Ex Parte Spata

Patent Trial and Appeal Board

Nov 14, 2017

13222230 (P.T.A.B. Nov. 14, 2017)

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.
13/222,230 08/31/2011 Gregory P. Spata 12587-0312001/
Dll-041-1
5019
26212 7590 11/16/2017
FISH & RICHARDSON P.C. (ACCENTURE)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
NORTON, JENNIFER L
ART UNIT PAPER NUMBER
2126
NOTIFICATION DATE DELIVERY MODE
11/16/2017 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 GREGORY P. SPATA
Appeal 2015-006267
Application 13/222,230
Technology Center 2100
Before JOSEPH L. DIXON, MICHAEL J. STRAUSS, and
JOHN A. EVANS, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-006267
Application 13/222,230
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1—6, 8—10, 12, 22—28, and 30-33. Claims 7, 11, 13—21, and 29 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to a system for capturing environmental
information and controlling a cooling system. Claim 1, reproduced below, is
representative of the claimed subject matter:
1. A method performed on one or more computing
devices, the method comprising:
receiving environmental information collected by an
unmanned aerial vehicle (UAV) travelling according to a
predetermined flight path, the environmental information being
associated with one or more conditions of a data center;
storing the environmental information on one or more
memory devices that are accessible by the one or more
computing devices;
determining, based on the environmental information, that
a portion of the data center exhibits a temperature that exceeds a
threshold; and
performing, by the one or more computing devices and
based on determining that the portion of the data center exhibits
a temperature that exceeds a threshold, one or more actions that
include:
(i) adjusting one or more components of a cooling system
in the portion of the data center that exhibits a temperature that
exceeds the threshold, and
(ii) sending an instruction to the UAV to alter the
predetermined flight path of the UAV to collect additional
environmental information in proximity of the portion of the data
center that exhibits a temperature that exceeds the threshold, until
1 Appellant indicates that Accenture Global Services Limited is the real
party in interest. (App. Br. 1).
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Application 13/222,230
the additional environmental information indicates that the
portion of the data center no longer exhibits a temperature that
exceeds the threshold.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Patel et al. US 2003/0221821 A1
Fowler et al. US 2004/0160897 Al
Bash et al. US 2004/0243280 Al
(hereinafter Bash 2)
Bash et al. US 2005/0038562 Al
(hereinafter Bash)
Habibi US 2008/0144884 Al
Dec. 4, 2003
Aug. 19, 2004
Dec. 2, 2004
Feb. 17, 2005
June 19, 2008
REJECTIONS
The Examiner made the following rejections:
Claims 1—6, 8, 22—28, 30, and 33 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Bash and Bash 2 (incorporated
by reference in Bash) in view of Habibi and in further view of Patel.
Claims 9, 10, 12, 31, and 32 are rejected under pre-AIA 35 U.S.C.
103(a) as being unpatentable over Bash and Bash 2 (incorporated by
reference in Bash) in view of Habibi in further view of Patel and Fowler.
ANALYSIS
Claims 1—6, 8—10, 12, and 33
With respect to independent claim 1—6, 8—10, 12, and 33, Appellant
argues the claims together. (App. Br. 13—14). As a result, we select
independent claim 1 as representative claim, and we will address Appellant’s
arguments thereto.
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Application 13/222,230
At the outset, we note that the language of independent claim 1 is
broader than Appellant and the Examiner discuss in their arguments.
Claim terms in a patent application are given the broadest reasonable
interpretation consistent with the specification, as understood by one of
ordinary skill in the art. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir.
2004). However, great care should be taken to avoid reading limitations of
the Specification into the claims. E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (Fed. Cir. 2003).
We find the language of each of the independent claims recites
“performing, by the one or more computing devices and based on
determining that the portion of the data center exhibits a temperature that
exceeds a threshold, one or more actions that include . . . .” (See claim 1)
(emphasis added). Consequently, the prior art combination needs to teach or
suggest either “one” of the alternative actions, not both. We agree with the
Examiner that the prior art teaches and suggests “(i) adjusting one or more
components of a cooling system in the portion of the data center that exhibits
a temperature that exceeds the threshold” (Final Act. 5—6), and we
additionally find that each of the Bash, Bash 2 and Patel references teach
and suggest monitoring and controlling cooling. Appellant has not disputed
that this limitation is taught and suggested by the prior art. Consequently,
we do not need to find the prior art teaches or suggests the second limitation
recited because of the breath of the claims. As a result, we sustain the
rejection because the prior art teaches or suggests the first alternative
limitation of adjusting the cooling based upon monitored temperature.
For completeness, we address Appellant’s additional arguments
below. Appellant contends that the Office does not provide any explanation
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Application 13/222,230
of how the purported modification to Bash and Habibi in view of Patel
describes or suggests the “a predetermined flight path” (App. Br. 5—6) and
Appellant further contends:
even if Bash, Bash2, Habibi, and Patel were properly combined,
the combined system would fail to teach or suggest “an
unmanned aerial vehicle (UAV) that is travelling according to a
predetermined flight path” and “(ii) sending an instruction to the
UAV to alter the predetermined flight path of the UAV to collect
additional environmental information,” as recited in claim 1.
(App. Br. 9). The Examiner further responds to Appellant’s arguments and
identifies that Appellant is arguing the references individually rather than the
