International Business Machines CorporationDownload PDFPatent Trials and Appeals BoardOct 26, 20212020004769 (P.T.A.B. Oct. 26, 2021) Copy Citation 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. 15/471,526 03/28/2017 Francoise Alabiso GB920110067US2_8134-0167 2891 112978 7590 10/26/2021 Cuenot, Forsythe & Kim, LLC 20283 State Road 7, Suite 300 Boca Raton, FL 33498 EXAMINER WOLDEMARIAM, AYELE F ART UNIT PAPER NUMBER 2447 NOTIFICATION DATE DELIVERY MODE 10/26/2021 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FRANCOISE ALABISO, OLIVIER BOEHLER, MICHAEL C. BUZZETTI, FRANK J. DE GILIO, and SEBASTIEN LLAURENCY _____________ Appeal 2020-004769 Application 15/471,526 Technology Center 2400 ____________ Before ST. JOHN COURTENAY III, ERIC FRAHM, and CATHERINE SHIANG, 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 21–35, which constitute all the claims pending in this application. Claims 1–20 are canceled. 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 “IBM Corporation.” See Appeal Br. 1. Appeal 2020-004769 Application 15/471,526 2 STATEMENT OF THE CASE 2 Introduction Embodiments of Appellant’s claimed subject matter relate generally to the “field of provisioning of resources in a distributed networking system. More particularly, embodiments of the present invention provide a system and a method for provisioning of resources for service offerings.” Spec. ¶ 1. Representative Claim 1 1. A computer-implemented method for reservation of resources for implementing a service within a distributed networking system, comprising: receiving a request, indicating a project duration having a start time and an end time, for a resource; determining, using a hardware processor, that the requested resource is available for the project duration; determining a utilization level, during a provisioning time prior to the start time of the project, of at least one resource provisioning component; determining that the at least one resource provisioning component has capacity, prior to the start time of the project, to handle provisioning the resource for the request; and reserving, for a provisioning time prior to the start time of the project, the at least one resource provisioning component. Appeal Br. 15. Claims App. (disputed claim terms “resource” and “resource provisioning component” emphasized). 2 We herein refer to the Final Office Action, mailed October 18, 2019 (“Final Act.”); the Appeal Brief, filed February 4, 2020 (“Appeal Br.”); the Examiner’s Answer, mailed April 16, 2020, and the Reply Brief, filed June 8, 2020 (“Reply Br.”). Appeal 2020-004769 Application 15/471,526 3 Prior Art Evidence Relied Upon by the Examiner Name Reference Date Pruyne et al. (“Pruyne”) US 8,209,695 B1 June 26, 2012 Takano et al. (“Takano”) US 2013/0227127 A1 Aug. 29, 2013 Alabiso et al. (“Alabiso”) US 9,628,402 B2 Apr. 18, 2017 Rejections 3 Claims Rejected 35 U.S.C. § References/Basis 21–35 Non- statutory Obviousness- Type Double Patenting (OTDP) Claims 1, 3–6, 14, and 16–25 of Alabiso 21–35 103 Takano, Pruyne ISSUES AND ANALYSIS We have considered all of Appellant’s arguments and any evidence presented. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are forfeited 3 We note Appellant filed a Terminal Disclaimer on January 21, 2020. The Terminal Disclaimer was approved on the same day. Therefore, the OTDP rejection over claims 1, 3–6, 14, and 16–25 of Alabiso (Final Act. 4) is moot and is not before us on appeal. Appeal 2020-004769 Application 15/471,526 4 or waived.4 See, e.g., 37 C.F.R. § 41.37(c)(1)(iv). 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). We highlight and address specific findings and arguments for emphasis in our analysis below. Claim Grouping Appellant argues claims 21–35 as a group. We will, therefore, treat claims 21–35 as standing or falling together with representative independent claim 21. See 37 C.F.R. 41.37(c)(1)(vii) (“Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.”). 4 See In re Google Technology Holdings LLC, 980 F.3d 858, 862 (Fed. Cir. 2020) (some internal citation omitted): 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. Appeal 2020-004769 Application 15/471,526 5 Obviousness Rejection of Independent Claim 21 Appellant advances several related arguments regarding independent claim 21 in the Appeal Brief and in the Reply Brief. Based upon our review of Appellant’s arguments in the Briefs, we find the dispositive issue in this appeal is whether the Examiner’s interpretations of the claim terms “resources” and “resource provisioning component” are overly broad, unreasonable, or inconsistent with the Specification. Appellant contends: Consistent with Appellant[’s] specification, a resource provisioning component is a hardware component that deploys a particular service. However, the “load information” described by Takano is of the virtual machine. However, the virtual machine (VM) of Takano is not a hardware component that deploys a particular service. Rather the VM is the service that is being deployed. Thus, Takano fails to teach the limitations for which Takano is being relied upon to teach. Appeal Br. 9 (emphasis added). In response, we note that Appellant’s argument (id.) is not commensurate with the claim language, as the argued “hardware” is not claimed. But Appellant clarifies that “Appellant[’s] arguments are not based upon the teachings of Takano not being ‘hardware.’ Rather, Appellant[’s] arguments are directed to the VMs [(Virtual Machines)] of Takano not being provisioning components - i.e., components configured to perform provisioning of the resources. Rather, the VMs of Takano are the resources that perform the tasks.” Appeal Br. 10. To the extent there may be any confusion regarding the Examiner’s claim interpretation and mapping, the Examiner clarifies the record in the Answer: Appeal 2020-004769 Application 15/471,526 6 In response to the appellant’s argument the reserved VM is indeed the claimed provisional component. To further clarify the interpretation and rejection of the claimed provisional component, the office would like to refer Fig. 8 of Takano. The items 802 (Operating System), 803 (CPU), and 804 (memory) are resources and VM1-VMn are components. Therefore, the VMs are the provisioning components that provide the resources. Ans. 8 (emphasis added). Thus, we find this appeal turns upon the claim construction accorded to the claim 21 terms: “resource” and “resource provisioning component.” At the outset, we find that neither term is expressly defined within representative claim 21, or within any of claims 22–35 on appeal. Turning to Appellant’s “Summary of Claimed Subject Matter” for support, Appellant relies on paragraphs 40, 41, and 43–46 of the Specification for support, and Figures 2–4: Referring to Figures 2-4 and also to independent claim 21, a computer-implemented method for reservation of resources for implementing a service within a distributed networking system is disclosed. In 301, a request, indicating a project duration having a start time and an end time, for a resource is received (paragraphs [0040] [0043]). In 302, a determination is made, using a hardware processor, that the requested resource is available for the project duration (paragraphs [0040], [0044]). In 304, a utilization level is determined, during a provisioning time prior to the start time of the project, of at least one resource provisioning component (paragraph [0041], [0043]-[0044]). In 305, a determination is made that the at least one resource provisioning component has capacity, prior to the start time of the project, to handle provisioning the resource for the request (paragraph [0041]). Referring to Figure 4, the at least one resource provisioning component is reserved for a provisioning time prior to the start time of the project (paragraphs [0044]- [0046]). Appeal 2020-004769 Application 15/471,526 7 Appeal Br. 2 (emphasis added). However, our review of paragraphs 40, 41, and 43–46 of the Specification finds the term “resource” is mentioned only in paragraph 40, and is not expressly defined: “A resource request may be received 301. The method may determine 302 whether requested resources are available at the requested time. If the requested resources are not available, the request will be denied 303.” Spec. ¶ 40 (emphasis added). From this description (id.), we find no limiting definition of the disputed claim term “resources.” Claim 21. We find paragraphs 40–46 of the Specification are silent regarding any mentioned of the disputed claim term “resource provisioning component.” Nor are Figures 2–4 helpful regarding any definitions of the disputed claim terms. Although Figure 3 mentions receiving a resource request (301) and determining if resources are available (302), there is no definition of what a “resource” actually is. “In the patentability context, claims are to be given their broadest reasonable interpretations . . . limitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). Any special meaning assigned to a term “must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.” Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998). Absent an express intent to impart a novel meaning to a claim term, the words take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1, Appeal 2020-004769 Application 15/471,526 8 LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted). Here, Appellant has not provided definitions in the claims, or in the Specification, that provide an artisan with notice of a special or uncommon meaning for the disputed claim terms “resource” and “resource provisioning component.” Claim 21. When we sua sponte search Appellant’s Specification for a definition or supporting description,5 we find support for “resource provisioning component” is not found in paragraphs 40–46, but rather in paragraph 21: Resource provisioning components are referred to generally as Managed Through Servers (MTS). An MTS is a component sitting in between a management server and a managed server (provisioned server). An MTS has a view of the real infrastructure status (number of partitions