International Business Machines Corporation

Patent Trials and Appeals Board

Apr 22, 2021

2020000724 (P.T.A.B. Apr. 22, 2021)

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.
15/198,952 06/30/2016 Al Chakra AUS920110141US3 1017
11432 7590 04/22/2021
IBM Corporation - Patent Center
1701 North Street
B/256-3
Endicott, NY 13760
EXAMINER
PRIFTI, AUREL
ART UNIT PAPER NUMBER
2186
NOTIFICATION DATE DELIVERY MODE
04/22/2021 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):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AL CHAKRA, ITZHACK GOLDBERG, LIAM HARPUR, and
JOHN RICE
_____________

Appeal 2020-000724
Application 15/198,952
Technology Center 2100
____________

Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
MATTHEW J. McNEILL, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–18, which constitute all the claims pending in this application. We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest in this
appeal is International Business Machines Corporation. See Appeal Br. 2.
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STATEMENT OF THE CASE 2
Introduction
Embodiments of Appellant’s invention on appeal relate generally to
“software-centric power management strategies.” Spec. ¶ 15.

Representative Claim 1
1. A system comprising:
a processor;
a non-transitory storage device to store a computer
program that is executable by a processor, and to store power
management computer code that is executable by the processor,
where the power-management computer code is to:
detect a trigger comprising detecting that the computer
program is causing the system to use more power than the
computer program is expected to use; and
responsive to the trigger being detected, perform a
power-saving action in relation to the computer program to
reduce the power usage of the system without placing the
system as a whole into a shutoff, sleep, standby, or hibernation
state, the power-saving action being a strictly software-oriented
action, the power-saving action being one or more of:
reinstalling the computer program, and installing a patch for
the computer program, so that the computer program does not
cause the system to use more power than expected.
Appeal Br. 15, Claims App. (disputed limitations emphasized).

2 We herein refer to the Final Office Action, mailed August 8, 2018 (“Final
Act.”); Appeal Brief, filed May 14, 2019 (“Appeal Br.”); the Examiner’s
Answer, mailed August 23, 2019 (“Ans.”). No Reply Brief was filed.
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Evidence Relied Upon by the Examiner
Name Reference Date
Hsieh US 2005/0138450 A1 June 23, 2005
Evans et al. (“Evans”) US 2012/0079126 A1 Mar. 29, 2012

Rejection
Claims 1–18 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hsieh and Evans. See Final Act. 3.

CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 7), and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the single
obviousness rejection of claims 1–18 on the basis of representative claim 1.
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are forfeited.3 See
37 C.F.R. § 41.37(c)(1)(iv).

