Ex Parte Abuelsaad et al

Patent Trials and Appeals Board

Jun 19, 2019

15044874 - (D) (P.T.A.B. Jun. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/044,874 02/16/2016 Kelly Abuelsaad
59144 7590 06/20/2019
CAHN & SAMUELS, LLP
1100 17th STREET, NW
SUITE401
WASHINGTON, DC 20036
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
YOR920110606US2 3077
EXAMINER
SHIN, KYUNG H
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
06/20/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KELLY ABUELSAAD, SHANE B. McELLIGOTT,
HIEN Q. NGUYEN, and SUSAN M. ROMERO
Appeal2018-001773
Application 15/044,8741
Technology Center 2400
Before JOSEPH L. DIXON, JOHN P. PINKERTON, and
NORMAN H. BEAMER, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 3.
Appeal2018-001773
Application 15/044,874
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention is generally directed to
managing computing resources using a data analysis module that predicts
demand for the computing resources based on internet user activity. Spec.
,-i 4_2
Claim 1 is representative and reproduced below (with the disputed
limitation emphasized):
1. A method for managing computing resources, said
method comprising:
predicting demand for the computing resources with a
data analysis module based on a number of web pages that
include at least one select term a predetermined amount of
times; and
at least one of increasing resource capacity with a
processor when the predicted demand is above a first threshold,
and decreasing resource capacity with the processor when the
predicted demand is below a second threshold.
2 Our Decision refers to the Final Action mailed Apr. 12, 2017 ("Final
Act."); Appellants' Appeal Brief filed Aug. 17, 2017 ("App. Br."), and
Reply Brief filed Dec. 7, 2017 ("Reply Br."); the Examiner's Answer mailed
Nov. 7, 2017 ("Ans."); and the original Specification filed Feb. 16, 2016
("Spec.").
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Application 15/044,874
Rejections on Appeal
Claims 1-20 are rejected under the judicially created doctrine of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-19 of U.S. Patent No. 9,280,394.3 Final Act. 2-4.
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bubba (US 2009/0119673 Al, published May 7, 2009),
and Liberman Ben-Ami et al. (US 2013/0136253 Al, published May 30,
2013) ("Liberman"). Final Act. 4-18.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments in the Briefs and are not persuaded the Examiner erred. Unless
otherwise noted, we adopt as our own the findings and reasons set forth by
the Examiner in the Office Action from which this appeal is taken (Final
Act. 2-18) and in the Examiner's Answer (Ans. 19-28), and we concur with
the conclusions reached by the Examiner. For emphasis, we consider and
highlight specific arguments as presented in the Briefs.
Rejection of Claims 1-20 under§ 103(a)
Appellants argue independent claims 1, 18, and 20 separately, but
make substantially the same arguments with respect to each claim. App. Br.
5-10. Regarding claim 1, Appellants argue the proposed combination of
Bubba and Liberman fails to teach the claimed feature of "predicting
demand for the computing resources with a data analysis module based on a
number of web pages that include at least one select term a predetermined
3 Appellants did not respond to this rejection in the Appeal Brief.
Accordingly, we summarily sustain this rejection.
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Appeal2018-001773
Application 15/044,874
amount of times." App. Br. 5-7. In particular, Appellants argue Bubba
teaches a system that can anticipate a breach of a service level agreement
based on the user reaching a predetermined resource usage threshold and
"modify the resource allocation prior to the utilization exceeding the
allocated amount of the resource." Id. at 5-6 (citing Bubba ,i 134). Thus,
Appellants argue that "Bubba does not predict demand for computing
resources based on the number of web pages that include a select term a
predetermined amount of times," but instead Bubba predicts demand for
computing resources based on the user's usage of the computing resources.
