the amount of available cache may decrease based on
memory failures, which may cause increased cache failures and degraded
I/O performance. Coronado 145. Coronado teaches analyzing I/O
performance based on current and historical configuration records to
determine cache performance. Coronado 37, 45. The Examiner finds,
and we agree, that an ordinarily skilled artisan would have been motivated to
incorporate the analysis of historical records taught by Coronado with the
cache management method of Mu. Final Act. 5.
We agree with the Examiner and find Appellants’ argument
unpersuasive because the Examiner does not rely on Coronado for teaching
“predicting times where a cost of catalog caching is not efficient.” See Final
Act. 3-5. Instead, the Examiner relies on Mu for teaching “predicting times
where a cost of catalog caching is not efficient” and on Coronado for
teaching “conducting historical analysis on catalog usage via catalog
statistical data.” Id. Thus, Appellants’ argument focuses on the disclosure
of Coronado, while ignoring the disclosure of Mu. One cannot show
nonobviousness by attacking references individually when the rejection is
based on a combination of references. In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 425 (CCPA
1981).
Accordingly, Appellants have not persuaded us of Examiner error and
therefore, on this record, we sustain the rejection of claim 1 as unpatentable
over Mu, Coronado, and Hwang. We also sustain the rejections of
independent claims 7 and 13, which were argued for the same reasons
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Appeal 2016-006915
Application 13/743,749
(Br. 3), and claims 3-6, 9-12, and 15-18, which were not argued separately
(id.).
DECISION
We affirm the decision of the Examiner to reject claims 1, 3-7, 9-13,
and 15-18.
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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