International Business Machines Corporation

Patent Trials and Appeals Board

Mar 8, 2022

2021000295 (P.T.A.B. Mar. 8, 2022)

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. 16/120,394 09/03/2018 Bret A. Bailey CHA920120001US03_8134-204 1070 112978 7590 03/08/2022 Cuenot, Forsythe & Kim, LLC 20283 State Road 7, Suite 300 Boca Raton, FL 33498 EXAMINER SCOTT, RANDY A ART UNIT PAPER NUMBER 2439 NOTIFICATION DATE DELIVERY MODE 03/08/2022 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 BRET A. BAILEY and LEONARD S. HAND _____________ Appeal 2021-000295 Application 16/120,394 Technology Center 2400 ____________ Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and NORMAN H. BEAMER, 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 26-45, which constitute all the claims pending in this application. Claims 1-25 are canceled. See Appeal Br. 2. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We reverse. 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 is “IBM Corporation.” Appeal Br. 1. Appeal 2021-000295 Application 16/120,394 2 STATEMENT OF THE CASE 2 Introduction Embodiments of Appellant’s claimed subject matter relate generally to “cloud computing and, more particularly, to deployment of a workload in a cloud computing environment.” See Spec. ¶ 1. Independent Claim 26 26. A computer-implemented method of selectively allocating a plurality of deployment units among a plurality of clouds, comprising: [L1] identifying a first context indicating a first functional requirement or non-functional requirement of a first deployment unit within a workload; [L2] identifying a second context indicating a second functional requirement or nonfunctional requirement of a second deployment unit within the workload; identifying, based upon the first context, a first cloud of the plurality of clouds that satisfies the first functional requirement or non-functional requirement; automatically allocating the first deployment unit to the first cloud; identifying, based upon the second context, a second cloud of the plurality of clouds that satisfies the second functional requirement or non-functional requirement; 2 We herein refer to the Final Office Action, mailed January 24, 2020 (“Final Act.”); the Appeal Brief, filed June 23, 2020 (“Appeal Br.”); the Examiner’s Answer, mailed August 13, 2020 (“Ans.”); and the Reply Brief (“Reply Br.”), filed October 13, 2020. Appeal 2021-000295 Application 16/120,394 3 automatically allocating the second deployment unit to the second cloud, wherein the first cloud does not satisfy the second functional requirement or non-functional requirement. Appeal Br. 16. Claims App. (Bracketing and emphasis added regarding disputed limitations L1 and L2). Evidence Relied Upon by the Examiner 3 Name Reference Date McCrory US 2003/0105810 Al Jun. 5, 2003 Jackson US 2011/0016214 Al Jan. 20, 2011 Bailey ’613 US 9,071,613 B2 Jun. 30, 2015 Bailey ’761 US 10,069,761 B2 Sep. 4, 2018 Rejections Rejection Claims Rejected 35 U.S.C. § Reference(s)/Basis A 26-45 Non-statutory double patenting Bailey ’613 B 26-45 Non-statutory double patenting Bailey ’761 C 26-45 103(a) McCrory, Jackson 3 All reference citations are to the first-named inventor only. Appeal 2021-000295 Application 16/120,394 4 ISSUES AND ANALYSIS We have considered all of Appellant’s arguments and any evidence presented. 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. Non-statutory Double Patenting Rejections A and B At the outset, we note that non-statutory double patenting Rejections A and B are not addressed in the Appeal Brief, nor in the Reply Brief. Rejections A and B are also not mentioned in the Answer. However, a review of the record indicates that terminal disclaimers were approved and entered on April 22, 2020. Therefore, we dismiss Rejections A and B as moot. Rejection C of Independent Claim 26 under 35 U.S.C. § 103(a) over McCrory and Jackson Based upon Appellant’s arguments, we focus our analysis on the argued independent claim 26 limitations L1 and L2. Appellant’s arguments in the Briefs present the following issues. Issues: Did the Examiner err by finding under 35 U.S.C. § 103(a) that McCrory and Jackson collectively teach or suggest the disputed limitations L1 and L2: Appeal 2021-000295 Application 16/120,394 5 [L1] identifying a first context indicating a first functional requirement or non-functional requirement of a first deployment unit within a workload; [L2] identifying a second context indicating a second functional requirement or nonfunctional requirement of a second deployment unit within the workload; Claim 26 (emphasis added). In support of Rejection C, of claim 26 limitation L1, the Examiner cites to paragraph 57, lines 1-5 of McCrory: An exemplary commercial use of the exchange cloud E may be the ability for potential users to search for and use logical servers in the other clouds A-C that meet the user’s needs or requirements. For example, a user 605 contacts the exchange cloud E via link arrow 611 with a set of parameters or criterion for purposes of finding one or more logical servers that meet its requirements at the lowest price. McCrory, ¶ 57, ll. 1-8. For limitation L2 of claim 26, the Examiner cites to paragraph 59, lines 11-13 of McCrory: For example, the customer CS may have immediate needs for 10 additional servers and may anticipate a need for more servers in the future. The exchange cloud E identifies a cloud A that has sufficient server capacity to meet the immediate and future needs of the customer CS. McCrory, ¶ 59, ll. 9-13. Appeal 2021-000295 Application 16/120,394 6 Appellant asserts that claim 26 limitations L1 and L2 are not disclosed by the collective teachings and suggestions of McCrory and Jackson, as cited by the Examiner. See Appeal Br. 8-13; Reply Br. 1-9. Appellant specifically contends: the Examiner is referred to paragraphs [0047] and [0049] of Appellants’ disclosure, which provides definitions for the terms “workload,” “deployment unit,” “context,” “functional- requirement,” and “non-functional requirement.” Appellants requested that the Examiner explicitly identify, within the applied prior art, those specific teaching that map to the claimed: a) workload; b) first deployment unit within the workload; c) second deployment unit within the workload; d) first context; e) second