3 See In re Google Tech. Holdings LLC, 980 F.3d 858, 862 (Fed. Cir. 2020)
(“It is well established that “[w]aiver is different from forfeiture.” United
States v. Olano, 507 U.S. 725, 733 (1993). “Whereas forfeiture is the failure
to make the timely assertion of a right, waiver is the ‘intentional
relinquishment or abandonment of a known right.’” Id. (quoting Johnson v.
Zerbst, 304 U.S. 458, 464 (1938)) (additional citations omitted). The two
scenarios can have different consequences for challenges raised on appeal,
id. at 733–34, and for that reason, it is worth attending to which label is the
right one in a particular case.” (alteration in original) (footnote and parallel
citations omitted)).
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ANALYSIS
Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation (BRI) consistent with the Specification. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Issue: Under 35 U.S.C. § 103(a), did the Examiner err by finding that
the combination of Hsieh and Evans teaches or suggests the following
disputed limitations of representative claim 1?
[L1] detect a trigger comprising detecting that the computer
program is causing the system to use more power than the
computer program is expected to use; and
[L2] the power-saving action being one or more of: reinstalling
the computer program, and installing a patch for the computer
program, so that the computer program does not cause the
system to use more power than expected.
(emphasis added).
Appellant contends that detecting “an excess power consumption
level” as described in Hsieh does not teach or suggest claim limitation L1:
“detecting that the computer program is causing the system to use more
power than the computer program is expected to use;” (emphasis added).
In particular, Appellant contends that “a computer program is causing
a system to use an excess amount of power does not necessarily mean that it
is causing the system to use more power than expected” because “the term
‘expected’ means [to] ‘regard (something) as likely to happen’ per
Google.com and per dictionary.com” and that “[a]n excessive power level
may be completely expected.” See Appeal Br. 9.
The Examiner concludes that the term “expected” can be reasonably
interpreted as any one of “usual, proper, necessary, average, normal, or
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predetermined” under the BRI standard because such interpretation “is
consistent with the plain meaning of the term that is ordinary and
customary” and is consistent with the specification. See Ans. 9–10.
Turning to the Specification for context, we find the following
descriptions in support:
Referring back to FIG. 1, the processor can directly detect
the trigger by detecting that the power usage of the computing
device in running the computer program is higher than a
threshold corresponding to unusual power usage (106). For
example, on average the computing device may normally
consume more power when running the computer program than
when the device is not running the program, by a predetermined
amount. If the computing device uses more than a certain
threshold of power above this amount in running the computer
program, then the processor detects the trigger.
Spec. ¶ 29 (emphasis added).
At this time, the processor begins to monitor whether an
amount of power that the computing device currently consumes,
or uses, and that is attributable to the computer program, exceeds
a threshold P, which FIG. 3 indicates via reference number 310.
The processor at time t1 notes an amount of power that the
computing device currently uses. FIG. 3 indicates this amount of
power as a baseline amount of power 308. The processor
attributes any increases in this baseline amount of power 308 to
the computer program that began running at time t1.
Spec. ¶ 32 (emphasis added).
We note that the Specification describes limitation L1 in substantially
the same manner as interpreted by the Examiner, i.e., as exceeding a
“predetermined” or “average” threshold and as having an “unusual” power
usage. Therefore, we agree with the Examiner’s construction of the claim 1
term “expected” (i.e., to use more power than the computer is expected to
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use”), and thus find that Hsieh’s disclosure of an excess power consumption
level teaches or suggests claim limitation L1.
We reproduce the abstract and pertinent paragraphs of Hsieh:
In some embodiments, a method and apparatus for power
performance monitors for low-power program tuning are
described. In one embodiment, the method includes the
computation of power consumption levels of instructions of an
application. Once consumption levels are computed, instruction
sequences of the application are identified that exhibit an excess
power consumption level. For the identified instruction
sequences, the application program is recompiled to reduce
power consumption levels of one or more of the identified
instruction sequences. Other embodiments are described and
claimed.
Hsieh Abstract (emphasis added).
At process block 566, instructions having a power
consumption level exceeding a predetermined power
consumption level are detected. At process block 568, critical
path power instructions are identified from the detected
instructions, as instructions that fall within a frequently executed
instruction path having a high power consumption level. In one
embodiment, application program critical paths may be
identified using conventional techniques. Once identified, the
critical paths may be analyzed to determine a power consumption
level consumed by the critical paths. For critical paths having an
excess power consumption level, such critical paths are identified
as critical power path instruction sequences. At process block
570, high power level instruction sequences are identified from
the detected instructions as instruction sequences executed by
FUs having an average power consumption level greater than a
predetermined FU power consumption level.
Hsieh ¶ 54 (emphasis added).
Accordingly, in one embodiment, a PHB is used by a
compiler to identify program portions that consume an
inordinate amount of power by querying APM registers, as well
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as U registers, to assist the compiler in implementing different
optimization strategies with a different mix of functional units.
Although embodiments described herein are directed to a micro-
architecture of a processor, the embodiments described herein
may be applied to other units, such as storage, computer graphics
