Ex Parte Valentin

Patent Trial and Appeal Board

Mar 30, 2017

12040708 (P.T.A.B. Mar. 30, 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.
12/040,708 02/29/2008 Marco Valentin 0035-036001/2007P00534US 9926
56056 7590 04/03/2017
BRAKE HUGHES BELLERMANN LLP
C/O CPA Global
900 Second Avenue South
Suite 600
MINNEAPOLIS, MN 55402
EXAMINER
VICARY, KEITH E
ART UNIT PAPER NUMBER
2182
NOTIFICATION DATE DELIVERY MODE
04/03/2017 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):
uspto@brakehughes.com
docketing@brakehughes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCO VALENTIN
Appeal 2017-000143
Application 12/040,708
Technology Center 2100
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—17 and 19—21 which are all the claims pending in this
application. Claim 18 is cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appeal 2017-000143
Application 12/040,708
Invention
The disclosed and claimed invention “relates to the coordination of a
workflow across multiple systems, and more specifically to the automated
coordination of workflow using multiple systems.” Spec. 11.
Representative Claim
1. A method of performing a business reporting job process
comprising:
starting, on a central system, a distributed business
reporting job process, including a plurality of business reporting
jobs;
initiating one of the plurality of business reporting jobs to
be performed by at least one assigned satellite computing system,
including transmitting a central system business reporting job
context, associated with the initiated business reporting job by
the central system, from the central system to the at least one
assigned satellite computing system;
performing the business reporting job on the at least one
assigned satellite computing system utilizing the central system
business reporting job context;
upon a completion of performing the business
reporting job by the at least one assigned satellite computing
system:
reporting the completion of the business reporting
job to the central system, and transmitting a result of
performing the business reporting job from the at least one
assigned satellite computing system to the central system;
checking whether the result of performing the
business reporting job on the at least one assigned satellite
computing system is acceptable, based upon a set of
predetermined business criteria; and
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Application 12/040,708
when the result of performing the business reporting
job on the at least one assigned satellite computing system is
not acceptable:
marking the business reporting job as a failed business
reporting job; and
reprocessing the failed business reporting job on the
central system or another satellite computing system while
continuing to process other business reporting jobs from the
plurality of business reporting jobs that are not dependent upon
the result of the failed business reporting job.
(Contested limitations emphasized in italics; conditions precedent in
bold).
Rejections
Rl. Claims 1—17 and 19-21 are rejected under pre-AIA 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement.
R2. Claims 1—17 and 21 are rejected under pre-AI A 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor regards as the
invention.
R3. Claim 15 is rejected under pre-AIA 35 U.S.C. § 112, fourth
paragraph, as being of improper dependent form for failing to further limit
the subject matter of the claim upon which it depends.
R4. Claims 1—5, 7—12, 15—17, and 19-21 are rejected under pre-AIA
35 U.S.C. § 103(a) as being obvious over the combined teachings and
suggestions of Lurie et al. (US 2007/0124363 Al, publ. May 31, 2007)
(“Lurie”), Fry et al. (US 2006/0136263, publ. June 22, 2006) (“Fry”),
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Application 12/040,708
Vosseler (US 2003/0126240 Al, publ. July 3, 2003), and Brice et al. (US
5,764,981, iss. June 9, 1998) (“Brice”).
R5. Claim 6 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Lurie, Fry,
Vosseler, Brice, and Hundley (US 7,430,652 B2, iss. Sept. 30, 2008).
R6. Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Lurie, Fry,
Vosseler, Brice, and Firlie (US 2002/0091752 Al, publ. July 11, 2002).
Claim Grouping
Based on Appellant’s arguments, we decide the appeal of all claims
rejected under § 103 rejection R4 on the basis of representative claim 1. We
address § 112, first paragraph (written description) rejection Rl, and § 112,
second paragraph, rejection R2, separately, infra. To the extent Appellant
has not advanced separate, substantive arguments for particular rejected
claims or issues, including rejections R3 of claim 15, R5 of claim 6, and R6
of claims 13 and 14, such arguments are waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We find Appellant’s arguments regarding the appeal of rejections
Rl and R2 persuasive. We find Appellant’s arguments regarding the appeal
of rejections R3—R6 unpersuasive for the reasons discussed, infra. We
highlight and address specific findings and arguments for emphasis in our
analysis below.
