Varouj A. Chitilian et al.

Patent Trials and Appeals Board

Jul 31, 2019

13474391 - (D) (P.T.A.B. Jul. 31, 2019)

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.
13/474,391 05/17/2012 Varouj A. Chitilian 16113-2869001 5306
26192 7590 07/31/2019
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
SUMMERS, KIERSTEN V
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
07/31/2019 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VAROUJ A. CHITILIAN, ILYA NETCHITAILO, NIKHIL
BAKSHI, JIAQI YU, and CHETAN PATEL
________________

Appeal 2018-001212
Application 13/474,3911
Technology Center 3600
____________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–8, 10–17, 19–26, 28, and 29. Claims 9, 18, and
27 have been canceled (Final Act. 2). Claims 28 and 29 have been objected
to as being dependent upon a rejected base claim, but indicated as being
allowable (over the cited prior art of record, but still rejected under 35
U.S.C. § 101 as being patent ineligible) if rewritten in independent form
including all of the limitations of the base claim and any intervening claims
(Non-Final Office Action mailed June 8, 2016, p. 6). We have jurisdiction

1 Appellants identify Google, Inc., as the real party in interest (App. Br. 1).
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under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Introduction
Appellants’ disclosed invention relates to “on-line advertising” (Spec.
1:12), and specifically to advertisement campaigns using targeted
advertising techniques on the Internet (Spec. 1:13–19). On-line advertisers
use advertising management tools that “include an account interface that
allows an advertiser to create and define various aspects of advertising
campaigns and ad groups, such as keywords, targeting criteria, budgets, bids
for ad placement, duration, different types of advertisements, and so on”
(Spec. 1:24–27). Because “the monitoring of an advertising campaign and
changing of multiple parameters at various times during the life of the
advertising campaign can be a labor-intensive task” (Spec. 2:9–11),
Appellants vary the time for executing rules associated with campaign
management entities in order to reduce spikes in resources used to execute
the rules (claims 1, 10, 19, 28; Spec. 5:25–31, 21:1–22:2; Fig. 6; Abstract).
An understanding of the invention can be derived from a reading of
independent claim 1, which is reproduced below with bracketed lettering and
emphases added:
1. A system for distributing execution times of scheduled
rules to reduce spikes in resources used to execute the rules, the
system comprising:
a data processing apparatus including one or more
computers; and
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a computer storage system storing instructions that when
executed by the data processing apparatus cause the data
processing apparatus to perform actions comprising:
accessing rules associated with one or more
campaign management entities;
receiving, for each rule, a selected execution time
for the rule, the selected execution time for each given rule
specifying a time at which the rule is to be executed;
identifying two or more rules that have a matching
selected execution time;
reducing spikes in resources used to execute the two
or more rules, including varying scheduled execution
times for the two or more rules over a time period so that
a first portion of the two or more rules is executed at a
different time than a second portion of the two or more
rules, the varying comprising:
[A] for each given rule of the two or more
rules:
[A1] determining, for the given rule, a
time variation that is based on [A2] a
difference between (i) a pre-specified
reference time and (ii) a particular time at
which the selected execution time for the
given rule was received;
determining, for the given rule, a
scheduled execution time based on (i) the
selected execution time for the given rule and
(ii) the time variation for the given rule; and
associating the scheduled execution
time with the given rule; and
executing each given rule when a current time is
equal to the scheduled execution time for the given rule.

Appendix of Claims (App. Br. 15)(emphases and bracketed lettering added).

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The Examiner’s Rejections
(1) Claims 1–8, 10–17, 19–26, 28, and 29 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 8–11; Ans. 2–11.
(2) Claims 1–8, 10–17, and 19–26 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Carteri et al. (US 2009/0282411 A1;
published Nov. 12, 2009)(hereinafter, “Carteri”) and Rolia et al. (US
2005/0097560 A1; published May 5, 2005)(hereinafter, “Rolia”). Final Act.
11–49; Ans. 11–18.
Issues on Appeal
Based on Appellants’ arguments presented in the Appeal Brief (App.
Br. 5–14) and the Reply Brief (Reply Br. 2–5), the following two principal
issues are before us on appeal:
(1) Did the Examiner err in rejecting claims 1–8, 10–17, 19–26, 28,
and 29 as being directed to patent-ineligible subject matter?
(2) Did the Examiner err in rejecting claims 1–8, 10–17, and 19–26 as
being obvious because the combination of Carteri and Rolia fails to teach or
suggest the method and system for distributing execution times of scheduled
rules to reduce spikes in resources used to execute the rules, including
determining a time variation as set forth in limitations [A1] and [A2], as
recited in independent claim 1 supra, and as commensurately set forth in
remaining independent claims 10 and 19?