devices and I/O, such as peripheral interconnect devices. Hence,
in one embodiment, power meters may be attached and sampled
to similar functional units of attached program components.
Hence, the OS can sample power consumed in external units and
schedule tasks accordingly to prevent program system
components from overheating.
Hsieh ¶ 60 (emphasis added).
Because the Examiner’s claim construction under BRI encompasses
Hsieh’s description of an excess power consumption level as exceeding a
“predetermined” or “average” power consumption level, and as having
“inordinate” (i.e., unusual) power consumption, we find Hsieh teaches or
suggests claim 1 limitation L1.
Appellant also contends that Hsieh’s disclosure of recompiling a
computer program does not teach or suggest claim limitation L2: “the
power-saving action being one or more of: reinstalling the computer
program, and installing a patch for the computer program” (emphasis
added). See Appeal Br. 12.
As an initial matter of claim construction, we note that the claim
language “the power-saving action being one or more of: reinstalling the
computer program, and installing a patch for the computer program”
(emphasis added) involves ascertaining whether the recited list requires
every element in the list, or whether the listed items are recited in the
alternative.
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We agree with the Examiner’s conclusion that the listed items
(“reinstalling the computer program . . . installing a patch”) are intended to
be construed in the alternative in light of Appellant’s admission on page 7 of
the Remarks filed on March 29, 2018 (“[T]he claim language actually
performs reinstallation or patch installation.”) (emphasis added). See Ans.
13 (Note: the Examiner’s date on page 13 of the Answer should be March
29, 2018 instead of March 29, 2019 – we consider this as a typographical
error).
With respect to the claim 1 limitation “reinstalling the computer
program,” Appellant argues:
To reinstall a software program or operating system, one install[s]
the program the same way you did in the past. Recompiling does
not install the program the “same way you did in the past,” since,
as the Current Office Action itself notes (on page 9) “Hsieh
discloses recompiling as a process where instruction sequences
‘may be replaced with alternative instruction sequences’ [par
0055].” Accordingly, appellant respectfully asserts that the
relied-upon “recompiling” is not a disclosure, teaching, or
suggestion of “reinstalling the computer program, and installing
a patch for the computer program,” as claimed in independent
claim 1.
Appeal Br. 12–13.
The Examiner finds:
Appellant provides no evidentiary support for their conclusory
statement that reinstalling an application program contains no
change in the application program. To the contrary, reinstalling
an application program as part of a software update could mean
changes to the software application . . . such concept is widely
known even to a layperson and the Office finds such argument to
be surprising for one of ordinary skill in the computer art
technology. . . .
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In addition, the contention that reinstalling a program
contain no changes to the software application runs afoul with
Appellants own invention. Here, Appellant invention is
concerned about the high power consumption of the system by
“detecting a program that causes the computer to use more power
than expected” [language as part of claim 1]. To remedy such
concerns, Appellant performs the “reinstalling” step “so that the
computer program does not cause the system to use more power
than expected” [see Claim 1] meaning, reduction of power
consumption. Thus, if reinstalling does not cause changes to the
program as Appellant argues, then how does the invention reduce
power consumption if reinstalling means installing the program
“the same way as you did in the past” as Appellant argues?
Appellant argument is contradictory to elementary logic.
Lastly, Appellant argument that “reinstallation” entails no
changes to the software application is in conflict with the claimed
language of “installing a patch” for which, as the Office already
proved above, includes changes to software application by means
of “replacing alternative instructions”.
Ans. 15–16.
The Examiner also finds that Evans teaches “reinstalling the computer
program” (claim 1), by disclosing automatically upgrading an application
(i.e., patching) by downloading and installing an upgraded version of the
application. See Ans. 14–15.
We reproduce the relevant portions of Evans:
In some embodiments where the user has the appropriate
rights, the content can also upgrade the capabilities of the device
and versions of various portions automatically. For example, the
content might include an application or other executable script.
The script might be able to determine versions of one or more
applications or scripts on a computing device, such as a media
player, rendering algorithm, or browser plug-in, and where
possible can cause upgraded versions to be downloaded and
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installed on the computing device such that the device can have
the necessary capabilities to support a new version or format.
Evans ¶ 18 (emphasis added).
Given this evidence (id.), we agree with the Examiner and adopt the
Examiner’s findings as our own.4 Therefore, on this record, we are not
persuaded that the Examiner erred in finding that the cited combination of
Hsieh and Evans teaches or suggests the claim 1 limitation “reinstalling the
computer program.”
Based on the alternative claim construction described above, it is
unnecessary to discuss whether the combination of Hsieh and Evans teaches
the claim 1 limitation “installing a patch for the computer program.”
However, since the Examiner finds that the combination of Hsieh and Evans
also teaches “installing a patch for the computer program,” a brief
discussion is provided below for completeness.
Appellant contends that the recompiling disclosed by Hsieh is not the
same as “installing a patch” (claim 1), because, per Wikipedia, a patch needs
to be applied to a computer program that has been installed. In particular,
Appellant argues that “recompiling a computer program is not a piece of
code that can be ‘applied’ to the computer program itself that has been
installed. . . . [T]he ‘alternative instruction sequences’. . . are not what is
being recompiled: rather, the computer program as a whole is being
recompiled.” See Appeal Br. 13.

