International Business Machines Corporation

Patent Trials and Appeals Board

Dec 31, 2020

2019003367 (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.
13/919,323 06/17/2013 Chaim Y. Cohen IL920120037US2_8150-0402 9513
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
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 CHAIM Y. COHEN, ELDAD PALACHI, and
TAKAHASHI SAKAIRI
____________________

Appeal 2019-003367
Application 13/919,3231
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 2016-008115, decided December 28,
2017, hereinafter “Prior Dec.”), we affirmed the Examiner’s rejections of
claims 1–4 under 35 U.S.C. § 103(a) over James and Clune. Prior Dec. 9.
Appeal 2019-003367
Application 13/919,323

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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-implemented method, comprising
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
second simulating, by the second modeling environment
and using the software instructions, the discrete system
element.
.

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.
Appeal 2019-003367
Application 13/919,323

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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 APPEAL
Claims 13–19 stand rejected under 35 U.S.C. §103 (a) as being
unpatentable over the combination of James and Clune.3 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, . . .
a data flow between the discrete system element and the continuous system
element,” as recited in independent claim 13?
III. ANALYSIS
In deciding Appeal No. 2016-008115 (“Prior Decision or Prior Dec.”),
we affirmed the Examiner’s rejections of claims 1–4 under 35 U.S.C.
§ 103(a) over the teachings of James and Clune. See Prior Dec. 4–9. In
particular, we agreed with the Examiner’s reliance on Clune to teach or
suggest “two separate environments” and “transferring (‘exporting’) of
information between various modeling environments that comprise a hybrid

3 The Examiner withdrew the rejections of claims 13–19 under 35 U.S.C. §
101 and on the ground of nonstatutory obviousness-type double patenting
over claims 13–26 of U.S. Patent Application No. 13/531,995. Ans. 5.
Appeal 2019-003367
Application 13/919,323

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of continuous and discrete time model elements.” Id. at 7 (citing prior Final
Act. 2–3).
In the present Appeal, claims 1–4 have been canceled and
independent claims 13–19 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). 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
data flow between the discrete system element and the continuous system
element.” Reply Br. 5. 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.
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 claim
13 and claims 14–19 depending therefrom would have been obvious over the
combination of James and Clune.
Appeal 2019-003367
Application 13/919,323

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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. 6 (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. 5.
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 “two separate environments” and “transferring (‘exporting’) of
information between various modeling environments that comprise a hybrid
of continuous and discrete time model elements.” Prior Dec. 7.
Thus, although the Examiner finds that Clune’s teachings do in fact
disclose “the data flow between the discrete system element and the
continuous system element” (Ans. 6), we are persuaded by Appellant’s
contentions that Clune in combination with James fail to teach or suggest
“modeling, in a first modeling environment, . . . a data flow between the
discrete system element and the continuous system element,” as recited in
claim 13.
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 claim 13. Dependent
claims 14–19 depend on claims 13 and stand therewith. Accordingly, we do
not sustain the Examiner’s obviousness rejection of claims 13–19 over
James and Clune.

Appeal 2019-003367
Application 13/919,323

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IV. CONCLUSION
The Examiner’s rejection of claims 13–19 under 35 U.S.C. § 103(a) is
reversed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13–19 103(a) James, Clune 13–19
Overall
Outcome
13–19

REVERSED