Id. at 6 ( emphasis omitted). Appellants also argue that Liberman fails to
cure this deficiency. Id. In that regard, Appellants argue that, although the
Examiner finds that "Liberman identifies the frequency of keywords during
a web interaction," "Liberman fails to teach predicting demand for
computing resources based on the frequency of keywords." Id. Appellants
further argue that Liberman teaches that data may be extracted from each
web interaction and that "extracting content does not predict the demand for
computing resources." Id. ( citing Liberman ,i 39) ( emphasis omitted).
Moreover, Appellants argue "nothing within Liberman teaches determining
the 'number of web pages that include a select term a predetermined amount
of times."' Id.
Regarding claim 18, Appellants argue that the proposed combination
of Bubba and Liberman fails to teach the claimed feature of "predicting
demand for the computing resources with a data analysis module based on a
number of times that web pages that include at least one select term a
predetermined amount of times are viewed." Id. at 7-8. In particular,
Appellants argue that, as the Examiner acknowledges, Bubba does not teach
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Application 15/044,874
predicting demand "based on a number of times web pages that include at
least one select term a predetermined amount of times are viewed." Id. at 7.
Appellants also argue that nothing within Liberman, including paragraph 39
cited by the Examiner, teaches the disputed limitation of claim 18. Id. at 7-
8. Appellants further argue that "nothing within Liberman teaches
determining the number of times that web pages that include a select term a
predetermined amount of times are viewed," but "merely provides a broad
teaching of extracting content from the internet based on keywords." Id. at
8.
Regarding claim 20, Appellants argue that the proposed combination
of Bubba and Liberman fails to teach the claimed feature of
first program instructions executable by a device to cause the
device predict demand for the computing resources based on at
least one of: a number of web pages that include at least one
select term a predetermined amount of times, and a number of
times the web pages that include the at least one select term a
predetermined amount of times are viewed.
Id. at 9. Appellants also argue that, as the Examiner acknowledges, Bubba
does not teach the disputed limitation of claim 20, and nothing within
Liberman, including paragraph 39 cited by the Examiner, teaches the
disputed limitation. Id. at 9-10.
We are not persuaded by Appellants' arguments that the Examiner
erred. First, Appellants' arguments that neither Bubba nor Liberman
individually teach the disputed limitations of claims 1, 18, and 20 are not
persuasive because the Examiner relies on the combination of Bubba and
Liberman as teaching or suggesting these limitations. See Ans. 19-21, 23-
25. Non-obviousness cannot be established by attacking references
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Application 15/044,874
individually where the rejection is based upon the teachings of a
combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). The relevant inquiry is whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of the references. See In re Keller, 642 F.2d 413,425
( CCP A 19 81 ). Here, the Examiner finds that Bubb a teaches "predicting
demand for computing resources" based on threshold parameters. Ans. 19-
21. Specifically, the Examiner finds that "Bubba discloses the capability to
predict when the usage of resources will exceed a threshold parameter (a
prediction for demand)." Id. at 19 (citing Bubba ,i,i 9, 64, 134). The
Examiner also finds that Liberman teaches tracking and analyzing user
interactions over the Internet and implementation of predetermined
parameters for tracking web interactions (i.e., analogous to a threshold type
parameter). Id. at 20 ( citing Liberman ,i 39). Specifically, the Examiner
finds that Liberman teaches
tracking and analyzing interactions over the Internet [ web
interactions] such as selecting a search term, browsing, or
accessing a webpage[,] rules for tracking web interactions such
as, amount of time a webpage was viewed, number of times or
which different items were selected on a webpage, number of
repeated viewings over a time span, presence or frequency of
certain keywords in a web page, etc.
Id. Thus, contrary to Appellants' arguments, the Examiner finds that the
combination of Bubba and Liberman teaches the disputed limitations of the
claims: Bubba teaches "predicting demand for computing resources" based
on threshold parameters, and Liberman teaches the specific parameters.
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Second, we are not persuaded by Appellants' argument that nothing in
Liberman teaches determining "the number of web pages that include a
select term a predetermined amount of times." App. Br. 6 ( emphasis
omitted). The Examiner finds that that Liberman teaches tracking the
"frequency of certain keywords in a webpage." Ans. 20 ( citing Liberman
,i 39). The Examiner also finds that "frequency" is defined as "as the
number of times an event, value, or characteristic occurs in a given period."