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ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 8–49) in light
of Appellants’ arguments that the Examiner has erred (App. Br. 5–14; Reply
Br. 2–5), in light of the Examiner’s response to Appellants’ arguments in the
Appeal Brief (Ans. 2–18). We agree with Appellants’ arguments as to both
the eligibility (see App. Br. 5–10; Reply Br. 2–4) and obviousness (see App.
Br. 10–14; Reply Br. 4–5) issues.

Issue (1): Patent-Ineligible Subject Matter
PRINCIPLES OF LAW
We first note “[w]hether a [patent] claim is drawn to patent-eligible
subject matter is an issue of law that . . . [is] review[ed] de novo.” SiRF
Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010)
(emphasis added).
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. This
threshold analysis of whether a claim is directed to one of the four statutory
categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the patent-eligibility
inquiry under § 101. However, the Supreme Court has long interpreted
§ 101 to include implicit exceptions: “Laws of nature, natural phenomena,
and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014) (citation omitted)
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In
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accordance with that framework, we first determine what concept the claim
is “directed to.” See id. at 219 (“On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third party
to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 193
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
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attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter, “Revised
Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/
2018-28282.pdf).
Under the Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
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organizing human activity such as a fundamental economic
practice, or mental processes);2 and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).3
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.4

See Revised Guidance.
Step 2A(i) – Judicial Exception/Abstract Idea
Informed by judicial precedent, the recent Revised Guidance extracts
and synthesizes key concepts identified by the courts as abstract ideas to
explain that the abstract-idea exception includes the following groupings of
subject matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging, insurance,

2 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter, “Step 2A(i)”).
3 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter, “Step 2A(ii)”).
4 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations;
advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or
interactions between people (including social activities,
teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.5
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and

5 In the rare circumstance in which an Examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
the Revised Guidance for analyzing the claim should be followed. See
Revised Guidance, Section III.C.
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in combination to determine whether they integrate the exception into a
practical application.
“[I]ntegration into a practical application” requires an additional
element or a combination of additional elements in the claim to apply, rely
on, or use the judicial exception in a manner that imposes a meaningful limit
on the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the exception. See Revised Guidance, 84 Fed. Reg.
at 54.
The seven identified “practical application” sections of the MPEP,6
cited in the Revised Guidance under Step 2, are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of a
Computer or to Any Other Technology or Technical Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions to Apply an
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. If not, then analysis proceeds to Step 2B.