references as applied by the Examiner in the rejection. (Ans. 25—34). We
agree with the Examiner that Appellant’s arguments are not commensurate
with the prior art as applied by the Examiner. Consequently Appellant’s
arguments do not show error in the Examiner’s factual findings or
conclusion of obviousness.
Moreover, we agree with the Examiner because non-obviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see In re Keller, 642
F.2d 413, 425 (CCPA 1981):
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
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Additionally, “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSRInt'l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007). Furthermore, the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984). We find Appellant’s arguments do not take into
account what the collective teachings of the prior art would have suggested
to one of ordinary skill in the art and are therefore ineffective to rebut the
Examiner’s prima facie case of obviousness.
Appellant additionally argues that the Office’s modification of Bash
in view of Habibi would have rendered bash unsatisfactory for its intended
purpose. (App. Br. 10).
An argument that the system is rendered inoperable [or unsuitable]
for its intended purpose” is a “teaching away” argument. In re Gordon, 733
F.2d 900, 902 (Fed. Cir. 1984) (The court concluded that in effect, “French
teaches away from the board's proposed modification” because “if the
French apparatus were turned upside down, it would be rendered inoperable
for its intended purpose”). The Federal Circuit has held “[a] reference may
be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)
(quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). On this record,
we find Appellant has not provided sufficient evidence or persuasive
argument that modifying Bash, Bash 2, Habibi, and Patel is discouraged by
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the prior art. Appellant merely provides a general argument that “this is
improper because it would render Bash's system unsatisfactory for its
intended purpose.” (App. Br. 11). Appellant relies solely on attorney
argument. However, it is well settled that mere attorney arguments and
conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(attorney argument is not evidence).
Moreover, we find the Examiner’s findings are reasonable because the
skilled artisan would “be able to fit the teachings of multiple patents together
like pieces of a puzzle” since the skilled artisan is “a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 420—21. Appellant does not
present adequate evidence that the resulting arrangements were “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” See Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at
418—19). As a result, Appellant’s argument does not show error in the
Examiner’s factual findings or conclusion of obviousness of representative
independent claim 1.
Finally, Appellant contends that the resulting system of Bash and
Habibi would have been incompatible with the teachings of Patel (App. Br.
12). Again, we find Appellant’s argument is based upon a bodily
incorporation of the prior art teachings rather than what the prior art as a
whole would have suggested to one of ordinary skill in the art at the time of
the invention. Therefore, we find Appellant’s argument to be unavailing to
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show error in the Examiner’s factual findings or conclusion of obviousness
of representative independent claim 1.
In addition to the portions of the Habibi reference cited by the
Examiner, we additionally find throughout the Habibi reference teachings
and suggestions of dynamically adjusting the flight path. (Habibi Fig. 7, see
for example abstract, || 23, 45, 47, 53—56, 91). Additionally, we find the
Patel reference teaches deviating from a planned route (Patel 191) and
stopping the robotic device (Patel 1103) which we find would alter the
(flight) path to remain at a particular location and collect additional
temperature information.
Reply Brief
With respect to independent claim 1, Appellant addresses the
additional portions of the references relied upon by the Examiner in the
Examiner’s Answer and contends that, even in view of these new portions of
the Bash, Habibi, and Patel references, “a person of ordinary skill in the art
would not have modified Bash and Habibi to include the predetermined
routes of Patel because Bash and Habibi's lighter-than-air platform would be
incompatible with Habibi's tracks and wires that guide a device along the
ground.” (Reply Br. 3—4). We disagree with Appellant’s general argument
regarding the combination and find it unpersuasive of error in the
Examiner’s factual findings and conclusion of obviousness of representative
independent claim 1.
Independent claim 22
With respect to independent claim 22, Appellant relies upon the
arguments advanced with respect to independent claim 1. (App. Br. 13).
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Because Appellant did not show error in the Examiner’s factual findings or
conclusion of obviousness of representative independent claim 1, we sustain
the rejection of claim 22 for the same reasons.
Claims 23—28 and 30—32
With respect to independent claim 23, Appellant repeats the disputed
language of the claims and relies upon the argument with respect to
representative independent claim 1. (App. Br. 13). With respect to
dependent claims 24—28 and 30-32, Appellant repeats the disputed language
of the claims and relies upon the discussion with respect to representative
independent claim 1. (App. Br. 14). Because Appellant did not show error
in the Examiner’s factual findings or conclusion of obviousness of
representative independent claim 1, we sustain the rejection of claims 23—28
and 30-32 for the same reasons.
CONCLUSION
The Examiner did not err in rejecting claims 1—6, 8—10, 12, 22—28,
and 30—33 based upon obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, we sustain the Examiner’s rejection of claims
1—6, 8—10, 12, 22—28, and 30—33 based upon obviousness 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. § 1.136(a)(l)(iv).
AFFIRMED
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