Id. at 21 (citing http://www.yourdictionary.com/frequency). Thus, because
Liberman teaches tracking select terms (keywords) in webpages over a given
period, we determine that Liberman at least suggests "determining the
number of web pages that include a select term a predetermined number of
times," as recited in claims 1 and 20.
Third, we are not persuaded by Appellants' argument that nothing
within Liberman teaches "determining the number of times that web pages
that include a select term a predetermined amount of times are viewed," as
recited in claims 18 and 20. App. Br. 8 ( emphasis omitted). The Examiner
finds that Liberman teaches tracking web interactions, "such as selecting a
search term, browsing, or accessing a webpage" and "rules for tracking web
interactions such as, amount of time a webpage was viewed ... [ and]
frequency of certain keywords in a webpage." Ans. 20 ( citing Liberman
,i 39). Thus, the Examiner also finds that Liberman teaches this disputed
limitation. We determine that because Liberman teaches tracking accessing
web pages and also tracking select terms (keywords) in web pages over a
given period, Liberman at least suggests "determining the number of times
that web pages that include a select term a predetermined amount of times
are viewed," as recited in claims 18 and 20.
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Application 15/044,874
In the Final Office Action, the Examiner found that "[ o ]ne of ordinary
skill in the art would have been motivated to employ the teachings of
Liberman for the benefits achieved from the efficiency and flexibility of a
system that extracts information concerning Internet server interactions for
traffic usage in resource allocation management within a network
environment." Final Act. 6 ( citing Liberman ,i 4). Appellants did not
contest or argue this finding in the Appeal Brief. Instead, Appellants argued
in the Reply Brief that "[t]here is simply no teaching, suggestion, or reason
to combine the method of Liberman ... with the method of Bubba, much
less how one of ordinary skill in the art would substitute or modify the
allocation of computer resources in an enterprise organization as required by
Bubba with the analysis of a user's interactions for generating
recommendation to a contact center agent." Reply Br. 2. Because this
argument is raised by Appellants for the first time in the Reply Brief not in
response to a shift in the Examiner's position or without otherwise showing
good cause, it is waived. See 37 C.F.R. § 41.4l(b)(2); see also Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ("[T]he reply
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner's rejections, but were
not.").
Accordingly, we are not persuaded the Examiner erred in (1) finding
the combined teachings of Bubba and Liberman teach or suggest the
disputed limitations of claims 1, 18, and 20 and (2) concluding that the
combination of the teachings and suggestions of these references renders the
subject matter of claims 1, 18, and 20 obvious under 35 U.S.C. § 103. Thus,
we sustain the Examiner's rejection of claims 1, 18, and 20, and dependent
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Application 15/044,874
claims 2-17 and 19, which are not separately substantively argued, under
§ 103.
DECISION
We affirm the Examiner's rejection of claims 1-20 under the
judicially created doctrine of nonstatutory obviousness-type double
patenting as being unpatentable over claims 1-19 of U.S. Patent No.
9,280,394.
We affirm the Examiner's rejections of claims 1-204 under 35 U.S.C.
§ 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
4 Claim 20 is directed to a computer program product comprising "a
computer readable storage medium." App. Br. 16 (Claims App.). The
claimed "medium" is not expressly limited to non-transitory media, and the
term "computer-readable storage medium" is broadly described in the
Specification to include examples of volatile and non-volatile memories.
See Specification ,-J 28. Should there be further prosecution of this
application (including any review for allowance), the Examiner may wish to
review claim 20 for compliance under 35 U.S.C. § 101. See Ex parte
Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013); In re Nuijten, 500 F.3d
1346, 1357 (Fed. Cir. 2007); MPEP § 2106(1) (9th ed. 2014); David J.
Kappos, "Subject Matter Eligibility of Computer Readable Media," 1351
Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
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