6 See MPEP § 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer to
revision [R-08.2017].
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ANALYSIS
Step 1
Under Step 1 of the patent-eligibility inquiry under § 101, we
determine whether a claim is directed to one of the four statutory categories
of invention, i.e., a process, machine, manufacture, or composition of matter.
Claims 1 and 28, as well as claims 2–8 and 29 depending respectively
therefrom, recite “[a] system for distributing execution times of scheduled
rules to reduce spikes in resources used to execute the rule . . . comprising: a
data processing apparatus including one or more computers; and a computer
storage system” (claims 1, 28). Therefore, claims 1 and 28, and claims 2–8
and 29 depending respectively therefrom, as system claims, recite at least
one of the enumerated categories (e.g., machine and/or manufacture) of
eligible subject matter in 35 U.S.C. § 101.
In the instant case on appeal, claim 10, and claims 11–17 depending
therefrom, recite “[a] non-transitory computer storage medium storing
instructions . . . executable by a data processing apparatus” (claim 10).
Therefore, claim 10, as well as claims 11–17 depending therefrom, as
medium claims, recite at least one of the enumerated categories (e.g., a
manufacture) of eligible subject matter in 35 U.S.C. § 101.
Claim 19, as well as claims 20–26 depending therefrom, recites “[a]
method for distributing execution times of scheduled rules to reduce spikes
in resources used to execute the rules” including a sequence of steps
including “accessing rules,” “receiving, for each rule, a selected execution
time for the rule,” “identifying two or more rules that have a matching
selected execution time,” “reducing spikes in resources” by “varying
scheduled execution times” for the rules by determining a time variation for
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determining a scheduled execution time for a given rule, and “executing
each given rule” at the scheduled execution time (claim 19). Therefore,
claim 19, and claims 20–26 depending therefrom, as method claims, recite at
least one of the enumerated categories (e.g., process including a series of
steps/acts) of eligible subject matter in 35 U.S.C. § 101.
As a result, as to claims 1–8, 10–17, 19–26, 28, and 29, we continue
our analysis under Step 2A(i) of the Revised Guidance to determine whether
the claims (1) recite a judicial exception (a law of nature, natural
phenomenon, or subject matter within the enumerated groupings of abstract
ideas above); and (2) are patent-eligible.
Step 2A(i) – Judicial Exception/Abstract Idea
In the instant case before us, the Examiner finds claims 1–8, 10–17,
19–26, 28, and 29 are “directed towards the idea of rescheduling conflicting
tasks” (Final Act. 9), that “[r]escheduling conflicting tasks through a first in
first out method (e.g., giving priority to the earlier conflicting scheduled
task), is an idea ‘of itself’ and also or alternatively a mathematical
relationship/formula” (Final Act. 9), such as “a mathematical procedure for
converting one form of numerical representation to another” (Final Act. 10).
The Examiner determines claims 1–8, 10–17, 19–26, 28, and 29, as a whole,
are directed to rescheduling conflicting tasks (which is a mental process)
using a first in first out method relying on computing a difference (which
involves a mathematical calculation), and thus to a judicial exception (i.e., a
combination of abstract ideas) (Final Act. 9–10; see also Ans. 7–8).
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Step 2A(ii) – Practical Application
For the reasons given below, we are persuaded that, even if claims 1–
8, 10–17, 19–26, 28, and 29 recite a combination of abstract ideas (e.g., the
mental process of scheduling conflicting tasks and the mathematical process
of calculating a difference as determined by the Examiner), the claims recite
additional steps/elements that integrate the judicial exception into a practical
application, and are, therefore, directed to patent-eligible subject matter.
In the instant case on appeal, claims 1, 10, 19, and 28 each recite
“distributing execution times of schedule rules to reduce spikes in resources
used to execute the rules” (see preamble of claims 1, 10, 19, 28), including
“reducing spikes in resources used to execute the two or more rules,
including varying scheduled execution for the two or more rules” by
“determining, for the given rule, a time variation,” and “executing each
given rule” based on the calculated time variation for each given rule (see
body of claims 1, 10, 19, 28).
These limitations, in combination with (i) the data processing
apparatus, one or more computers, and computer storage system computing
device and user interface recited in each of claims 1, 10, and 28; or (ii) the
method steps recited in claim 19, allow a computing device to distribute
execution times of scheduled rules in order to reduce spikes in the applied
resources, provide a technological improvement, and integrate the abstract
idea into a practical application.
The Examiner has determined that the varying of scheduled execution
times to reduce spikes in resources does not improve the functioning of the
computer. Ans. 3. The Examiner analogizes the claimed process to an
example of a real estate agent having two appointments booked at the same
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time, and rescheduling one appointment for another time. Id. However, we
do not agree that this example is analogous to the claimed invention. The
claimed invention does not simply involve rescheduling conflicting calendar
items such as appointments, but instead, reschedules rules to reduce resource
spikes used to execute rules, in the context of computer operations as set
forth in the Specification.
Appellants’ Specification supports our finding that the additional
elements of the claims integrate the judicial exception into a practical
application by improving the functioning of a computing device that
schedules the execution of rules by reducing spikes in resources. For
example:
Rules are often scheduled to be executed at particular
times, e.g., 1:00 PM, 2:00 PM, and so on. In some
implementations, the actual execution time of a rule is
smoothly distributed relative to the other start times of other
rules. The smooth distribution is accomplished by use of an
algorithm that takes into account when the users specify
the execution time of a rule. The distribution of the execution
time avoids resource spikes that would otherwise occur if all
rules scheduled at a particular execution time were executed
the particular execution time.

Spec. 5:25–31 (emphases added). And, Appellants further describe that
distribution of execution times from the specified frequency
parameter times reduces resource demands spikes and traffic
bursts. In some implementations, the scripting system 118
implements a distribution algorithm that distributes scheduled
execution times. In some examples, the distribution is based on
the execution time and a time at which the execution time is
specified. An example process 600 that implements an algorithm
for distributing execution times for rules is shown in Fig. 6.