context; f) first functional requirement or non-functional requirement of the first deployment unit; and g) second functional requirement or non-functional requirement of the second deployment unit. Appeal Br. 9-10. The Examiner responds by further explaining the basis for the rejection in the Answer: The [E]xaminer maintains that the allocation of resources (disclosed in par [0057], lines 10-20 of McCrory) used to process user requests is obvious in light of the applicant’s description and the commonly accepted definition of the term ‘workload’ in the art because the allocation of resources (disclosed in McCrory) used for processing each user request (e.g., “work to be performed”) is performed corresponding to allocating the most suitable entity used to Appeal 2021-000295 Application 16/120,394 7 perform each task/job requested by each user. Ans. 3-4 (emphasis omitted). In the Reply Brief, Appellant notes that “[u]nder 35 U.S.C. § 103, a patent cannot issue if the claimed invention is obvious in view of the applied prior art.” Reply Br. 3. Appellant contends the Examiner has erred because “the Examiner is asserting that certain teachings of the prior art (e.g., ‘the logical servers) are obvious in view of the claim language[’] (e.g., the Examiner's alleged ‘first/second deployment unit within a workload’).” Appellant is correct. The Examiner makes this error twice on page 4 of the Answer: (1) “The examiner maintains that the logical servers (disclosed in par [0057] of McCrory) are obvious in light of a ‘first/second deployment unit within a workload,’” and, (2) “The examiner contends that the requirement parameters (disclosed in par [0057], lines 3-10 of McCrory) are obvious in light of the claimed first/second contexts.” Ans. 4. The Examiner fundamentally errs by concluding that the reference is rendered obvious by the claim. Appellant has identified reversible error. We direct the Examiner’s attention to the proper approach to mapping a claim limitation to the corresponding feature found in the cited reference: Cited prior art references do not “read on” claim limitations, rather, a particular claim limitation “reads on” the corresponding feature(s) found in the cited prior art references after the claim language is properly construed in accordance with the broadest reasonable interpretation consistent with the Specification. Cf., Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)(“Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.”). We note claim construction is an important step in a patentability determination. Medichem, S.A. v. Appeal 2021-000295 Application 16/120,394 8 Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“Both anticipation under § 102 and obviousness under § 103 are two-step inquiries. The first step in both analyses is a proper construction of the claims . . . The second step in the analyses requires a comparison of the properly construed claim to the prior art.” (internal citations omitted)) (emphasis added). Our best understanding of the Examiner’s mapping comes not from the Final Action, but from page 5 of Answer: “The examiner maintains that the requirements parameters used to determine which of clouds A-C, containing the plurality of logical servers (e.g., deployment units), meet the specified requirements for processing each requested task (e.g., workload).” Thus, from the first full paragraph on page 5 of the Answer, we understand the record as indicating that the Examiner finds the claimed deployment units are taught or suggested by McCrory’s plurality of logical servers, and the Examiner finds that the claim term “workload” is taught or suggested by McCrory’s requested tasks. Although the Examiner correctly looks to Appellant’s Specification for context regarding the intended meanings of the disputed claim terms (including any definitions found in the Specification, e.g., at paragraphs 47- 50), we nevertheless agree with Appellant (Appeal Br. 10-11) that the Examiner’s mappings of other specific claim terms (i.e., “a first context” “a second context” “first requirement” “second requirement”) to the corresponding features found in the cited references are unclear. But the mapping rule requires: “When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The Appeal 2021-000295 Application 16/120,394 9 pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.” 37 C.F.R. § 1.104(c)(2) (emphasis added).4 And we agree with Appellant that “identifying” limitation L1 and “identifying” limitation L2 both refer to the same “workload” by virtue of antecedent basis: See limitation L1 of claim 26: “within a workload” and compare with limitation L2 of claim 26: “with the workload.” (emphasis added). Specifically, we find a preponderance of the evidence supports Appellant’s contention that “McCrory does not describe identifying different contexts for different deployment units within the same workload.” Appeal Br. 9. This issue alone is dispositive of this appeal. Nor has the Examiner fully developed the record to show that any portion of the secondary Jackson reference overcomes the deficiency of McCrory, as discussed above. Accordingly, for essentially the same reasons argued by Appellant in the Briefs, as discussed above, we are constrained on this record to reverse Rejection C of independent claim 26. Because remaining independent claims 34 and 42 each recite the L1 and L2 “identifying” limitations of claim 26 using similar language of commensurate scope, we are also constrained on this record to reverse Rejection C of independent claims 34 and 42. Because we have reversed the Examiner’s Rejection C of each independent claim on appeal, for the same reasons we reverse the Examiner’s Rejection C of each dependent claim on appeal. 4 An agency is bound by its own regulations. See Service v. Dulles, 354 U.S. 363, 388 (1957). Appeal 2021-000295 Application 16/120,394 10 CONCLUSIONS Non-statutory doubling patenting Rejections A and B are dismissed as moot because of terminal disclaimers approved and entered on April 22, 2020. Appellant has shown the Examiner erred in rejecting claims 26-45 under 35 U.S.C. § 103(a), over the collective teachings and suggestions of the cited McCrory and Jackson references. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 26-45 103(a) McCrory, Jackson 26-45 REVERSED