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Application 12/040,708
Rejection R1 under § 112, first paragraph — Written Description
Regarding rejection R1 of claims 1—17 and 19—21, the Examiner
references Appellant’s Specification at paragraphs 42 and 73 and finds:
Claim 1 recites the limitation “reprocessing the failed business
reporting job on the central system or another satellite computing
system” in lines 28—29. However, the original disclosure does
not appear to provide support for this limitation.
(Final Act. 6).
Specifically, the Examiner finds: “[t]he original disclosure does not
provide support for a failed business reporting job, originally executed on a
satellite computing system, being reprocessed on the central system or
another satellite computing system.” (App. Br. 13).
Appellant contends, inter alia:
[T]he specification supports reinitiating or restarting the failed
job, just like any other job, via central computing system
110/scheduling manager 116 on “either the central computing
system 110 or one of the satellite systems.”
(App. Br. 15—16).
We are persuaded by Appellant’s contentions (App. Br. 14—19) and
find sufficient written description support in the Specification to demonstrate
possession of the contested claim limitation:
Block 560 illustrates that, in one embodiment, if the results are
not acceptable, a user may be informed of the failure of the result
of the job. Block 562 illustrates that, in one embodiment, if the
results are not acceptable, the job may be marked as a failed job.
Block 566 illustrates that, in one embodiment, if the results
are not acceptable, the failed job may be restarted. In various
embodiments, some of these, all of these, and/or other
ameliorative actions may be taken in response to a failed or
unacceptable result from the completed job. In some
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Application 12/040,708
embodiments, the central computing system 110 or the schedule
manager 116 of FIG. 1 may attempt to take ameliorative action,
as described above.
(App. Br. 15, referencing the Examiner’s citation Spec. 173, see also Figs 1,
5 a—5 c).
We note the Specification (| 5) also describes: “The central
computing system may include a schedule manager configured to manage a
distributed job process including a plurality of jobs, initiate one of the
plurality of jobs to be performed by at least one satellite computing system,
including transmitting the central job context from the central system to the
satellite system.” The Specification further describes: “Each satellite
computing system may also include a satellite job processor configured to
process a job initiated by the central computing system, report the
completion of the job to the central computing system, and transmit at least
one result of the job from the satellite computing system to the central
computing system for checking.” (Id.). We find the schedule manager may
retransmit a failed job to restart at the designated computing system.1
Therefore, for essentially the same reasons argued by Appellant (App.
Br. 14—19), and based upon a preponderance of the evidence, we reverse the
Examiner’s written description rejection R1 of claims 1—17 and 19—21,
under 35 U.S.C. § 112, first paragraph.
1 Our reviewing court guides the written description “must clearly allow
persons of ordinary skill in the art to recognize that [the inventor] invented
what is claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc) (citation and quotations omitted). The test
is whether the disclosure “conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Id.
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Rejection R2 under § 112, second paragraph — Indefiniteness
Regarding rejection R2 of claims 1—17 and 21, the Examiner
concludes the claim 1 limitation “upon a completion of performing the
business reporting job by the at least one assigned satellite computing
system” is indefinite,
as to whether the steps following the limitation occur when the
business reporting job has been completed by all of the at least
one assigned satellite computing system, or whether the steps
following the limitation occur when the business reporting job
has been completed by any one of the at least one assigned
satellite computing system.
(Final Act. 9) (emphasis added).
“Indefiniteness under 35 U.S.C. § 112 12 is an issue of claim
construction . . . ,” Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319,
1331 (Fed. Cir. 2009) (citation omitted).2 Our reviewing court provides
applicable guidance regarding the claim 1 term, “upon a completion”:
[Tjhis court has repeatedly emphasized that an indefinite article
“a” or “an” in patent parlance carries the meaning of “one or
more” in open-ended claims containing the transitional phrase
“comprising.” That “a” or “an” can mean “one or more” is best
described as a rule, rather than merely as a presumption or even
a convention. The exceptions to this rule are extremely limited:
a patentee must “evince[ ] a clear intent” to limit “a” or “an” to
“one.” The subsequent use of definite articles “the” or “said” in
a claim to refer back to the same claim term does not change the
general plural rule, but simply reinvokes that non-singular
meaning.
2 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997).
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SanDisk Corp. v. Kingston Technology Co., 695 F.3d 1348, 1360 (Fed. Cir.
2012) (citing Baldwin Graphic Systems, Inc. v. Siebert, 512 F.3d 1338, 1342
(Fed. Cir. 2008)).
Applying this reasoning here, we construe the broadest reasonable
interpretation of the claim 1 limitation “upon a completion” (reciting the
indefinite article “a”) is “one or more.” (Id.). Because we conclude “a
completion” of the business reporting job can be completed by one or more
of the assigned satellite computing system(s), we conclude the claim
language is not indefinite under § 112, second paragraph, under a broad but
reasonable interpretation.