4 See Icon Health and Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042 (Fed.
Cir. 2017) (“As an initial matter, the PTAB was authorized to incorporate
the Examiner’s findings.”); see also In re Brana, 51 F.3d 1560, 1564 n.13
(Fed. Cir. 1995) (upholding the PTAB’s findings, although it “did not
expressly make any independent factual determinations or legal
conclusions,” because it had expressly adopted the examiner’s findings).
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The Examiner disagrees, and finds that a person of ordinary skill in
the art at the time of invention would conclude that Hsieh’s disclosure of
replacing a number of instructions for the purpose of reducing power
consumption is similar in concept to patching. The Examiner also cites
Wikipedia as describing the process of program patching as bugfixes that
“modif[y] the program executable . . . either by modifying the fixes or by
completely replacing it.” As such, the Examiner finds that Hsieh teaches or
suggests the claim 1 limitation “installing a patch for the computer
program.” See Ans. 13.
Based upon our review of the record, we find no controlling definition
for the term “installing a patch.” However, we note “the question under 35
USC 103 is not merely what the references expressly teach but what they
would have suggested to one of ordinary skill in the art at the time the
invention was made.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (emphasis added) (quoting In re Lamberti, 545 F.2d
747, 750 (CCPA 1976)). See also MPEP § 2123.
Applying this guidance here, we find that Hsieh’s disclosure of
reducing power consumption by replacing only instruction sequences that
consume excess power (i.e., fixing part of the application) would have
suggested installing a patch to one of ordinary skill in the art at the time the
invention was made.
We reproduce the relevant portions of Hsieh:
FIG. 11 is a flowchart illustrating a method 582 for
recompiling the application program to reduce power consumed
by one or more identified instruction sequences having an excess
power consumption level of process block 580 of FIG. 5. At
process block 584, identified critical power path instruction
sequences are replaced with alternate instruction sequences to
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reduce power consumption levels by using the alternate
instruction sequences. At process block 586, high power level
instruction sequences are redistributed to utilize FUs . . . .
Hsieh ¶ 55 (emphasis added).
Therefore, we conclude that the Examiner did not err in finding that
the combination of Hsieh and Evans teaches or suggests the disputed claim 1
limitation “installing a patch for the computer program.”
Accordingly, for the reasons discussed above, we sustain the
Examiner’s single obviousness rejection of independent claim 1 over the
collective teachings and suggestions of Hsieh and Evans. Remaining claims
2–18 (not separately argued), fall with representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
CONCLUSION
The Examiner did not err in rejecting claims 1–18 as being obvious
under 35 U.S.C. § 103(a) over the cited combination of references.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–18 103(a) Hsieh, Evans 1–18
FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED