COHEN, CHAIM Y. et al.

Patent Trials and Appeals Board

Dec 31, 2020

2019002718 (P.T.A.B. Dec. 31, 2020)

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.
13/531,995 06/25/2012 CHAIM Y. COHEN IL920120037US1_8150-0288 5418
73109 7590 12/31/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
ALHIJA, SAIF A
ART UNIT PAPER NUMBER
2128
NOTIFICATION DATE DELIVERY MODE
12/31/2020 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHAIM Y. COHEN, ELDAD PALACHI, and
TAKASHI SAKAIRI
____________________

Appeal 2019-002718
Application 13/531,9951
Technology Center 2100
____________________

Before THU A. DANG, BARBARA A. BENOIT, and
JOHN D. HAMANN, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

1 In a prior Decision (Appeal Number 2016-005466, decided March 28,
2017, hereinafter “Prior Dec.”), we affirmed the Examiner’s rejections of
claims 5–12 under 35 U.S.C. § 103(a) over James and Clune; of claims 5–12
under the judicially created doctrine of obviousness-type double patenting;
and of claims 9–12 under 35 U.S.C. § 101. Prior Dec. 10.
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Application 13/531,995
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 13–26 (Appeal Br. 2), which constitute all the
claims pending in this application.2 Claims 1–12 were previously canceled.
Id. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
A. INVENTION
According to Appellant, the invention relates to “modeling and
simulating systems.” Spec. ¶ 2.
B. EXEMPLARY CLAIM
Claim 13, reproduced below, is illustrative of the subject matter on
appeal:
13. A computer hardware system, comprising
a hardware processor configured to initiate the following
executable operations:
modeling, in a second modeling environment, a
continuous system element;
modeling, in a first modeling environment, a
discrete system element and a data flow between the
discrete system element and the continuous system
element;
exporting, from the first modeling environment to
the second modeling environment, information including
software instructions usable by the second modeling
environment to simulate the discrete system element; and

2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. According to Appellant, the real party in interest is IBM
Corporation. Appeal Br. 1.
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second simulating, by the second modeling
environment and using the software instructions, the
discrete system element.
C. PRIOR ART
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Name Reference Date
James US 5,701,439 Dec. 23, 1997
Clune US 2006/0064292 A1 Mar. 23, 2006
D. REJECTION ON APPEAL3
Claims 13–26 stand rejected under 35 U.S.C. 103 (a) as being
unpatentable over the combination of James and Clune.4 Ans. 3.
II. ISSUE
Appellant’s contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the limitation of “modeling, in a first modeling environment, . . .

3 We note an additional issue before us is whether we should decide the
provisional rejection of claims 13–26 over claims 1–4 of co-pending
Application Ser. No. 13/919,323 under the doctrine of non-statutory
obviousness-type double patenting (OTDP). Ans. 3. However, we do not
reach the merits of this rejection in this Appeal because, when all other
rejections on appeal have been reversed, and the only remaining rejection is
a provisional non-statutory OTDP rejection, it is premature to address the
provisional rejection. Ex Parte Moncla, 95 USPQ2d 1884, 1885 (BPAI
2010) (precedential). Therefore, following the precedential guidance of
Moncla, we do not reach the provisional rejection of claims 13–26 under the
doctrine of non-statutory OTDP.
4 The Examiner withdrew the rejection of claims 13–26 under 35 U.S.C. §
101. Ans. 7.
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a data flow between the discrete system element and the continuous system
element,” as recited in independent claim 13 and similarly recited in
independent claim 20?
III. ANALYSIS
In deciding Appeal No. 2016-005466 (“Prior Decision or Prior Dec.”),
we affirmed the Examiner’s rejections of claims 5–12 under 35 U.S.C.
§ 103(a) over the teachings of James and Clune. See Prior Dec. 7–9. In
particular, we agreed with the Examiner that “Clune teaches and suggests
‘multiple environments,’” and “transfer of information between a discrete
event model environment and an external model environment.” Id. at 9
(citing prior Ans. 3).
In the present Appeal, claims 5–12 have been canceled and
independent claims 13–26 have been added, wherein independent claim 13
recites, inter alia, “modeling, in a first modeling environment, . . . a data
flow between the discrete system element and the continuous system
element.” Claim 13 (emphasis added). Independent claim 20 recites similar
limitations. See claim 20. According to Appellant, absent from cited
portions of the prior art and the Examiner’s explicit analysis “is any mention
of the claimed ‘modeling . . . a data flow between the discrete system
element and the continuous system element.’” Appeal Br. 17. In particular,
Appellant requests that “the Examiner explicitly identify . . . the alleged data
flow between [the discrete system element and the continuous system
element], and . . . the alleged modeling of this data flow.” Id.
In the Reply Brief, Appellant explains that “the Examiner’s analysis
fails to appreciate that the claims do not refer to the actual transfer of data,”
but rather, “the claims recite ‘modeling . . . a discrete system element and a
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Application 13/531,995
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data flow between the discrete system element and the continuous system
element.’” Reply Br. 6. According to Appellant, “the Examiner establishing
that Clune teaches data flowing between different modeling environments is
insufficient since this passage is silent as to the particular data flow being
modeled.” Id. at 6.
We have considered all of Appellant’s arguments and evidence
presented. We agree with Appellant that the preponderance of the evidence
on this record does not support the Examiner’s legal conclusion that claims
13 and 20, and claims 14–19 and 21–26 depending respectively therefrom,
would have been obvious over the combination of James and Clune.
Although the Examiner refers to Clune’s paragraph 2 for teaching and
suggesting “the data flow between the discrete system element and the
continuous system element” (Ans. 9 (citing Clune para. 2; Appeal Br. 24)),
as Appellant points out, “the Examiner establishing that Clune teaches data
flowing between different modeling environments is insufficient since this
passage is silent as to the particular data flow being modeled.” Reply Br. 6.
We agree with Appellant that the Examiner has failed to adequately consider
the “modeling” of the data flow as recited in the claims. Id. More
particularly, as we found in our Previous Decision, Clune merely teaches
and suggests “multiple environments,” and “transfer of information between
a discrete event model environment and an external model environment.”
Prior Dec. 9.
Thus, although the Examiner finds that Clune’s teachings disclose
“the data flow between the discrete system element and the continuous
system element” (Ans. 9), we are persuaded by Appellant’s contentions that
Clune in combination with James fail to teach or suggest “modeling, in a
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first modeling environment, . . . a data flow between the discrete system
element and the continuous system element,” as recited in claim 13 and
similarly recited in claim 20.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding the combination of James and Clune teaches
or suggests the contested limitations of Appellant’s claims 13 and 20.
Dependent claims 14–19, and 21–26 depend on claims 13 and 20
respectively, and stand with their respective independent claims.
Accordingly, we do not sustain the Examiner’s obviousness rejection of
claims 13–26 over James and Clune.
IV. CONCLUSION
The Examiner’s rejections of claims 13–26 under 35 U.S.C. § 103(a)
are reversed.

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
13–26 103(a) James, Clune 13–26

REVERSED