Therefore, for essentially the same reasons argued by Appellant (App.
Br. 20-22), we reverse the Examiner’s pre-AIA § 112, second paragraph,
rejection R2 of claims 1—17 and 21.
Rejection R3 under § 112, fourth paragraph of claim 15
Appellant fails to address this rejection in the Appeal Brief, and
expresses the intent to amend claim 15 in the Reply Brief (5).
Regarding the silence in the principal Brief, arguments not made are
waived. See 37 C.F.R. § 41.37(c)(l)(iv). Appellant’s remarks in the Reply
Brief are untimely under 37 C.F.R. § 41.41(b)(2). Therefore, we pro forma
sustain the Examiner’s rejection R3 of dependent claim 15 under pre-AIA
35 U.S.C. § 112, fourth paragraph,
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Application 12/040,708
Rejection R4 of claims 1—5, 7—12, 15—17, and 19—21 under § 103(a)
Regarding the Examiner’s obviousness rejection of claim 1 over the
cited references, we note method claim 1 recites conditional language:
upon a completion of performing the business reporting
job by the at least one assigned satellite computing system’.
when the result of performing the business reporting job
on the at least one assigned satellite computing system is not
acceptable:
marking the business reporting job as a failed business
reporting job; and
reprocessing the failed business reporting job on the central
system or another satellite computing system while continuing to
process other business reporting jobs from the plurality of business
reporting jobs that are not dependent upon the result of the failed
business reporting job.
(emphasis added).
Thus, method claim 1 recites contested conditional steps or acts
which are performed “upon a completion of performing the business
reporting job by the at least one assigned satellite computing system,” and
“when the result of performing the business reporting job on the at least one
assigned satellite computing system is not acceptable.” (emphasis added).
However, we conclude these conditional steps or acts are not required
to be performed in the event the business reporting job is not completed by
the at least one assigned satellite computing system, or when the result of
performing the business reporting job on the at least one assigned satellite
computing system is acceptable.
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We note that conditional steps employed in a method claim need not
be found in the prior art if, under the broadest reasonable interpretation,
the method need not invoke those steps. See Ex parte Schulhauser, No.
2013-007847, 2016 WL 6277792 at *4 (PTAB April 28, 2016)
(precedential) (holding “[t]he Examiner did not need to present evidence of
the obviousness of the remaining method steps of claim 1 that are not
required to be performed under a broadest reasonable interpretation of the
claim . . . see also Ex parte Katz, No. 2010-006083, 2011 WL 514314, at
*4—5 (BPAI Jan. 27, 2011).3
Applying this reasoning here, we conclude the broadest reasonable
interpretation of method claim 1 includes situations that fail to satisfy the
temporal (“upon a completion” and “when the result... is not acceptable”)
condition precedents, and in these situations, the contested language
following the condition precedent is not required to be performed.
Therefore, we find unavailing Appellant’s arguments that the cited
references fail to teach or suggest the conditional steps or acts of claim 1,
because such arguments are not commensurate with the broadest reasonable
interpretation of claim 1. See Schulhauser, at *4-5 (precedential).
Even assuming, arguendo, that our reviewing court were to conclude
that the conditional limitations are required to be performed within the scope
3 See also Applera Corp. v. Illumina, Inc., 375 F. App’x 12, 21 (Fed. Cir.
2010) (unpublished) (affirming a district court’s interpretation of a method
claim as including a step that need not be practiced if the condition for
practicing the step is not met); Cybersettle, Inc. v. Nat’l Arbitration Forum,
Inc., 243 F. App’x 603, 607 (Fed. Cir. 2007) (unpublished) (“ft is of course
true that method steps may be contingent. If the condition for performing a
contingent step is not satisfied, the performance recited by the step need not
be carried out in order for the claimed method to be performed.”).
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of method claim I, we are not persuaded by Appellant’s argument stated
above, because we find Appellant is arguing the references separately,4 * &
Appellant contends:
While Vosseler may teach automated switchover of a critical
application to a different node to maintain high availability of the
network infrastructure, Vosseler does not teach restarting or
reprocessing a failed business reporting job (failed because the
result does not meet a set of a set of predetermined business
criteria).