Spec. 21:1–6 (emphases added). Appellants’ algorithm shown in Figure 6
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and described at page 20, line 31 through page 22, line 2 of the
Specification, and the time variation and rule execution scheduling
operations recited in claims 1, 10, 19, and 28, serve to reduce spikes in
resources that can occur during the execution of scheduled rules.
In view of the foregoing, we conclude that even if the claims recite a
mental process and mathematical calculation, and therefore recite a
combination of abstract ideas, claims 1, 10, 19, and 28 integrate such an idea
into a practical application. In particular, claims 1, 10, 19, and 28 recite
elements that (i) act together to improve a computing device by reducing
spikes in resources used to execute rules, and thus (ii) integrate the abstract
idea into a practical application as determined under at least one of MPEP
§ 2106.05(a) (“Improvements to the Functioning of a Computer or to Any
Other Technology or Technical Field”). As a result, under Step 2A(ii),
claims 1–8, 10–17, 19–26, 28, and 29 provide improvements to the
functioning of computing devices, and more particularly the technology or
technical field of improving the scheduling of the execution of rules by
reducing spikes in resources. See MPEP § 2106.05(a).
Accordingly, we conclude, when claims 1, 10, 19, and 28 are
considered as a whole, the recited judicial exception is integrated into a
practical application as determined under either MPEP § 2106.06(a) cited
above, such that the claims are patent eligible. This determination (Step
2A(ii) – Practical Application) concludes the eligibility analysis. Because
we conclude that Appellants’ claims include additional elements that
integrate the judicial exception into a practical application (see MPEP §
2106.05(a) discussed above), we do not reach and address Appellants’
arguments pertaining to Step 2B (see App. Br. 8–10; Reply Br. 2–4).
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In view of the foregoing, under the Revised Guidance, and informed
by our governing case law concerning 35 U.S.C. § 101, the Examiner erred
in concluding claims 1–8, 10–17, 19–26, 28, and 29 are directed to a judicial
exception, i.e., an abstract idea, without significantly more, and thus are
patent-ineligible under § 101. Accordingly, we do not sustain the
Examiner’s § 101 rejection of independent claims 1, 10, 19, and 28, as well
as the Examiner’s rejection of dependent claims 2–8, 11–17, 20–26, and 29,
which fall with the respective independent claims from which they depend.

Issue (2): Obviousness
We have reviewed the Examiner’s obviousness rejection (Final Act.
11–49), in light of Appellants’ contentions in the Appeal Brief (App. Br. 10–
14), and Reply Brief (Reply Br. 4–5), that the Examiner has erred, and the
Examiner’s response to Appellants’ arguments (Ans. 11–18). We concur
with Appellants’ contentions (App. Br. 10–13; Reply Br. 4) that the
Examiner erred in finding claims 1–8, 10–17, and 19–26 obvious over the
combination of Carteri and Rolia because Carteri fails to disclose limitations
[A1] and [A2] (and therefore the combination fails to teach or suggest
limitation [A]) as recited in independent claim 1, and as commensurately
recited in remaining independent claims 10 and 19.
The Examiner finds Carteri teaches all of the recited steps for
determining a time variation recited in claim 1, including limitations [A1]
and [A2] (see Final Act. 12 citing Carteri ¶¶ 37–39, 41, 43), and then
provides seven full pages of explanation as to how/why Carteri’s operations
on historic data “associated with past executions of jobs and/or job streams”
(Carteri ¶ 38) used to reschedule jobs teaches or suggests determining a time
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variation for rule execution based on a difference as set forth in limitation
[A2] of claim 1 (see generally Final Act. 14–20).
Appellants contend, among other things, that Carteri fails to teach
limitations [A1] and [A2] (see App. Br. 10–12; Reply Br. 4–5). More
specifically, Appellants argue that (i) Carteri’s analysis of historical
execution data fails to teach or suggest limitation [A1] (App. Br. 13); and (ii)
Carteri does not describe determining a difference between any value and a
time at which the selected execution time was received as set forth in
limitation [A2], and the Examiner has not shown “where the claimed
difference is taught by Carteri” (Reply Br. 4). We are persuaded by
Appellants’ arguments.
Limitation [A] of claim 1 recites:
for each given rule of the two or more rules:
[A1] determining, for the given rule, a time variation that
is based on [A2] a difference between (i) a pre-specified
reference time and (ii) a particular time at which the selected
execution time for the given rule was received

