Ex Parte Shah et al

Patent Trial and Appeal Board

Apr 25, 2016

13007125 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/007, 125 01114/2011 AmipJ. Shah
56436 7590 04/27/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82467413 5985
EXAMINER
PARK, GRACE A
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
04/27/2016 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):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMIP J. SHAH and MANISH MARWAH
Appeal2014-004047
Application 13/007, 125
Technology Center 2100
Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Appellants' invention creates system trees with nodes representing a
desired range of component characteristics. In one aspect, the tree's nodes
are replaced with nodes from other trees that satisfy the desired range. See
generally Abstract. Claim 1 is illustrative:
Appeal2014-004047
Application 13/007, 125
1. A tree creation method, the method carried out by program code
stored on non-transient computer-readable medium and executed by a
processor, the method comprising:
building a system tree in computer-readable medium, the system tree
having a plurality of nodes, each node in the system tree representing a
desired range of characteristics of a component of a system under
consideration;
identifying a hierarchy of offending nodes in the system tree, the
hierarchy including an ordering of offending nodes from highest to lowest;
identifying probable nodes in other trees that satisfy the desired range
of characteristics of the component of the system under consideration, the
probable nodes in other trees identified in order according to the hierarchy
from highest to lowest, to replace offending nodes in the system tree with
better rated nodes from the other trees; and
creating in computer-readable medium at least one new tree for the
system under consideration by replacing at least one of the nodes in the
system tree with at least one of the probable nodes from the other trees.
RELATED APPEALS
On page 2 of the Brief, Appellants identify appeals filed in three
related applications, namely i\.pplication Numbers (1) 13/007,175; (2)
13/007,073; and (3) 13/007,152. The first two applications are currently on
appeal to this Board, 1 but no decision has been rendered in either case. The
third application was allowed after appeal without a Board decision, and is
now U.S. Patent 8,730,843.
The issues in all three related cases are not germane to the issues
before us in this appeal.
1 The Appeal Numbers for the '175 and '073 applications are 2015-005825
and 2014-006316, respectively.
2
Appeal2014-004047
Application 13/007, 125
THE REJECTION
The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as
unpatentable over Akatsu (US 2010/0332444 Al; Dec. 30, 2010) and
Freeman (US 2002/0116161 Al; Aug. 22, 2002). Final Act. 4--9. 2
CONTENTIONS
The Examiner finds that Akatsu ( 1) builds a system tree with nodes
representing a desired range of characteristics in Figure 3; (2) identifies
probable nodes in other trees satisfying the desired range by matching a
variable node to a partial graph based on a rewrite rule; and (3) creates at
least one new tree by replacing at least one node with at least one probable
node from the other trees, namely by replacing a variable node with a partial
graph. Final Act. 4--5.
Although the Examiner acknowledges that Akatsu does not identify
(1) a hierarchy of offending nodes in the system tree, where the hierarchy
includes the recited ordering of offending nodes, and (2) probable nodes in
order according to the hierarchy, the Examiner cites Freeman as teaching
these features and concludes that the claim would have been obvious. Final
Act. 5-6; Ans. 2--4.
Appellants argue that neither Akatsu nor Freeman identify an
offending-node hierarchy, let alone identify probable nodes in other trees in
order according to the hierarchy, as claimed. Br. 6-8. According to
2 Throughout this opinion, we refer to (1) the Final Rejection mailed April
26, 2013 ("Final Act."); (2) the Appeal Brief filed August 24, 2013 ("Br.");
and (3) the Examiner's Answer mailed September 19, 2013 ("Ans.").
3
Appeal2014-004047
Application 13/007, 125
Appellants, Freeman assigns relative scores to each component in a
database. Br. 8.
ISSUE
Under§ 103, has the Examiner erred in rejecting claim 1 by finding
that Akatsu and Freeman collectively would have taught or suggested a tree-
creation method including identifying (1) a hierarchy of offending nodes in
the system tree, where the hierarchy includes the recited ordering of
offending nodes, and (2) probable nodes in order according to the hierarchy
from highest to lowest to replace offending nodes in the system tree with
better-rated nodes from other trees?
ANALYSIS
As noted above, the Examiner finds that Akatsu not only builds a
system tree as shown in Figure 3, but also creates a new system tree by
replacing at least one of its nodes with "probable nodes" from other trees,
namely by replacing a variable node with a partial graph according to a
rewrite rule. Final Act. 4; see also Akatsu, Abstract (describing this
functionality in connection with a "rule application unit"). The Examiner
acknowledges, however, that to facilitate the replacement, Akatsu does not
identify the probable nodes in order according to an identified hierarchy of
"offending nodes" ordered from highest to lowest, but nevertheless
concludes that this feature would have been obvious in light of Freeman's
ranked design alternatives. Final Act. 5; Ans. 2--4.
In reaching this conclusion, the Examiner finds that Freeman uses
relative scores to rank all design alternatives from highest to lowest, but only
4
Appeal2014-004047
Application 13/007, 125
selects one such alternative-the highest-ranking alternative. Ans. 3 (citing
Freeman i-f 22, 28-30). According to the Examiner, the non-selected
alternatives are equivalent to "offending nodes," and are included in this
rank-based hierarchy. Ans. 3.
We see no error in the Examiner's position given the cited references'
collective teachings. First, the term "offending nodes" is not defined in
Appellants' Specification, unlike other terms. 3 Rather, the Specification
discusses the term "offending nodes" somewhat generally with respect to
candidates for replacement. See Spec. i-fi-135, 40. In one example, the node
associated with an "offending" processor of a laptop computer is replaced
with a node from a processor with a lower environmental footprint. See
Spec. ,-r 40.
Given this non-limiting and exemplary description, we see no error in
the Examiner's reliance on Akatsu for at least suggesting replacing certain
"offending" variable nodes with partial node-based graphs. See Akatsu,
Abstract. Nor do we find error in the Examiner's position that identifying a
hierarchy of such nodes ordered from highest to lowest would have been
obvious in light of Freeman's ranked, unselected design alternatives that are
a subset of all components in the database, and that using such a ranking as a
basis for replacing nodes in Akatsu would have been obvious. Final Act. 5-
6; Ans. 2--4.
In short, using Freeman's functional, rank-based criteria to identify
probable nodes in other trees for replacement in Akatsu as the Examiner
proposes would have been obvious over the cited references' collective
3 See, e.g., Spec. i-fi-115-16 (defining the terms "system," "includes," and
"based on").
5
Appeal2014-004047
Application 13/007, 125
teachings. Final Act. 5---6. Appellants' arguments regarding Freeman's
individual shortcomings in this regard (Br. 8) do not show nonobviousness
where, as here, the rejection is based on the cited references' collective
teachings. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2-20 not argued separately with particularity. 4
CONCLUSION
The Examiner did not err in rejecting claims 1-20 under§ 103.
DECISION
The Examiner's decision rejecting claims 1-20 is 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
4 Should prosecution reopen after this decision, we leave to the Examiner to
determine whether claim 1 recites patent-eligible subject matter under § 101
under the framework in Alice Corp. v. CLS Bank Int'!, 134 S.Ct. 2347,
2355-56 (2014). We also leave to the Examiner to consider whether the
subjective term "desired range of characteristics" in claim 1 renders the
claim indefinite. See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d
1342, 1350 (Fed. Cir. 2005) ("The scope of claim language cannot depend
solely on the unrestrained, subjective opinion of a particular individual
purportedly practicing the invention .... Some objective standard must be
provided in order to allow the public to determine the scope of the claimed
invention.").
6