While Vosseler may “disclose both of a failover condition
being a critical application producing no or incorrect results, and
of switching the critical application from a primary node to a
secondary node in response to this failover condition,” contrary
to the Examiner’s allegations, nowhere does Vosseler mention or
disclose determining job failure based on business criteria and
“restarting or reprocessing” a completed job (as opposed to
merely switching the critical application to a backup node going
forward).
Restarting or reprocessing a completed job (albeit a job
failed on business criteria) as described in Claim 1, does not
necessarily follow from Vosseler’s disclosure of switching the
critical application to a backup node going forward.
(App. Br. 34).
However, the Examiner cites Fry for teaching the disputed claim 1
limitation, in pertinent part: reprocessing the failed job . . . while continuing
to process other jobs from the plurality ofjobs that are not dependent upon
the result of the job. (Final Act. 14, citing Frye 127,11. 5—15,15,11. 7—8).
4 Because the Examiner rejects the claims as obvious over the combined
teachings of Lurie, Fry, Vosseler, and Brice, the test for obviousness is not
what the references show individually but what the combined teachings
would have suggested to one of ordinary skill in the art. See In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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Combinability of the References under §103
Appellant further contends the references have been improperly
combined by the Examiner. Appellant asserts the Examiner’s rationale
relies upon “improper circular reasoning and is based on impermissible
hindsight.” (App. Br. 35).
We do not find Appellant’s allegation of impermissible hindsight
persuasive. (Id). In KSR, the U.S. Supreme Court guides that “[a] factfinder
should be aware, of course, of the distortion caused by hindsight bias and
must be cautious of argument reliant upon ex post reasoning.” KSR, 550
U.S. at 421 (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
36 (1966)). The Supreme Court also qualified the issue of hindsight by
stating “[rjigid preventative rules that deny factfinders recourse to common
sense, however, are neither necessary under our case law nor consistent with
it.” Id. KSR guides that to be nonobvious, an improvement must be “more
than the predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417.
Here, we find the Examiner provided sufficient articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness. (Final Act. 12—17). Appellant does not point to any evidence
of record that shows combining the references in the manner proffered by
the Examiner (id.) would have been “uniquely challenging or difficult for
one of ordinary skill in the art” or would have “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, 550 U.S. at 418). Nor has
Appellant provided objective evidence of secondary considerations which
our reviewing court guides “operates as a beneficial check on hindsight.”
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Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Systems, Inc., 725
F.3d 1341, 1352 (Fed. Cir. 2013). See “EVIDENCE APPENDIX None.”
(App. Br. 45) (emphasis omitted).
Therefore, based upon our claim construction and findings above, on
this record, we are not persuaded of error regarding the Examiner’s reliance
on the combined teachings and suggestions of Lurie, Fry, Vosseler, and
Brice to render obvious the contested limitations of representative claim 1.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us the Examiner erred regarding rejection R4 of
claim 1. Therefore, we sustain the Examiner’s obviousness rejection R4 of
representative independent claim 1, and we likewise sustain rejection R4 of
the associated grouped claims, which fall with claim 1. See Claim
Grouping, supra.
Rejection R5 of claim 6, and
Rejection R6 of claims 13 and 14
under § 103(a)
The Examiner concludes dependent claims 6, 13, and 14 are obvious
over the respective cited prior art. (Final Act. 35—39). Appellant fails to
substantively address these rejections in the principal brief. (App. Br. 36).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Therefore, we sustain the Examiner’s § 103 rejections R5 and R6 of
dependent claims 6, 13, and 14.
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Conclusions
For the reasons discussed above, and based upon a preponderance of
the evidence, we are persuaded by Appellant’s arguments the Examiner
erred regarding rejections R1 and R2 under § 112, first paragraph, (written
description) and § 112, second paragraph, (indefmiteness), respectively.
For at least the aforementioned reasons, on this record, and based
upon a preponderance of the evidence, we are not persuaded the Examiner
erred regarding rejections R3—R6, of all claims rejected thereunder.
DECISION
We reverse the Examiner’s rejection R1 of claims 1—17 and 19—21
under pre-AIA 35 U.S.C. § 112, first paragraph, (written description).
We reverse the Examiner’s rejection R2 of claims 1—17 and 21 under
pre-AIA 35 U.S.C. § 112, second paragraph.
We affirm the Examiner’s rejection R3 of claim 15 under pre-AIA
35 U.S.C. § 112, fourth paragraph.
We affirm the Examiner’s rejections R4—R6 of claims 1—17
and 19-21 under pre-AIA 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision.
See 37 C.F.R. § 41.50(a)(1).
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).
See 37 C.F.R. § 41.50(f).
AFFIRMED
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