Claim 1 (emphases and bracketed lettering added); see also commensurate
limitations recited in claims 10 and 19.
Carteri discloses (i) “an algorithm [shown in Fig. 2] . . . for shifting or
rescheduling scheduled start times for executing jobs or a job stream in a
computing system” (¶ 37); (ii) “[i]n step 218, a rescheduled start time based
on the workload statistics is calculated,” where the workload statistics are
determined from “historical records . . . associated with past executions of
jobs and/or job streams” in step 214 (¶ 38); and (iii) rescheduling the start
time of execution based on determining whether or not a conflict exists and
on other constraints (Fig. 2, steps 218, 220, 224, 225, 228; ¶ 38). Carteri
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further describes rescheduling start times based on (i) finding “a time when
the computing system performs a fewest number of specified functions as
compared to all other functions performed by the computing system” (¶ 38)
based on “constraint data associated with a job” entered by an administrator
(¶ 37); and (ii) a maximum time shift value (¶¶ 38, 41, 43), calculated in step
210 (see Fig. 2; ¶ 37) which represents “a maximum time period that the job
or job stream may be shifted” and is also entered in the computing system by
the administrator (¶ 37). However, Carteri is silent as to determining a time
variation, as set forth in limitation [A1], and doing so based on a difference
between a reference time and the time the execution request was received, as
set forth in limitation [A2].
The Examiner provides an interpretation of Carteri that selects
specific hypothetical times so as to result in a sequence of events that
resembles an outcome reachable by the claimed invention. Final Act. 5–6.
However, the fact that a certain result may occur is not sufficient to establish
the inherency of that result. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir.
1993) (reversed rejection because inherency was based on what would result
due to optimization of conditions, not what was necessarily present in the
prior art). The teaching of Carteri relied upon by the Examiner in this
hypothetical is not that the time variation is based on a difference between
the reference time and the time the execution request was received, but that
the execution time shifts to a time when the computing system performs the
fewest number of specified functions. Final Act. 5–6, citing Carteri ¶ 38.
We will not resort to speculation or assumptions to cure the deficiencies in
the Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967). As such, based on the record before us, we find that the Examiner
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19

improperly relies upon Carteri’s algorithm to teach or suggest the disputed
claim limitations [A1] and [A2] recited in claim 1, and as commensurately
recited in claims 10 and 19. See Warner at 1017.
In view of the foregoing, we are constrained by the record to find the
Examiner erred in rejecting independent claim 1, independent claims 10 and
19, which recite commensurate limitations, and respective dependent claims
2–8, 11–17, and 20–26 for the same reasons.

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1–8, 10–17, 19–26, 28, and 29 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
(2) The Examiner erred in rejecting claims 1–8, 10–17, and 19–26 as
being obvious because the combination of Carteri and Rolia, and specifically
Carteri, fails to teach or suggest the method and system for distributing
execution times of scheduled rules to reduce spikes in resources used to
execute the rules, including determining a time variation as set forth in
limitations [A1] and [A2], as recited in claim 1 supra, and as
commensurately set forth in claims 10 and 19.

DECISION7
We reverse the Examiner’s decision to reject claims 1–20.

7 We have decided the appeal before us. However, should there be further
prosecution of claims 1, 10, and 19, which recite determining a time
variation (see e.g., claim 1, limitation [A1]) by determining “a difference
between (i) a pre-specified reference time and (ii) a particular time at which
the selected execution time for the given rule was received” (see e.g., claim
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Application 13/474,391

20

REVERSED

1, limitation [A2]), the Examiner’s attention is directed to 35 U.S.C. § 112,
first paragraph, for consideration of whether the claimed determining
operation has written description support in Appellants’ Specification as
originally filed. Specifically, the Examiner may wish to consider at least the
algorithm shown in Figure 6 and described at page 20, line 31 through page
22, line 2 of the Specification in making such a determination. Notably,
Appellants cite page 21, line 1 through page 22, line 2 as support for
determining the time variation as set forth in limitations [A1] and [A2]
recited in claims 1, 10, and 19 (see App. Br. 2–4; see also Amendment filed
Sept. 8, 2016, p. 10). These limitations were added to claims 1, 10, and 19
by Appellants’ amendment filed on Sept. 8, 2016 (see pp. 2, 4, 6).