created, their characteristics') and can be used to provision an Operating System or to create/delete/modify a Virtual Machine definition. The term MTS may include hardware management consoles, operating boot servers (for example a Network Installation Manager for provisioning an Abstract Idea: Operating System). (NIM). The described method and system may include an intelligent workflow in a reservation process in order to also reserve the required availably of an MTS during the provisioning or de-provisioning phases. Spec. ¶ 21 (emphasis added). But claims 21–35 before us on appeal are silent regarding any mention of an MTS. And we interpret a “server” (in MTS) as a provider of 5 The burden of directing us to sufficient written description support for claimed subject matter is Appellant’s burden, not ours. See 37 C.F.R. § 41.37(c)(1)(iii) (“Summary of claimed subject matter.”). Appeal 2020-004769 Application 15/471,526 9 services, which may be implemented in software (e.g., as a Virtual Machine), and/or in hardware. Cf. A “client” is a requestor of services. Because Appellant’s Specification (e.g., paragraph 21) qualifies that “[r]esource provisioning components are referred to generally as Managed Through Servers (MTS)” (emphasis added), we conclude the claimed “resource provisioning component” does not have to be an MTS. Nor does the language of claim 21 (or any other claim) require that the recited “resource provisioning component” must be implemented in hardware, so as to exclude a reading on a virtual machine, as found by the Examiner. See Ans. 8. Accordingly, we find the description of a “resource provisioning component” in paragraph 21 of the Specification is not a limiting definition, per se, but rather is a description of various non-limiting, preferred exemplary embodiments (such as an MTS). In the alternative, Appellant has not established in the record a common or plain meaning for the claim terms “resource” and “resource provisioning component,” for example, by providing a dictionary definition that is consistent with the Specification. In addition, there is no declaration of record to consider as evidence regarding the intended metes and bounds of the claimed “resources” and “at least one resource provisioning component.” Claim 21 (emphasis added). Therefore, on this record, and based upon a preponderance of the evidence, we conclude that the Examiner’s interpretation of the claim terms “resources” and “at least one resource provisioning component” is not overly broad, unreasonable, or inconsistent with the Specification, given the lack of clarity in the record regarding the specific characteristics that would distinguish these terms over the cited prior art. See Ans. 8. Appeal 2020-004769 Application 15/471,526 10 To the extent that Appellant’s have imputed by argument a narrower interpretation in the Briefs for the claim terms “resources” and “at least one resource provisioning component,” we find such arguments unavailing as directed to any specific argued limitation of representative independent claim 21, for the reasons discussed above. Appellant additionally notes that the claims recite a “provisioning time prior to the start time of the project.” Appeal Br. 11 (emphasis added). Appellant contends “the Examiner’s analysis identifies no such teaching in Takano that corresponds to these limitations.” Id. But Appellant is arguing the references separately. The Examiner relies upon claim 1 of Pruyne (at columns 8–9) for teaching or suggesting the temporal claim language “prior to the start time of the project” (which is recited three times in claim 21). See Final Act. 7–8. And one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). To the extent that the scope of any claims on appeal is being construed broader by the Examiner or the Board than the interpretation imputed by Appellant’s arguments in the Briefs, we emphasize that, because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). With respect to the obviousness of all claims before us on appeal, we additionally emphasize that “the question under 35 USC 103 is not merely what the references expressly teach but what they would have suggested to Appeal 2020-004769 Application 15/471,526 11 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. Accordingly, on this record, and based upon a preponderance of the evidence, we are not persuaded of error regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness for representative independent claim 21. Remaining grouped claims 22–35 (not argued separately) fall with representative claim 21. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION Appellant has not shown that the Examiner erred in rejecting claims 21–35 under 35 U.S.C. § 103 over the collective teachings and suggestions of Takano and Pruyne. Appeal 2020-004769 Application 15/471,526 12 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 21–35 103 Takano, Pruyne 21–35 TIME PERIOD FOR 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 Copy with citationCopy as parenthetical citation